Friday, September 12, 2014

TTAB Finds "SWISSCODE" Not Confusable With "SKINCODE 2 & Design" for Cosmetics

The Board dismissed an opposition to registration of  the mark SWISSCODE for "[s]oap; perfumery, essential oils, cosmetics, hair lotions; dentifrices." finding it not likely to cause confusion with the previously used and registered mark SKINCODE 2 & Design (shown below) for "soaps, cosmetics, all adapted for use on the skin and the scalp." In an earlier procedural ruling [TTABlogged here], the Board had ruled that opposer, which relied only on its pleaded registrations, had made a prima facie showing of likelihood of confusion, shifting the burden of producing evidence to applicant. Third-party registrations and evidence of use sealed the deal for applicant.  Skincode AG v. Skin Concept AG, Opposition No. 91206091 (September 10, 2014) [not precedential].

The Board found the goods to be, in part, identical, and it therefore assumed that the trade channels and classes of consumers for those goods are the same. As to the marks, the Board looked to the sixth duPont factor, the number and nature of similar marks on similar goods, which "involves the notion that as a result of a certain degree of third-party use of similar marks for similar goods, consumers may be able to differentiate between such marks and that confusion is not likely even if the marks contain a common element."

The Board concluded that, because of the points of dissimilarity between the marks, combined with defendant's evidence, the marks are sufficiently different to avoid a likelihood of confusion.

"First and foremost," the marks begin with terms that, although suggestive or descriptive, have very different meanings. The Board noted once again that "it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered." The presence of the subscript "2" in opposer's mark - suggesting CO2 (carbon dioxide) or O2 (oxygen) - further distinguishes the marks.

Applicant submitted numerous third-party registrations for marks containing the word "code." By themselves, these registrations are entitled to no weight on the issue of the strength of the mark because they do not evidence use of the third-party marks. However, applicant buttressed this evidence with printouts or photos of the following marks in actual use on products similar to those involved here: BEAUTY CODE, ARMANI CODE, BIOCODE BEAUTY CARE, CODE SPORT, 3D CODE, COLLAGEN CODE, COWBOY CODE, FACE CODE, YOUTH CODE, and CODE 4. This evidence showed that "the parties in this proceeding are hardly unique in seeking to register and use the term CODE in connection with soap, cosmetics and other skincare goods." Consequently, the fact that this term is found in both marks "has less importance when considering the overall similarity of the two marks."

The Board therefore dismissed the opposition.

Read comments and post your comment here;

TTABlog note:  Third-party registrations alone are considered of no probative value on whether two marks at issue are confusable, absent proof of the nature and extent of the third-party use. Here there was evidence of the nature, but not the extent, of the third-party use, but the Board accepted that evidence. Without the third-party marks, the Board would have been left with a comparison of the two marks alone, and on the previous Rule 132(b)  motion to dismiss it already said that that was not enough.

Text Copyright John L. Welch 2014.


At 9:19 AM, Blogger Pamela Chestek said...

John -- you should write a paper on what kind of evidence the Board accepts as proof of actual use and what it does not, particularly when it comes to online sales. When do they find it probative and when not? When is it not admissible as hearsay? If I go into a store and take photos, is that more or less probative? In the PAGOS DEL REY case the Board didn't find testimony adequate, although perhaps if there had been more specificity it would have been. Some guidance on how to prove actual third-party use would be great, I find it all very confusing.


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