If you receive a refusal to register your trademark application, it is important to hold an Examining Attorney to its burden of proof. See In re Dileep Essentials Pvt. Ltd., Serial No. 90978154 (May 8, 2024), where the applicant was seeking to register the mark ELLEMENTRY in standard characters for various household goods in eight classes, including flatware, dishes, lamps, rugs, pillows, bath linens, etc. The Examining Attorney refused the application on likelihood of confusion grounds based on two registrations for the marks, ELEMENTRE & Design for cosmetic goods in class 003 including non-medicating skin cleansing preparations, non-medicated soaps, perfumes, essential oils, etc. and E1MENTARY SOAP SIMPLY & Design for body cream soap. The applicant appealed the refusal. The Board reversed the refusal concluding that the second DuPont factor was dispositive, and there was a lack of evidence showing the goods and services were related.
This case is interesting due to the evidence presented by the Examining Attorney. The Board found the Examiner’s evidence to be ineffectual. Regarding the marks, and the first DuPont factor, the Board found the marks to be highly similar based on sight, sound, and connotation. In attempting to prove relatedness, the Examining Attorney submitted web pages from the following retailers, Anthropologie and Urban Outfitters. However, the goods on those web pages were for third party products offered under third party marks. In other words, the brands were not Anthropologie or Urban Outfitters, and there was more than one brand for the goods of interest. Rather, there were differently branded goods sold by one retailer. This evidence may establish that the goods are sold through the same trade channel, (websites operated by third party retailers), and used by the same classes of consumers, but the Board concluded it does not support relatedness of the goods. There is a distinction when one retailer sells the goods of interest, but those goods carry different brand names than the retailer, as we see here with Anthropologie and Urban Outfitters.
The Board held that this type of evidence is more akin to department store evidence as it shows the offering of a wide variety of differently branded goods by a single retailer. It is well established that simply because two different goods can be found in a large retail store, such as a department store, supermarket or drugstore, it is not enough to prove the relatedness of goods. See Morgan Creek Prods., Inc. v. Foria Int’l, Inc., Opp. No. 91173806, 2009 WL 1719597, at *8 (TTAB 2009) citing Recot Inc. v. Becton, 214 F.3d 1322, 1330 (Fed. Cir. 2000). Examining Attorneys who have attempted to produce this kind of evidence as a basis for confusion have been reversed when challenged. See Shoe Factory Supplies Co. v. Thermal Eng’g Co., Opp. No. 91060214 1980 WL 30144, at *9 (TTAB 1980). In addition, the products are listed under different categories and appear on different subpages (e.g., Anthropologie: “Home & Furniture” subpage and “Beauty and Wellness” subpage; Urban Outfitters “Home” subpage and “Beauty” subpage).
See also, In re Mucky Duck Mustard Co. Inc. 6 USPQ2d 1467, 1470 n.6 (TTAB 1988), where two third party registrations, a large department store, Saks & Company and an amusement center, Knott’s Berry Farm were dismissed and not considered probative evidence for similar reasons. Since then, the Board has given little or no weight to third party registrations for house marks or those covering a wide range of goods. In re Gebhard, Serial No. 78950320 (TTAB 2009); In re Tomberlin Prod. Group, LLC, Serial No. 78734308 (TTAB 2007); In re Invivo Corp., Serial No. 78670679 (TTAB 2007). Internet Evidence and third-party registrations covering house marks or designer marks are not persuasive proof for showing relatedness since they show a disparate range of goods.
The Examining Attorney also presented web page evidence from the following fashion designers Louis Vuitton, Gucci, Versace and Aerin. Third-party designer trademarks are well-recognized as covering a wide variety of products, and typically are not good evidence to demonstrate that consumers will perceive the goods of interest as coming from a single source. In the end, the Board held that the lack of relatedness evidence in the record outweighed the similarities of the marks and any overlap of trade channels of the goods, and therefore confusion was unlikely. See our web page entitled, When to Challenge an Examining Attorney on the Relatedness Factor, for more on this topic. Feel free to contact the firm, for a courtesy consultation if your trademark application is refused on likelihood of confusion grounds.