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SELF Mark Conceptually Weak and Not That Famous

Posted by James Juo | Oct 16, 2023 | 0 Comments

The TTAB recently held that THE SELF PUBLICATION for “Education and entertainment, in particular presentation of works of visual art or literature to the public for cultural or educational purposes,” in International Class 41 did not create a likelihood of confusion with SELF magazine. Advance Magazine Publishers Inc. v. Johnson, Opposition No. 91267229 (TTAB Oct. 13, 2023).

Comparing the Marks and the Goods/Services

Even though “the entire mark THE SELF PUBLICATION is more similar than dissimilar in appearance and connotation to Opposer's SELF as they both suggest a publication that seeks to improve or better oneself,” the TTAB found that the Applicant's “presentation of works of literature and art for cultural and educational purposes” was not related to “Opposer's magazines, information, and videos on a website limited to fitness, fashion, exercise, health, nutrition, or beauty.”

Third-Party SELF-formative Registrations

Thirteen SELF-formative trademark registrations for related goods, all of which issued after the earliest of Opposer's SELF registrations, were made of record. Spireon Inc. v. Flex Ltd., 2023 USPQ2d 737, at *4 (Fed. Cir. 2023) (“third-party registrations ‘are relevant to prove that some segment of the composite marks which both contesting parties use has a normally understood and well-recognized descriptive or suggestive meaning, leading to the conclusion that that segment is relatively weak'”); see also Sabhnani v. Mirage Brands, LLC, 2021 USPQ2d 1241, at *22 (TTAB 2021) (third-party registrations “may bear on conceptual weakness if a term is commonly registered for similar goods or services.”) (quoting Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1057 (TTAB 2017)).

Suggestive Nature of SELF

The TTAB also found that, as used in the Opposer's marks for SELF magazine, that “SELF” was suggestive of “be[ing] your best self.”

In sum, with respect to conceptual strength, the TTAB found that SELF has been weakened by third-party registrations and was conceptually weak due to its suggestive nature.

Moderate Commercial Strength

As for commercial strength, the TTAB found that the number of monthly unique visitors to the SELF website and minutes spent on the site; the growing number of followers of its social media accounts; the appearance of celebrities on the digital covers of SELF; its accolades and awards; mentions in The New York Times, USA Today, The Wall Street Journal, and The Los Angeles Times; and confidentially-provided advertising and consumer revenues, and expenditures for “content costs, consumer marketing, and production and distribution costs” from 2019 to 2021 and projected numbers for 2022—while “substantial,” only covered the past few years and no context was provided for the figures. Accordingly, the TTAB found that they could not be measured against other like brands including Opposer's other publications.

The TTAB found that the evidence was “more in tune with cases where the Board has found marks to have achieved moderate commercial success.” Compare Omaha Steaks, 128 USPQ2d at 1690 (fame of OMAHA STEAKS mark supported by annual advertising expenditures of $45-50 million and 100,000 orders per day processed during the holiday season); Palm Bay, 73 USPQ2d at 1691 (VEUVE CLICQUOT found famous amongst purchasers of champagne and sparkling wine based in part upon sales in 8,000 establishments; extensive promotional campaign consisting of print advertisements in general interest magazines and in wine specialty magazines, radio ads, point-of-sale displays, wine tastings; unsolicited recognition in New York Times, Boston Globe, Money Magazine); Bose, 63 USPQ2d at 1306 (fame of ACOUSTIC WAVE mark for loudspeaker systems supported by $50 million in annual sales and $5 million in annual advertising); Nina Ricci, S.A.R.L. v. E.T.F. Enters., 899 F.2d 1070, 12 USPQ2d 1901, 1902 (Fed. Cir. 1989) (fame of NINA RICCI for fragrance products supported by $350 million in retail sales and around $37 million in advertising and sales promotion expenditures between 1981 and 1986), with Sock It To Me v. Aiping Fan, 2020 USPQ2d 10611, at *8 (TTAB 2020) (moderate commercial strength found for an opposer who used the mark in commerce with socks and stockings since October 2004; experienced significant and substantial growth in gross sales between 2004 and 2017; sold more than 12 million pairs of socks in the United States; showed impressive gains in a market filled with larger competitors; has substantial marketing expenditures and advertises extensively-online, via social media, and in trade shows, and catalogs; and received favorable media coverage about its humble origins and rapid expansion on well-known publications such as Marie Claire, Elle, Seventeen, Vogue, The Wall Street Journal, and Forbes); Brooklyn Brewery, 2020 USPQ2d 10914, at *18 (finding plaintiff achieved a degree of commercial recognition of its BROOKLYN BREWERY mark for beer from more than 30 years use, annual revenues in the tens of millions of dollars, recognition from winning a number of awards, and extensive unsolicited media coverage).

No Likelihood of Confusion

The TTAB concluded that, notwithstanding that Applicant's mark is similar to Opposer's SELF Marks under the first DuPont factor and the more moderate scope of protection accorded to Opposer's marks under the fifth and sixth DuPont factors, Opposer has not shown that Applicant's services and Opposer's goods and services are related. Accordingly, the TTAB held that the Opposer has failed to prove likelihood of confusion by a preponderance of the evidence.

No Dilution

The TTAB also held that the modest fame for SELF magazine was not enough to show “dilution fame.” See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1725 (Fed. Cir. 2012) (“household name”); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1250 (TTAB 2015) (“[A]n element of the dilution claim is the acquisition of fame prior to the defendant's first use or application filing date”).

Thomas P. Howard, LLC is experienced in trademarks nationwide including in Colorado.

About the Author

James Juo

James Juo is an experienced intellectual property attorney. He has successfully litigated various intellectual property disputes involving patents, trademarks, copyrights, and trade secrets. He also has counseled clients on the scope and validity of patent and trademark rights.


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