recent trademark decision rendered by the U.S. Trademark Trial and Appeal Board
(the “Board”) has, again, highlighted the importance of trademark selection and
the intricacies of trademark clearance and trademark infringement
that case, the trademark applicant sought registration of mark FRUTTA DI
for “cosmetics and cosmetic preparations; concealers; cosmetic
facial blotting papers; cosmetic sun-protecting preparations; and cosmetic
U.S. Patent and Trademark Office Examining Attorney refused registration of the
mark FRUTTA DI VITA
on the basis it is confusingly similar to the
registered mark FRÜT A VIE
for “cosmetic creams for skin
care; cosmetic preparations for skin renewal; skin and body topical lotions,
creams and oils for cosmetic use; wrinkle removing skin care preparations.”
When the Applicant appealed the refusal to register its
mark, the Board affirmed the Examining Attorney’s rejection based primarily
upon the following trademark principles and findings:
goods listed in the parties’ respective filings are identical or
- Since there are no limitations set forth in
the parties’ respective filings as to the channels of trade in which their
goods travel (i.e., professional buyers vs. retail consumers), the goods are
presumed to travel in all normal (thus overlapping) channels of trade.
of the parties’ respective goods are presumed to be the same/overlapping.
Applicant argued that its
applied-for mark is used exclusively for higher-priced anti-aging skin
preparations and not for general cosmetics or general skincare preparations and
the buyers for its goods are well-informed consumers, thus consumer confusion
between the marks is unlikely.
Unfortunately for Applicant, however, the USPTO must compare the
parties’ respective goods as identified in their trademark filings, which, in
this case, were presumed to be identical or essentially identical cosmetic and
skin care preparations and also presumed to travel in the same channels of
trade to the same class of buyers.
- The marks FRUTTA DI VITA and FRÜT A VIE are similar in terms of appearance and sound.
During its analysis of the parties’
respective marks, the Board concluded that Applicant’s mark FRUTTA DI VITA
translates into English as FRUIT OF LIFE, while the cited mark FRÜT A VIE has
no direct English translation; thus the “doctrine of foreign equivalents” would
not apply in the case.
However, the Board held that the
parties’ respective marks are sufficiently similar in terms of appearance and
sound so as to cause a likelihood of consumer confusion – or trademark
infringement. The Board stated the
“Thus, while in some respects, the
marks differ in appearance, their basic structure (including first and last
words beginning FRUT— and VI—, respectively) and their general appearance of
foreignness are more likely to be recalled by consumers than the more detailed
and specific differences between them.”
“Finally, we find that the marks are
also similar in their sound or pronunciation.”
The Board correctly noted that the
test for whether marks are likely to cause consumer confusion as to the source
of goods and services is not based upon a side-by-side comparison
marks, but rather based upon the recollection of marks by the average
Two important trademark principles applied in this case are
that (1) when the goods or services of the parties are identical or essentially
identical, the marks of the parties need not be that close or identical to
support a finding of likelihood of consumer confusion – or trademark
infringement and (2) trademark infringement analysis with respect to the marks
is not based upon whether there is another party using the same
mark, but rather whether there is another party using a confusingly
similar mark – one that would likely cause consumer confusion as to the
source of the parties’ respective goods or services.
One can certainly check the USPTO database to see if someone
has already filed an application for a specific mark with a specific
However, one must also check
the USPTO database for third party marks that are confusingly similar
to a proposed mark.
Also, since U.S.
trademark rights are created based upon actual use in the marketplace and not
registration, one must not only consider registered trademarks (state and
federal) but also common law (unregistered) trademarks and even business names.
Brand name selection does not have to be that
difficult. Proper consideration of
brand names does take time and thought-provoking analysis, however. Not considering the rule of the Four D’s
could potentially prove fatal for a company’s new product launch and, as I have
said before, could be the difference between brand success and failure.