IP Law Daily, TRADEMARK- Fed. Cir.: TTAB decision denying cancellation of ‘BABIES’ MAGIC TEA’ mark vacated and remanded, (Feb 15, 2024)

By Saurabh Kashyap, B.A., LL.B.

Appellate court finds TTAB’s likelihood of confusion analysis was erroneous.

The US Court of Appeals for the Federal Circuit vacated and remanded for reevaluation a decision of the Trademark Trial and Appeal Board (TTAB), which denied cancellation of the mark BABIES' MAGIC TEA (standard characters) after finding no likelihood of confusion with the petitioner’s mark BABY MAGIC (standard characters). The court ruled that, in its likelihood of confusion analysis, the Board had erred in weighing the similarity of the marks and had failed to address relevant evidence concerning the similarity of trade channels (Naterra International, Inc. v. Bensalem, February 15, 2024, Cunningham, T.).

Background. Samah Bensalem (Bensalem) owns the registration for the standard character mark BABIES’ MAGIC TEA for “medicated tea for babies that treats colic and gas and helps babies sleep better.” Naterra International, Inc. (Naterra) owns four registrations for the standard character mark BABY MAGIC covering numerous toiletry goods. Naterra filed a Petition for Cancellation before the TTAB alleging that the use of Bensalem’s BABIES’ MAGIC TEA mark is likely to cause confusion, mistake, or deception and thus violates section 2 (d) of the Lanham Act. After conducting its analysis under the DuPont factors, the Board denied Naterra's petition, stating that it failed to prove a likelihood of confusion. Naterra appealed this decision.

Naterra’s contentions. Firstly, Naterra contended that substantial evidence did not support the Board’s finding that the similarity and nature of the goods (DuPont factor two) and trade channels (DuPont factor three) disfavored a likelihood of confusion. Secondly, Naterra argued that the Board erred by failing to give greater weight to the similarity of the marks (DuPont factor one) and the fame of the BABY MAGIC mark (DuPont factor five) in its likelihood of confusion analysis.

Similarity of goods. The court criticized the TTAB's dismissal of evidence suggesting relatedness between baby ingestible and skin care products in assessing consumer confusion under the second DuPont factor. The court highlighted a missed consideration of "umbrella branding" and "natural zones of expansion," referencing the precedent of Recot, Inc. v. Becton, where the Board's failure to consider lay evidence on related goods was deemed erroneous.

Similarity of trade channels. The court held that the TTAB erroneously concluded that overlapping customer bases and the online presence of both parties' goods on major retail platforms did not establish similarity in trade channels. The court also highlighted the Board's oversight in disregarding Bensalem's acknowledgment of shared trade channels.

Similarity of marks. The court criticized the Board for not adequately weighing the first DuPont factor in its analysis. Citing Detroit Athletic, the court stated that the generic or descriptive nature of additional words in trademarks, such as "TEA," in this case, does not alter the overall commercial impact, thereby necessitating a heavier consideration of the first DuPont factor in confusion analysis. Although Naterra argued for this factor to be decisive on its own, the court refrained from ruling on this point, choosing instead to vacate the Board's decision due to errors in analyzing other relevant DuPont factors and remanded the case for reevaluation.

Fame of the mark. The TTAB had found insufficient evidence to deem Naterra's BABY MAGIC mark famous, citing a lack of sales data and critical recognition. The court upheld this finding and rejected Naterra's argument for assigning greater weight to fame in the likelihood of confusion analysis.

The Case is No. 22-1872.

Attorneys: Jorge Miguel Hernandez (Carstens, Allen, & Gourley, LLP) for Naterra International, Inc. Jeffrey Sturman (Sturman Law LLC) for Samah Bensalem.

Companies: Naterra International, Inc.

Cases: Trademark FedCirNews USPTO