Broad Identification Encompasses Niche Market: TTAB Affirms 2(d) Refusal

Overview

In this appeal, the Applicant attempted to argue that his mainstream fashion and retail services occupied a completely different marketplace than the cited mark, which was associated with an adult-oriented novelty shop. However, because the cited registration included "leather clothing" and retail services without specifying an "adults-only" channel of trade, the Board found the goods and services to be legally identical or overlapping, regardless of how the Registrant actually conducted business in the real world.

Background

The Applicant filed an application seeking to register the mark FUNTASYA in standard characters for clothing (including shirts, pants, hats, shorts, jerseys, and hoodies) in Class 25, alongside various retail and wholesale online store services in Class 35 featuring clothing, fashion accessories, party decorations, and stationery.

The Trademark Examining Attorney refused registration under Section 2(d) of the Trademark Act, citing a likelihood of confusion with the mark FUNTASIA THE ADULT SHOP ("THE ADULT SHOP" disclaimed). The cited mark is registered for retail, online retail, and wholesale store services featuring adult products, videos, DVDs, magazines, toys, novelties, lingerie, and leather clothing in Class 35.

After the final refusal and a denial of the request for reconsideration, the appeal proceeded to the Board for a final determination.

How the Board Analyzed the DuPont Factors

DuPont #1: Similarity or Dissimilarity of the Marks

The Board began its analysis by considering the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression. The Board noted that the core issue was not whether the marks could be distinguished in a side-by-side comparison, but whether their overall commercial impression was sufficiently similar to create a likelihood of source confusion. As the Board emphasized, consumers normally retain a general rather than a specific impression of trademarks due to the fallibility of memory.

In comparing the two marks, the Board identified FUNTASIA as the dominant element of the cited mark. FUNTASIA is the first literal element and appears in a font significantly larger than the phrase THE ADULT SHOP. Furthermore, the disclaimer of "THE ADULT SHOP" served as an implicit concession that the phrase was descriptive, thereby according it less weight in the likelihood of confusion analysis.

The Board found the Applicant’s mark, FUNTASYA, and the dominant word, FUNTASIA, in the cited mark to be nearly identical. Regarding appearance, the Board observed that average consumers with a general recollection would be unlikely to remember the single-letter difference (the "y" versus the "i") in the final syllable. Because the Applicant sought registration in standard characters, the mark could also be displayed in a font style similar to the cited mark, further increasing visual similarity.

Turning to sound, the Board classified both FUNTASYA and FUNTASIA as coined terms. Citing the established principle that there is no single "correct" pronunciation for a non-recognized word, the Board found that the two terms would likely be pronounced substantially the same. This similarity took on added weight given consumers' "universal habit" of shortening full mark names for brevity or haste. In practice, consumers might drop the non-distinctive phrase "THE ADULT SHOP" entirely when referring to the registrant's services.

Regarding meaning and commercial impression, the Board took judicial notice of the dictionary definition of "fantasia" (a free instrumental composition or a work in which an author’s fancy roves unrestricted). Both marks, the Board found, called to mind the words "fantasia" and "fantasy." While the Board acknowledged the Applicant’s argument that "THE ADULT SHOP" added a sexual connotation to the cited mark, it determined that both marks still shared a general commercial impression related to a "fun fantasia." Even if consumers viewed the terms as having no particular meaning, the nearly identical nature of the coined terms would still lead to a similar perception of source.

The Board concluded that the marks were overall similar and that consumers familiar with the cited mark might easily perceive FUNTASYA as a variation or line extension from the same producer.

DuPont #2: Relatedness of the Goods and Services

The Board next addressed the second DuPont factor: the similarity or relatedness of the goods and services. A critical threshold issue was the Applicant’s argument that the Registrant’s services were limited to a "highly niche and idiosyncratic field" of the adult industry. The Applicant contended that adult e-commerce businesses operate in a uniquely regulated environment with stringent age-based restrictions and access controls, thereby segregating them from mainstream retail.

However, the Board rejected this reasoning, emphasizing that its determination must be based strictly on the identifications of goods and services as set forth in the application and registration. The Registrant’s identification included "retail store and online retail store and wholesale store services featuring... leather clothing." Because this identification contained no limitations regarding trade channels, specific consumer demographics, or age-verification requirements, the Board refused to read such restrictions into the record based on extrinsic evidence of how the registrant actually used the mark in the marketplace.

When comparing the goods and services, the Board treated the multi-class application as the equivalent of separate applications. For Class 25, the Applicant sought registration for "clothing, namely, shirts, pants, hats, shorts, jerseys, hoodies." The Board found this identification broad enough to encompass "leather shirts and pants." Consequently, because the registrant offered retail and wholesale services featuring "leather clothing," a clear overlap existed. The Board cited precedent establishing that likelihood of confusion is often found when a mark for goods is similar to a mark for retail services that customarily vend those same types of goods.

For Class 35, the Applicant’s services included "retail online store services featuring clothing; retail and wholesale online store services featuring clothing." The Board determined these services were broad enough to encompass the registrant's services featuring leather clothing. Therefore, the Class 35 services were legally identical in part. The Board reiterated that it is sufficient for a finding of likelihood of confusion if relatedness is established for any single item encompassed within a broad identification.

DuPont #3 : Similarity of Trade Channels and Consumers

Under the third and fourth DuPont factors, the Board examined the similarity of trade channels and the conditions under which sales are made. The Applicant argued that the "adult niche" was legally mandated to ensure customers verify their age, creating a "deliberate pause" in the consumer experience that would prevent confusion.

The Board dismissed these arguments, holding that because the identifications of the services were in-part identical and contained no restrictions, it must presume the services travel through the same channels of trade to the same classes of purchasers. The Board noted that even if it were to consider the "real world" distinction between a mainstream shop and an adult sex shop, an overlap in consumers would still exist. Consumers who shop at adult stores are also members of the general public who shop at mainstream retail stores for ubiquitous, everyday products like clothing.

DuPont #4: Purchaser Sophistication

The Applicant argued that "it is self-evident that the respective purchasers of Applicant’s and Registrant’s goods and services exercise entirely different levels of discernment." However, the Board found this argument unavailing because it relied on a restriction (goods sold through an adult sex shop) that is not included in the registrant's identification.

The Board pointed out that the Applicant's own briefing admitted its consumers were "casual" purchasers. Furthermore, the Board noted a lack of evidence that brick-and-mortar adult retailers utilize the same age-verification systems found on websites, and the cited registration was not limited to online services. Ultimately, the Board found this factor to be neutral.

Board’s Decision

The Board concluded that a likelihood of confusion existed between the Applicant’s mark FUNTASYA and the cited mark FUNTASIA THE ADULT SHOP. This determination was based on the similarity of the marks in sound, appearance, and commercial impression, as well as the overlapping and in-part identical nature of the goods and services. The Board found that the first, second, and third DuPont factors weighed in favor of a likelihood of confusion, while the fourth factor remained neutral. No DuPont factor was found to weigh against a finding of confusion.

The Board specifically noted that even if it had credited the Applicant’s arguments regarding trade channel restrictions, the inherent similarities between the marks and the overlapping nature of the clothing goods and services would still lead to the same conclusion.

Accordingly, the Board affirmed the Examining Attorney’s refusal to register under Section 2(d) of the Trademark Act.

The Board's entire analysis essentially ignored most of the Registrant's identification and focused exclusively on "leather clothing." By refusing to read "adult products" into items specifically listed without trade channel restrictions, the Board determined that leather clothing fell squarely within the broad scope of "clothing" in the application.

A potential strategy that could have saved this application would have been to narrow the identification of goods to specifically exclude the items mentioned in the cited registration. While narrowing the scope does not always overcome strong similarities between marks, it can help differentiate the commercial essence of the goods during a relatedness analysis.