Where a trademark application is refused for likelihood of confusion with an existing trademark registration under Section 2(d), one strategy is to argue that the common element establishing similarity between the marks is weak because it is used by others for similar or releated goods or services. “The weaker [a Registrant's] mark, the closer an applicant's mark can come without causing a likelihood of confusion and thereby invading what amounts to its comparatively narrower range of protection.” Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 1338 (Fed. Cir. 2015).
Third-party registrations are relevant to the conceptual strength of a mark because they “‘show the sense in which a mark is used in ordinary parlance,' that is, some segment that is common to both parties' marks may have ‘a normally understood and well-recognized descriptive or suggestive meaning, leading to the conclusion that that segment is relatively weak[.]”' Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 1374 (Fed. Cir. 2015) (quoting Juice Generation, 794 F.3d at 1338; see also In re Box Sols. Corp., Ser. No. 76267086, 2006 WL 1546499, at *2 (TTAB 2006) (“[T]hird-party registrations can be used in the manner of a dictionary definition to illustrate how a term is perceived in the trade or industry”); see, e.g., Spireon, Inc. v. Flex Ltd., 71 F.4th 1355, 1364 (Fed. Cir. 2023) (citing 2 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 11:90); Sock It to Me v. Fan, Opp. No. 91230554, 2020 WL 3027605, *12 (TTAB 2020) (quoting In re Melville Corp., Ser. No. 736814, 1991 WL 325859, *2 (TTAB 1991) (“The conclusion to be drawn [from third-party registrations] is that there is an inherent weakness in a mark comprised in whole or in part of the word in question and that, therefore, the question of likelihood of confusion is colored by that weakness to the extent that only
slight differences in the marks may be sufficient to distinguish one from the other.”)).
The TTAB recently reversed a Section 2(d) refusal of the composite mark 12 and design for “Non-medicated skin care preparations,” in view of the registered mark TWELVE COSMETICS in standard characters (with “COSMETICS” disclaimed) for “cosmetics; private label cosmetics.” In re Metabeauty, Inc., Serial No. 97492557 (TTAB Jan. 28, 2025).
The record in Metabeauty included evidence of ten registrations by nine different third parties that were found to be probative of conceptual weakness of the number 12 and TWELVE. Spireon, 71 F.4th at 1363-4 (third-party composite marks relevant to show common segment weak). These third-party registrations included TWELVE SPRINGS, 12S, 12months Soaps, Twelve Spells, CS12, PM ACTIVE12, 12TWENTY, and TWLEVE COSMETICS for various cosmetics and lotions.
Taking the marks in their entireties, we find the dissimilarities are sufficient to distinguish the marks given the weak nature of the numeral 12 and the word TWELVE in connection with cosmetics, including skin lotion.
Thus, the TTAB concluded that while the relatedness of the goods and services and overlap in the trade channels and classes of consumers weigh in favor of likely confusion, but the weakness of the numeral 12 and the word TWELVE in connection with cosmetics, and the dissimilarities in the marks, weigh against likely confusion.
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