On Remand, TTAB Again Denies Petition to Cancel BABIE'S MAGIC TEA Registration: Confusion Unlikely with BABY MAGIC for Skincare Products
Back in February 2024, the CAFC vacated the Board's decision denying a petition for cancellation of a registration for the mark BABIES' MAGIC TEA for "medicated tea for babies that treats colic and gas and helps babies sleep better." [TTABlogged here]. The Board had found no likelihood of confusion with the registered mark BABY MAGIC for various toiletry goods (including baby lotion). The CAFC ruled that the basis for the Board's finding as to the second DuPont factor was unclear, that the Board had ignored certain evidence bearing on the third factor, and that it erred in failing to weigh the first factor heavily in favor of Petitioner Naterra. On remand, the Board has again concluded that confusion is not likely, and so it denied the cancellation petition. Naterra International, Inc. v. Samah Bensalem, Cancellation No. 92074494 (December 3, 2025) [not precedential] (Opinion by Judge Mark Lebow).
Second Dupont factor: With respect to the relatedness of the goods, Petitioner Naterra relied entirely on its expert witness, who testified generally about the marketing concept known as "umbrella branding" (in a global sense and not focused on the U.S. market) and what he characterized as "BABY MAGIC’S Natural Zone of Expansion." But his testimony did not include any information about whether the umbrella brands and products he mentioned are sold in the U.S., or that U.S. consumers have been exposed to them.
The Board noted the lack of evidence that consumers would be likely to encounter the specific goods identified in the registrations offered under the same marks in a manner that would lead them to believe they emanate from a common source. And so the Board again found that Naterra failed to show that the goods are related.
Third factor: The Board acknowledged Respondent Bensalem's admission that the channels of trade for the involved goods are similar, and that she sells her BABIES’ MAGIC TEA to “parents of babies and caregivers of babies” - the same customers of Petitioner’s BABY MAGIC products.
First factor: The Board noted that in its prior Decision, it found that “the marks BABY MAGIC and BABIES’ MAGIC TEA are more similar than dissimilar in appearance, sound, connotation and commercial impression.” Here, it "stand[s] by that finding." "While the marks share common elements (“BABY/BABIES” and “MAGIC”), they are not identical or highly similar, as the addition of “TEA” and the possessive form create distinctions in appearance, sound, and overall commercial impression that moderate their similarity."
Balancing the Factors: Mindful of the CAFC's directive that the first factor should weigh heavily in favor of the petitioner, the Board found the marks to be "more similar than dissimilar," but it did not find the marks to be "highly similar or identical." "We thus weigh the first factor of similar marks heavily in our analysis and in favor of concluding confusion is likely, but it does not deserve dispositive weight." [emphasis added). It also weighed the third factor of similar trade channels in favor of likelihood of confusion.
However, the Board weighed the lack of relatedness of the goods under the second factor "heavily" "against concluding that confusion is likely." It found Naterra’s BABY MAGIC mark to be somewhat conceptually weak and lacking in demonstrated commercial strength, and so the fifth factor weighed against a likelihood of confusion. The fourth, sixth, eighth, tenth, and twelfth DuPont factors were deemed neutral.
On balance, the differences in the goods, coupled with the conceptual weakness of the marks, outweigh the similarity of the marks and trade channels. As the Federal Circuit has recognized, even where marks share similarities, the absence of a demonstrated relationship between the specific goods can preclude a finding of confusion.
Concluding that confusion is not likely, the Board denied the petition for cancellation.
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TTABlogger comment: Seems to me that the Board got it right. FWIW: I don't think the first factor should weigh heavily in Naterra's favor.
Text Copyright John L. Welch 2025.
posted by John L. Welch @ 12/05/2025
3 comments
3 Comments:
I’m not so sure about this outcome. If the marks were BABY MAGIC and BABY MAGIC TEA, I think the plaintiff would win. There is not much difference in sound, appearance and connotation even with the plural possessive, and the defendant has just added a generic term. Unlike the Board, I think the marks are “highly similar.” Even so, the Board says this first factor of similarity of the marks weighs “heavily” in favor of likelihood of confusion. And the defendant admitted that the channels of trade are similar. Also, we don’t have a situation here of an overly aggressive plaintiff (like Monster Energy, for example). If this were an ex parte appeal, I probably would not raise an eyebrow. But here we have a plaintiff who is trying to protect its registered mark and who reasonably believes that confusion is likely. I think I would grant the petition.
This is inconsistent with the increasing examination trend I am seeing of class 3 toiletry goods and class 5 nutritional supplements being considered related and issuing 2d refusals for similar marks comparing those goods. The reasoning described in this summary of the opinion sounds like a "something more" type analysis for goods which has thus far been limited to goods v. services (inexplicably).
No doubt mark similarity is an important factor. It carries a lot of POTENTIAL weight because it, of all the factors, most directly assesses the core issue. But shouldn't how “heavily” it weighs in one direction or the other really depend on how similar or different the marks are overall? If the similarities/differences are, say (to assign it a number for discussion purposes), 60/40, then it would seem to make sense that the total potential weight gets split on the scales 60/40. That is not going to net-out weighing as “heavily” in favor of confusion as it would if the marks are much more similar than dissimilar, say, 90/10. The 90/10 net weight should more heavily favor confusion. And with identical marks, 100% of the factor's potential weight favors confusion. It seems inaccurate to treat it, as the Federal Circuit seems to have done in its decision here, as "winner-takes-all" the total heavy weight irrespective of the degree of similarity/dissimilarity .
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