The USPTO refused registration of  I’M SMOKING HOT for cosmetics, makeup, and other personal care products, finding the mark likely to cause confusion with the registered mark SMOKIN’ HOT SHOW TIME for cosmetics. FabFitFun appealed, arguing that SMOKIN’ HOT is a weak term in light of third-party usage, and therefore that the marks are distinguishable. How do you think this came out? In re FabFitFun, Inc., Serial No. 86847381 (August 23, 2018) [precedential] (Opinion by Judge Peter W. Cataldo).

The Goods:The involved goods overlap, and therefore the Board must presume that those goods (cosmetics) travel in the same trade channels to the same classes of consumers. Moreover, the goods as identified include lower cost make-up items that may be purchased without a high degree of care. All of those du Pont factors favored a finding of likely confusion.

Strength of the Cited Mark: As to the strength of the cited mark, the Board first considered the conceptual strength of “smokin(g) hot.” A dictionary definition (“attractive, sexy looking, very hot”) led the Board to conclude that “the purpose or intended result of the cosmetics offered under the marks at issue is to render the user’s appearance ‘smoking hot.'” Thus the term has some conceptual weakness and is at best highly suggestive for cosmetics.

As to marketplace strength, applicant submitted screenshots showing ten third-party uses of SMOKIN’ HOT formatives as marks for cosmetics, and particularly eye makeup of various colors and shades. The CAFC held in Jack Wolfskin that “extensive evidence of third-party use and registrations is ‘powerful on its face,’ even where the specific extent and impact of the usage has not been established.” However,  FabFitFun’s evidence was “more modest” than the amount of evidence in Jack Wolfskin (and Juice Generation).

Nonetheless, the Board found that the shared term SMOKIN’ [SMOKING] HOT is “somewhat weak in that it at best suggests a desired result of using the identified cosmetics, while the third-party uses … tend to show consumer exposure to third-party use of the term on similar goods.”

In sum, the Board found the term SMOKIN’ HOT to be “somewhat weak.” The entire mark SMOKIN’ HOT SHOW TIME, however, was not shown to be either particularly strong or weak.

On balance, we do not believe that, on this record, the relative strength of the cited mark in its entirety weighs significantly one way or the other. Rather, the relative weakness of the component term SMOKIN’ HOT common to both marks weighs somewhat in favor of a finding of no likelihood of confusion.

Comparing the Marks: The only common element is the term SMOKIN HOT/SMOKING HOT, a term that is a weak source identifier in the field of cosmetics. The differences in structure between the two marks renders them “only somewhat similar in sound and appearance.” The connotations and overall commercial impressions of the two marks “are more different than they are similar.”

While both generally connote attractiveness or sexiness due to the shared component SMOKIN’ HOT/SMOKING HOT, Applicant’s mark in its entirety conveys the impression of a statement regarding one’s personal appearance and the registered mark conveys sexy entertainment.

Considering the marks in their entireties, the Board found the marks to be more dissimilar than similar, and therefore the first du Pont factor weighed in favor of applicant.

Conclusion: Because of the overall differences between the marks and the weakness of the shared term, the Board concluded that confusion is not likely, and so it reversed the Section 2(d) refusal.

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TTABlog comment: Not sure why this is precedential.

Text Copyright John L. Welch 2018.