Wednesday, August 20, 2014

TTAB Sustains Section 2(d) Opposition: VS vs. VS for Skin Moisturizers

The Board sustained an opposition to registration of the mark shown below left for various organic hair and skin care products, including skin moisturizers, finding it likely to cause confusion with the registered mark shown below right for various personal care products, including body lotions. Both parties stumbled a bit with their proofs, but the similarity of the marks and the overlap in the goods proved to be insurmountable obstacles for applicant. Victoria's Secret Stores Brand Management, Inc. v. Yael Mamroud/Cummins, Opposition No. 91201001 (August 7, 2014) [not precedential].

Applicant argued that her products are different from opposer's because they are "made in Canada, vegan, cruelty free, hypoallergenic, fragrance free, free trade" and furthermore are not unisex, whereas opposer's products are for women only. The Board pointed out, however, that no such limitations appear in the opposed application or cited registration. The Board found the goods to be legally identical, in part: applicant's "skin moisturizers" encompass registrant's "body lotions." Of course, the Board then presumed that the legally identical goods travel in the same channels of trade to the same classes of consumers.

Applicant next argued that her goods are more expensive than opposer's and therefore would be purchased with extra care, but again that argument failed because there were no such limitations as to price in the opposed application or cited registration.

Turning to the marks, both contain the letters "V" and "S," and in strikingly similar fonts. However, the Board noted that its must consider the marks in their entireties. Applicant argued that the inclusion of an ampersand in her mark "changes the sound, appearance, connotation, and overall commercial impression to 'vee' and 'ess,'" thus avoiding a likelihood of confusion. But the Board agreed with opposer that the ampersand in applicant's mark "looks like an afterthought."

[G]iven the relatively small size of the ampersand in relation to the letters "V" and "S," it is more likely that prospective consumers encountering Applicant’s stylized mark will overlook the ampersand, and perceive and pronounce the mark as the acronym "VS" as opposed to "V and S."

The Board consequently found that the letters "V" "S" are the dominant feature of applicant’s mark, and so the involved marks "are far more similar than dissimilar in sound, appearance, connotation and commercial impression."

Opposer pointed to the fame of its VICTORIA'S SECRET mark, asserting that consumers would likely see VS as a shortened version thereof, but applicant correctly pointed out that opposer did not plead ownership of any of its VICTORIA'S SECRET trademarks and so the fame of that mark was irrelevant. Applicant, in turn, claimed that the cited mark is weak in view of numerous VS marks used on similar goods, but she failed to provide any supporting evidence.

Because all of the relevant duPont factors were either neutral or favored opposer, the Board found confusion likely and it sustained the opposition.

Read comments and post your comment here.

TTABlog note:  After reading this decision, I think VS stands for very soporific.

Text Copyright John L. Welch 2014.


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