LUSH VAPOR for E-Cigarette Flavors Not Confusable With LUSH for Cosmetics, Says TTAB

The Board dismissed this Section 2(d) opposition to registration of LUSH VAPOR for "Chemical flavorings in liquid form used to refill electronic cigarette cartridges" [VAPOR disclaimed], finding the mark not likely to cause confusion with the registered mark LUSH for, inter alia, cosmetic preparations, bath and beauty preparations, and related services. The differences between the goods of the parties outweighed the other du Pont factors, including the findings that opposer's mark is strong and is "somewhat similar" to applicant's mark. Cosmetic Warriors Limited v. Trang Diem Tran, Opposition No. 91214890 (June 2, 2017) [not precedential] (Opinion by Judge Heasley).

The Goods: Opposer tried hard to prove that the involved goods are related, but the Board rejected its various arguments: that the products have ingredients in common, that both products may be used with atomizers, that the products may be packaged similarly, that they use similar product names (such as "Strawberry Feels Forever), that opposer's candles and incense are complementary to applicant's goods, and that applicant's goods are within opposer's natural zone of expansion.

In sum, none of the rationales advanced by Opposer establishes that its goods are related to Applicant’s. The second DuPont factor thus weighs strongly against a likelihood of confusion.

Channels of Trade: Opposer did not show that the parties’ products have ever been offered in the same retail store, and it admitted that it was not aware of any publications  in which its LUSH–branded goods and services and applicant’s goods have appeared. However, overlapping channels of trade "could include retail stores such as convenience stores, pharmacies, 'big box' retail stores, and shopping malls, where cosmetics and toiletries, as well as e-cigarette or vaping products are sold." However, the mere fact that the goods may appear "under the same roof" does not establish that the goods are related. And so the Board found this factor to be neutral.

Purchasing Conditions: The involved products are relatively low cost and not likely to be purchased with anything more than ordinary care. This factor slightly favored opposer.

The Marks: The Board found LUSH to be the dominant portion of applicant's mark, noting that the first part of a mark is the portion most likely to be remembered. The parties appeared to agree that "lush" connotes "luxurious." The word VAPOR in applicant's mark "signals to purchasers the nature of applicant's goods," i.e., they are used with e-cigarettes for vaping. This somewhat mitigated the similarity between the marks, but the Board concluded that the first du Pont factor favored opposer.

Strength of Opposer's Mark: The Board found LUSH to be a strong mark in view extensive advertising and promotion, both paid and unpaid. Therefore, the fifth du Pont  factor weighed in favor of a finding of likelihood of confusion.

Third-Party Marks: The registrations cited by applicant were for goods or services far removed from cosmetics and toiletries, significantly diminishing their probative value. Therefore, the sixth du Pont factor was neutral.

Actual Confusion: Opposer pointed to two vague incidents of supposed confusion, but the Board observed that "[i]nquiries as to whether one firm’s mark indicates affiliation with another firm do not, without more, suffice to show that the inquirers were actually confused." The Board concluded that the seventh and eighth factors were neutral.

Conclusion: Balancing the relevant du Pont factors, the Board found that opposer had failed to establish a likelihood of confusion:

The fact that the parties’ goods are dissimilar and unrelated weighs heavily in Applicant’s favor, and, in the totality of the circumstances, outweighs the factors favoring a finding of likelihood of confusion, including without limitation the findings that Opposer’s mark is strong and somewhat similar to Applicant’s mark.

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TTABlog comment: Note that the Board gives a nod to the CAFC's recent INSIGNIA case, but considers the fifth du Pont factor in terms of the "strength" of opposer's mark. IMHO, the fifth factor requires assessment of strength along a spectrum from extremely weak, at one end, to famous at the other end. In other words, the word "fame" as stated in the listing of factors in the du Pont case should be read as "strength."

Text Copyright John L. Welch 2017.