TTABlog Test: Are Perfume and Clothing Related Under Section 2(d)?

The USPTO refused to register the mark shown below for "Perfumery; Bleaching preparations for laundry use; Cleaning, polishing, scouring and abrasive preparations; Essential oils; Non-medicated cosmetics; Non-medicated dentifrices; Non-medicated toiletry preparations," concluding that confusion is likely with the registered mark ASSAF, in standard characters, for "Clothing, namely, hats, caps, and beanies." Applicant argued that its goods have a different nature and purpose than hats and caps, that its goods are expensive and its customers sophisticated and careful, and that its mark focuses on horses, which are used in the branding for exclusive and expensive goods. I suspect you know how this appeal came out. In re Assef Trading Est., Serial No. 98642858 (April 20, 2026) [not precedential] (Opinion by Judge Mark A. Thurmon).

The Board found the marks to be similar in appearance. It acknowledged that the shield design is distinctive and is likely to be noticed and remembered by consumers, but the only English word in applicant's mark is identical to the cited mark. "This type of similarity can lead to consumer confusion, even when one of the marks contains a design element."

The non-Latin script in Applicant’s mark transliterates to ASSAF, so consumers who can read the English word ASSAF and the Arabic script will not find that this script distinguishes the marks, but instead will see the literal elements of the mark as ASSAF ASSAF. For those consumers who cannot read Arabic, the Arabic script will likely be viewed as another design element of the mark, one that does not provide much distinction from the cited ASSAF mark.

Most importantly, according to the Board, "the marks are identical in sound for consumers who do not attempt to pronounce the Arabic script in Applicant’s mark." The word ASSAF has no established meaning in English, but because the same word is used in both marks, the marks will share the same meaning." The additional elements in applican's mark "create a commercial impression somewhat different from that of the cited mark. But the dominant, and sole English literal element, of both marks is the word ASSAF, so the dominant or primary commercial impression created by the two marks will be the same."

The Board noted that if horse designs are in common use for similar goods, as applicant claimed, then the horse element in applicant's mark is less distinctive and less likely to be relied upon by consumers than the other elements of the mark.

Turning to the goods, Examining Attorney Philip Liu submitted evidence that marks used on clothing, including caps and hats, are also often used with perfumes. He also provided thirteen third-party, use-based registrations that identify both perfume (as identified in the Application) and hats or caps (as identified in the cited Registration).

Applicant argues that its goods have a different nature and purpose than hats and caps. While this is surely true—perfumes are not head coverings, as hats and caps are—it is largely irrelevant. Differences of this type might be important for some goods, but as we noted above, the key question here is whether the evidence shows that these different goods are related in the minds of consumers.

The Board found that the goods are related, and so the second DuPont factor supported the refusal.

The third-party use evidence demonstrated that the channels of trade overlap. Applicant's argument that its customers are sophisticated and careful ignored the lack of any limitation in the application as to price or type of customer. "With no limits on the goods, we find that the perfume goods identified in the Application may include products at any price point. Similarly, the hats and caps identified in the cited Registration may include such goods at any price point." Moreover, there was no evidence to support applicant's assertion regarding purchaser care.

Finally, we are required to base our decision “on the least sophisticated potential purchasers.” Stone Lion Capital Partners, 746 F.3d at 1325. We find that the “least sophisticated potential purchasers” of perfumes, hats and caps, which are ordinary consumer goods, are likely to exercise ordinary care in making purchasing decisions, which does not alter the likelihood of confusion. The fourth DuPont factor is neutral.

The Board observed that only the first three DuPont factors were probative in this appeal, and all three supported the Section 2(d) refusal.

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TTABlogger comment: Clothing, jewelry, perfume - all related.

Text Copyright John L. Welch 2026.