Precedential No. 28: TTAB Test - Is I'M SMOKING HOT Confusable With SMOKIN' HOT SHOW TIME for Cosmetics?
The USPTO refused registration of I'M SMOKING HOT for cosmetics, makeup, and other personal care products, finding the mark likely to cause confusion with the registered mark SMOKIN' HOT SHOW TIME for cosmetics. FabFitFun appealed, arguing that SMOKIN' HOT is a weak term in light of third-party usage, and therefore that the marks are distinguishable. How do you think this came out? In re FabFitFun, Inc., 127 USPQ2d 1670 (TTAB 2018) [precedential] (Opinion by Judge Peter W. Cataldo).
The Goods:The involved goods overlap, and therefore the Board must presume that those goods (cosmetics) travel in the same trade channels to the same classes of consumers. Moreover, the goods as identified include lower cost make-up items that may be purchased without a high degree of care. All of those du Pont factors favored a finding of likely confusion.
Strength of the Cited Mark: As to the strength of the cited mark, the Board first considered the conceptual strength of "smokin(g) hot." A dictionary definition ("attractive, sexy looking, very hot") led the Board to conclude that "the purpose or intended result of the cosmetics offered under the marks at issue is to render the user's appearance 'smoking hot.'" Thus the term has some conceptual weakness and is at best highly suggestive for cosmetics.
As to marketplace strength, applicant submitted screenshots showing ten third-party uses of SMOKIN' HOT formatives as marks for cosmetics, and particularly eye makeup of various colors and shades. The CAFC held in Jack Wolfskin that "extensive evidence of third-party use and registrations is 'powerful on its face,' even where the specific extent and impact of the usage has not been established." However, FabFitFun's evidence was "more modest" than the amount of evidence in Jack Wolfskin (and Juice Generation).
Nonetheless, the Board found that the shared term SMOKIN' [SMOKING] HOT is "somewhat weak in that it at best suggests a desired result of using the identified cosmetics, while the third-party uses ... tend to show consumer exposure to third-party use of the term on similar goods."
In sum, the Board found the term SMOKIN' HOT to be "somewhat weak." The entire mark SMOKIN' HOT SHOW TIME, however, was not shown to be either particularly strong or weak.
On balance, we do not believe that, on this record, the relative strength of the cited mark in its entirety weighs significantly one way or the other. Rather, the relative weakness of the component term SMOKIN’ HOT common to both marks weighs somewhat in favor of a finding of no likelihood of confusion.
Comparing the Marks: The only common element is the term SMOKIN HOT/SMOKING HOT, a term that is a weak source identifier in the field of cosmetics. The differences in structure between the two marks renders them "only somewhat similar in sound and appearance." The connotations and overall commercial impressions of the two marks "are more different than they are similar."
While both generally connote attractiveness or sexiness due to the shared component SMOKIN’ HOT/SMOKING HOT, Applicant’s mark in its entirety conveys the impression of a statement regarding one’s personal appearance and the registered mark conveys sexy entertainment.
Considering the marks in their entireties, the Board found the marks to be more dissimilar than similar, and therefore the first du Pont factor weighed in favor of applicant.
Conclusion: Because of the overall differences between the marks and the weakness of the shared term, the Board concluded that confusion is not likely, and so it reversed the Section 2(d) refusal.
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TTABlog comment: Not sure why this is precedential.
Text Copyright John L. Welch 2018.
posted by John L. Welch @ 8/29/2018
4 comments
4 Comments:
Here the Board properly applied established precedent that "we must consider the mark as registered or applied for in its entirety . . . . In this case, registration has been refused based on the mark in the cited registration, not on any variation of it that the registrant or its customers may in fact use. Therefore, in determining whether confusion is likely we limit ourselves, as we must, to a comparison of the applied-for mark with the registered mark." (pp. 12-13)
This is what I was talking about a few months back (http://thettablog.blogspot.com/2018/05/ttab-test-which-of-these-three-section.html#c2763315480232374397) when the Board did not limit itself to evaluating the applied-for mark. Instead, it relied in part on "a page from Applicant’s website, showing that in other versions of the mark, Applicant emphasizes the GARRIDO surname," and based in part on that website, found that "it is likely that when recalling Applicant’s wine, consumers will focus on the surname 'Garrido.'"
The last precedential reversal of a 2(d) refusal was in 2015 (Allegiance Staffing) so we're overdue for one. I don't know why this is precedential either, but I am definitely seeing a trend here that allows me to be much more confident making the "weak mark" argument (e.g. the recently TTABlog(ged) case where 12 third party regs. did the trick). Maybe it's precedential to solidify this as more than a trend. Probably a result of Juice Generation. The Board got the message loud and clear.
Seems that Jack Wolfskin and Juice Generation come up in every 2(d) appeal. Here, I think, the inherent weakness of SQUEEZE allowed the Board to rely on fewer third-party registrations that it usually requires.
Regarding the opinion being designated as precedential, the USPTO has a bad system here. It aims to meter out precedential decisions at a regular rate. For that reason, it reaches to make garden-variety opinions precedential at times and, at other times, it fails to make precedential groundbreaking opinions. That needs to get changed. Good luck getting the bureaucracy to change.
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