CAFC Vacates and Remands BABIES' MAGIC TEA Cancellation Denial: TTAB Misapplied the DuPont Factors

The CAFC vacated the Board's decision [here] denying a petition for cancellation of a registration for the mark BABIES' MAGIC TEA for "medicated tea for babies that treats colic and gas and helps babies sleep better." The Board found no likelihood of confusion with the registered mark BABY MAGIC for various toiletry goods (including baby lotion). The CAFC ruled that the basis for the Board's finding as to the second DuPont factor was unclear, that the Board had ignored certain evidence bearing on the third factor, and that it erred in failing to weigh the first factor heavily in favor of Petitioner Naterra. Naterra International, Inc. v. Samah Bensalem, 2024 USPQ2d 293 (Fed. Cir. 2024) [precedential].

The Board concluded that the marks were "more similar than dissimilar," but gave "particular weight" to the lack of "probative evidence showing the relatedness of the parties’ respective goods, . . . coupled with the somewhat weak inherent nature of [Naterra’s] BABY MAGIC mark, [and] the lack of demonstrated commercial strength (let alone fame) and similar trade channels."

With regard to the second DuPont factor (the similarity and nature of the goods), the Board rejected Naterra's expert witness testimony regarding other "umbrella" baby brand companies that purportedly sell both baby skin care products and baby ingestible product, as “unsupported by underlying evidence.” The CAFC, however, deemed this testimony to be "pertinent to the relatedness of the goods." Moreover, Respondent Bensalem's counsel admitted at oral argument that third-party evidence is "absolutely very relevant."

Because the court could not discern "whether the relevant evidence was properly evaluated" it remanded to the Board "for further consideration and explanation of its analysis under this factor."

As to the third DuPont factor (the similarity of established trade channels), the Board ignored Bensalem's admission response that stated that both parties "utilize similar channels of trade in connection with the trademarks." Noting that the Board did not identify any evidence showing a lack of similarity in trade channels, the CAFC again vacated and remanded for further proceedings, directing the Board to consider "all relevant evidence related to the second and third DuPont factors."

The Board also erred in failing to weigh the first DuPont factor (the similarity of the marks) "heavily in favor of a likelihood of confusion finding." The court found instructive its holding in Detroit Athletic, in which it found that the lead words of the marks DETROIT ATHLETIC CLUB and DETROIT ATHLETIC CO. "are their dominant portion and are likely to make the greatest impression on consumers." As in Detroit Athletic, "the first DuPont factor should 'weigh[] heavily in the confusion analysis.'"

We conclude the Board erred in weighing the first DuPont factor and failed to address relevant evidence concerning the third DuPont factor. We also cannot discern whether the Board properly addressed relevant evidence concerning the second DuPont factor. Accordingly, we vacate the Board’s decision and remand for further proceedings consistent with this opinion.

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Text Copyright John L. Welch 2024.