IP Law Daily, TRADEMARK—TTAB: GUESS for dietary supplements not likely to be confused with GUESS? mark, (Sep 23, 2022)

By Kevin M. Finson, J.D.

The opposer failed to show that the proposed mark GUESS for supplements would be likely to be confused with its registered mark GUESS for apparel and fashion goods because there was no evidence that the goods were related.

A seller of popular designer clothing and apparel and various other goods under the Guess? brand was unable to show that a supplement company’s use of the mark GUESS was likely to cause consumer confusion, the Trademark Trial and Appeal Board has held. Because there was no evidence in the record to show that the goods were related or likely to be offered by the same source, the opposition was dismissed (Guess? IP Holder L.P. and Guess?, Inc. v. JHO Intellectual Property Holdings, LLC, September 21, 2022, Johnson, M.).

JHO Intellectual Property Holdings, LLC (JHO) sought registration on the Principal Register of the standard character mark GUESS for dietary supplement drinks, drink mixes, supplements, and related goods in International Class 5 and for energy drinks, shots, sports drinks, and related goods in International Class 32. Guess? IP Holder LP and Guess?, Inc. (collectively, “Guess?”) opposed registration on the ground of likelihood of confusion with their registered and common law rights in the mark GUESS for use with a wide variety of goods, including beverages. JHO did not file a brief. The Board considered the DuPont factors for which there was evidence of record.

Relatedness of goods, channels of trade, and purchasers. Guess?’s registrations listed a large variety of goods, including perfume, sunglasses, laptop and phone cases, fashion information, watches, jewelry, and clothing. Guess? provided no evidence showing that the same entity offered both these goods and those identified by JHO. There was no evidence of third-party registrations offering both sets of goods, no information on characteristics of purchasers, and no information on the channels of trade. The Board held that with no relevant evidence in the record Guess? had failed to carry its burden on these factors and they therefore weighed heavily against a finding of likelihood of confusion.

Strength of the registrations. The Board noted that the GUESS mark had no descriptive meaning and was therefore inherently strong. Guess? argued that its mark was famous based on a declaration of one of its executives detailing use of the mark in retail generally, but made no assertions specific to the goods and services at issue in the present case. The closest it came was use, but not fame, of GUESS-branded bottled water, beverage cups, and similar items at its events. Balancing the inherent strength with the lack of evidence of fame, the Board held that the registered marks were entitled to an ordinary scope of protection.

Similarity of the marks. The standard character marks were identical. Guess? also held a registration for a composite mark which consisted of the word “guess” with a question mark enclosed in a triangle. Because JHO’s application covered the literal portion of this mark, the marks were considered highly similar in appearance and sound. This factor weighed heavily in favor of a likelihood of confusion.

Balancing the factors, the Board held that because there was no evidence at all that the goods were related, even the great similarity of the marks did not show a likelihood of confusion. Guess?’s claims to common law rights in the mark failed because Guess? could not show priority, having provided only undated photos of its relevant use of the mark and lacking details from which prior use could be determined. The Board dismissed the opposition.

The Case is Serial No. 91254243.

Attorneys: Michael MacDermott (Lewis Roca Rothgerber Christie LLP) for Guess? IP Holder L.P and Guess?, Inc. Frank Massabki for JHO Intellectual Property Holdings, LLC.

Companies: Guess? IP Holder L.P.; Guess?, Inc.; JHO Intellectual Property Holdings, LLC

Cases: Trademark USPTO