TTABlog Test: Are Cosmetics Related to Bottled Water for Section 2(d) Purposes?
Givn Goods opposed IBMG's application to register the mark GIVN for various cosmetics and for online retail store services in the field of cosmetics, alleging a likelihood of confusion with its identical mark, registered for "Bottled drinking water; Distilled drinking water; Drinking water; Drinking water with vitamins; Drinking waters; Purified bottled drinking water." The involved goods are relatively inexpensive and there are no limitations as to channels of trade or classes of consumers. But are the goods related? That was the question. Givn Goods, Inc. v. IBMG, LLC, Opposition Nos. 91281529 & 91281530 (February 18, 2025) [not precedential] (Opinion by Judge Cynthia C. Lynch).
Applicant IBMG argued that the mark GIVN will be perceived as the word "given," which is "highly suggestive because it 'convey[s] Opposer’s mission to help consumers ‘give’ to others in purchasing Opposer’s GIVN water, suggesting Opposer’s buy-one, give-one business model.'" The Board was unimpressed:
[N]othing about GIVN or “given” describes or suggests anything about Opposer’s identified drinking water. The fact that Opposer has chosen to market the water by promising a donation for each bottle of drinking water purchased does not mean that GIVN or “given” conveys anything about the identified goods.
The Board found opposer's mark to be "an arbitrary and conceptually strong mark with an ordinary degree of commercial strength, and that strength has not been contracted through third-party use of the same or similar marks on similar goods."
With regard to the relatedness of the goods, opposer pointed out that "Evian, a sub-brand of Danone, an international corporation, sells both bottled water and cosmetics in the form of facial spray," "Aquafina sells both water and cosmetics in the form of lip balm, lip gloss, and lip exfoliants," and"Pepsi sells soft drinks and has applied for several marks to sell cosmetics under their brand."
The Board observed that as to IBMG's online retail services, there was no third-party evidence of the same mark being used for drinking water and for those services and no registrations covering both of those goods and services. Nor are the services related on their face to Givn Goods' drinking water goods. "Therefore, Opposer has failed to establish that Applicant’s Class 35 services and Opposer’s goods are related."
As to IBMG's cosmetics, the Board pointed out that the Evian registration cited by Opposer had been cancelled and therefore lacked probabive value. The Pepsi regitration was for soft drinks, not water, and its applications covering cosmetics were proof only that the applictions had been filed. However, the Evian website evidence and the Aquafina evidence were relevant.
However, with only two third-party use examples and a single live, registered mark (AQUAFINA) for both types of goods, this record falls short of showing that consumers are “accustomed” to encountering drinking water and cosmetics under the same mark, or that entities tend to register the same mark for both goods. This is particularly true here, where the goods and services appear to be so different on their face.
The Board concluded that opposer's evidence was "too sparse" to meet its burden to prove relatedness. The Board was also unable to find that the channels of trade overlap.
In sum, although the "identicality of the marks weighs heavily in favor of likely confusion," Opposer Givn Goods failed to prove the relatedness of the goods and services at issue and failed to prove that they are sold in overlapping trade channels to the same consumers.
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TTABlogger comment: Seems like the right result to me, GIVN the skimpy evidence.
Text Copyright John L. Welch 2025.
posted by John L. Welch @ 2/20/2025
3 comments
3 Comments:
The Board correctly found that the sparse record – two third-party use examples and a single live, registered mark for both types of goods – fell short of showing consumers are “accustomed” to encountering drinking water and cosmetics under the same mark, or that entities tend to register the same mark for both goods, thus saving the applicant from a related goods finding.
Nevertheless, it should be noted that the tendency of entities to “register” the same mark for both goods does not evidence consumer perception or awareness.
Perhaps it is time to rethink the related goods doctrine particularly in ex parte contexts where evidence of consumer perception in the marketplace is absent.
The related goods doctrine is problematic. It relies on assumptions rather than evidence of consumer perception. The doctrine presumes that because some entities register or use the same or similar marks on related goods, consumers will automatically associate those goods as emanating from the same source. However, limited third-party uses and registrations do not establish that consumers are accustomed to encountering goods under a single mark. By failing to require concrete proof of consumer perception, it effectively lowers the threshold for finding a likelihood of confusion.
Furthermore, the USPTO’s application of the related goods doctrine tends to discount any evidence that might demonstrate a more restricted association in the marketplace.
As usual, the Board discounted evidence of third-party uses of the same or similar marks on dissimilar goods as not rendering the opposer’s mark weak. Why doesn’t the widespread use of a mark on other goods fail to demonstrate that consumers are unlikely to perceive the marks at issue as originating from the same source? Doesn’t extensive third-party use also indicate that the natural zone of expansion of the opposer’s mark is limited? Is the Board overlooking the thirteenth Dupont factor, i.e., any other established fact probative of the effect of use?
The related goods doctrine shifts the burden onto applicants to disprove speculative associations without providing sufficient evidence of consumer perception. The speculative related goods approach undermines the predictability of trademark determinations as it predicates holdings of likelihood of confusion on conjecture rather than on demonstrable market realities.
I agree that the Board's refusal to consider registrations for dissimilar goods is wrong. This approach stems from the OMAHA STEAKS case, where the Board refused to consider marks containing the word OMAHA becuase they were for food items other than meat. For example, registrations of marks that include a word like "armour" or "armor" for goods relating to strength or security should be probative of the weakness of that term for clothing.
PS: Why don't you write an article on the "stacked deck" facing Section 2(d) appellants?
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