IP Law Daily, TRADEMARK—TTAB: ‘ORACLE’S APOTHECARY’ mark for online retail services denied registration, (Apr 16, 2024)

By Saurabh Kashyap, B.A., LL.B., LL.M.

The Board found the mark confusingly similar to the registered composite mark ORACLE HEALING for related goods and services.

In a non-precedential decision, the Trademark Trial and Appeal Board (TTAB) affirmed a Trademark Examining Attorney’s refusal to register the mark ORACLE’S APOTHECARY for various online retail services citing a likelihood of confusion with two existing trademarks, particularly the ORACLE HEALING composite mark for related goods and services, offered in overlapping trade channels to the same classes of consumers (In re Oracle's Apothecary, LLC, April 11, 2024, Lebow, M.).

Background. The applicant, Oracle's Apothecary, LLC, is an online retailer. It applied to register the mark ORACLE’S APOTHECARY (standard characters, “APOTHECARY” disclaimed) on the Principal Register in International Class 35 for various online retail services, including those offering soaps, herbs, candles, and apparel. The Trademark Examining Attorney initially denied the registration based on a likelihood of confusion with the ORACLE trademark for clothing and ORACLE HEALING composite mark for metaphysical products. Following a final refusal, the applicant appealed to the TTAB.

Likelihood of confusion. To determine the likelihood of confusion between marks under Section 2(d), the Board analyzed the evidence and arguments under the factors outlined in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (1973). Furthermore, the Board focused its analysis on the composite mark ORACLE HEALING as it covered services similar to the applicant's.

Similarity of the marks. In evaluating the similarity or dissimilarity of the marks, the Board focused on the visual, phonetic, and conceptual similarities. The applicant argued that the addition of “APOTHECARY” sufficiently distinguished its mark from the registrant's mark. However, the Trademark Examining Attorney contended that the dominant element, “ORACLE,” shared by both marks, was likely to cause confusion due to its prominent position and similar font usage. The Board concluded that despite the addition of different terms and design elements, the presence of the shared term “ORACLE” in both marks made them confusingly similar.

Similarity of services, trade channels, and consumer classes. The Board assessed the similarity of the services offered under the respective marks, along with their trade channels and potential classes. The applicant posited that its range of goods sufficiently diverged from those offered under the registrant's mark, which should mitigate confusion. However, the Trademark Examining Attorney provided evidence showing an overlap in the types of products sold and the online retail platforms used, indicating that the same consumer base might encounter both marks. The Board concurred with the Trademark Examining Attorney, noting that both parties targeted similar online marketplaces, increasing the probability of consumer confusion. Therefore, this DuPont factor also favored a likelihood of confusion.

Strength of registrant’s mark. The applicant argued that the widespread use of the term “ORACLE” across various industries rendered the term generic or at least highly descriptive, significantly weakening its distinctiveness. To support this claim, the applicant presented several third-party registrations that use “ORACLE” in related and unrelated fields. The Board recognized “ORACLE” as having inherent distinctiveness but noted its weakened strength due to its prevalent use in the marketplace. Thus, the sixth DuPont factor was considered neutral in the overall likelihood of confusion analysis.

Conclusion. In the TTAB’s analysis, the first, second, and third DuPont factors weighed in favor of a finding of likelihood of confusion, the sixth DuPont factor was found neutral, and no DuPont factor weighed against a likelihood of confusion. Hence, the Board concluded that confusion was likely between the applicant’s mark ORACLE’S APOTHECARY for the identified services and the registrant’s composite mark ORACLE HEALING. The Board, therefore, affirmed the refusal to register.

The Case is Serial No. 90399653.

Attorneys: Ticora E. Davis (Creator’S Law Firm) for Oracle's Apothecary, LLC. Jacob Magit for the USPTO.

Companies: Oracle's Apothecary, LLC

Cases: Trademark USPTO