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 In re The Lip Bar, Inc., Serial No. 97546404 (August 30, 2024) [not precedential] (Opinion by Judge Robert H. Coggins).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.
posted by John L. Welch @ 9/04/2024
7 comments
7 Comments:
It aint easy to find evidence of the same/similar marks that do NOT cover the respective goods/services, and to add the burden of showing the extent of use is absurd. The examiner's don't have to do that. Argh!!!
VERY easy to find companies that sell both goods on essentially any product. VERY HARD to find the other way around.
All the examiner's citations appear to be VERY large and famous international "fashion" companies that sell a LOT of products. In the Non-TTAB world, most companies do not sell BOTH cosmetics and clothing. The Board is lost in the woods on these issues. They need to be pulled back into the real world.
Like we have seen many times before-- everything is related to clothing by this standard. Just about every company sells t-shirts to promote its primary goods/services. And, yes, some companies even file trademark applications for both clothing and their primary goods/services. This does not make cosmetics and clothing related (or software and clothing, or cars and clothing, or restaurants and clothing). A typical consumer of cosmetics would not be confused when encountering a clothing brand with the same name (with exceptions for famous marks, course). Seems like common sense. This decision is ludicrous.
All the third-party marks are famous brands. Not run of the mill as in this case. Most famous women's clothing brands license for Class 3 goods. Wrongly decided.
Absolutely bonkers. The Board should explain how to locate the evidence it is demanding.
At least both sides should have to live in the real world, or neither. Right now it's just applicants that have to live in the real world.
On what statutory basis do we treat registration evidence offered by an examining attorney and applicant differently. I think 15 U.S.C. 1115 is the only section that is relevant, and it makes no distinction between those two groups. If an examining attorney can cite a registration as blocking with no proof of use or consumer recognition, then an applicant should be able to cite one or more registrations to show a crowded field or to show whether goods/services do or do not commonly come from the same source.
This inconsistent treatment seems like good issue to take to the Fed Cir, perhaps higher if possible.
There was one Fed Cir case that hit on this issue but only in a very (overly) narrow set of circumstances. I suspect the TTAB is trying to ignore that.
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