By James Juo.

The term “reverse confusion” has been used to “describe the situation where a significantly larger or more prominent newcomer ‘saturates the market' with a trademark that is confusingly similar to that of a smaller, senior registrant for related goods or services.” In re Shell Oil Co., 992 F.2d 1204, 1207 (Fed. Cir. 1993) (quoting Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947, 957 & n.12 (7th Cir. 1992)). Reverse confusion may flow from extensive promotion by a larger junior user who is not seeking to benefit from any association with the smaller senior user. Id.; Banff, Ltd. v. Federated Department Stores, Inc., 841 F.2d 486, 490 (2d Cir.1988); Ameritech, Inc. v. American Information Technologies Corp., 811 F.2d 960, 966 (6th Cir.1987).

Even where the senior user has a significantly smaller market share, however, a “registrant/senior user is safeguarded by the trademark law, as is the consuming public, from likelihood of confusion caused by the entry of a [larger] junior user of a confusingly similar mark.” In re Shell Oil, 992 F.2d at 1207 (citing Park ‘N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 198, 105 S. Ct. 658, 663–64 (1985)).

The Trademark Trial and Appal Board (“TTAB”) recently addressed the issue of reverse confusion in Mahender Sabhnani v. Mirage Brands, LLC, Cancellation No. 92068086 (TTAB Dec. 20, 2021).

Mirage Brands, LLC (“Respondent” or “Mirage Brands”) owns Registration Nos. 5394192 (the “`192 Registration”) and 5367885 (the “`885 Registration”) for the MIRAGE BRANDS marks (word and composite marks, respectively) in International Class 3 for “Perfumes and colognes.”

Mahender Sabhnani (“Petitioner”) later petitioned to cancel the `192 and `885 Registrations under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d) based on his composite ROYAL MIRAGE mark registered for “Cosmetics, namely, perfume, toilet water, aftershave, cologne, soaps, body creams and body lotions” in International Class 3.

Mirage Brands describes itself as “a major seller of fragrance brands in the United States,” and claims that it “has made extensive sales of its branded fragrance products in the United States from approximately August 1, 2017 through July 21, 2020,” which it asserts is “in stark contrast to [Petitioner] and [his] de minimis sale and distribution of [his] fragrance products in the United States.”

But the earliest date that Mirage Brands could rely upon was November 23, 2016 (the filing date of its trademark applications); whereas Petitioner Sabhnani had an earlierf October 27, 2000 filing date for his trademark application. Even though the TTAB found that Mirage Brands' sales were “multiple orders of magnitude larger than Petitioner's sales figures for the same period”; in the race to the Trademark Office, Mr. Sabhnani was the senior user with priority of use. Thus, Mirage Brands had to prove that its MIRAGE BRANDS mark was not likely to cause confusion with the much smaller ROYAL MIRAGE brand.

After finding the identified goods of “perfumes” in the parties' respective registrations were identical in part, and that “perfumes” generally travel “in the same channels of trade to the same classes of purchasers”; the TTAB found that the words ROYAL MIRAGE was the dominant portion of Mr. Sabhnani's mark where “the word MIRAGE may have more source-identifying significance due to the laudatory nature of ROYAL” where the adjective “royal” has been held repeatedly to be “a suggestive word frequently used to indicate high quality.” Royal Petroleum Corp. v. River States Oil Co., 136 USPQ 79, 81 (TTAB 1962) (quoting Sears, Roebuck & Co. v. Hofman, 119 USPQ 137, 138 (CCPA 1958)); see also Lane Ltd. v. Martin Brinkmann AG, 145 USPQ 158, 160 (TTAB 1965) (“the word ‘royal' is a highly suggestive term which has been frequently used to indicate high quality….”); cf. Standard Brands Inc. v. Peters, 191 USPQ 168, 172 (TTAB 1975) (“The term ‘ROYAL', because of its obvious laudatory suggestive connotation, has been considered by various tribunals to be a ‘weak' mark entitled to a narrow orbit of protection in determining the question of the likelihood of confusion.”) (collecting cases)).

Discounting the fact that Mr. Sabhnani's composite mark included a crown design, and the principle that “consumers are generally more inclined to focus on the first word, prefix o[r] syllable in any trademark or service mark”; the TTAB held that it was “appropriate to give relatively less weight to the adjective ROYAL than to the noun MIRAGE in determining the connotation and commercial impression of Petitioner's mark.”

Because MIRAGE was deemed to be the dominant portion of both marks, and in view of the fact that both parties sell fragrances at a low price point, see Recot, Inc. v. Becton, 214 F.3d 1322, 1329 (Fed. Cir. 2000) (“When products are relatively low-priced and subject to impulse buying, the risk of likelihood of confusion is increased because purchasers of such products are held to a lesser standard of purchasing care.”); the TTAB concluded that Mirage Brands' presence in the marketplace was considerably greater than that of Mr. Sabhnani's ROYAL MIRAGE mark, “presenting a circumstance of reverse confusion,” and cancelled Mirage Brands' two trademark registrations.

The trademark attorneys at Thomas P. Howard, LLC are experienced 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.