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TTAB Precedential Case – Underscoring The Disadvantages Of Weak Marks

It is significant that the Board designated the opinion, In re FabFitFun Inc., Serial No. 86847381 (August 23, 2018), a precedent of the Trademark Trial and Appeal Board (“TTAB” or the “Board”). The applicant was seeking to register the mark, I’M SMOKING HOT in standard characters for various cosmetics, make-up, fragrances, nail preparations and toiletries. The Examining Attorney refused the registration based on the registered mark for SMOKIN’ HOT SHOW TIME in standard characters for cosmetics and mascara. Applicant appealed the likelihood of confusion refusal to the Board.

In likelihood of confusion refusals not all du Pont factors are relevant in every case, only certain factors will be considered based on the factual circumstances. The relatedness of the goods will be considered based on how the goods and/or services are identified in the application or registration. See In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997). See also, Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014). In the case at bar, the applicant’s and registrant’s goods include cosmetics. A single good from among a list can sustain a finding of likelihood of confusion. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). Because the goods are in part identical, the trade channels are presumed to be the same, as well as the classes of purchasers. This du Pont factor weighs in favor of confusion.

Regarding the similarities of the marks, this factor is analyzed while keeping in mind that consumers only remember a general and not a specific impression. Also, another important rule to consider is if two marks share a common term, and the common term is  generic, descriptive or highly suggestive of the named goods or services, then it is less likely consumers will be confused unless the other elements of the mark share additional commonalities. Therefore, analysis of the shared term will play a critical role. Is the shared term, “Smoking Hot” strong or weak?

The conceptual strength of the mark is typically examined under the number and nature of similar marks in use on similar goods. If you view this in the context of cosmetics, then you would conclude the user of the cosmetics was intended to look “smoking hot”, sexy and attractive after the application of the cosmetics. The Examiner produced the dictionary definition of smoking hot, “attractive, sexy looking, very hot”. With this definition in mind, the shared term does possess conceptual weakness. The Board determined that the cited mark was highly suggestive when applied to cosmetics.

Applicant introduced third party evidence that showed the term “smoking hot” being used for beauty products. The evidence included seven websites using formatives of SMOKING HOT, marketing brands of mascara, lip products, eyeliner, and other makeup. The websites included: (1) Amazon.com; (2) Ebay.com.uk; (3) Facebook.com; (4) bobbibrowncosmetics.com; (5) vibe.com; (6) drugstore.com; and (7) amazon.com.uk. It should be noted that there was some discussion about how relevant the UK websites are because it is not clear to what extent U.S. consumers were exposed to the UK websites. In addition, the applicant presented website evidence from its Request for Reconsideration. In total, there were ten uses of Smoking Hot formatives for cosmetics. There were also four examples of Smoking Hot applied to makeup from UK websites. The applicant did not present evidence of the extent or impact of the uses, but on its face this type of Internet evidence is used to demonstrate if a mark is relatively weak, and only entitled to a narrow scope of protection. See 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). The Board concluded that the third party evidence was a modest amount compared to the Jack Wolfskin case or the Juice Generation case, but still determined that the weakness of the mark weighs in finding no likelihood of confusion.

Lastly, when the Board reviewed the structure of the marks, it found differences. In applicant’s mark Smoking Hot modifies I’m. In the registered mark Smoking Hot modifies Show Time. In addition, the Board determined the marks had differences in meaning, the applicant’s mark conveys a sexy personal appearance while the registrant’s mark communicates sexy entertainment. But in the end, if a party adopts a weak term as part of its mark, as the registrant did here, it risks a narrow scope of protection as to the weak term. Moreover, that same party could spend a significant sum of money on enforcement proceedings, yet yield a negative result. If you have questions about whether you should adopt a particular mark, please contact the firm for a courtesy consultation.