The Board affirmed a refusal to register the mark FEYONCE for various clothing items, finding a likelihood of confusion with the registered marks BEYONCE’ and YONCÉ for overlapping clothing items. Both cited registrations include a consent statement indicating that the mark identifies a living individual (Beyonce’ Knowles ) whose consent is of record. Applicant Andre Maurice asserted that the likelihood of confusion issue was “settled” by the withdrawal with prejudice of a trademark infringement action brought by Beyonce’ against him in the Southern District of New York, after the court denied Beyonce’s summary judgment motion. In re Andre Maurice, Serial No. 86834686 (October 6, 2020) [not precedential] (Opinion by Judge Frances S. Wolfson).

District Court Judgment: The Board ruled that the district court case has no bearing on this appeal. There is no issue preclusion for three reasons: (1) the USPTO was not a party to the civil action; (2) the issues raised in the district court and those raised here are different, at least in part, and different analyses apply: and (3) the court did not render a final judgment on the issue of likelihood of confusion but only denied Beyonces’ summary judgment motion.
As to the second point, the Board noted that the district court, in its decision on summary judgment, relied on “extrinsic evidence” showing that applicant sells clothes directed to “fiancé purchasers.” In this appeal, the Board must consider the goods as recited in the application, and may not consider extrinsic evidence as to the manner of use in the marketplace.

The Board also found that there was no claim preclusion because the claims in the lawsuit were different from those in this case. “The former claim is, in essence, a claim of injury resulting from applicant’s use of its mark in commerce; the latter claim, in essence, is a claim that opposer believes it would be damaged by registration of applicant’s mark.”


Likelihood of Confusion:
 As to the overlapping goods, the Board must presume that they travel in the same normal channels of trade to the same classes of consumers. This overlap also reduces the degree of similarity required between the mark to support a likelihood of confusion finding.

As to the marks, registrant’s mark YONCÉ might be perceived as a shortened version of FEYONCE. The mark BEYONCE’ differs from FEYONCE by a single letter and by the ending apostrophe, which is “hardly noticeable and does not change the commercial impression of the mark.” The Board found that BEYONCE’ and FEYONCE look and sound alike (Although applicant’s mark “could be pronounced as ‘fiancé,’ the mark could just as plausibly be pronounced as ‘fey-on-cé’ and be perceived as a direct play on the name of the popular singer Beyoncé.”).

As to meaning, FEYONCE is a fanciful term without specific meaning. “Applicant may not always use his mark on goods that are “marriage-themed” and thus consumers may not always be inclined, as Applicant contends, to view the term as the equivalent of “fiancé.”

The mark also alludes to the popular singer Beyoncé, and the registrations for the marks BEYONCE’ and YONCE state that they identify “a living individual.” Consumers who recognize the allusion to Beyoncé are likely to believe that her company (the owner of the registered marks BEYONCE’ and YONCE) has sponsored, or is affiliated with, Applicant. “Section 2(d) of the Trademark Act protects not only against confusion as to source, but also as to affiliation, connection or sponsorship.”

The Board found that the marks are similar in meaning and connotation, and concluded that the first DuPont factor supported the Section 2(d) refusal.

 

Conclusion: Balancing the relevant DuPont factors, the Board found confusion likely and it therefore affirmed the refusal.

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Text Copyright John L. Welch 2020.