TTAB Affirms Section 2(d) Refusal of NUDE X for Cosmetics in view of NAKED X for Hair Care Products

Trademark attorneys would be wise to become familiar with the CAFC's 2018 decision in Detroit Athletic [TTABlogged here]. At the time, I called it "a primer on much of the law of Section 2(d) as applied by the TTAB." It is frequently cited by the Board in recent decisions, including this one. In re BeBella Inc., Serial No. 97281194 (May 2, 2024) [not precedential] (Opinion by Judge Wendy B. Cohen).

Here, in affirming a Section 2(d) refusal of the mark NUDE X for cosmetics in view of the registered mark NAKED X for hair care products, the Board found that, "while somewhat different in appearance and sound, overall the marks evoke similar connotations and commercial impressions." Applicant BeBella failed in its effort to show that NAKED X is a weak mark. "The similarities of the marks, coupled with similarity in goods marketed in the same trade channels to the same classes of consumers" led to the Board conclusion that confusion is likely "resulting from registration of the Application." [Is an Application registered, or a mark? Can registration of a mark cause confusion? - ed.]

Detroit Athletic [which involved the marks DETROIT ATHLETIC CLUB and DETROIT ATHLETIC CO.] was relied on by the CAFC in its recent Naterra opinion [TTABlogged here], wherein the court remanded a case [BABIES' MAGIC TEA and BABY MAGIC] to the Board so that it could "weigh heavily" the first DuPont factor. That remand may have focused the Board's attention on Detroit Athletic, which is cited eight times in this NUDE X affirmance, even for some rather mundane legal propositions, as follows:

• “The second DuPont factor ‘considers [t]he similarity or dissimilarity and nature of the goods or services as described in an application or registration.’” In re Embiid, Ser. No. 8820289, 2021 WL 2285576, at *10 (TTAB 2021) (quoting In re Detroit Athletic Co., 903 F.3d 1297, 1306 (Fed. Cir. 2018) (quoting DuPont, 476 F.2d at 1361)). (p. 4).
  
  
• “[E]vidence … such as whether a single company sells the … [goods] of both parties, if presented, is relevant to a relatedness analysis ….” Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267 (Fed. Cir. 2002); see also Detroit Athletic, 903 F.3d at 1307 (affirming Board’s finding of relatedness of goods and services where the record included marketplace evidence of a single mark for both). (p. 5).
  
  
• While we contemplate the similarity or dissimilarity of the respective goods, we also consider the third DuPont factor, which “considers ‘[t]he similarity or dissimilarity of established, likely-to-continue trade channels.’” Detroit Athletic, 903 F.3d at 1303. (p. 7).
  
  
• The limitation that Applicant’s goods are sold only through its website is not set forth in its identification of goods and so, can form no part of our analysis. Detroit Athletic, 903 F.3d at 1307 (“The third DuPont factor--like the second factor--must be evaluated with an eye toward the channels specified in the application and registration, not those as they exist in the real world.”). (p. 8).
  
  
• We now consider the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. Detroit Athletic, 903 F.3d at 1303." (p.18).
  
  
• Although the marks differ in terms of sound and appearance, this does not alleviate confusion. Charger Ventures, 64 F.4th at 1382 (citing Detroit Athletic, 903 F.3d at 1304-05). (p. 21).
  
  
• Disclaimed matter that is descriptive of a party’s goods is typically less significant or less dominant when comparing marks. Detroit Athletic, 903 F.3d at 1305. (p. 22).
  
  
• The disclaimer of NUDE constitutes a rational reason for giving the term less weight in our analysis. See Detroit Athletic, 903 F.3d at 1305. (p. 23).

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TTABlogger comment: The Board's citation of Detroit Athletic and Naterra is going to make it even more difficult to overcome a Section 2(d) refusal or defeat a claim.

Text Copyright John L. Welch 2024.