IP Law Daily, TRADEMARK—TTAB: VUSE CHARGE BEYOND confusable with BEYOND for e-cigarettes, (Jan 23, 2023)

By Jonathan Anderson

The marks are similar, the goods and services are identical in part, and the trade channels and classes of consumers overlap.

The Trademark Trial and Appeal Board has affirmed the examining attorney’s refusal to register the mark VUSE CHARGE BEYOND in connection with electronic cigarettes on the ground of likelihood of confusion with the mark BEYOND. Applying four DuPont factors, the Board held that the marks are similar, the goods and services are identical in part, and the trade channels and classes of consumers overlap. In addition, the Board affirmed the examining attorney’s required disclaimer of the word CHARGE, concluding that CHARGE is merely descriptive and that the words CHARGE BEYOND do not present a separate unitary commercial impression outside the merely descriptive meaning of CHARGE (In re RAI Strategic Holdings, Inc., January 18, 2023, Kuhlke, K.).

Background. Applicant, RAI Strategic Holdings, Inc., sought registration on the principal register of the standard character mark VUSE CHARGE BEYOND for “Retail store services connected with the sale of e-cigarettes, electronic cigarettes, liquid solutions for use in electronic cigarettes, tobacco, tobacco substitutes not for medical purposes, smokers’ articles, matches, personal vaporisers and electronic cigarettes and flavourings and solutions therefor, tobacco products for the purpose of being heated, devices and parts for devices for heating tobacco and tobacco substitutes for the purpose of inhalation, snus with tobacco, snuff with tobacco, snus without tobacco, snuff without tobacco, tobacco free oral nicotine pouches not for medical purposes, chargers, jewellery, horological instruments, stationery, cases, sleeves, pouches, clothing, footwear and headwear” in International Class 35.

Applicant sought the same for “Cigarettes, namely, electronic cigarettes; electronic cigarette components, namely, cartridges and replacement cartridges filled with liquid nicotine solutions, namely, chemical flavorings for use in electronic cigarettes and other vapor devices in the nature of electronic cigarettes; liquid nicotine solutions for use with electronic cigarettes and other vapor devices in the nature of electronic cigarettes; liquid nicotine solutions featuring flavorings for use with electronic cigarettes and other vapor devices in the nature of electronic cigarettes; holders for electronic cigarettes; holders for cigarettes; boxes for electronic cigarettes; boxes for cigarettes; smokers’ articles for electronic cigarettes, namely, protective cases and carrying cases for electronic cigarettes, fitted cases of leather or imitation leather for electronic cigarette accessories in the nature of protective cases, carrying cases, decorative wraps for device, and sleeves and pouches for electronic smoking devices; smokers’ articles for electronic cigarettes being protective cases” in International Class 34.

The examining attorney refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that the mark, when used in connection with the identified goods and services, would likely cause confusion with the registered mark BEYOND in standard characters for “Chemical flavorings in liquid form used to refill electronic cigarette cartridges” in International Class 30; “Electronic cigarette refill cartridges sold empty; electronic cigarettes; electronic cigarette starter kits primarily comprised of electronic cigarettes, electronic cigarette refill cartridges sold empty and an electronic cigarette case and also featuring electronic cigarette batteries, USB battery chargers and an adapter” in International Class 34; and “Retail store services featuring electronic cigarette vaporizers, portable electronic cigarette vaporizers, accessories for electronic cigarette vaporizers, electronic cigarettes, electronic cigarette starter kits, hand -operated electronic cigarette atomizers, chemical flavorings in liquid form used to refill hand-operated electronic cigarette atomizers, electronic cigarette vaporizers and electronic cigarettes, electronic cigarette batteries, battery chargers for electronic cigarette batteries, USB chargers for electronic cigarette batteries and car chargers for electronic cigarette batteries; on-line retail store services featuring electronic cigarette vaporizers, portable electronic cigarette vaporizers, accessories for electronic cigarette vaporizers, electronic cigarettes, electronic cigarette starter kits, hand-operated electronic cigarette atomizers, chemical flavorings in liquid form used to refill hand-operated electronic cigarette atomizers, electronic cigarette vaporizers and electronic cigarettes, electronic cigarette batteries, battery chargers for electronic cigarette batteries, USB chargers for electronic cigarette batteries and car chargers for electronic cigarette batteries” in International Class 35.

The Applicant appealed and requested reconsideration, which the examining attorney denied.

Disclaimer requirement. First, the Board found that the disclaimer requirement is appropriate. The word CHARGE is “merely descriptive of a feature of the goods and services, namely that they require electrical charging to function,” the Board wrote. The words CHARGE BEYOND do not “present a separate unitary commercial impression and the merely descriptive meaning of CHARGE is not removed in the context of this mark.”

Likelihood of confusion. Second, applying four DuPont factors, the Board held that the marks are similar, the goods and services are identical in part, and the trade channels and classes of consumers overlap at minimum, thus resulting in likelihood of confusion.

Relatedness of goods/services, trade channels, classes of consumers. Applicant’s identified goods and services include identical matches with registrant’s goods and services and there are no limitations as to channels of trade or classes of consumers. As such, the Board presumed that applicant’s and registrant’s goods and services will be offered in the same channels of trade to the same classes of consumers, weighing heavily in favor of likely confusion.

Similarity/dissimilarity of the marks. Applicant’s standard character mark includes the entirety of registrant’s arbitrary mark, which the Board found was enough to create likely confusion, especially when considering the identical nature of the goods and services. By incorporating the “entirety of registrant’s mark, applicant’s mark is similar in appearance and sound, and the common element conveys a similar connotation and commercial impression.” The similarities of the marks thus outweigh their dissimilarities. The Board did not find sufficiently persuasive applicant’s argument that other wording in the applied-for mark serves to distinguish the marks and that the position of CHARGE BEYOND is an inherently distinctive component of its mark.

The Case is Serial No. 88662587.

Attorneys: Michael Fitzsimons for the USPTO. William M. Bryner (Kilpatrick Townsend & Stockton LLP) for RAI Strategic Holdings, Inc.

Companies: RAI Strategic Holdings, Inc.

Cases: Trademark USPTO