IP Law Daily, TRADEMARK—TTAB: No likelihood of confusion between the marks BABIES’ MAGIC TEA and BABY MAGIC, (Dec 10, 2025)

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

Petition to cancel the registration of the mark BABIES’ MAGIC TEA was dismissed again on remand for failure to prove a likelihood of confusion.

On remand from the U.S. Court of Appeals for the Federal Circuit, the Trademark Trial and Appeal Board (TTAB) in a nonprecedential decision denied Naterra International, Inc.’s petition for cancellation of Bensalem’s registration of the mark BABIES’ MAGIC TEA, concluding that confusion is not likely. The TTAB, upon considering the DuPont factors for evaluating a likelihood of confusion, found that confusion was not likely because the differences in the goods, coupled with the conceptual weakness of the marks, outweighed the similarity of the marks and trade channels (Naterra International, Inc. v. Bensalem, No. 92074494 (T.T.A.B. Dec. 3, 2025)).

Background. Samah Bensalem (Bensalem) owns a registration on the Principal Register for the standard-character mark BABIES’ MAGIC TEA (with “BABIES’” and “TEA” disclaimed) for “medicated tea for babies that treats colic and gas and helps babies sleep better” in International Class 5. Naterra International, Inc. (Naterra) owns four registrations for the standard character mark BABY MAGIC covering numerous toiletry goods. Naterra filed a Petition for Cancellation before the TTAB alleging that the use of Bensalem’s BABIES’ MAGIC TEA mark is likely to cause confusion, mistake, or deception and thus violates section 2 (d) of the Lanham Act. After conducting its analysis under the DuPont factors, the TTAB denied Naterra’s petition, stating that it failed to prove a likelihood of confusion. Naterra appealed this decision. The Federal Circuit vacated and remanded for the TTAB to reevaluate its decision denying cancellation. The Federal Circuit concluded that the TTAB erred in weighing the first DuPont factor and failed to address relevant evidence concerning the third DuPont factor and that it could not discern whether the TTAB properly addressed relevant evidence concerning the second DuPont factor.

Likelihood of confusion. In determining whether confusion is likely, the TTAB considered all relevant DuPont factors. The TTAB noted that that the two dominant factors in the likelihood of confusion analysis are similarity of the marks and similarity of the goods. In the Prior Decision, under the first DuPont factor, the TTAB found that “the marks BABY MAGIC and BABIES’ MAGIC TEA are more similar than dissimilar in appearance, sound, connotation and commercial impression.” The TTAB stood by that finding and noted that while the marks share common elements (“BABY/BABIES” and “MAGIC”), they are not identical or highly similar, as the addition of “TEA” and the possessive form create distinctions in appearance, sound, and overall commercial impression that moderate their similarity. Thus, the TTAB found the marks to be more similar than dissimilar but did not find the marks highly similar or identical. Accordingly, the TTAB weighed the first DuPont factor in favor of concluding confusion is likely, but it determined that this factor does not deserve dispositive weight.

Turning to the second DuPont factor, the TTAB noted that Naterra relied entirely on the testimony of its expert witness, Dr. Tongil Kim, who testified generally about the marketing concept known as “umbrella branding” and what he characterizes as “BABY MAGIC’S Natural Zone of Expansion.” The TTAB was looking for specific evidence of the relatedness of the goods in Naterra’s and Bensalem’s registrations in the minds of U.S. consumers. However, Dr. Kim discussed umbrella branding in a global sense, rather than focusing on the U.S. market explicitly. He provided nine-pages of testimony, but devoted just a single page to what, in essence, are anecdotal accounts of five companies that provide umbrella branding, but not with respect to the U.S. market in particular or the goods at issue in this case. Thus, Dr. Kim’s testimony did not support a finding that the specific goods identified in the parties’ registrations are related in the mind of the U.S. consuming public as to their origin. Having reconsidered the testimony as the Federal Circuit instructed, The TTAB again found that Naterra failed to show that the goods are related. Therefore, the TTAB weighed the lack of relatedness of the goods under the second DuPont factor against a finding that confusion is likely.

The third DuPont factor considers the similarity or dissimilarity of established, likely-to-continue trade channels. The TTAB noted that Bensalem has admitted that the channels of trade for the goods provided under the parties’ respective marks are similar, and that it sells its BABIES’ MAGIC TEA to “parents of babies and caregivers of babies,” which are obviously the same customers of Naterra’s BABY MAGIC products. Therefore, the TTAB found that the channels of trade are similar. Accordingly, the third DuPont factor weighed in favor of a finding that confusion is likely.

The TTAB found Naterra’s BABY MAGIC mark is somewhat conceptually weak and lacks demonstrated commercial strength. Thus, the fifth DuPont factor weighed against a finding that confusion is likely. However, the TTAB found the fourth, sixth, eighth, tenth, and twelfth DuPont factors were neutral.

In conclusion, in balancing all of the DuPont factors, the TTAB denied the petition for cancellation because the differences in the goods, coupled with the conceptual weakness of the marks, outweigh the similarity of the marks and trade channels. The TTAB also noted that as the Federal Circuit has recognized, even where marks share similarities, the absence of a demonstrated relationship between the specific goods can preclude a finding of confusion.

The Case is Cancellation No. 92074494.

Judge: Lebow, M.

Attorneys: David W. Carstens (Carstens, Allen & Gourley, LLP) for Naterra International, Inc. Samah Bensalem, pro se.

Companies: Naterra International, Inc.

Cases: Trademark FedCirNews USPTO