Ari Brands, LLC

Trademark Trial and Appeal BoardJun 8, 2021

88019713 (T.T.A.B. Jun. 8, 2021)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: June 8, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Ari Brands, LLC _____ Serial No. 88019713 _____ Troy M. Mueller of The Mueller Firm, P.C. for Ari Brands, LLC. Joanna Han, Trademark Examining Attorney Law Office 126, Andrew Lawrence, Managing Attorney. _____ Before Wolfson, Adlin, and Johnson, Administrative Trademark Judges. Opinion by Wolfson, Administrative Trademark Judge: Applicant, Ari Brands, LLC, seeks registration on the Principal Register of the stylized mark depicted below (“BRANDS” disclaimed) for: Beauty creams; Cosmetic creams; Cosmetic preparations for eyelashes; Face creams; Non-medicated facial and eye serum containing antioxidants; After-shave creams; After- Serial No. 88019713 - 2 - sun lotions; After shave lotions; After sun creams; Aftershave; Aftershave preparations; Anti-aging cream; Anti-wrinkle cream; Beauty lotions; Body cream; Body lotions; Cosmetic preparations, namely, firming creams; Cosmetic preparations, namely, firming lotions; Cosmetic sunscreen preparations; Cosmetic sun-protecting preparations; Cosmetics and cosmetic preparations; Creams for cellulite reduction; Eye cream; Facial cleaning preparation, namely, salicylic acne cleanser not for medical purposes; Facial cream; Hair care preparations; Lip balm; Lotions for cosmetic purposes; Lotions for strengthening the nails; Make-up removing lotions; Massage lotions; Nail cosmetics; Nail cream; Night cream; Non-medicated diaper rash ointments and lotions; Pre-shave creams; Shaving cream; Shaving preparations; Skin cream; Skin fresheners; Skin lotion; Sunscreen creams, in International Class 3 and Acne medications; Acne treatment preparations; Analgesic and muscle relaxant pharmaceutical preparations; Anti- itch cream; Antibacterial pharmaceuticals; Balms for pharmaceutical purposes; Gels, creams and solutions for dermatological use; Herbal supplements for sleeping problems; Medical preparations, namely, foot, hand and skin creams for diabetics; Medicated after-shave lotions; Medicated cosmetics; Medicated creams for treating dermatological conditions; Medicated diaper rash ointments and lotions; Medicated hair care preparations; Medicated hair lotions; Medicated lip balm; Medicated lotions for treating dermatological conditions; Medicated lotions for boosting energy; Medicated skin care preparations, namely, creams, lotions, gels, toners, cleaners and peels; Medicated sunscreen; Medicinal creams for skin care; Natural sleep aid preparations; Nutritional supplements; Nutritional supplements for boosting energy; Nutritional supplements in lotion form sold as a component of nutritional skin care products; Pharmaceutical preparation for skin care; Pharmaceutical preparations for wounds; Pharmaceutical products and preparations to prevent stretch marks; Pharmaceutical skin lotions; Sleeping pills/tablets; Sports cream for relief of pain; Vitamins, Serial No. 88019713 - 3 - in International Class 5.1 The Trademark Examining Attorney refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as applied to the goods identified in the application, so resembles the mark ARI BY ARIANA GRANDE for “Perfume; eau de parfum; fragranced body care preparations, namely, body lotions, body scrubs” in International Class 3, as to be likely to cause confusion, to cause mistake, or to deceive consumers.2 When the refusal was made final, Applicant appealed. Both Applicant and the Examining Attorney filed briefs.3 We affirm the refusal to register. I. Likelihood of Confusion Section 2(d) of the Trademark Act prohibits registration of a mark that so resembles a registered mark as to be likely, when used on or in connection with the goods or services of the applicant, to cause confusion, mistake, or deception. 15 U.S.C. § 1052(d). Our determination under Section 2(d) is based on an analysis of all probative facts in the record that are relevant to the likelihood of confusion factors set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 1 Application Serial No. 88019713 was filed on June 28, 2018. The filing basis for “beauty creams; cosmetic creams; cosmetic preparations for eyelashes; face creams; non-medicated facial and eye serum containing antioxidants” is Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), based upon Applicant’s allegation of use in commerce at least as early as February 28, 2017. All other goods were filed under Section 1(b), 15 U.S.C. § 1051(b), based upon Applicant’s bona fide intent to use the mark in commerce. 2 Reg. No. 4861199 issued November 24, 2015, on the basis of priority derived from International Reg. No. 4861199, issued June 5, 2015. 3 Applicant filed an overly long Reply brief, which has not been considered. See March 18, 2021 Board order; Trademark Rule 2.128(b) (“reply brief shall not exceed twenty-five pages in its entirety”). Serial No. 88019713 - 4 - (CCPA 1973) (“DuPont”); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). The Board considers only those DuPont factors for which there is evidence and argument. In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019); see also Stratus Networks, Inc. v. UBTA-UBET Commc’ns Inc., 955 F.3d 994, 2020 USPQ2d 10341, *3 (Fed. Cir. 2020) (“Not all DuPont factors are relevant in each case . . . .”). Two key considerations are the similarities between the marks and the relatedness of the goods. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.”). A. Relatedness of the Goods The second DuPont factor “considers ‘[t]he similarity or dissimilarity and nature of the goods or services as described in an application or registration,” In re Detroit Athletic Co., 128 USPQ2d at 1051 (quoting DuPont, 177 USPQ at 567). The goods need not be identical, but “need only be related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that they emanate from the same source.” Coach Servs., 101 USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). Under this DuPont factor, the Examining Attorney need not prove, and we need not find, similarity as to each and every product listed in the description of goods. It Serial No. 88019713 - 5 - is sufficient for a refusal based on likelihood of confusion that relatedness is established for any item encompassed by the identification of goods in a particular class in the application. Tuxedo Monopoly, Inc. v. General Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). See also In re i.am.symbolic, llc, 116 USPQ2d at 1409; Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014). Because Applicant’s description of Class 3 goods includes “body lotions,” the goods are in part identical to the “fragranced body care preparations, namely, body lotions” in the cited registration. Furthermore, because Applicant’s description of Class 5 goods includes “medicated skin care preparations, namely, . . . cleaners and peels,” the goods are presumed to be included among Registrant’s more broadly identified “fragranced body care preparations, namely, . . . body scrubs,” and thus are also in part legally identical. Applicant argues that its Class 5 goods and Registrant’s Class 3 goods are sufficiently different to avoid confusion: “Applicant’s purposes are directed at treating ailments, skin conditions, sports injuries, and sleeping problems” and “have nothing to do with beautifying, promoting attractiveness, or altering the appearance.” Appeal Brief, 4 TTABVUE 23. However, the alleged purpose of the goods is not reflected in either Applicant’s or Registrant’s identification of goods. The evidence establishes that the same entity commonly sells non-medicated fragrance (and fragrance-free) cosmetic preparations with medicated lotions and creams under the same mark through the same trade channels, and that these products are used by the same classes of consumers. Thus, Applicant’s and Registrant’s goods are in-part identical Serial No. 88019713 - 6 - and otherwise highly related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009). The second DuPont factor regarding the similarity or dissimilarity of Applicant’s and Registrant’s goods heavily favors a finding of likelihood of confusion. B. Trade Channels and Classes of Consumers The third DuPont factor considers “the similarity or dissimilarity of established, likely-to-continue trade channels.” DuPont, 177 USPQ at 567; see also Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161- 63 (Fed. Cir. 2014). Because the goods described in the application and the cited registration are in part identical, we must presume that the channels of trade and classes of purchasers are the same as to those goods. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (identical goods are presumed to travel in same channels of trade to same class of purchasers); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical goods, the channels of trade and classes of purchasers are considered to be the same); United Global Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1049 (TTAB 2014); Am. Lebanese Syrian Ass’n Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011). The third DuPont factor favors a finding of likelihood of confusion. Serial No. 88019713 - 7 - C. Similarity of the Marks Under the first DuPont factor, we compare the marks “in their entireties as to appearance, sound, connotation and commercial impression.” Palm Bay Imps. v. Veuve Cliquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting DuPont, 177 USPQ at 567). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018), aff’d mem., 777 F. App’x. 516 (Fed. Cir. 2019) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014). We assess not whether the marks can be distinguished in a side-by-side comparison, but rather whether their overall commercial impressions are so similar that confusion as to the source of the goods offered under the respective marks is likely to result. Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (citing Coach Servs. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); see also Edom Lab’ys. Inc. v. Lichter, 102 USPQ2d 1546, 1551 (TTAB 2012). Because Applicant’s goods are in-part identical and otherwise closely related to Registrant’s goods, the degree of similarity necessary to find likelihood of confusion need not be as great as where there is a recognizable disparity between the goods. Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992); see also, In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); In re Dixie Rests., Inc., 105 F.3d 1405, 1408, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997). Serial No. 88019713 - 8 - The marks ARI BRANDS and ARI BY ARIANA GRANDE are similar in appearance and pronunciation due to the shared term “ARI.” Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985) (“Indeed, this type of analysis appears to be unavoidable.”). Applicant agrees that ARI is the dominant term in its mark, 4 TTABVUE 11,4 but disputes the Examining Attorney’s determination that ARI is the dominant term in the registered mark: “For products bearing [Registrant’s] mark, the important source identifying element is the component ‘ARIANA GRANDE’, whose celebrity demonstrably predominates on the products upon which [Registrant’s] mark appears.” Id. Applicant maintains that the term ARI in Registrant’s mark “primarily identifies the product – perfume – not its source,” and that “Ariana Grande, the person, is the immediate commercial impression consumers have when they view products bearing the mark ‘ARI BY ARIANA GRANDE’.” Id. at 12. Applicant’s arguments are misguided. The mark ARI BY ARIANA GRANDE identifies the source of Registrant’s perfume and not the perfume per se. Moreover, that Ms. Grande is a celebrity does not compel a finding that “Ariana Grande” dominates the mark or that, as Applicant argues, it is “the immediate commercial 4 All citations in this opinion to the appeal record are to TTABVUE, the docket history system for the Trademark Trial and Appeal Board. Citations to the prosecution history of the application are to pages from the Trademark Status & Document Retrieval (“TSDR”) database of the United States Patent and Trademark Office (“USPTO”). Serial No. 88019713 - 9 - impression consumers have.” Id. Consumers would likely perceive “ARI” as a nickname for “Ariana,” and as the first term in the mark, ARI is its most memorable term. See Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1049 (Fed. Cir 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”); Palm Bay, 73 USPQ2d at 1692 (“Veuve” is the most prominent part of the mark VEUVE CLICQUOT because “veuve” is the first word in the mark and the first word to appear on the label); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon encountering the marks, consumers will first notice the identical lead word). The overall commercial impression of the cited registered mark is as a brand for goods produced, sponsored, or designed by singer and actress Ariana Grande. Further, because Applicant’s mark is dominated by the stylized term ARI appearing in larger font over the smaller word “BRANDS,” and because the generic or descriptive term “BRANDS” has little source-identifying significance and has been disclaimed, consumers are likely to believe that Applicant’s mark is a shortened version of Registrant’s mark. See In re Bay State Brewing Co., 117 USPQ2d 1958, 1961 (TTAB 2016) (citing In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 219 (CCPA 1978) (Rich, J., concurring) (“the users of language have a universal habit of shortening full names—from haste or laziness or just economy of words”)); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); Barbara’s Bakery, Inc. v. Landesman, 82 USPQ2d 1283, 1288 (TTAB 2007) Serial No. 88019713 - 10 - (BARBARA’S BAKERY is similar to BARB’S BUNS BAKERY in short because Barb is a nickname or shortened version of Barbara). Similarly, some consumers may perceive ARI BY ARIANA GRANDE as one of the ARI BRANDS. The fact that Applicant’s mark is in a signature style font is unhelpful to Applicant. Because Registrant’s mark is presented in standard character form, the rights associated with the mark reside in the wording and not in any particular display. In re RSI Systems, LLC, 88 USPQ2d 1445, 1448 (TTAB 2008); see also In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1187 (TTAB 2018); In re Pollio Dairy Prods. Corp., 8 USPQ2d 2012, 2015 (TTAB 1988) (when registering mark in standard character form, registrant remains free to change the display of its mark at any time). Accordingly, the registered mark may display the wording “ARI” in the same font style as the applied-for mark. Applicant argues that the name “Ariana Grande” is “emphasized by engraving her name around the cap of the perfume bottle, centering it on the product packaging, and displaying her image prominently with the mark.” 4 TTABVUE 12. We may look to the manner of use of Registrant’s mark on its goods to consider whether the marks project “a confusingly similar commercial impression.” Am. Rice, Inc. v. H.I.T. Corp., 231 USPQ 793, 796 (TTAB 1986) (considering applicant’s promotional and marketing materials to determine likelihood of confusion); see also Nw. Golf Co. v. Acushnet Co., 226 USPQ 240, 244 (TTAB 1985) (“Evidence of the context in which a particular mark is used on labels, packaging, etc., or in advertising is probative of the significance which the mark is likely to project to purchasers.”). Here, Registrant’s manner of use Serial No. 88019713 - 11 - of its mark on its perfume corroborates our finding that ARI is the dominant portion of Registrant’s mark. As shown by the specimen of use filed on September 21, 2015, the word “by” is so small as to be virtually illegible, highlighting the term ARI as the brand of perfume designed by the singer and actress Ariana Grande: We are mindful that the “proper test is not a side-by-side comparison of the marks.” In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017). Instead, the emphasis “is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks or service marks.” Brooklyn Brewery Corp. v. Brooklyn Brew Shop, LLC, 2020 USPQ2d 10914, *18 (TTAB 2020); see also Double Coin Holdings Ltd. v. Tru Dev., 2019 USPQ2d 377409, *6 (TTAB 2019). Here, and ARI BY ARIANA GRANDE look and sound alike and are similar in connotation, projecting essentially the same overall commercial impression. Serial No. 88019713 - 12 - Applicant argues that the Examining Attorney’s refusal “is inconsistent with the USPTO’s prior decisions with regard to marks including the term ‘ARI’.” 4 TTABVUE 19. To show that the USPTO has registered marks containing the term ARI, Applicant submitted printouts of 76 third-party registrations for marks containing the letter string “a-r-i” as part of the mark. Only three of these marks use ARI as a separately recognizable term and not as matter merely merged into the remainder of the mark. The remainder of the third-party marks include the letter string “a-r-i” in marks that otherwise bear little relation to ARI as a name or as a separately recognizable word, as, for example, ARIEL, ARIES, ARITZIA, ARIMIVAR, ARIMISTANE, ARISTON, ARIMINO, and OLIO ARIE.5 The registrations where ARI is likely to be recognized as such are:  Reg. Nos. 2725323 and 2823751 for the mark for, inter alia, “pharmaceutical products for the prevention and for the treatment of cardiovascular diseases or disorders;” both registrations renewed.  Reg. No. 4730032 for the mark AriCar for “Hair sprays and hair gels; Hair styling gel; Hair styling spray;” registered May 5, 2015.  Reg. No. 5645094 for the mark HARPER + ARI for “Body scrub featuring exfoliating sugar cubes;” registered January 1, 2019. None of these marks are as similar to ARI BY ARIANA GRANDE as is Applicant’s mark. Although the goods in these third-party marks appear to be related to Registrant’s goods, each mark includes distinctive, arbitrary or suggestive additional 5 See March 16, 2020 Petition to Revive Abandoned Application and Response to Office Action, TSDR 8-93. Serial No. 88019713 - 13 - terms that distinguish them from Registrant’s mark. The mere three arguably similar marks do not compel a finding that the term ARI is weak. Suffice it to say, evidence of three marks bearing only slight similarity to Registrant’s mark has little probative value. Finally, Applicant argues that this case is similar to In re Strategic Partners, Inc., 102 USPQ2d 1397 (TTAB 2012), where the Board granted registration to the applicant’s application for the mark ANYWEARS on the basis of its ownership of a prior registration for the mark ANYWEAR. Here, Applicant owns Reg. No. 5764217 for the mark for the following goods in International Class 5: Acne medications; Acne treatment preparations; Nutritional supplements; Pharmaceutical preparation for skin care; Pharmaceutical preparations for wounds; Analgesic and muscle relaxant pharmaceutical preparations; Anti-itch cream; Antibacterial pharmaceuticals; Balms for pharmaceutical purposes; Gels, creams and solutions for dermatological use; Medicated cosmetics; Medicated creams for treating dermatological conditions; Medicated lip balm; Medicated lotions for treating dermatological conditions; Medicated skin care preparations, namely, creams, lotions, gels, toners, cleaners and peels; Medicinal creams for skin care; Pharmaceutical products and preparations to prevent stretch marks; Pharmaceutical skin lotions; Sports cream for relief of pain. This situation is not comparable to Strategic Partners. In that case, the Board made it clear that it was basing its decision to allow the marks to co-exist on the fact that “applicant already owns a registration for a substantially similar mark for the identical goods, and that applicant’s registration and the cited registration have Serial No. 88019713 - 14 - coexisted for over five years.” Strategic Partners, 102 USPQ2d at 1399. Those highly unusual facts are absent here. Applicant’s design mark registered on May 28, 2019, based on an allegation of use of August 16, 2018. Registrant’s mark registered on November 24, 2015. The marks have co-existed for only two or three years. Accordingly, Strategic Partners does not apply. As the Board explained under similar circumstances, This is significant not only because it is less time, but because the five-year milestone carries added weight because of its legal significance under the Lanham Act: it means that Applicant’s registration . . . is still subject to a cancellation action by Registrant based on likelihood of confusion. This represents a key factual distinction from Strategic Partners. In re U.S. Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793 (TTAB 2017). Because the marks ARI and ARI BY ARIANA GRANDE are similar in sight, sound, meaning and overall commercial impression, the first DuPont factor strongly favors a finding of likelihood of confusion. II. Summary The marks are similar in sight, sound, meaning and overall commercial impression and the goods are in-part identical or legally identical and otherwise closely related. We presume that the channels of trade and classes of consumers overlap, which the evidence amply demonstrates in any event. Thus, consumers familiar with the registered mark ARI BY ARIANA GRANDE for “Perfume; eau de parfum; fragranced body care preparations, namely, body lotions, body scrubs” who subsequently encounter Applicant’s mark ARI BRANDS for medicated or non- Serial No. 88019713 - 15 - medicated skin care preparations could easily believe, mistakenly, that Applicant’s goods are produced by, or affiliated with, Registrant. Decision: The refusal to register Applicant’s mark under Trademark Act Section 2(d) is affirmed.