TTABlog Test: Are Mascara and Clothing Related for Section 2(d) Purposes?

The USPTO refused to register the mark CHEAT CODE for "mascara," finding confusion likely with the registered mark CHEAT CODES for, inter alia, various clothing items (including hats and shirts). The marks are essentially identical and therefore the first DuPont factor weighed heavily in favor of affirmance. But what about the goods? Are they related? Do they travel in the same trade channels? How do you think this came out? In re The Lip Bar, Inc., Serial No. 97546404 (August 30, 2024) [not precedential] (Opinion by Judge Robert H. Coggins).

Examining Attorney David Hutchison, submitted excerpts from ten third-party websites showing clothing companies using the same mark in connection with their own apparel and mascara:ARMANI, AVON, CHANEL, H&M, TOM FORD, DIOR, GUCCI, SAIE, VALENTINO, and ZARA. He also introduced six use-based, third-party registrations showing that the same entity has registered a single mark identifying at least mascara and clothing, as well as 25 third-party used-based registrations of marks identifying “makeup” or “cosmetics” and one or more of the specific clothing items listed in the cited registration. As to the latter group of registrations, the Board must presume that they encompass all such goods, including "mascara."

In response, Applicant submitted 100 sets of printouts from TSDR of third-party registrations purporting to show that the Office has registered the same mark to different parties for the mascara and clothing goods at issue. The Board tossed out at least 38 of them for various reasons.

Applicant argued that it provided more third-party registrations than the Examining Attorney, but the Board noted that the "'the PTO is an agency of limited resources' for obtaining evidence when examining applications for registration; the practicalities of these limited resources are routinely taken into account when reviewing an examining attorney’s action." Furthermore, Applicant provided no evidence regarding the extent of use of these marks, or consumers’ familiarity with them. “[W]here the ‘record includes no evidence about the extent of [third-party] uses . . . [t]he probative value of this evidence is thus minimal.”

The Board concluded that "the Examining Attorney’s third-party evidence is sufficient to establish that mascara and clothing are of a type that commonly originate from the same source under the same mark."

As to channels of trade and classes of consumers, the third-party commercial websites mentioned above, including Dior, Saie, H&M, and Zara, that advertise and offer mascara and clothing under those marks indicate that the goods may be encountered by the same classes of consumers under the same marks in at least two common trade channels - the websites and the physical locations of the companies’ stores. Moreover, the application and cited registration encompass low-priced goods that may be purchased on impulse.

And so, the Board affirmed the refusal to register.

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TTABlogger comment: Note that applicant's third-party registration evidence was minimally probative because of lack of proof of extent of use. No such evidentiary requirement for the Office's third-party registrations.

Text Copyright John L. Welch 2024.