Of course, because the goods are in-part identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion. Moreover, the Board noted that side-by-side comparison is not the appropriate approach for determining confusing similarity.
Applicant Coscentra expanded on its argument that the “physiques” of the marks are dissimilar by asserting that:
1. Consumers are accustomed to seeing the male form in all forms of media and can see that not all men have the same physique;
2. Applicant’s mark comprises more musculature and definition, with a well proportioned torso, while the registrant’s mark shows a slender upper body and a disproportionately larger buttocks;
3. A penis is not commonly shown in consumer products and applicant’s mark comprises a penis, which prospective consumers are likely to notice; and
4. The arms are cut shorter in the registrant’s mark, but cut longer in applicant’s mark, therefore highlighting broader shoulders.
The Board recognized that there are differences between the marks, but pointed out that it must consider the marks in their entireties. It noted that the mark in the cited registration is “lined for the color blue,” while applicant’s mark is not limited to a color. Moreover, the cited mark is “clearly a male torso, and is more anatomically correct than Applicant acknowledges.”
There was no evidence that the cited mark is weak. Examining Attorney Tina L. Snapp submitted dozens of images of perfume bottles, none depicting a perfume package in the form of a male torso. Moreover, the cited registration issued on the Principal Register without any Section 2(f) claim.
The Board concluded that the marks are “highly similar in sight, connotation and commercial impression.” Furthermore, both marks may be called for by consumers “as a perfume container in the shape of a male torso.”
And so the Board affirmed the refusal to register.
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TTABlog comment: Is this scenario likely:? Customer: “Excuse me, salesperson, do you have the perfume in the bottle that looks like a male torso?” Salesperson: “With or without ….?”
Text Copyright John L. Welch 2019.