Thursday, March 28, 2019

TTABlog Test: Are These Two Male Torso-Shaped Perfume Bottles Confusingly Similar?

The USPTO refused registration of the mark shown below left, comprising a bottle in the shape of a male torso, for "Perfumery, essential oils, articles for body- and beauty-care, namely, perfumes," finding it likely to cause confusion with the container design mark shown below right, for "perfumes" (lined for the color blue). The goods overlap, but are the marks confusable? Applicant argued that the torsos are different because "the registered mark consists of a male torso with a slender physique and no penis, while applicant’s mark consists of a muscular physique and penis." How do you think this came out? In re Coscentra B.V., Serial No. 79196465 (March 26, 2019) [not precedential] (Opinion by Judge Lorelei Ritchie).

Of course, because the goods are in-part identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion. Moreover, the Board noted that side-by-side comparison is not the appropriate approach for determining confusing similarity.

Applicant Coscentra expanded on its argument that the "physiques" of the marks are dissimilar by asserting that:

1. Consumers are accustomed to seeing the male form in all forms of media and can see that not all men have the same physique;
2. Applicant’s mark comprises more musculature and definition, with a well proportioned torso, while the registrant’s mark shows a slender upper body and a disproportionately larger buttocks;
3. A penis is not commonly shown in consumer products and applicant’s mark comprises a penis, which prospective consumers are likely to notice; and
4. The arms are cut shorter in the registrant’s mark, but cut longer in applicant’s mark, therefore highlighting broader shoulders.

The Board recognized that there are differences between the marks, but pointed out that it must consider the marks in their entireties. It noted that the mark in the cited registration is "lined for the color blue," while applicant's mark is not limited to a color. Moreover, the cited mark is "clearly a male torso, and is more anatomically correct than Applicant acknowledges."

There was no evidence that the cited mark is weak. Examining Attorney Tina L. Snapp submitted dozens of images of perfume bottles, none depicting a perfume package in the form of a male torso. Moreover, the cited registration issued on the Principal Register without any Section 2(f) claim.

The Board concluded that the marks are "similar in sight, connotation and commercial impression." Furthermore, both marks may be called for by consumers "as a perfume container in the shape of a male torso."

And so the Board affirmed the refusal to register.

comments and post your comment here.

TTABlog comment: Is this scenario likely:? Customer: "Excuse me, salesperson, do you have the perfume in the bottle that looks like a male torso?" Salesperson: "With or without ....?"

Text Copyright John L. Welch 2019.


At 8:04 AM, Anonymous Anonymous said...

Does this mean the first to register a perfume container in the shape of a male torso as a trademark can rely on trademark law to block all subsequent applications or uses of a perfume container in the shape of a different male torso?

At 10:34 AM, Anonymous Anonymous said...

Response to "Anonymous": No, because US TM rights stem from USE, not registration. Had the registrant (or prior user) never registered its torso mark but only USED it as a TM in US commerce, then that prior user would still be able to rely on US TM law to prevent others from using and/or registering a confusingly similar design as a source identifier/TM.

At 2:06 PM, Anonymous Anonymous said...

I think the question was: the first person to "use" a male torso can block ALL other uses of a male torso for similar goods?

These two marks look nothing alike!

At 4:00 PM, Anonymous Anonymous said...

They shouldn't let this detour their marketing/packaging strategy. All they need to do is add arms and that should make this unlikely to cause confusion, hands down!

At 9:53 AM, Anonymous Anonymous said...

FWIW, I am not a consumer of fragrance products, but if someone said "the one in the male torso-shaped bottle" without the added details of the blue coloring or stripes, I would still recognize the cited bottle.

At 2:24 PM, Anonymous mrjazzitup said...

reply to Anon @ 4 pm:
Or... just add some legs and run with that ;-)


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