IP Law Daily, TRADEMARK—TTAB: Identical marks were likely to cause confusion when used with swimwear and scarves, (Nov 8, 2024)

By Kevin M. Finson

Marks for swimwear and scarves were likely to be confused because they were identical and the goods were related enough that consumers would expect them to emanate from the same source when sold under the same mark.

A seller of swimwear’s proposed mark VITAMIN SEA was likely to be confused with an identical mark registered for use with scarves, the Trademark Trial and Appeal Board has held. The goods were related because numerous third-party sellers sold both under the same mark (In re Orlando Bathing Suit, LLC, No. 97782597 (T.T.A.B. Nov. 4, 2024)).

Orlando Bathing Suit, LLC (Orlando) sought registration on the Principal Register of the standard character mark VITAMIN SEA for “swimwear” in International Class 25. The Examining Attorney refused registration on the ground of likelihood of confusion with the existing registered mark VITAMIN SEA in standard characters for “scarves” in International Class 25. Orlando appealed. The Trademark Trial and Appeal Board (TTAB) considered the DuPont factors for which there was evidence of record.

Similarity of the marks. The marks were identical. This factor weighed heavily in favor of a finding of a likelihood of confusion.

Similarity of the goods. The Board noted that the Examining Attorney focused his argument entirely on “scarves,” which shared a Class with the application’s “swimwear,” but that it believed other goods in the registration such as “beach bags” and “towels” in other International Classes were also relevant. Nevertheless, the Board focused on the relatedness of scarves and swimwear, finding numerous examples of third-party sellers selling both scarves and swimwear under the same mark, showing that the goods were related. This factor weighed in favor of a likelihood of confusion.

Conceptual strength of the registered mark. Orlando submitted search results for registered marks in International Class 25 containing the words VITAMIN, SEA or C, and the combination of the two elements together, to show third party use of similar marks.

The Board, however, found that many of these marks were for unrelated goods or were co-owned variations of what was essentially one mark. Ultimately, the numerous registrations submitted were reduced to only three that were both slightly similar to the mark in question and identified the same or related goods. The Board held that this fell far short of showing conceptual weakness, and gave the registered mark the normal scope of protection to which inherently distinctive marks were entitled.

Orlando did not address any other DuPont factor in its briefing. Balancing the factors, the Board affirmed the refusal to register.

The Case is Serial No. 97782597.

Judge: Thurmon, M.

Attorneys: Kevin S. Tuttle (Spencer Fane LLP) for Orlando Bathing Suit, LLC. William Verhosek for the USPTO.

Companies: Orlando Bathing Suit, LLC

Cases: Trademark USPTO