TTABlog Test: Are Leather Bags Related to Cosmetics Under Section 2(d)?

The USPTO refused to register the mark HUELLA for leather bags, leather wallets, and similar leather goods, finding confusion likely with the identical mark registered for cosmetics and make-up. The first DuPont factor weighed "heavily" in favor of affirmance, putting the applicant behind (or under) the 8-ball. But what about the goods? How do you think this appeal came out? In re Huella Studio LLC, Serial No. 97751731 (May 7, 2025) [not precedential] (Opinion by Judge Christen M. English).

The Board found "an inherent relationship" between leather bags and cosmetics. "Applicant’s leather bags are broad enough to encompass leather makeup bags for storing cosmetics." "Complementary or companion use has long been recognized as a relevant consideration in determining a likelihood of confusion. In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1567 (Fed. Cir. 1984)."

Moreover, Examining Attorney Ashton Copeland submitted 15 third-party use-based registrations, along with website screenshots showing 11 third parties using a particular mark for both cosmetics and leather bags.

Applicant argued that the cited marks "are famous designer brands that are often associated with 'the practice of designers to licensing their names for a wide variety of goods.'" Because "[t]he Examiner has not cited any evidence that either the owner of the cited mark or Applicant" are designers, Applicant asserted this evidence does not support a conclusion that the goods are similar or commercially related.

The Board agreed that in some cases "the marks of well-known or famous designers may have more limited probative value in demonstrating relatedness because consumers are more cognizant that such designers tend to use their marks on a wide variety of goods. Cf. In re Donnay Int’l, Societe Anonyme, Ser. No. 74160268, 1994 WL 515456, at *1, n.3 (TTAB 1994)."

Here, however, the third-party use evidence corroborates the evidence of inherent relatedness and supports that consumers encounter these inherently related goods in the marketplace in a manner that would lead consumers to believe they emanate from a common source. * * * The third-party use also corroborates the numerous third-party registrations showing that it is common for third-parties to register a single mark for both cosmetics and leather bags.

And so, the Board found that the second DuPont factor supported the refusal to registar.

As to channels of trade and classes of consumers, the application and cited registration contain no pertinent limitations, and so the Board must presume that the goods travel in all normal channels of trade to the usual classes of consumers (the general public).

In this case, the presumption regarding the channels of trade and classes of customers is confirmed by additional evidence, such as the excerpt from the HERMÈS website showing cosmetics sold side-by-side cosmetic bags, as well as six websites showing designer retailers selling both cosmetics and leather bags. Collectively, this evidence supports a finding that the goods are offered in at least one common channel of trade, namely, websites operated by third-party designer retailers.

Concluding that all the relevant DuPont factors supported the refusal, the Board affirmed.

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TTABlogger comment: Are handbags, cosmetics, jewelry, and clothing all related for Section 2(d) purposes? 

Text Copyright John L. Welch 2025.