TTAB Affirms 2(d) Refusal for Identical Marks and Complementary Cosmetics

Overview

The Trademark Trial and Appeal Board affirmed a refusal to register the mark CHERRY BLOSSOM for a variety of cosmetic face and under-eye powders. The refusal was based on a likelihood of confusion with an existing registration for the identical mark CHERRY BLOSSOM used in connection with false eyelashes.

Notably, the Board dismissed the Applicant's attempt to rely on a coexistence agreement between the Registrant and a third party involving different goods, clarifying that such agreements do not create a presumption of non-confusion for other parties.

Background

The Applicant, filed an application seeking to register the mark CHERRY BLOSSOM in standard characters for various cosmetic powders, including "cosmetic under eye powder," "loose powder for the face and under eye area," and "pressed powder for the face and under eye area" in International Class 3.

The Examining Attorney refused registration under Section 2(d) of the Trademark Act based on two prior registrations. The first was Registration No. 7064782 for the mark CHERRY BLOSSOM for "false eyelashes."

The Applicant appealed the final refusal to the Trademark Trial and Appeal Board.

How the Board Analyzed the DuPont Factors

DuPont #1: Similarity of the Marks

The Board began by evaluating the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression. In this instance, the standard-character marks in both the application and the cited registration were CHERRY BLOSSOM. The Board found the marks identical in all aspects.

The Applicant did not contest this factor in its briefing. The Board observed that when "word marks are identical but neither suggestive nor descriptive of the goods associated with them, the first DuPont factor weighs heavily against the applicant." Because there was no distinction in the visual, auditory, or conceptual nature of the marks, the Board determined that this factor favored a finding of likelihood of confusion.

DuPont #2: Relatedness of the Goods

Under the second factor, the Board analyzed the nature of the goods as set forth in the application and the registration. The Applicant’s goods included various facial and under-eye powders and skin color-correcting liquids, while the Registrant’s goods were false eyelashes. The Board found that these identifications support an "inherent or complementary relationship as both are cosmetic products that consumers use on or around the eyes to enhance their appearance."

The Board emphasized that "complementary or companion use has long been recognized as a relevant consideration" in likelihood of confusion analyses. The Board pointed out that several of the Applicant’s goods are specifically directed to the eye area, such as "cosmetic under eye powder" and "loose powder for the ... under eye area," which aligns with the physical placement of the Registrant's "false eyelashes."

To support the relatedness of the goods, the Examining Attorney provided evidence of at least five third-party uses showing that the same entity commonly provides both types of goods under the same mark. The Board found these examples sufficient to establish that third-party companies commonly sell both types of goods.

The Applicant argued that the Registrant had previously made statements during prosecution of its own mark suggesting false eyelashes were distinct from "general cosmetic goods." Specifically, the Registrant had argued that there was no likelihood of confusion between its eyelashes and a third party’s lip gloss and lipstick. The Board found this argument unavailing, noting that the Registrant's statements focused on lip products, which were not part of the Applicant's identified goods. Furthermore, the Board noted that "the doctrine of 'file wrapper estoppel' does not apply in trademark cases."

The Applicant also pointed to a coexistence agreement between the Registrant and the owner of a mark for lip products. The Board rejected the relevance of this agreement because it was limited to "lip paint, lip gloss, and lipstick" and included a specific limitation involving the use of a house mark not present in the current case. The Board also noted that there was no agreement between the current Applicant and the Registrant, stating that "no presumption can be made" that the Registrant consents to the Applicant’s use without such a document. Consequently, the Board found that the second DuPont factor favored a likelihood of confusion.

DuPont #3: Similarity of the Trade Channels and Classes of Consumers

The third factor involves comparing the trade channels and classes of purchasers. Because neither the application nor the registration contained limitations on trade channels, the Board was required to "presume that the goods travel in all normal channels and to all prospective purchasers for the relevant goods."

The Examining Attorney’s evidence from third-party websites demonstrated that multiple cosmetic companies sell both facial powders and false eyelashes through the same retail outlets and websites. The Board concluded that the trade channels were identical. Additionally, the Board found that the "complementary nature of the goods further supports that there is consumer overlap." Because both sets of goods are marketed to general consumers of cosmetics, the Board determined this factor also favored a likelihood of confusion.

DuPont #4: Conditions of Purchase and Purchaser Care

Regarding the fourth factor, the Board considered whether the goods were subject to "impulse" or "sophisticated" purchasing. The Examining Attorney argued that the products were relatively low-priced and thus subject to a lower standard of care.

The Applicant countered that false eyelashes are "specialized products bought by skilled consumers who use heightened scrutiny" due to the technical requirements and potential risks of application. The Board took a nuanced view. While acknowledging the low price points, the Board observed that the evidence showed consumers consider specific attributes such as "coverage and finish preferences," "skin type," and "color" for powders, and "method of application," "style type," and "lash fullness" for eyelashes.

Because these considerations influence buying decisions, the Board found that the goods are "less subject to impulse buying." Therefore, the Board concluded that this factor was neutral or, at best for the Applicant, slightly weighed against a likelihood of confusion.

DuPont #8: Lack of Actual Confusion

The eighth factor examines the length of time of concurrent use without actual confusion. The Applicant argued that the marks had coexisted in the marketplace for over two years without incident. However, the Board found this argument lacking in evidentiary support.

The Board noted that "assertions of fact in a brief are not evidence" and the Applicant had failed to provide any declaration or testimony to support the claim of coexistence. Furthermore, the Board stated that in an ex parte context, there is no opportunity to hear the Registrant’s perspective on actual confusion. The Board also observed a lack of information regarding the actual market conditions, such as the geographic scope of sales or marketing activities, which would be necessary to determine if there was a meaningful opportunity for confusion to occur. As a result, this factor was deemed neutral.

Board’s Decision

The Board concluded that a likelihood of confusion existed and affirmed the refusal to register the mark CHERRY BLOSSOM. The Board’s decision was primarily driven by the identical nature of the marks and the complementary relationship between cosmetic facial powders and false eyelashes. The Board found that the similarity of the goods, identical trade channels, and consumer overlap outweighed the neutral factors of purchaser care.

Although the Applicant was unsuccessful, cases like this one are worth examining because they showcase creative arguments. For example, the Applicant tried to use the Registrant's prosecution history as a limiting factor, which I thought was an intriguing move, even though it didn't work here because the goods were different. This raises a broader question: would this argument have had teeth if the goods were similar, or is "prosecution estoppel" making this argument dead on arrival in trademark cases, as footnote 21 suggests?

Also, could the Applicant have successfully argued that the goods are complementary but not related, as in In re ATMAX Equipment Co.?

The consumer sophistication factor offers another angle of attack. For the fourth DuPont factor addressing the sophistication of consumers, the Board found the factor to be neutral or only slightly against confusion. Could additional evidence make this factor strongly against likelihood of confusion? Many consumers (myself included during my makeup obsession phase) spend considerable time researching products before purchasing, watching tutorials and product reviews. Additional consumer declarations demonstrating this deliberate, research-intensive purchasing process coupled with brand specialization might have persuaded the Board that sophisticated consumers can distinguish between these offerings, even with identical marks.

I am not saying my strategy would have worked. I just like to think about the what-ifs of the case. No doubt the Applicant faced a significant hurdle of overcoming an identical mark in the same category.