Weakness of SELF Magazine's Mark Leads to TTAB Dismissal of Opposition to THE SELF PUBLICATION for Art and Literature Presentations

The Board tossed out this opposition to registration of THE SELF PUBLICATION for "Education and entertainment, in particular presentation of works of visual art or literature to the public for cultural or educational purposes," concluding that Opposer Advance Magazine Publishers failed to prove a likelihood of confusion with its registered mark SELF for fitness magazines and for provision of information in the fields of fitness, fashion, exercise, health, nutrition and beauty via electronic means. Although the marks are similar, the weakness of opposer's mark and the lack of proof of relatedness of the goods and services doomed opposer's Section 2(d) claim. Since it failed to prove fame for its Section 2(d) claim, opposer's dilution claims necessarily failed as well. Advance Magazine Publishers Inc. v. Nitashia Johnson, Opposition No. 91267229 (October 13, 2023) [not precedential] (Opinion by Judge Jennifer L. Elgin).

A baker's dozen of third-party registrations for marks containing the word SELF for goods and services related to those of opposer led the Board to conclude that the mark SELF, although inherently distinctive, is "conceptually weak due to its suggestive nature." As to commercial strength, the third-party registrations carried no weight, since there was no evidence of the extent or manner of their use. 

Opposer claimed that the SELF mark is famous, but its proofs fell short. It relied on: the number of monthly unique visitors to the <self.com> website and minutes spent on the site; the number of followers of its social media accounts; the appearance of celebrities on the digital covers of SELF; its accolades and awards; mentions in The New York Times, USA Today, The Wall Street Journal, and The Los Angeles Times; and confidentially-provided consumer revenues and expenditures for “content costs, consumer marketing, and production and distribution costs” from 2019 to 2021, and projected numbers for 2022.

The Board found this evidence to be substantial, but it concerned only recent years and lacked industry context, and the revenue figures were not limited to the United States. "In comparison to the type and amount of evidence found to be persuasive for purposes of demonstrating the renown or fame of a mark, Opposer’s testimony and evidence falls short, and is more in tune with cases where the Board has found marks to have achieved moderate commercial success.

As to the marks, the Board found them "more similar than dissimilar in appearance and connotation . . . as they both suggest a publication that seeks to improve or better oneself."

As to the goods and services, the opposer application is limited to presentation of works of literature and art for cultural and educational purposes. The Board failed to see how applicant's services are related to Opposer’s magazines, information, and videos on a website limited to fitness, fashion, exercise, health, nutrition, or beauty. Likewise, the Board found no overlap in trade channels. 

And so, the Board dismissed the Section 2(d) claim. As indicated, it also dismissed opposer's dilution claim(s) due to its failure to prove fame.

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TTABlogger comment: The Board declared the 4th DuPont factor - the lack of overlap in channels of trade - to be neutral, but it seems to me it should weigh in favor of applicant.

Text Copyright John L. Welch 2023.