Tuesday, May 14, 2024

Another Section 2(d) Reversal: USPTO Fails to Prove Cosmetics Are Related to Flatware and Other Household Goods

When in rains, it drizzles. The Board reversed a Section 2(d) refusal of the mark ELEMENTARY (standard characters) for various goods and services in eight classes, including flatware, table lamps, desk sets, pillows, dishes, bath linens, rugs, and retail store services featuring household goods, finding confusion unlikely with the mark shown below for "Non-medicated skin cleansing and exfoliating preparations; pads for cleaning impregnated with cosmetics; Nonmedicated soaps; perfumes; essential oils; cosmetics; make-up; make-up removing preparations; lipstick; beauty masks." The Board concluded that "the lack of relatedness of the goods and services outweighs any similarity of the marks for Classes 8, 11, 16, 20, 21, 24, 27 and 35 and any overlap in trade channels for the goods." In re Dileep Essentials Pvt. Ltd., Serial No. 90978154 (May 8, 2024) [not precedential] (Opinion by Judge Cheryl S. Goodman).

The Board found the marks to be "highly similar" based on their visual and phonetic similarities. It observed that "many consumers are likely to perceive both marks to be variations on, or misspellings of, and the phonetic equivalent of 'elementary.'" "In view of the similarities in appearance, sound, and likely similar connotation for many consumers as a misspelling or phonetic equivalent of “elementary,” with the same meaning, we find the overall commercial impressions of the marks to be very similar.

To demonstrate the relatedness of the goods and services, the Examining Attorney relied on webpages from retailers Anthropologie and Urban Outfitters, and from fashion designers Louis Vuitton, Gucci, Versace, and Aerin. The Board was unimpressed. As to the retailers:

We find this evidence does not support a finding of relatedness under DuPont factor two. None of the soap, fragrance or cosmetic/makeup products are offered under the Anthropologie or Urban Outfitters marks but are third-party products offered under third-party marks. This evidence is more akin to department store evidence as it shows the offering of a wide variety of differently-branded goods by a retailer. The landing webpages for these websites also show that these products are offered under different categories and different subpages.

As for the evidence regarding the four fashion designers - Louis Vuitton, Gucci, Versace, and Aerin - the Board was again unimpressed.

Third-party designer marks are well-recognized as covering a wide variety of products, and they are of little value in showing that consumers will perceive the listed goods as emanating from a single source. * * * Outside of the designer mark context, there is no inherent relatedness between soap, perfume, and cosmetics, on the one hand, and cutlery, furniture, flatware, dishes and plates, photo frames, vases, candlesticks, on the other hand, as shown on these webpages.

Applicant Dileep's recited retail store services did not identify soap, cosmetic/makeup, or fragrances, or any of the other goods identified in the cited registration. None of the remaining evidence in the record established the relatedness of Dileep’s retail store services and any of the goods in the cited registration.

As to channels of trade, the webpages showed that these retailers sell the involved goods on their websites, although the various categories of goods are sold on different subpages. The Board found that Dileep’s identified goods are offered "in at least one common channel of trade, that is, the websites operated by the third-party specialty retailers."

The Board concluded that the second DuPont factor was dispositive, and so it reversed the refusal.

Read comments and post your comment here. Nice to see the USPTO's reliance on "fashion designers" pegged back a bit.

TTABlogger comment:

Text Copyright John L. Welch 2024.


At 9:42 AM, Anonymous Anonymous said...

John, where is that hyperlink for proposing that the TTAB make a decision precedential?

At 12:54 PM, Blogger John L. Welch said...


At 6:32 PM, Anonymous Stephen P. McNamara said...

I was particularly happy that the TTAB was receptive to the evidentiary argument put forward that:

"The screenshots obtained by the Examiner of designer brand websites show online shopping carts created by the Examiner to support the refusal. These specially created assemblies of goods in a shopping cart are not evidence a consumer would normally encounter. Although it is a standard technique of Examiners to use screenshots for various reasons in support of a rejection, the use of fabricated evidence specially created to support a rejection is unreasonable and inconsistent with the Federal Rules of Evidence, T.M.E.P. §710.10, and conventions of administrative procedure. ...Online shopping carts are by their nature ephemeral objects that come into being and disappear. The absence of an explanation of the specific search that was conducted and how the resulting items were compiled into a shopping cart that was screenshot and relied on as evidence provides the Applicant with no opportunity to investigate the relied-on evidence and determine what contradictory evidence was omitted from the office action attachments or otherwise rebut the evidence."

The Board concluded that a printout of an online shopping cart is "not probative of how
the consumer encounters the goods on the online marketplace webpages where a
listing of goods is shown, and we do not consider it."


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