Wednesday, May 12, 2010

TTAB Reverses 2(d) Refusal, Finds "AQ" and "PARADISE MAKEUP AQ" Not Confusingly Similar for Cosmetics

Sometimes the Board's determination under Section 2(d) comes down to a single du Pont factor, regardless of the makeup of the Board panel and despite any cosmetic distinctions made by the losing party. Here the mark AQ was simply too different from the cited mark PARADISE MAKEUP AQ, both for cosmetic/makeup items, to support the Section 2(d) refusal. In re Kose Corporation, Serial No. 77519214 (April 26, 2010) [not precedential].

The Examining Attorney argued that the marks are similar because they "contain the same wording" (AQ). She maintained that AQ should be given greater weight in the 2(d) analysis "because it is the common wording that both marks share [and t]he arbitrary letters 'AQ' and not descriptive or suggestive," and there is no evidence that AQ is weak or diluted. She claimed that consumers are likely to view AQ as a house mark, and will view PARADISE MAKEUP AQ as a product line under the house mark.

Applicant, not surprisingly, urged that PARADISE is the dominant term in the cited mark, since it is arbitrary and appears as the first word in the mark. It also asserted (without evidence) that AQ means "aqueous" in the cited mark but not in the applied for mark.

The Board agreed with Applicant's argument that PARADISE is the dominant element in registrant's mark. Moreover, PARADISE is followed by the word MAKEUP, a generic term, which effectively further emphasizes the first word. "The lettering AQ comes at the end after the generic term and appears almost as an afterthought."

The Board noted that Registrant, in prosecuting the application that resulted in its registration, argued that PARADISE is the dominant element of its mark. Although such prior statements are not determinative, they may be "illuminative of shade and tone in the total picture confronting the decision maker."

And so, finding the differences in the marks dispositive, the decision maker reversed the refusal.

TTABlog note: WYHR? Would you have refused registration in this case?

Text Copyright John L. Welch 2010.


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