Thursday, April 05, 2012

Test Your TTAB Judge-Ability: Is INVISIBLE for Hair Care Preparations Confusable with INVISIBLE for Cosmetics?

The PTO refused registration of INVISIBLE for hair care preparations, finding it likely to cause confusion with the identical mark, registered for cosmetics. Third-party registrations and Internet use evidence showed INVISIBLE to be a weak mark for cosmetics. On the other hand, even weak marks are entitled to protection. So how would you rule? In re Continental Fragrances, Ltd., Serial No. 77677661 (March 8, 2002) [not precedential].

The Examining Attorney submitted six third-party registrations, owned by three different entities, that covered both hair care preparations and cosmetics. Two website pages offered both types of products. Applicant argued that the number of registrations and websites was too few to be probative, and further that the websites involved retailers offering a wide variety of goods [i.e., the department store argument - ed.].

The Board, however, found the PTO's evidence sufficient to establish that the goods are related for Section 2(d) purposes. The registrations, though few, "clearly list both applicant's and registrant's goods." The websites listed product categories in only limited fields.

Turning to the marks, in both cases "invisible" has an obvious suggestive meaning. However, six third-party registrations for marks containing the word INVISIBLE for cosmetics, and seven website pages using the term "invisible" for cosmetics, rendered the cited mark weak. It is therefore not entitled to a broad scope of protection.

Applicant feebly argued that the trade channels for the goods are different because, although the goods are admittedly sold in the same stores, they are found in different areas of a store. However, it offered no proof in support of that assertion. The Board observed that the involved goods are personal care products used by a consumer on a daily basis. A consumer is likely to buy both types of products and to be exposed to the trademarks of each.

Balancing all the duPont factors, the Board found confusion likely and it affirmed the refusal to register.

TTABlog comment: If your cosmetics are going to be invisible, why wear them?

Text Copyright John L. Welch 2012.


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