Happy Green Company LLC, (“Applicant”) filed a trademark application with the United States Patent and Trademark Office (“USPTO”) for the mark Anthō for goods in International Class 3 including, but not limited to beauty products and cosmetics; skin care preparations; and perfumes and colognes. Anthropologie, Inc. and U.O. Merchandise, Inc. (“Opposers”) opposed the registration with the Trademark Trial and Appeal Board (“TTAB”) based on likelihood of confusion grounds in connection with their two marks (registrations). These marks include: (1) ANTHROPOLOGIE for retail department store services, clothing, handbags, and clothing and fashion accessories and (2) ANTHRO for customer affinity loyalty services. Each of the Opposers established its standing for the proceeding. See Anthropologie, Inc. and Urban Outfitters Wholesale, Inc. v. Happy Green Company LLC, Opposition No. 91204412 (Oct. 21, 2014) [not precedential].
Regarding the services rendered under the mark ANTHROPOLOGIE, the record shows that identical types of goods are sold through the retail store including moisturizers, perfumes and colognes, and bath salts, but under third-party manufacturers. In connection with the trademark ANTHRO the record demonstrated that it is used as a nickname and/or an abbreviation for ANTHROPOLOGIE, in addition to being used for customer loyalty programs. Customers receive a card branded with the name ANTHRO that they present at check out. This card keeps track of the customers’ purchases and allows them to return items without a receipt. There have been 2.3 million cards issued since the inception of the program. Evidence showed that ANTHRO is used on blogs and on social media platforms by consumers to refer to Opposer and its goods and services. Opposers also presented evidence showing common law rights for the mark ANTHRO for administering a customer service program in connection with retail services for a department store featuring cosmetics and beauty products.
For purposes of likelihood of confusion, the Board compared the marks Anthō and ANTHRO. Neither party submitted evidence of meaning for their respective marks therefore, it was not considered. However, based on the similarity of the appearance and sound alone, the Board held that the marks were very similar. The first Du pont factor favors the Opposers. Next, the Board considered the Applicant’s goods and the Opposers’ services. It is well settled law that goods and services need not be identical or even competitive to support a finding of likelihood of confusion. The goods and services only need to be related in some way or the conditions or the activities surrounding the marketing of the goods or services lead to the same consumers encountering the marks and due to the similarities between the marks, consumers could have the mistaken belief the marks originated from the same source.
There were several other factors that favored the Opposers. The goods and services utilized the same trade channels, retail stores and online retail websites. There was an overlap of consumers for the goods and services (ordinary consumers). In addition, the goods and services were subject to impulse purchases. The mark ANTHRO was determined to be a strong mark for the services as evidenced by the lack of third-party uses of the same or similar marks. The record demonstrated that the Opposers’ customer loyalty program enjoyed great success. The Board also determined that the broad identification for retail department store services included sales of beauty and cosmetic products. The fact that these beauty products were not branded with either ANTRHOPOLOGIE OR ANTHRO was not relevant. The total revenue for cosmetic products for the last five years totaled $54 million. Even though the Opposers primarily sell apparel and accessories, the beauty products are sold to complement the clothing.
In the end, the Board held that consumers familiar with the ANTHRO customer loyalty program used in connection with the retail department store services of ANTHROPOLOGIE would mistakenly believe when encountering the Applicant’s Anthō mark for beauty products that the goods were associated with or sponsored by the Opposers. For this reason, the Board sustained the opposition and refused the registration of the Applicant. The Board relied on both of the Opposers’ marks (registrations) to find likelihood of confusion and either mark alone would probably not have supported this finding.
Anthropologie Inc. would be well advised to file a trademark application for ANTHRO for any additional services or goods other than their customer loyalty program, if the company is using the mark to brand other services or goods. Sometimes, it can be difficult to determine if a mark is in use in commerce and functioning as a trademark. Please contact our office for a courtesy consultation to determine if a trademark application should be filed on your behalf or your company’s behalf.