The USPTO refused to register the mark THE BEAUTIFUL THINGS, in standard character form, for “operating on-line marketplaces featuring clothing and jewelry,” finding a likelihood of confusion with the registered marks COSABELLA for retail apparel stores, and BELLA COSA for retail jewelry store services, both of which marks translate to “BEAUTIFUL THING.” Applicant contended that the differences in appearance and sound of the marks outweigh the similarity in meaning. How do you think this came out? In re Beautiful Dreamer LLC, Serial No. 87161372 (April 8, 2019) [not precedential] (Opinion by Judge Karen Kuhlke).

The Board found the services recited in the application and cited registration to be legally identical, and it therefore presumed that they are offered through the same trade channels to the same classes of consumers.

In light of the differences in appearance and sound between applicant’s mark and the cited marks, the examining attorney relied on the doctrine of foreign equivalents in maintaining that the marks are similar in connotation and that this similarity suffices to support a finding of likelihood of confusion.

Applicant did not dispute the conclusion that COSABELLA and BELLA COSA translate to BEAUTIFUL THING, and it acknowledged that its mark THE BEAUTIFUL THINGS, “may be the foreign equivalent of the registered marks.” However, Applicant it contended that the differences in appearance and sound outweigh the similarity in meaning

The Board observed, however, that “such similarity as there is in connotation [between the foreign word mark and the English word mark] must be weighed against the dissimilarity in appearance, sound, and all other factors, before reaching a conclusion on likelihood of confusion as to source.” (quoting In re Sarkli, Ltd., 721 F.2d 353, 220 USPQ 111, 113 (Fed. Cir. 1983).

The Board found that “the connotation or meaning of the marks is the same, other than the fact that the marks in the registrations are in singular form and the applied-for mark is in plural form.” It also found that the wording “beautiful things” is somewhat laudatory and to thus “falls more on the suggestive end of the spectrum.” Thus, regardless of whether a consumer may stop and translate COSABELLA or BELLA COSA, the suggestiveness of these marks lessens the possibility that confusion is likely. [Why is that? They all suggest the same thing, and even weak marks are entitled to protection. – ed.].

The Board sided with applicant:

Overall, we find that the dissimilarities in appearance, sound, and commercial impression outweigh the similarity in connotation applying the doctrine of foreign equivalents in view of the inherent weakness of the phrase “beautiful thing[s]” in connection with retail sales of jewelry and clothing, which are things that may be beautiful, and this du Pont factor weighs against finding a likelihood of confusion. Moreover, we find this factor to be pivotal in that this factor of the dissimilarities of the marks outweighs the other factors such that confusion is not likely

And so the Board reversed the refusal.

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TTABlog comment: Some practitioners think it’s a “beautiful thing” any time a USPTO refusal is reversed. But these doctrine of equivalent cases are troublinglhy inconsistent, aren’t they?

Text Copyright John L. Welch 2019.