I have once again reviewed the TTAB's FOIA page in an attempt to estimate the
percentage of Section 2(d) likelihood-of-confusion refusals that
were affirmed by the Board during the last calendar year (2018). I
counted 219 Section 2(d) refusals, of which 200 were affirmed and
19 reversed. That's an affirmance rate of 91.3%, or slightly
more than 9 out of 10. [a few percentage points above last
year's rate]. An unanswered question is: how many were
WYHAs?
Two of the Section 2(d) decisions were precedential, involving
the marks I'M SMOKING HOT and AMERICAN CONSTELLATION:
In re FabFitFun, Inc., 127 USPQ2d 1670
(TTAB 2018) [precedential] (Opinion by Judge Peter W. Cataldo).
[TTABlogged
here]. The Board reversed a Section 2(d)
refusal of I'M SMOKING HOT for cosmetics,
makeup, and other personal care products. finding the mark not
likely to cause confusion with the registered mark
SMOKIN' HOT SHOW TIME for cosmetics. As to the
strength of the cited mark, a dictionary definition of SMOKING
("attractive, sexy looking, very hot") led the Board to
conclude that the term has some conceptual weakness and is at best
highly suggestive for cosmetics. As to marketplace strength,
applicant pointed to screenshots evidencing ten third-party uses of
SMOKIN' HOT formatives as marks for cosmetics. Although this
evidence was "more modest" than the amount of evidence in
Jack Wolfskin, the Board found that the shared term
SMOKIN' [SMOKING] HOT is "somewhat weak in that it at best
suggests a desired result of using the identified cosmetics, while
the third-party uses ... tend to show consumer exposure to
third-party use of the term on similar goods." The Board
concluded that the relative weakness of the component term
SMOKIN' HOT common to both marks weighs somewhat in favor of a
finding of no likelihood of confusion. As for the marks,
applicant's mark "conveys the impression of a statement
regarding one's personal appearance and the registered mark
conveys sexy entertainment." The Board found the marks to be
more dissimilar than similar, and it concluded that confusion is
not likely.
In re American Cruise Lines, Inc., 128 USPQ2d 1157 (TTAB 2018) [precedential] (Opinion by Judge Marc A. Bergsman). [TTABlogged here]. Giving "great weight" to two consent agreements, the Board reversed a Section 2(d) refusal of AMERICAN CONSTELLATION, finding the mark not likely to cause confusion with the registered mark CONSTELLATION, both for cruise ship services. The examining attorney maintained that these were "naked" consents because they did not state the steps the parties would take to avoid confusion, but the Board pointed out that such terms, although preferred, are not essential for the consents to have probative value. "[N]o authority requires that parties explicitly agree to make efforts to prevent confusion or to cooperate and take steps to avoid any confusion that may arise in the future as a prerequisite to giving some weight to a consent agreement." The Board found that the second consent agreement was "clothed" because it included four reasons why applicant and registrant believed confusion was not likely. "Clothed"' consent agreements in which "'competitors have clearly thought out their commercial interests' should be given great weight, and the USPTO should not substitute its judgment concerning likelihood of confusion for the judgment of the real parties in interest without good reason, that is, unless the other relevant factors clearly dictate a finding of likelihood of confusion."
The remaining 17 reversals involved the following marks: FIT IN
YOUR GENES; PANACHE; YUMMY'S; CREATE PAINT; AUBURN; CHIPPIE; CU
BEAM; CARAT; MY MIXTAPEZ; TAMAL TAMAYO; LA CHULA & Design;
SQUEEZE JUICE COMPANY; DIY AUTO; PARADYCE; ALLEN HOTEL; and HYDE
NO. 1 PRESIDENTIAL CASK, and GO FRESH.
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