TTAB Reverses 2(d) Refusal Based on Grammatical and Structural Dissimilarity

Overview

This case is a TTAB precedent.

The Trademark Trial and Appeal Board reversed a refusal to register the mark I’M SMOKING HOT.

The Examining Attorney had refused registration based on a likelihood of confusion with the registered mark SMOKIN’ HOT SHOW TIME. Although both marks cover identical goods and share trade channels and customer classes, the Board concluded that the marks were sufficiently dissimilar in their entireties to avoid consumer confusion.

Specifically, the Board analyzed the grammatical structure of the competing marks, finding that the different subjects modified by the shared phrase "SMOKING HOT" created distinct commercial impressions.

Background

The Applicant filed an application seeking to register the mark I’M SMOKING HOT in standard characters for cosmetics, makeup, personal care products, and non-medicated skin creams in International Class 3.

The Trademark Examining Attorney refused registration under Section 2(d) of the Trademark Act, asserting that the Applicant’s mark so resembled the mark SMOKIN’ HOT SHOW TIME (registered for “cosmetics, mascara” in Class 3) as to be likely to cause confusion, mistake, or deception.

Following a final refusal, the Applicant appealed to the Board.

How the Board Analyzed the DuPont Factors

DuPont #2 and 3: Relatedness of the Goods, Channels of Trade, and Classes of Consumers

The Board began its analysis by examining the goods as identified in the application and the cited registration. The Board observed that the identifications in both filings were identical as to "cosmetics."

The Examining Attorney supported the relatedness of the goods by submitting website evidence demonstrating that third parties frequently offer cosmetics alongside incense, room fresheners, skin care products, and fragrances under a single mark. While the Board noted that further analysis was unnecessary given the identical "cosmetics" identifications, this evidence established that the other goods in the Applicant's broad Class 3 list were also related to the registrant's cosmetics.

Because the identifications contained no limitations as to trade channels or types of purchasers, the Board presumed that the goods travel through the same channels of trade and are available to the same classes of consumers.

Consequently, the Board found that the factors regarding the relatedness of goods, trade channels, and consumers weighed in favor of a likelihood of confusion.

DuPont #4: Conditions of Sale and Degree of Care

The Board next addressed the conditions under which the goods are purchased. It noted that neither the Applicant’s nor the registrant’s identifications restricted the cosmetics by price. Internet evidence showed various cosmetics offered for sale at price points ranging from approximately $12 to $32. Additionally, evidence indicated that the goods in the cited registration were offered for sale in a foreign market for €1.99, which the Board characterized as a modest price.

The Board concluded that the cosmetics at issue included lower-cost makeup items that could be purchased without a high degree of care. Therefore, the Board found that this factor also favored a likelihood of confusion.

DuPont #6: Strength or Weakness of the term Smokin’/Smoking Hot for Cosmetics

The Examining Attorney provided a dictionary definition of "SMOKING HOT" as meaning "attractive, sexy looking, very hot." The Board found that in the context of cosmetics, the term indicates that the purpose or intended result of the products is to render the user's appearance "smoking hot." Thus, the Board deemed the term conceptually weak and, at best, highly suggestive of the goods.

To further demonstrate this weakness, the Applicant submitted evidence of third-party use of "SMOKIN’ HOT" for beauty products. In total, the Applicant provided ten examples of third-party "SMOKIN’ HOT" formative marks used for cosmetics generally and eye makeup specifically.

The Board acknowledged that while this evidence was not as "extensive" as the "considerable number" found in cases like Jack Wolfskin or Juice Generation, it still demonstrated consumer exposure to the term from multiple sources. The Board also noted that the Applicant provided 18 third-party registrations for "SMOKING HOT" or "SMOKIN’ HOT" for unrelated goods, such as yoga instruction and BBQ videos. However, the Board dismissed these as having little probative value because they did not relate to cosmetics or mascara.

Ultimately, the Board concluded that the shared phrase "SMOKIN’ [SMOKING] HOT" was somewhat weak because it suggested a desired result and was used by multiple third parties.

DuPont #1: Similarity or Dissimilarity of the Marks

The Board conducted a comprehensive comparison of I’M SMOKING HOT and SMOKIN’ HOT SHOW TIME regarding appearance, sound, connotation, and commercial impression.

Appearance and Sound

The Board found the difference between the contraction "SMOKIN’" and the traditional spelling "SMOKING" negligible. However, it highlighted a structural difference: in the Applicant’s mark, "SMOKING HOT" modifies "I’M," whereas in the registered mark, "SMOKIN’ HOT" modifies "SHOW TIME." This structural variation rendered the marks only "somewhat similar" in appearance and sound.

Connotation and Commercial Impression

The Board found that "I’M" combined with "SMOKING HOT" creates a personal declaration that the user is attractive or sexy. Conversely, "SHOW TIME" means the scheduled start of an entertainment event or activity, leading the Board to conclude that the registered mark connotes the "time for sexy entertainment or activity to begin."

While both marks broadly connote sexiness through their shared phrase, the Board concluded that their overall commercial impressions remain distinct. The Applicant's mark asserts a personal statement about physical appearance, whereas the registered mark conveys a sense of sexy entertainment.

Consequently, the Board found that the marks were more dissimilar than similar, weighing against a likelihood of confusion.

Board’s Decision

The TTAB reversed the refusal to register the mark I’M SMOKING HOT. In balancing the DuPont factors, the Board acknowledged that the identity of the "cosmetics" goods and the impulse-buy nature of the products generally favored a finding of confusion.

However, these factors were outweighed by the relative weakness of the shared "SMOKING HOT" component and the overall differences in the appearance, sound, connotation, and commercial impression of the marks when viewed in their entireties. The Board concluded that because of these structural and connotative differences, confusion was not likely between I’M SMOKING HOT and SMOKIN’ HOT SHOW TIME.

Structural differences between marks can heavily influence the analysis of appearance, sound, and connotation. When a mark shares a prominent term with a cited registration, focusing on what that term modifies can yield a winning argument.

Here, the Applicant successfully argued that "SMOKING HOT" modifying the subject "I'M" created a different commercial impression than "SMOKIN' HOT" modifying "SHOW TIME." Highlighting how a shared term functions differently in each mark, one as a personal declaration and the other as an event description, can be a powerful tool for establishing dissimilarity. Similar strategy was seen in this case.