IP Law Daily, TRADEMARK—TTAB: ‘GIVN’ mark for cosmetics and online retail services proceeds for registration, (Feb 20, 2025)

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

Despite being identical to the opposer’s mark for bottled water, the Board found no likely confusion due to distinct goods, separate trade channels, and differing purchasing patterns.

In a non-precedential decision, the Trademark Trial and Appeal Board (TTAB) dismissed Givn Goods, Inc.’s opposition to IBMG, LLC’s trademark applications for the standard character mark GIVN, ruling that the lack of relatedness between IBMG’s cosmetics and online retail services and Givn Goods’ bottled drinking water prevented a finding of likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d). The Board concluded that although the marks were identical, Givn Goods failed to provide sufficient evidence demonstrating that consumers would associate IBMG’s cosmetics and online retail services with its bottled water brand (Givn Goods, Inc. v. IBMG, LLC, Nos. 91281529 & 91281530 (T.T.A.B. Feb. 18, 2025)).

Background. IBMG filed two intent-to-use trademark applications under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), for the standard character mark GIVN. Application No. 97117960 in International Class 3 covered a range of cosmetics, including lipsticks, lip gloss, foundation, cleansers, moisturizers, face masks, nail polish, fragrances, and sunscreens. Application No. 97117966 in International Class 35 sought registration for online retail store services specializing in cosmetics, beauty, skincare, toiletry, fragrance, clothing, and promotional and product information services.

Givn Goods, Inc., owner of Registration No. 4594320 for the standard character mark GIVN covering bottled drinking water in International Class 32, opposed both applications. The opposition alleged that IBMG’s use of the identical mark GIVN on unrelated goods and services would cause consumer confusion and falsely suggest a common source.

Entitlement. Before addressing the merits of the opposition, the Board considered whether Givn Goods had standing under Section 13 of the Trademark Act, 15 U.S.C. § 1063. To establish standing, Givn Goods needed to demonstrate a real interest in the proceeding and a reasonable belief in damage. The Board found that Givn Goods met this requirement by owning an active federal registration for GIVN in connection with bottled water, establishing both a real interest in the proceeding and a reasonable belief in harm if IBMG’s mark were registered.

Likelihood of confusion analysis. To determine whether IBMG’s use of GIVN would likely cause confusion, the Board applied the factors outlined in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). The analysis focused on the strength of the opposer’s mark, the similarity of the marks, the relatedness of the goods and services, the trade channels through which they were marketed, and consumer purchasing behavior.

Strength of the opposer’s mark. The Board assessed the conceptual and commercial strength of Givn Goods’ mark. Conceptually, GIVN was found to be suggestive rather than merely descriptive, as it could evoke the idea of charitable giving. However, it was not inherently distinctive or arbitrary. The Board then examined whether the mark had acquired commercial strength, considering evidence such as promotional materials, advertising, and charitable partnerships. While Givn Goods presented marketing materials and evidence of social impact initiatives, the Board found that the company failed to provide persuasive sales figures, advertising expenditures, or consumer recognition surveys demonstrating widespread recognition of the GIVN brand. Without such evidence, the Board concluded that the mark was not commercially strong enough to warrant broad protection across unrelated industries.

Similarity of the marks. Since both marks were standard character marks, they were deemed identical in appearance, sound, and commercial impression. While identical marks generally favor a finding of likelihood of confusion, the Board reiterated that mark similarity alone is insufficient without sufficient relatedness of the goods and services.

Relatedness of goods and services. Givn Goods contended that consumers would associate bottled water and cosmetics with the same source, citing examples of Evian and Aquafina, which have expanded into skincare. The Board rejected this argument, noting that isolated brand extensions do not establish an industry-wide trend. The Board found no strong evidence suggesting that consumers would expect bottled water and cosmetics to originate from the same source.

Trade channels and consumer perception. The Board found no significant overlap between the trade channels for IBMG's and Givn Goods' products. Givn Goods' bottled water was primarily sold in grocery stores, restaurants, and food service outlets, whereas IBMG's cosmetics and retail services were aimed at online beauty consumers. Even though both products could be available on large e-commerce platforms such as Amazon, the Board found that mere coexistence in an online marketplace did not establish overlapping trade channels or a likelihood of consumer association.

Consumer purchasing behavior. The TTAB examined consumer behavior and purchasing considerations of the goods under consideration. It found that the opposer’s bottled water is a low-cost, frequently purchased consumer good, often bought with minimal deliberation. In contrast, the applicant’s cosmetics involve a higher degree of consumer scrutiny. Cosmetics are typically purchased based on brand reputation, product attributes, and personal preferences, whereas bottled water is often purchased based on convenience. Given these distinctions, the Board found that consumers were unlikely to assume a connection between the two brands simply because they shared the same name.

Bad faith and bona fide intent to use. Givn Goods asserted that IBMG lacked a bona fide intent to use the GIVN mark and acted in bad faith in filing its trademark applications. The Board rejected this argument, explaining that bad faith in a likelihood of confusion analysis requires an intent to deceive consumers, not merely an intent-to-use challenge. The Board determined that IBMG’s trademark applications contained sufficient evidence of intent to use the mark in commerce and that no evidence suggested an attempt to mislead consumers or capitalize on Givn Goods’ goodwill. The Board further noted that a lack of bona fide intent must be raised as a distinct claim rather than as part of a likelihood of confusion analysis, and since Givn Goods had not formally raised this issue as a separate claim, it was not a factor in the decision.

Conclusion. After weighing the DuPont factors, the Board concluded that while the marks were identical, the lack of relatedness between the goods and services, the absence of overlapping trade channels, and the differences in consumer purchasing behavior weighed against a finding of likely confusion. Givn Goods failed to provide persuasive evidence that consumers would mistakenly believe IBMG’s cosmetics and online beauty retail services were affiliated with its bottled water brand. Accordingly, the TTAB dismissed the opposition and allowed IBMG’s trademark applications in International Classes 3 and 35 to proceed to registration.

The Case is Opposition Nos. 91281529 & 91281530.

Judge: Lynch, C.

Attorneys: David Postolski (Gearhart Law LLC) for GIVN Goods, Inc. Sam E. Iverson (Pillsbury Winthrop Shaw Pittman LLP) for IBMG, LLC.

Companies: GIVN Goods, Inc.; IBMG, LLC

Cases: Trademark USPTO