Precedential No. 35: TTAB Grants MIRAGE BRANDS Cancellation Petition Due To Likelihood of Reverse Confusion

In an otherwise straightforward Section 2(d) analysis, the Board ruled that confusion is likely between Respondent's registered marks MIRAGE BRANDS (standard form) and MIRAGE BRANDS & Design [BRANDS disclaimed], and Petitioner Mahender Sabhnani's previously used and registered mark ROYAL MIRAGE & Design, all for perfume. Finding that "Respondent's presence in the marketplace is considerably greater than that of Petitioner," the Board saw "a circumstance of reverse confusion in which consumers exposed to Respondent’s marks for perfumes who encounter Petitioner’s mark for perfume are likely to believe mistakenly that Petitioner’s goods originate with Respondent." Mahender Sabhnani v. Mirage Brands, LLC, 2021 USPQ2d 1241 (TTAB 2021) [precedential] (Opinion by Judge Christopher Larkin).

Priority: "In a cancellation proceeding . . . where both parties own registrations, priority is in issue." Double Coin Holdings, Ltd. v. Tru Development, 2019 USPQ2d 3373409, at *4 (TTAB 2019). The earliest date on which Respondent could rely was November 23, 2016, the filing date of its underlying applications. Petitioner Sabhnani had an October 27, 2000 filing date of his underlying application and so he established priority of use.

Reverse Confusion: The Board observed that weighing of the DuPont factors "must take into account the confusion that may flow from extensive promotion of a similar or identical mark by a junior user." In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).

The term “reverse confusion” has been used to “describe the situation where a significantly larger or more prominent newcomer ‘saturates the market’ with a trademark that is confusingly similar to that of a smaller, senior registrant for related goods or services.” Id. (quoting Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947, 24 USPQ2d 1001, 1010 & n.12 (7th Cir. 1992))

The Board noted that Petitioner did not expressly plead reverse confusion, but it "'does not have to be specifically pleaded so long as the plaintiff asserts that the respective marks are so similar as applied to the respective goods or services as to be likely to cause confusion.'" Top Tobacco, 101 USPQ2d at 1175 n.18 (quoting Am. Hygienic Labs. v. Tiffany & Co., 12 USPQ2d 1979, 1983 n.7 (TTAB 1989))." The Board is "obligated to consider confusion in whatever manner it presents itself under Trademark Act Section 2(d)."

Respondent's sales figures were "multiple orders of magnitude larger that Petitioner's sales figures for the same period," suggesting that "it is far more likely that consumers will be exposed to Respondent's marks than to Petitioner's mark."

DuPont analysis: Since the involved goods are identical (in part), the second DuPont factor weighed heavily in petitioner's favor. As to the third and fourth factors, absent any limitations in the identifications of goods, the Board must presume that those identical goods travel in the same channels of trade to the same classes of consumers.

Turning to the sixth factor, respondent argued that petitioner's mark is weak because the word "MIRAGE" is in common use for goods in International Class 3. The Board pointed out that only third-party use evidence is relevant to the commercial strength of petitioner's mark, and the probative value of that evidence depends upon the usage of the mark. Respondent provided evidence of use of only one third-party mark for perfume, clearly insufficient to show commercial weakness of petitioner's mark.

As to third-party registration evidence, which may affect the conceptual strength of a mark, only six of the eight registrations cited by respondent covered "perfume" or "colognes." However, the registered marks - HOLLISTER JASMINE MIRAGE, MIRAGE LAYON, DESERT MIRAGE, RADIANT MIRAGE, GOLD MIRAGE, AND SHINE MIRAGE - also include additional elements "that may cause them to be less similar to Petitioner's marks than Respondent's marks are." Cf. Inn at St. John’s, 126 USPQ2d at 1745-46 (discounting probative value of third-party registrations “contain[ing] the non-identical term ‘Fifth’” in showing that the cited registered mark 5IVESTEAK was weak).

The Board concluded that respondent's evidence, comprising one third-party use and six third-party registrations of "varying probative value," was "a far cry from the large quantum of evidence of third-party use and third-party registrations that was held to be significant in both' Jack Wolfskin and Juice Generation." Id. Accordingly, the Board found the sixth DuPont factor to be neutral, and it accorded petitioner's mark "the normal scope of protection to which inherently distinctive marks are entitled." Bell’s Brewery, Inc. v. Innovation Brewing, 125 USPQ2d 1340, 1347 (TTAB 2017).

The Marks: Because the goods under consideration are identical, a lesser degree of similarity between the marks is necessary to support a finding of likelihood of confusion. Coach Servs., 101 USPQ2d at 1721; Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); New Era Cap Co. v. Pro Era, LLC, 2020 USPQ2d 10596, at *14 (TTAB 2020).

Observing that, and a word-and-design mark, the verbal portion is "likely to make a greater impression upon purchasers, to be remembered by them, and to be used by them to request the goods," the Board found that the term ROYAL MIRAGE is the dominant portion of petitioner's word-and-design mark, noting that the surrounding design is an ordinary geometric shape and the crown design "merely reinforces the words." As to respondent's marks, the Board found the word MIRAGE to be the dominant element: the word BRANDS has no source-identifying significance and the stylized "M" primarily reinforces the first letter in the word MIRAGE.

The standard character mark MIRAGE BRANDS may be displayed in any style or font, including that of the words ROYAL MIRAGE in petitioner's mark. The design element in petitioner's mark reinforces the laudatory term ROYAL, similar to the way in which the "M" in Respondent's composite mark the emphasized the first letter of MIRAGE. The Board therefore found the involved marks to be more similar than dissimilar.

As to connotation and commercial impression, the Board gave less weight to the laudatory adjective ROYAL than to the noun MIRAGE. Observing that a consumer "could readily view Petitioner's mark as identifying a particular perfume figuratively "suitable for royalty" that emanates from Respondent's MIRAGE BRANDS 'house.'"

The Board concluded that the similarities between the marks in appearance, sound, meaning, and commercial impression outweigh differences, particularly keeping in mind that a lesser degree of similarity is required when the goods are identical.

Other DuPont Factors: Because the parties' identifications of goods cover "perfume" without limitation as to nature or price, the Board must presume that the goods include inexpensive perfumes bought by ordinary consumers, without careful consideration: for example, via the Internet.

Turning to the eighth factor, Petitioner Sabhnani claimed that actual confusion had occurred, but his evidence was unimpressive. He received telephone calls inquiring whether MIRAGE BRANDS was related to ROYAL MIRAGE, but the Board observed that these calls do not constitute evidence of actual confusion because the inquirer suspected that the brands were not related. Petitioner could not identify any caller or specify the dates of the callsand his testimony was "vague in every respect."

The absence of reported incidents of actual confusion is probative "only if the record indicates appreciable and continuous use by [Respondent] of its mark[s] for a significant period of time in the same markets as those served by [Petitioner] under [his] mark[ ]." Citigroup Inc. v. Capital City Bank Grp., Inc., 94 USPQ2d 1645, 1660 (TTAB 2010), aff’d, 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011) (quoting Gillette Can. Inc. v. Ranir Corp., 1768, 1774 (TTAB 1992)). "In other words, for the absence of actual confusion to be probative, there must have been a reasonable opportunity for confusion to have occurred." Id.

The Board pointed out that, unlike the analysis under the second, third, and fourth DuPont factors, the Board must consider the actual marketplace conditions to determine whether a reasonable opportunity for confusion has occurred. The Board concluded that, in light of the differing channels of trade employed by the parties, and the "very low" level of petitioner's sales ($6,246 gross sales in 2019), there had not been such a reasonable opportunity for confusion to occur during the four years of concurrent use of the parties' marks. Therefore, the eighth DuPont factor was neutral.

Conclusion: Finding that the first, second, third, and fourth DuPont factors weighed in petitioner's favor, while the sixth, seventh, and eight factors were neutral, the Board concluded that petitioner proved by a preponderance of the evidence that confusion is likely. And so, the Board granted the petitions for cancellation.

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TTABlogger comment: I don't see why the likely presence of "reverse confusion" makes this case worthy of precedential status. It's still the same DuPont analysis, which is fairly mundane here. Anyway, do you think confusion would occur in the real world?

Text Copyright John L. Welch 2021.