TTABlog Test: Is AGAVE BLACK Confusable with BLACK AGAVE ESPECIAL for Skin Care Preparations?

The USPTO refused to register the mark AGAVE BLACK for cosmetics and various skin care preparations containing agave as an ingredient [AGAVE disclaimed], finding confusion likely with the registered mark BLACK AGAVE ESPECIAL for skin care products [BLACK AGAVE disclaimed]. Applicant argued that, in the cited mark, BLACK AGAVE will be seen as a reference to the plant, whereas in its mark, the word BLACK would be seen as a laudatory term, as in Johnnie Walker "Black Label." How do you think this appeal came out? In re Agave and Phoenix, LLC, Serial No. 97504141 (November 7, 2024) [not precedential] (Opinion by Judge Cynthia C. Lynch).

The goods of the cited registration overlap with those in the application, "at least as to 'skin moisturizers,' which is unrestricted and therefore must be construed to encompass all types of skin moisturizers, including those that contain agave." The Board must presume that these overlapping goods travel in the same trade channels to the same classes of consumers.

As to the marks, the file history of the registration indicates that the term BLACK AGAVE was disclaimed not because it referred to the "so-called black agave plant," but because registrant's tanning products "are in the nature of black bronzers made with agave extract."

Nor are we persuaded by the Johnnie Walker analogy, as we see no reason that consumers would perceive BLACK in Applicant’s mark in the same way as the “Black Label” on the Johnnie Walker bottle, nor do we have a basis on this record to discern how consumers perceive the Johnnie Walker “Black Label” reference regardless. In fact, we find the most notable aspect of Applicant’s label shown above to be the prominent use of “Special” (the English translation of the additional term in the cited mark) in close proximity to Applicant’s AGAVE BLACK mark. Overall, we remain unconvinced by Applicant’s argument that consumers would understand BLACK AGAVE and AGAVE BLACK differently in the respective marks.

The Board found the marks to be "similar in appearance and sound because of the shared words AGAVE and BLACK," and the marks’ connotations and commercial impressions "very similar." 

As to the transposition of the words, "the combination of AGAVE and BLACK, regardless of word order, carries the same meaning and commercial impression." The word ESPECIAL "does not add to the connotation or commercial impression of the mark in any significant way that distinguishes BLACK AGAVE ESPECIAL from AGAVE BLACK."

And so, the Board affirmed the refusal.

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TTABlogger comment: Nothing especial here. How did you do? 

Text Copyright John L. Welch 2024.