TTABlog Test: Are Clothing Items Related to Bath and Body Care Products Under Section 2(d)?

The USPTO refused to register the proposed mark SUGAR BEACH for "Bathing suits; Beach cover-ups; Beachwear; Body suits; Bras; Dresses; Dresses for swimming; Jogging suits; Shirts; Swimwear; T-shirts; Tank-tops; Tops as clothing; all marketed and sold primarily to retail stores offering clothing and not cosmetics," finding confusion likely with the identical mark registered for "bath care and body care products, namely, bath gels, bath salts, body cleansers, body creams, body lotions, body polish, body scrub, exfoliants for skin, hand cream, shower gel, and liquid hand soap." Applicant Mocean Group argued that the limitation in its identification of goods ensures that the respective customers and channels of trade will not overlap. How do you think this appeal came out? In re In Mocean Group LLC, Serial No. 88716250 (January 22, 2021) [not precedential] (Opinion by Judge Christopher Larkin).

Because the marks are identical, a lesser degree of similarity between the goods is necessary to support a finding of likely confusion. Examining Attorney Andrea B. Cornwell submitted webpage evidence showing that "one or more of the clothing items identified in the application and one or more of the bath and body care products identified in the cited registration are frequently sold under the same mark." The Board noted that in many cases it has found that "women’s clothing and fragrances are closely related, complementary products.”

[T]he record here shows that women’s clothing and bath and body care products are frequently offered under the same mark, including the same house mark. The record suggests that “these products are used together for the same purpose, to enhance physical appeal and create an overall fashion image.” Id. The evidence is “sufficient to persuade us that women’s clothing and [bath and body care products] are commercially related goods.” Id. We find that the second DuPont factor supports a finding of a likelihood of confusion.

With regard to applicant's limitation in its identification of goods - "all marketed and sold primarily to retail stores offering clothing and not cosmetics" - the Board did not agree that this limitation impacts the likelihood of confusion analysis. First, the Board agreed with the examining attorney that this supposed limitation is illusory because the term "primarily" leaves open the possibility that applicant sells to stores that do offer cosmetics. In any case, consumers would not be aware of this limitation. The Board observed that "where products are closely related, merely because the products in fact would not be sold together would not necessarily prevent consumers, when encountering the products in different outlets, from believing the products come from the same source." (quoting Wet Seal, 82 USPQ2d at 1641). The Board concluded that the third DuPont factor was neutral.

The Board found that confusion is likely, and so it affirmed the refusal:

Consumers familiar with the registered mark SUGAR BEACH for bath and body care products who subsequently encounter Applicant’s SUGAR BEACH women’s clothing, in retail clothing stores or elsewhere, could easily believe mistakenly that the cosmetics company has extended its line into women’s clothing.

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TTABlogger comment: Does it make sense for the Board to say. in case after case, that when the marks are identical, a lesser degree of similarity between the goods is needed to support a likelihood of confusion finding? Aren't they separate questions?

Text Copyright John L. Welch 2021.