TTAB Reverses Section 2(d) Refusal of "12 & Design" for Cosmetics Due to Third-Party Registration Evidence
The Board deep-sixed a Section 2(d) refusal to regsiter the mark shown below for "Non-medicated skin care preparations" and for on-line retail store services featuring cosmetics, finding confusion not likely with the registered mark TWELVE COSMETICS for “cosmetics; private label cosmetics" [COSMETICS disclaimed]. In re Metabeauty, Inc., Serial No. 97492557 (January 28, 2025) [not precedential] (Opinion by Judge Karen S. Kuhlke).
The Goods and Services: Third-party websites showed Applicant MetaBeauty’s goods and services, and Registrant’s goods at issue, marketed and sold under a single trademark in the same trade channels and offered to the same classes of consumers.
Weakness of the Number 12: MetaBeauty submitted 10 probative third-party registrations for marks that contain 12 or TWELVE for cosmetics, skin care preparations, or hair care preparations [e.g., TWELVE SPRINGS, 12S, TWELVE12BEAUTE, 12Months Soaps]. "We find these registrations probative of conceptual weakness of the number 12 and TWELVE. Spireon, 71 F.4th at 1363-4 (third-party composite marks relevant to show common segment weak)."
The number 12 or TWELVE suggests a form of measurement: days, months, hours, amount. These various marks with the element 12 or TWELVE coexist for the same or similar goods with varying levels of other elements to distinguish them. Even if we do not count the mark in Chinese characters [in one of the marks] (which creates further distinction), the remaining nine marks tend to show the common element 12, or TWELVE, to be conceptually weak, so we accord it a restricted scope of protection. This factor weighs against likely confusion.
The Marks:Unsurprisingly, the Board found the number 12 to be "more memorable than the green colored curved octagon because it is the name by which consumers will call for the goods." Nonetheless, the Board concluded that "[t]aking the marks in their entireties, . . . the dissimilarities are sufficient to distinguish the marks given the weak nature of the numeral 12 and the word TWELVE in connection with cosmetics, including skin lotion."
Conclusion: And so, the Board reversed the refusal.
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TTABlogger comment: At first blush, I thought this would be affirmed, but on second blush, not so much.
Text Copyright John L. Welch 2025.
posted by John L. Welch @ 1/30/2025
5 comments
5 Comments:
This case is interesting because it shows the number of preexisting registrations (10) that may be acceptable to prove a weak mark. Previous cases seemed to require a higher number of preexisting registrations.
It’s surprising that the Board found the third-party registrations probative of conceptual weakness without requiring evidence of marketplace use.
I think third-party registrations alone can be used to show that a term has a recognized meaning and so is a weak formative. When you are arguing that there is no confusion in light of third-party uses of similar marks (i.e., that concsumers distinguish between similar marks), then I think the requirement of showing manner and extent of use kicks in.
This was a fun one to write and argue before the Board in oral arguments; I am glad the Board realized that close to a dozen registrations where the words in the marks are not identical -- and where the senior-registered mark could not be rendered in the logo used by the applicant -- would be sufficient to show a crowded field.
The Board said that the number 12 or TWELVE suggests a form of measurement (days, months, hours, amount) but it didn’t say anything about what, if anything, that form of measurement says about the goods and services at issue. The reasoning seems conceptually weak (sorry for the pun).
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