TTABlog Test: Are Nail Polish Strengtheners Related to Dietary Supplements?

The USPTO refused to register the mark TRI-FLEX TECHNOLOGY for "nail care preparations, nail strengtheners, non-medicated nail treatment preparations for cosmetic purposes, nail polish, nail color gels, nail lacquers, none of the foregoing containing collagen" [TECHNOLOGY disclaimed], finding confusion likely with the registered mark shown below, for "dietary supplements for humans containing Types I, II, and III Collagen." Are the marks confusable? Are the goods related? How do you think the appeal came out? In re Wella Operations US, LLC, Serial No. 97401927 (February 20, 2024) [not precedential] (Opinion by Judge Albert J. Zervas).

The Marks: The Board found TRI-FLEX to be the dominant element in both marks. The design in the cited mark, having "three sections of curved, flexible arms," reinforces the term TRI-FLEX. [Flexible? - ed.]. The term COLLAGEN is "generic in the context of the goods," and so it "plays a much lesser role than TRI-FLEX in the mark’s commercial impression." The Board therefore found the marks to be similar "in sound, meaning, appearance and commercial impression." [Sound? Appearance? - ed.].

The Goods: The Board focused on "nail care preparations” not containing collagen, in applicant's identification of goods. It observed that "collagen is an important contributor to nail strength; that supplements, including collagen supplements, are taken to improve nail strength." The evidence established that "consumers will consider both Applicant’s and Registrant’s goods when wanting to strengthen fingernails."

Moreover, third-party websites showed that "the same entity provides nail care products and treatments and collagen supplements and markets these goods under the same mark." The evidence convinced the Board that the goods are related.

As to channels of trade, the Board found persuasive "the FlexiNail webpage offering the involved goods as part of a single package on one webpage, and the Beauty Pie website offering such goods on the same website under the same Beauty Pie brand."

From the identifications and from the Examining Attorney’s website evidence, we find that purchasers of Applicant’s and Registrant’s identified goods, i.e., members of the general consuming public who desire stronger nails, overlap.

Conclusion: The Board concluded that confusion is likely, and so it affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: What do you think? I am unconvinced.

Text Copyright John L. Welch 2024.