[This guest post was written by Stephanie Stella, an associate in the Trademark Group at Wolf, Greenfield & Sacks, P.C.]. The USPTO refused to register the mark SIELLA’S (standard characters) for “skin care products, namely, face moisturizer, face cream, anti-aging cream, acne cream in the nature of organic herbal cream cleanser not for medical purposes, night cream, face oil, eye cream, hand cream,” deeming the mark likely to cause confusion with the registered mark CIELA (standard characters) for, inter alia, “non-medicated skin care creams and lotions; non-medicated skin care preparations.” The goods are legally identical and the Board must presume that the overlapping goods travel in the same trade channels to the same classes of consumers. What about the marks? Too close? How do you think this came out? In re S.I. Consulting Ltd., Serial No. 87821370 (October 16, 2019) [not precedential] (Opinion by Judge Cheryl S. Goodman).
Similarity of the goods and trade channels/consumers: Examining Attorney Mark S. Tratos concluded that Applicant’s goods “are encompassed by and legally identical to Registrant’s ‘non-medicated skin care creams and lotions,’ and ‘non-medicated skin care preparations.’” Applicant did not dispute the relatedness of the goods. Because the goods are in part legally identical, the Board presumed they travel in the same trade channels to the same classes of consumers. The Board thus found that the DuPont factors of the similarity of the goods, the channels of trade, and classes of purchasers strongly favor a finding of likelihood of confusion.

Similarity of the marks/commercial impression: Citing the Federal Circuit’s decision in Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 877 (Fed. Cir. 1992), the Board noted, “When trademarks would appear on virtually identical goods, as is the case here, ‘the degree of similarity necessary to support a conclusion of likely confusion declines.’” Applicant acknowledged that “the parties’ marks are visually similar because they both contain the vowels and letters IELA/IELLA in the same order and combination.” However, it insisted that that marks are “different in appearance” because (1) its mark begins and ends with the letter “S,” while Registrant’s mark begins with the letter “C” and ends with the letter “A,” (2) its mark includes an apostrophe, and (3) the overlap of the letters “IEL” does not render the marks sufficiently visually similar. The Board rejected Applicant’s arguments, finding that these differences “do[] little to distinguish the marks’ appearance,” and concluding that marks are visually similar.

As to sound, the Examining Attorney submitted evidence that “Ciela” and “Siella” are both pronounced “see ella.” Applicant countered that its mark is pronounced “si – elle – las” while Registrant’s mark is pronounced in a manner similar to the Spanish word “cielo.” The Board sided with the Examining Attorney and, citing In re Belgrade Shoe, 411 F.2d 1352, 162 USPQ 227, 227 (CCPA 1969), found that “[a]lthough there is no correct pronunciation of a trademark,” the marks would likely be pronounced similarly.

As to connotation and resulting commercial impression, Applicant argued that its mark SIELLA’S refers to “the daughter of Applicant’s owner whose name is Siella,” while Registrant’s mark CIELA is similar to the Spanish word “cielo” and thus refers to “sky.” It contended that CIELA thus “provoke[s] consumers to associate the registered mark with ‘cielo’ and the beauty and purety [sic] of [Montana] the Big Sky State,” where Registrant is located. The Board pointed to evidence in the record that “Siella” is an alternate spelling for the given name “Ciela,” and that the name means “heavenly.” The Board also noted that the English translation of “cielo” is “sky” or “heaven.” The Board thus concluded that the marks have similar connotations that create similar commercial impressions.

Conclusion: Weighing the Du Pont factors, the Board concluded that confusion between the parties’ marks is likely.

And so the Board affirmed the refusal to register.

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Text Copyright Stephanie Stella 2019.