TTABlog Test: Are Sexual Arousal Supplements Related to Hair Care Products Under Section 2(d)?

The USPTO refused to register the mark MIM, in standard character form, for (inter alia) "supplements for sexual health and enhancing sexual arousal," finding confusion likely with the registered mark shown below, for hair care preparations. The marks are close enough to be confusable, but what about the goods? Are they related? In re UTI Guard, LLC, Serial No. 97295184 (March 25, 2025) [not precedential] (Opinion by Judge Mark A. Thurmon).

Applicant argued that the marks are visually different because of the stylized presentation of the cited mark, but the Board pointed out that Applicant’s standard character mark can be presented in any font, stylization, or size, including in lower case letters with reduced spacing between the letters. Furthermore, the marks are likely to be pronounced in the same way. In short, they are "are highly similar and this fact weighs heavily in our likelihood of confusion analysis." [Why heavily? ed.].

As to the involved goods, the evidence revealed that three Internet retail sites sell erectile dysfunction treatments - "the same as or highly similar to the 'Pharmaceutical preparations and substances, namely, natural, herbal, dietary and nutritional supplements for sexual health and enhancing sexual arousal' identified in the subject application - as well as shampoos and conditioners, as part of their hair loss treatment products, all under a single mark. A fourth website offers vaginal lubricant - similar to the "vaginal moisturizers" in the application - and hair loss treatments for women, including shampoos and conditioners.

This evidence "also shows a business focus on treating sexual arousal issues in men and hair loss for men. We find this connection important because the hair loss treatment side of the business is very likely to sell shampoo and conditioner. The evidence of record confirms that this business focus is shared by at least three third parties."

[I]t is at least somewhat common for a business to offer both sexual arousal treatments and shampoo and conditioner under a single brand. These businesses cater to men and women with hair loss and sexual arousal or other sexual-activity-related issues.

In addition, there was evidence of third parties selling general purpose supplements and vitamins as well as shampoo and/or conditioner under the same mark

The Board agreed with the applicant that its consumers will exercise "a little more care than an ordinary consumer making an ordinary purchase." Although this factor favored applicant, it did not outweigh the first two DuPont factors.

And so, the Board affirmed the refusal to register.

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TTABlogger comment: Is the deck stacked against the Section 2(d) appellant. Is it just too easy to show relatedness between goods? Are three websites enough?

Text Copyright John L. Welch 2025.