TTAB Dismisses Section 2(d) Opposition to HABANA BRISA: not Confusable with HAVANA TAN! for Sun Care Preparations

In this contentious opposition proceeding, two pro se parties ultimately resorted to the Board's Accelerated Case Resolution regime. Opposer Robert W. Beissel alleged that the mark HABANA BRISA was likely to cause confusion with his registered mark HAVANA TAN!, both for sun care preparations (including "sun blocks"). The Board found it unnecessary to decide whether the doctrine of foreign equivalents applied here because "either way, the result under this DuPont factor would be the same -- overall the marks differ in sound, appearance, connotation and commercial impression." Robert W. Beissel v. Ron Rice Quality Suncare Products LLC and HB Suncare LLC, Opposition No. 91276355 (October 14, 2025) [not precedential] (Opinion by Judge Angela Lykos).

The Board found Opposer Beissel's mark HAVANA TAN! (with TAN! disclaimed) to be "highly suggestive" of his products. It therefore concluded that the mark "has some conceptual weakness because suggestive marks, and particularly highly suggestive marks like Opposer’s, fall on lower end of the distinctiveness spectrum than arbitrary or fanciful marks."

As to the marks, "[a]ssuming that U.S. consumers (including those familiar with Spanish) would not translate Applicants’ mark HAVANA BRISA into English but instead 'take it as it is,' see In re Tia Maria, Inc., 1975 TTAB LEXIS 130, at *4, such consumers will immediately notice the significant differences in sound and appearance with Opposer’s mark HAVANA TAN!." "Alternatively, if we assume that that U.S. consumers familiar with Spanish are likely to translate Applicants’ mark as HAVANA BREEZE, we find that the connotation and commercial impression is quite different than that of HAVANA TAN!."

Opposer’s mark consisting of the exclamatory phrase HAVANA TAN! “evokes the beaches of Cuba” near Havana and the glowing tan that can be achieved after vacationing there. On the other hand, the word “breeze” when used as a noun has an entirely different meaning than the word “tan” of “a light gentle wind.”28 Taken together, HAVANA BREEZE conjures images of a soft wind on the beaches near Havana, Cuba.

The Board concluded that the dissimilarity of the marks in sound, appearance, meaning and commercial impression, coupled with the conceptual weakness of the HAVANA TAN! mark (i.e. the first and sixth DuPont factors) outweighed the second and third." We draw this conclusion fully cognizant of the principle that where the goods are partially identical, the degree of similarity between the marks necessary to support a determination that confusion is likely declines."

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TTABlogger comment: The Board admonished the opposer for his ad hominem attacks against Board personnel. That probably didn't help his cause.

Text Copyright John L. Welch 2025.