TTAB Reverses Section 2(d) Refusal of NAMASTE COUTURE BY APRIL STOLF over NAMASTE for Jewelry

The Board reversed a Section 2(d) refusal of the mark NAMASTE COUTURE BY APRIL STOLF, finding confusion unlikely with the registered mark NAMASTE, both for jewelry. The Board found the registered mark to be weak in view of numerous third-party uses, and the two marks more dissimilar than similar. However, it upheld the Office's requirement that the applicant disclaim the word COUTURE. In re Namaste Couture LLC, Serial No. 97652794 (August 19, 2024) [not precedential] (Opinion by Judge Peter W. Cataldo).

Based on use by Hindus in South Asia, the Board found that the word "namaste" "may suggest an expression of respectful greeting on the part of the wearer" and therefore "may have a small degree of inherent conceptual weakness in connection with jewelry and on its face is at worst mildly suggestive when used in connection with such goods." [Really? - ed.].

As to marketplace strength, the evidence showed numerous uses of "namaste" both as ornamentation and/or as a source identifier.

While Applicant has not presented specific evidence concerning the extent and impact of these uses, it nevertheless presented extensive evidence of these third-party marks and ornamental uses in internet commerce for the jewelry identified in the cited registration. “Evidence of third-party use of similar marks on similar goods is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection.”

The Board concluded that the word "namaste" is "quite weak" as a formative, and that "consumers of jewelry will look not just to the NAMASTE component of Applicant’s mark to identify and distinguish the source of the goods, but also to the other parts of the marks, particularly the phrase BY APRIL STOLF in Applicant’s mark, which identifies the designer."

Comparing the marks in their entireties, the Board concluded that the additional wording COUTURE BY APRIL STOLF distinguishes applicant’s mark from the registered mark "in appearance, sound, and, to a lesser extent, in meaning, with the result that the marks are more dissimilar than similar in overall commercial impression."

Turning to the disclaimer requirement, the Board found that the term “COUTURE” immediately describes a feature or characteristic of applicant’s custom-made and handmade jewelry, namely, that it is unique, hand-crafted and of superior quality.

Applicant argued that NAMASTE COUTURE is a unitary term, but the Board was unconvinced. It noted that the two words are not alliterative, nor are they connected physically or by design features. And there was no evidence that consumers would view the terms NAMASTE COUTURE as inseparable from one another or as creating an additional meaning beyond that of the component terms. Nor is the term incongruous or a double entendre.

And so, the Board upheld the disclaimer requirement but allowed the applicant thirty days within which to submit the required disclaimer. 

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TTABlogger comment: Do you remember Joe Namaste when he quarterbacked the New York Jets?

Text Copyright John L. Welch 2024.