By James Juo.

The USPTO may refuse to register a trademark application under Section 2(d) of the Lanham Act if there is a likelihood of confusion with another existing trademark registration under the thirteen-factor test from In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973). The second DuPont factor addresses the relatedness of the goods.

Under the second factor, “likelihood of confusion can be found ‘if the respective goods are related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that they emanate from the same source.'” Coach Servs. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (internal citations omitted). The respective goods need not be “competitive or intrinsically related” to find a likelihood of confusion. Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1737 (Fed. Cir. 2017). This factor weighs in favor of likely confusion when the goods are sufficiently related or when their marketing could lead consumers to the mistaken notion that they come from the same source. Coach Servs., 101 USPQ2d at 1722.

In analyzing the relatedness of the goods, the USPTO looks to the identifications in the application and in the cited registration. See In re Detroit Ath. Co., 903 F.3d 1297, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018); Stone Lion Capital Partners v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014); Octocom Sys., Inc. v. Houston Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). It is sufficient for likelihood of confusion that relatedness is established for any of the goods for which registration was refused. See Tuxedo Monopoly, Inc. v. General Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); In re i.am.symbolic, llc, 866 F.3d 1315, 116 USPQ2d 1406, 1409 (TTAB 2015).

In the recent case of In re Local Holdings, Serial No. 88515551 (TTAB Nov. 17, 2021), the applicant sought registration of its MANSBRAND mark for “Pharmaceutical preparations for treating erectile dysfunction, nutritional deficiencies, and low muscle mass; dietary supplements; erectile dysfunction supplements; male enhancement supplements; herbal supplements; health supplements; health booster supplements; muscle building supplements; and nutraceuticals for use as a dietary supplement,” in International Class 5.

The examining attorney refused registration for most of the identified goods under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on a likelihood of confusion with the prior registered mark MANBRAND SKINCARE (with SKINCARE disclaimed) for “Non-medicated skincare products for men, namely, face wash, face lotion, eye cream, body wash, shampoo,” in International Class 3. This partial refusal did not apply to applicant's pharmaceutical preparations.

The examining attorney submitted evidence demonstrating the relatedness of these goods, including a half-dozen screenshots of websites from third-party retailers that offered both types of goods (i.e., both supplements and skincare products).

Applicant argued that the respective goods are not the same, do not compete with one another, are used in different ways, and serve different functions.

The TTAB, however, held that the evidence of record supports finding the relatedness of the goods in the application and cited registration by showing that consumers are accustomed to encountering such goods offered under the same mark, citing Detroit Ath. Co., 128 USPQ2d at 1050 (crediting relatedness evidence that third parties use the same mark for the goods and services at issue because “[t]his evidence suggests that consumers are accustomed to seeing a single mark associated with a source that sells both”) and Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (stating that evidence that “a single company sells the goods and services of both parties, if presented, is relevant to a relatedness analysis”). “The evidence shows that these products are promoted together as part of a wellness regime that includes skincare and dietary, health, or muscle-building supplements.”

Noting that the examining attorney also relied on seven use-based, third-party registrations that showed a single mark identifying both skincare products, and supplements—the TTAB also held that “[s]uch registrations are relevant to show that the respective goods are of a type that may emanate from a single source under one mark.” See L'Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1140 (TTAB 2012); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993).

The TTAB also found that the applied-for MANSBRAND mark and the cited MANBRAND SKINCARE mark were similar, given their overall resemblance in appearance, sound, connotation and commercial impression, which is the first DuPont factor for finding a likelihood of confusion.

The trademark attorneys at Thomas P. Howard, LLC are experienced in evaluating likelihood of confusion both in the prosecution of trademark applications before the USPTO, as well as in enforcing trademarks or defending against infringement claims in litigation nationwide including in Colorado.