“Evidence of third-party use of similar marks on similar goods is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection.” Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005) (citation omitted); In re Bed & Breakfast Registry, 229 USPQ 818, 819 (Fed. Cir. 1986) (“The record shows that a large number of marks embodying the words ‘bed and breakfast' are used for similar reservation services, a factor that weighs in favor of the conclusion that BED & BREAKFAST REGISTRY and BED & BREAKFAST INTERNATIONAL are not rendered confusingly similar merely because they share the words ‘bed and breakfast.'”). 

“The purpose of introducing evidence of third-party use is ‘to show that customers have become so conditioned by a plethora of such similar marks that customers have been educated to distinguish between different marks on the bases of minute distinctions.” Omaha Steaks Int'l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315, 128 USPQ2d 1686, 1693 (Fed. Cir. 2018); see also In re FabFitFun, 127 USPQ2d 1670, 1673-74 (TTAB 2018) (finding that, in view of ten third-party uses for cosmetics, consumers of cosmetics will look not just to the “SMOKIN' [SMOKING] HOT” component of marks containing the phrase to identify and distinguish source, “but also to the other parts of the marks”). 

The Federal Circuit has held that “extensive evidence of third-party use and registrations is ‘powerful on its face,' even where the specific extent and impact of the usage has not been established.” Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGaA v. New Millennium Sports, S.L.U., 797 F3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015) (citing Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015)); cf. In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738 (TTAB 2016) (“citation of third-party registrations as evidence of market weakness is unavailing because third-party registrations standing alone, are not evidence that the registered marks are in use on a commercial scale, let alone that consumers have become so accustomed to seeing them in the marketplace that they have learned to distinguish among them by minor differences”).

The Trademark Trial and Appeal Board recently reversed a Section 2(d) refusal of the NAMASTE COUTURE BY APRIL STOLF mark over the registered mark NAMASTE, both for jewelry, in view of numerous third-party uses. In re Namaste Couture LLC, Serial No. 97652794 (TTAB Aug. 19, 2024). 

The term “namaste” is often used among Hindus in South Asia to express a polite or respectful greeting or farewell. “In the context of jewelry,” the Board found that “namaste” may suggest “an expression of respectful greeting on the part of the wearer” which could have “a small degree of inherent conceptual weakness.” 

The Examining Attorney had argued that the registered NAMASTE mark was entitled to a broad scope of protection because it was the only mark registered in Class 014 using that term. 

The Applicant, however, had submitted over a hundred screenshots from third-party websites displaying “Namaste,” alone and as a formative in trademarks and trade names, and also as an ornamental feature of a variety of items of jewelry. Evidence in the form of Internet printouts may “show that the public may have been exposed to those internet websites and therefore may be aware of the advertisements contained therein.” Rocket Trademarks Pty Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1072 (TTAB 2011).

The Board was persuaded by Applicant's extensive evidence of third-party use of “Namaste” in connection with various jewelry items, and found that “the evidence suggests that consumers of jewelry will look not just to the NAMASTE component of Applicant's mark to identify and distinguish the source of the goods, but also to the other parts of the marks, particularly the phrase BY APRIL STOLF in Applicant's mark, which identifies the designer.”