Applicant did not dispute the relatedness of the goods but argued that they travel in different channels of trade, since Applicant markets its goods in its own outlets and at high-end retailers, whereas registrant sells its products through its website. The Board was unmoved, since there are no such limitations in the application or cited registration. Because the goods are in-part legally identical, the Board must presume that those goods travel in the same trade channels to the same classes of consumers. Furthermore, the products are not limited as to price point or quality, and so the Board must consider even modestly priced goods. These factors weighed heavily in favor of affirmance of the refusal.
Moreover, there is nothing in the nature of the identified products to suggest that the purchasers are particularly sophisticated or careful. The standard of care that the Board must consider is that of the least sophisticated potential purchaser. See Stone Lion, 110 USPQ2d at 1163.
Turning to the marks, Applicant contended that they differ in appearance and sound, and that they create different commercial impressions because ISABEL MARANT is the name of a famous designer, whereas Registrant’s mark MARANT “is an acronym for the owner’s name and not a surname.” The Board, however, agreed with Examining Attorney Louis Kolodner that the marks are similar overall “because the applied-for mark appears to be the full name version of the registered mark.”
The Board found the marks to be “very similar” in appearance, sound, connotation, and commercial impression.
Here, the given name “Isabel” in Applicant’s mark modifies the surname “Marant,” in effect identifying a specific individual with the surname “Marant,” and thereby emphasizing the “Marant” portion of Applicant’s mark. Because the marks share the surname “Marant,” which is the sole element in the cited mark and a distinct element in Applicant’s mark, consumers likely would believe that the two marks refer to the same person.
The fact that Isabel Marant is a famous designer is “to Applicant’s detriment, as it weighs in favor of a likelihood of confusion. The fame of either a cited mark or an applied-for mark makes it “more likely that purchasers will remember the famous mark and think of it when encountering similar goods sold under a similar mark.” (quoting In re i.am.symbolic, 116 USPQ2d 1406, 1412, n.7 (TTAB 2015), aff’d, 866 F.3d 1315 (Fed. Cir. 2017)).
The Board brushed aside Applicant family-of-marks argument, since that doctrine is not available in an ex parte proceeding. Likewise. Applicant’s assertion that perfumes and cosmetics are within its natural zone of expansion met the same fate. This doctrine has limited applicability in ex parte cases and is usually limited to the issue of priority in inter partes proceedings. In ex parte cases, the Board considers this concept through a “traditional relatedness of goods and services approach.” Here, the goods at issue overlap and Applicant’s prior registrations do not compel a different result.
Finally, Applicant argued that it should be allowed to use and register “its personal name.” But, the Board observed, it may do so only if it would not likely cause confusion as to source.
The Board concluded that confusion is likely and so it affirmed the refusal.
Read comments and post your comment here.
TTABlog comment: How did you do?
Text Copyright John L. Welch 2019.