IP Law Daily, TRADEMARK—TTAB: Confusion unlikely between Metabeauty’s ‘12’ mark and registered ‘TWELVE COSMETICS’; refusal reversed, (Jan 30, 2025)

By Mina Capouet, J.D., LL.M.

The coexistence of third-party registrations for the same or similar goods was probative of the conceptual weakness of the shared feature of applicant’s and registrant’s marks for cosmetics and hair care.

The Trademark Trial and Appeal Board has reversed a likelihood-of-confusion-based refusal to register a mark with the number “12” for skin care and various cosmetic services and supplies. The Board determined that the coexistence of various third-party registrants that also featured the number “12” or word “TWELVE” in their marks and sold cosmetics and/or hair care was probative of the conceptual weakness of “12” or “TWELVE” in connection with cosmetics. In addition, the applicant’s carrier design, which had a medallion like appearance, conveyed a “very different” commercial impression. These factors weighed in favor of a determination that confusion was not likely between applicant’s “12” mark and the registered mark “TWELVE COSMETICS,” despite the relatedness of the goods sold under the respective marks (In re Metabeauty, Inc., No. 97492557 (T.T.A.B. Jan. 28, 2025)).

Applicant Metabeauty, Inc. sought registration of its mark on the Principal Register in connection with non-medicated skin care preparations in International Class 3 and both retail and online store services featuring medical supplies featuring medical supplies, cosmetics, dermatologicals, and tools used for application of lotions, masks, serums, oils, exfoliants and creams; providing consumer product information to consumers and doctors, physicians and medical practitioners about skin-care preparations in International Class 3. The proposed mark was a design featuring the number “12.” The examining attorney refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), due to likelihood of confusion with the registered mark “TWELVE COSEMTICS” for cosmetics and private label cosmetics in International Class 3. The applicant appealed to the Board.

Nature of goods or services. In considering the second DuPont factor relating to the nature of goods and services, trade channels, and classes of consumers, the Board began by explaining that the issue is not whether there could be confusion of the goods and services with each other, but “rather whether the public will be confused as to their source.” In considering whether the origin of the goods or services in the minds of consumers were the same, the Board looked to evidence presented by the examining attorney showing that the applicant’s types of goods, non-medicated skin care preparations and services, as well as the registrant’s types of goods, namely cosmetics, were sold under the same mark at beauty retailers. The Board noted examples of screen captures from popular on-line beauty retailers such as www.sephora.com, www.ulta.com, and www.bluemercury.com, showing that applicant’s goods and services and the registrant’s goods are “marketed and sold under a single trademark in the same trade channels and offered to the same classes of consumers.” Noting that establishing relatedness “for any item encompassed by the identification of goods or services within a particular class” is sufficient for a finding of likelihood of confusion, the Board concluded that these factors weighed in favor of confusion.

Conceptual weakness. Before analyzing the similarity of the marks, the Board considered the conceptual weakness, or lack of distinctiveness, of the number 12/TWELVE. In doing so, the Board remarked that a weaker registered mark would have a “comparatively narrower range of protection,” thus allowing an applicant’s mark to come closer without causing a likelihood of confusion. Furthermore, the Board noted that relevant to the analysis of a mark’s conceptual strength are third party registrations because they ‘“show the sense in which a mark is used in ordinary parlance,’ that is, some segment that is common to both parties’ marks may have ‘a normally understood and well-recognized descriptive or suggestive meaning, leading to the conclusion that that segment is relatively weak[.]”’ Ten third-party marks from nine different third-parties also had the number “12” or “TWELVE,” which the Board took to be probative of the conceptual weakness of the number “12” and “TWELVE.” Because these marks containing the “12” or “TWELVE” element with varying levels of distinction created by other elements had coexisted for the same or similar goods—cosmetics or hair care—the Board concluded that the common element “12” or “TWELVE” was conceptually weak, weighing against a finding that confusion was likely.

Dissimilarity of the marks. Lastly, the Board compared the marks “12” and “TWELVE COSMETICS,” looking at the similarity in their entireties as to appearance, sound, connotation, and commercial impression. Noting that “COSMETICS” in the registrant’s mark is disclaimed as a generic term that is typically less significant, the Board found the memorable element in TWELVE COSMETICS was the word “TWELVE.” As for the applicant’s mark, the Board found that while the number “12” is more memorable than the green, curved octagon surrounding the number, the carrier design and color added to the commercial impression of the mark, “creating a medallion like appearance.” In comparing the two marks, the Board determined that the “structure and appearance” of the registrant’s mark, which are two words, is “very different” from the applicant’s mark, a green colored design element. The green design element conveyed a distinguishable appearance and commercial impression; the dissimilarity of the marks weighed against likely confusion.

The Board concluded that while the first two factors favored finding a likelihood of confusion, the weakness of the number “12” and the word “TWELVE” with respect to cosmetics considered together with the dissimilarities of the marks weighed against likely confusion. The Board therefore reversed the refusal to register.

The Case is Serial No. 97492557.

Judge: Kuhlke, K.

Attorneys: Heidi Tandy (Berger Singerman, LLP) for MetaBeauty, Inc. Holland Hauenstein for the USPTO.

Companies: MetaBeauty, Inc.

Cases: Trademark USPTO