This article outlines a trademark trial and appeal process between Spatz Laboratories, 2017 WL 3102590. The Trademark Trial and Appeal Board (TTAB) decided this case. The TTAB is an administrative board that deals with issues arising out of the United States Patent and Trademark Office (USPTO). The TTAB oversees opposition, cancellation, interference and concurrent use hearings. The TTAB also hears appeals for trademark application rejections from USPTO Trademark Examining Attorneys.
Spatz Laboratories (Spatz) submitted an application for trademark registration of the mark “SUPER SHOCK CHEEK.” Spatz sought to register this mark on the Principal Register underInternational Class 3, a category that includes “soaps; perfumery, essential oils, cosmetics, hair lotions.” Spatz sought to register the SUPER SHOCK CHEEK mark for “Blush; Skin Bronzer; Highlighters for cosmetic use.”
The Trademark Examining Attorney (TEA) reviewed Spatz’s application for the SUPER SHOCK CHEEK mark and rejected on two grounds.
First, the TEA determined that Spatz’s SUPER SHOCK CHEEK mark for cosmetics was too similar to an existing trademark. The existing mark – SUPERSHOCK for mascara – was already registered on the Principal Register under International Class 3. The TEA referenced 15 U.S.C. 1052(d) of the Trademark Act and the likelihood of “confusion, mistake or deception.”
Second, the TEA determined that the inclusion of CHEEK in the Spatz mark was “merely descriptive” under 15 U.S.C. 1052(e)(1) of the Trademark Act. In order to register SUPER SHOCK CHEEK, Spatz would need to provide a disclaimer for the word CHEEK, according to 15 U.S.C. 1056 of the Trademark Act. Spatz failed to provide any such disclaimer.
After receiving the TEA’s decision, Spatz protested and requested another review. The TEA rejected this request, refusing to reconsider the initial decision. As a result, Spatz appealed to the TTAB.
The TTAB first explored the disclaimer requirement. Under 15 U.S.C. 1052(e)(1), trademark protection is not appropriate when a mark is “merely descriptive.” But under 15 U.S.C. 1056, if only one part of a mark is descriptive, then the applicant can disclaim ownership of that part. In the present context, the word CHEEK seemed only to describe the intended use of Spatz’s products. Therefore, in order to use the word CHEEK in their mark, Spatz would have to issue a disclaimer. That disclaimer would have to explain that Spatz was only using CHEEK in connection with the larger mark of SUPER SHOCK CHEEK.
The TTAB then considered the likelihood of confusion between the SUPER SHOCK CHEEK and SUPERSHOCK marks. Referencing In re E. I. du Pont de Nemours & Co., 476 F.2d 1357 (CCPA 1973), the TTAB outlined the key factors for analyzing likelihood of confusion as “the similarities between the goods or services” and “the similarities between the marks.”
In terms of similarities between the goods, the TTAB determined that there was a correlation between “mascara” and “blush; skin bronzer; highlighters for cosmetic use.” It is common for companies to manufacture and sell mascara, blush, bronzer and highlighters. Moreover, it is common for those companies to use the same trademark in marketing all of those goods to similar consumers.
Comparing the similarities between the marks, the TTAB noted that the first two words of each mark were identical. Both marks featured SUPER followed by SHOCK. It is true that Spatz included the word CHEEK in their mark. But that simple addition was not enough to “alter the connotation or commercial impression to sufficiently distinguish SUPER SHOCK CHEEK from SUPERSHOCK.”
In the end, the TTAB denied Spatz’s appeal, holding that “the marks are similar, the goods are related, and the channels of trade and consumers overlap.” The TTAB did admit that Spatz had a 30-day window to provide a proper disclaimer for use of the word CHEEK. But such a disclaimer would not overcome the likelihood of confusion.
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If you are in need of assistance with trademarks, patents, or other related matters, please do not hesitate to contact Whitcomb, Selinsky, PC immediately. Located in Denver, Colorado, the attorneys at Whitcomb, Selinsky, PC can be reached by phone at (303) 534-1958 or via our online form.