IP Law Daily, TRADEMARK—TTAB: Lack of home goods’ relatedness to makeup and skin care outweighs similarity between marks, (May 14, 2024)

By Patricia K. Ruiz, J.D.

The TTAB found the fact that two different items can be found in the same store is not a sufficient basis for a finding that the goods are related.

The Trademark Trial and Appeal Board (TTAB) reversed an examining attorney’s refusal to register an applicant’s mark ELLEMENTRY for home goods. The TTAB determined that, while the applied-for mark was somewhat similar to the registered mark ELEMENTRE for skin care and makeup, the lack of relatedness of goods covered by the marks makes commercial confusion unlikely (In re Dileep Essentials Pvt. Ltd. , No. 90978154 (TTAB May 8, 2024)).

Refusal to register. Sileep Essentials Pvt. Ltd. Sought registration on the Principal Register of the mark ELLEMENTRY (in standard characters) for a variety of home goods, including kitchenware, linens, and décor. The examining attorney refused registration under §2(d) of the Trademark Act (15 U.S.C. §1052(d) (1946)) as to all classes, finding the mark is likely to be confused with the registered mark ELEMENTRE (stylized) for goods including non-medicated skin cleansing and make-up products and a Principal Register mark consisting of a nucleus design and the word E1EMENTARY, written in lowercase letters with the number one instead of the letter L, for body cream soap.

Appeal. On appeal by the applicant, the TTAB reversed the refusal to register. Section 2(d) of the Trademark Act prohibits registration of a mark that so resembles a registered mark as to be likely, when used on or in connection with the goods or services of the applicant, to cause confusion, to cause mistake, or to deceive. Two key considerations are the similarities between the marks and the similarities between the goods.

Similarities between marks. As to the similarities between the marks, the TTAB found no likelihood of confusion between the applied-for mark and the ELEMENTRE (stylized) mark or between the applied-for mark and the nucleus design mark. Turning to the phonetic similarities, the TTAB found the strength or weakness of the cited registration to be neutral in the likelihood of confusion analysis. Turning to the similarity and dissimilarity of the marks, the TTAB found the overall commercial impressions of the marks to be very similar, due to similarities in appearance, sound, and likely similar connotation for many consumers as a misspelling or phonetic equivalent of “elementary,” with the same meaning.

Similarities between goods and services. As to the similarities between the goods or services as described in an application or registration, the TTAB found the evidence does not support a finding of relatedness. The TTAB was unpersuaded by evidence showing stores Anthropologie and Urban Outfitters selling goods similar to those of both parties, noting that the mere fact that two different items can be found in a supermarket, department store, drugstore, or mass merchandiser store is not a sufficient basis for a finding that the goods are related. The TTAB concluded that there is no basis to find, on the record, that offering soap, cosmetics, and perfume, as well as various home goods, under the same mark is a common practice such that the public expects these items to originate from the same source. The TTAB found that the lack of relatedness of goods and services outweighs any similarity of the marks and reversed the examining attorney’s refusal to register the applicant’s mark ELLEMENTRY.

The Case is Serial No. 90978154.

Judge: Goodman, C.

Attorneys: Stephen P. McNamara (St. Onge Steward Johnston & Reens LLC) for Dileep Essentials Pvt. Ltd. Shaila Settles Lewis for the USPTO.

Companies: Dileep Essentials Pvt. Ltd.

Cases: Trademark USPTO