IP Law Daily, TRADEMARK—TTAB: No likelihood of confusion between NASHÉ BEAUTY and NISHA marks, (Apr 4, 2025)

By Carolin Dennis, B.Sc., LL.B., LL.M.

An opposition to trademark registration based on likelihood of confusion was dismissed because the marks were more dissimilar than similar.

In a nonprecedential decision, the Trademark Trial and Appeal Board (TTAB) found no likelihood of confusion and dismissed the opposition to registration of the applicant’s mark NASHÉ BEAUTY (standard characters, BEAUTY disclaimed) under Section 2(d) of the Trademark Act. The TTAB concluded that there are significant differences in appearance, pronunciation, and commercial impression between NASHÉ BEAUTY and NISHA when the marks are considered in their entireties (Gehlot v. MacDonald, No. 91283147 (T.T.A.B. Mar. 17, 2025)).

Background. Applicant, Scott MacDonald, sought registration on the Principal Register of the mark NASHÉ BEAUTY (standard characters, BEAUTY disclaimed), for a variety of hair, skin, and body care goods in International Class 3. Opposer, Jetharam Nemaram Gehlot, opposed registration on the ground of priority and likelihood of confusion based on his ownership of Registration No. 6836542 and application Serial No. 90614275 for the mark NISHA (standard characters) for a variety of hair and personal care products in International Class 3. The opposer also claimed common law rights in NISHA for a wide range of skin, hair care, and hand care products, and alleged that the applicant lacks a bona fide intention to use the mark in commerce. The applicant denied these allegations and filed a counterclaim to cancel the opposer’s Registration No. 6836542, citing abandonment, nonuse, and non-ownership. The applicant’s naked licensing claim was tried by implied consent.

Applicant’s counterclaims: abandonment, nonuse and ownership. In addressing the claim of abandonment, the TTAB noted that for a mark to be deemed abandoned, nonuse must be coupled with an intent not to resume such use. The applicant stated that the opposer only provided documentation demonstrating use in commerce for hair dye, shampoo, conditioner, hand wash, and soap during discovery. The applicant specifically identified "Henna for cosmetic purposes and mehndi preparations in the nature of henna for cosmetic purposes" as allegedly abandoned from the subject registration. However, based on the evidence presented, the TTAB found that the applicant has not established by a preponderance of the evidence abandonment with no intent to resume use of all of the goods or the henna goods for Registration No. 6836542. Nor has the applicant established that the opposer never used the mark in connection with all of the goods or the henna goods. The applicant also asserted abandonment based on naked licensing, arguing that the opposer failed to exercise the necessary control over the nature and quality of the goods. The applicant claimed that none of the opposer’s licenses contain any quality control conditions, making them invalid naked licenses. The opposer countered that he provides sufficient control as a director of the licensee, Yutika Natural Pvt Ltd. The TTAB found that this provides some evidence of a special relationship for adequate quality control and oversight. Thus, the applicant has not met the burden to establish abandonment based on naked licensing.

The TTAB found no evidence to support the claim that the opposer failed to use the mark on all goods by the application filing date, thus Registration No. 6836542 was not void ab initio. Regarding partial nonuse from the application filing date, the TTAB determined that an incomplete evidentiary picture prevented any inference of partial nonuse of the opposer’s henna goods on the filing date of the application. Consequently, the applicant failed to meet its burden on the nonuse or partial nonuse claim. The applicant also argued that Yutika Natural Pvt Ltd. is the actual owner of the mark NISHA and based this assumption on the internet webpages and LinkedIn pages it submitted under notice of reliance. The TTAB determined that the evidentiary record was not sufficiently developed to meet the applicant’s burden of proof to find non-ownership of Registration No. 6836542. Thus, the applicant did not establish that the opposer was not the owner of the trademark NISHA, and the counterclaim against Registration No. 6836542 based on non-ownership was denied.

Likelihood of confusion claim. The TTAB, upon considering the DuPont factors for evaluating likelihood of confusion, found that there was not a likelihood of confusion. The applicant’s cosmetic preparations for the hair and scalp were broad enough to encompass the opposer’s hair treatment preparations for cosmetic purposes. The TTAB found the goods identical in part. Thus, the second DuPont factor weighed in favor of likelihood of confusion. The similarity of the trade channels and classes of purchasers for the identical in part goods also weighed in favor of likelihood of confusion. Thus, the third DuPont factor also weighed in favor of likelihood of confusion. The opposer argued that cosmetics and personal care items are relatively inexpensive, making them susceptible to impulse purchase, which increases the risk of consumer confusion. The applicant argued that many of its goods were sold at the high price point of around $60-$90 for 30ml of product. However, the TTAB noted that while there may be some purchasers who will exercise care in purchasing hair care products or hair color, there was no evidence that the least sophisticated potential consumers of the goods will exercise anything more than ordinary care in their purchases. Therefore, the fourth DuPont factor was neutral.

The TTAB noted that the test, under the first DuPont factor, is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods offered under the respective marks is likely to result. The applicant argued that the marks were visually and phonetically distinct and that the pronunciations of each mark were distinct. The TTAB noted that to the extent NISHA and NASHÉ have certain letters in common, there are some similarities in appearance, but there are also some dissimilarities in their appearance due to the differences in the initial and end vowels for the terms NISHA and NASHÉ as well as the addition of an accent mark on the end vowel in NASHÉ. The TTAB found that based on all reasonable pronunciations, there were significant differences in sound between NASHÉ and NISHA. Additionally, the TTAB also found differences in appearance and pronunciation between NASHÉ BEAUTY and NISHA when the marks were considered in their entireties. Therefore, the TTAB found the marks were dissimilar, and the dissimilarity of the marks was a sufficient basis to conclude that no confusion was likely.

Conclusion. Accordingly, the TTAB dismissed the opposition under Section 2(d), and the ownership claim was given no consideration. The applicant’s counterclaims for abandonment, nonuse and ownership were denied.

Concurring-in-part opinion. Administrative Trademark Judge Brock, wrote separately, concurring in part and dissenting in part with the majority opinion, to express her view that she would find that the marks are sufficiently close in overall commercial impression such that confusion is likely. In her view, since the marks were coined terms or non-English words, there was no clear meaning or difference in meaning. She dissented only with the decision to dismiss the opposition under Section 2(d) and would sustain.

The Case is Opposition No. 91283147

Judge: Goodman, C.

Attorneys: Jeff Goehring (Nixon & Vanderhye P.C.) for Jetharam Nemaram Gehlot. Rhett V. Barney (Lee & Hayes, P.C.) for Scott MacDonald.

Cases: Trademark USPTO