TTAB Precedent – How Fame Impacts A Likelihood Of Confusion Determination

This Trademark Trial and Appeal Board (TTAB) dispute involves the mark SHAPE (in both standard character and stylized format) owned by Weider Publications, LLC (Opposer) and the trademark SHAPES in standard character format owned by D & D Beauty Care, LLC’s (Applicant).   See Weider Publications, LLC v. D & D Beauty Care Company, LLC, 109 USPQ2d 1347 (TTAB 2014) [precedential]. The Applicant attempted to register SHAPES for beauty salon services, day spa services, and health spa services. The Opposer owns several registrations for the mark SHAPE, among them : (1) a magazine relating to physical fitness and exercise, in print format and online; (2) DVDs and CD-Roms featuring audio and video recordings in the areas of health, fitness and nutrition; and (3) apparel. Weider Publications filed a Notice of Opposition on the grounds of priority of use, and likelihood of confusion under Section 2(d) of the Trademark Act, and likelihood of dilution by blurring under Section 43(c) of the Trademark Act. The Applicant did not contest the Opposer’s priority of use. Therefore, the only issue to be determined is likelihood of confusion.

Likelihood of confusion must be proven by the Opposer by a preponderance of the evidence. When one of the parties alleges its trademark is “famous” under the definition of trademark law, often the TTAB will commence its analysis with the fame factor under the du Pont paradigm. Fame has a different definition under likelihood of confusion than it does under dilution. For purposes of likelihood of confusion, fame arises as long as a ” significant portion of the relevant consuming public … recognizes the mark as a source indicator.”  See Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed Cir. 2005). Other relevant factors are volume of sales, length of time the trademark has been used in commerce, the reputation of the products and services, advertising expenditures of the goods and/or services sold under the mark, and recognition by independent sources of the goods and/or services identified by the trademark.

The evidence demonstrated that the Opposer had used the trademark SHAPE with its goods and services for over 30 years to identify its print magazine and for 15 years in connection with its online magazine. The print version of SHAPE magazine reached over 1.6 million readers while the online SHAPE magazine received an average of 3 million visitors per month. In addition, there is a newsletter wherein 700,000 readers subscribe. In the end, the audience for SHAPE magazine across all platforms is approximately 6 million per month. Deposition testimony supported these facts. There was also testimony regarding what an advertiser spent in the print version of the magazine for a full page ad – $182,000. SHAPE magazine generated substantial revenue since 2009.  It received multiple awards and widespread media coverage. Regarding the fame determination, the Board concluded that for purposes of likelihood of confusion, the SHAPE marks were famous for its print magazine and online content.

The TTAB went on to consider the rest of the du Pont factors. See our post entitled The Controversy Surrounding The CRONUT Trademark Registration, where we discuss the thirteen du Pont factors. See also our web page entitled Simple Trademark Rules and Considerations for a list of the thirteen du Pont elements. Regarding the similarity of the marks, the test is whether the trademarks are sufficiently similar in terms of their commercial impression, such that persons who encounter the marks would presume there is a connection between the parties. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012). This factor weighed in favor of finding a likelihood of confusion because it is well established that a pluralized version of  the same term is considered to be the same mark.

Next the TTAB considered a comparison of the services identified in the Applicant’s application and the goods and services recited in the Opposer’s registrations. The test is not to determine if the goods and/or services are similar or competitive.  Instead, the appropriate test is to compare the respective goods and/or services and determine if they are related in some manner. More specifically, one must review the conditions and activities relating to the marketing and decide if the same persons encountered the goods and/or services would a mistaken belief arise that the goods and/or services originate from the same source, due to the similarities of the marks. Here, the TTAB concluded that since the services (health spa services) of the Applicant could be featured in the Opposer’s magazine, the services were related.

Regarding trade channels, the parties both target the same demographic group of consumers, thereby providing an opportunity for confusion. When balancing the du Pont factors any one factor could play a dominant role. See In re E. I. du Pont de Nemours & Co., 177 USPQ at 567. In the subject case, the critical factors are the fame of the Opposer’s mark,  the similarity between the trademarks, and the relatedness of the goods and services. These factors weighed in favor of the Opposer.

Since the Opposer proved likelihood of confusion by a preponderance of the evidence, there was no reason to determine the dilution by blurring claim. Undoubtedly, the fact that the Opposer was the owner of a famous trademark was a factor that the Applicant did not weigh heavily enough, when clearing its trademark SHAPES. We counsel our clients to consider all the du Pont factors when finding a potentially similar mark in the clearance phase. Fame is an important factor that should not be overlooked.  If you need assistance with clearing a trademark or with filing a trademark application with the USPTO, kindly contact one of our NY trademark lawyers to discuss your intellectual property matter.