Trademark Review – February 2014

Applicant Successfully Avoids Fraud Claim by Consenting to Judgment on Abandonment Claim

In a precedential opinion, the Trademark Trial and Appeal Board granted the Applicant’s motion for entry of judgment on the Petitioner’s abandonment claim.  The Board also declined to rule on the Petitioner’s fraud claim, because the only remedy for a fraud claim – cancellation of the registration – had already been granted by entry of judgment on the abandonment claim. 

Like the federal courts, the Board has generally used its discretion to decide only those claims necessary to enter judgment and dispose of the case. More specifically, the Board’s determination of registrability does not require, in every instance, decision on every pleaded claim. 

In this case, Multisorb Technologies, Inc. filed a petition to cancel Pactiv Corporation’s registration for the mark ACTIVETECH on the grounds of abandonment and fraud. In response, Pactiv filed a motion consenting to judgment on the abandonment claim only, arguing that because its consent to judgment on the ground of abandonment is sufficient for cancellation, the matter is resolved and the proceeding should be terminated without judgment on Multisorb’s fraud claim.  In response, Multisorb argued that granting Pactiv’s motion would deprive Multisorb of the preclusive effect that would result from judgment on the fraud claim. 

The Board found it unnecessary to rule on the fraud claim for two reasons. First, entry of judgment on the abandonment claim would result in cancellation of the registration.  Second, judgment on the fraud claim would neither bar Pactiv from filing a new application for the same mark nor prohibit Multisorb from challenging any new application filed by Pactiv on the basis of claim preclusion. 

Multisorb Technologies, Inc. v. Pactiv Corporation, Cancellation No. 92054730 (December 30, 2013) [precedential]

SHAPE Magazine Scores an Opposition Victory Over SHAPES for Beauty Salons

In a precedential opinion, the Trademark Trial and Appeal Board sustained an opposition by SHAPE magazine to prevent registration of the mark SHAPES for beauty salons on the ground of likelihood of confusion. 

Applicant, D & D Beauty Care Company, filed an application to register the mark SHAPES for various beauty salon services and spa services.  Opposer, Weider Publications, opposed registration of SHAPES on the grounds of likelihood of confusion and likelihood of dilution by blurring. Opposer owns the registered mark SHAPE for a “magazine relating to physical fitness and exercise” and “computer services, namely, providing on-line magazines in the field of health and fitness.” 

SHAPE magazine is ranked first among all magazines in the women’s active lifestyle category, and fourth among top magazines directed to young women in general. SHAPE publications, which are published both in print and electronic form, reach an audience of approximately 6 million people each month, the majority of whom are women. Opposer periodically sponsors live beauty events under its SHAPE mark, at which various beauty services are provided. 

Applicant operates beauty, cosmetology and eyebrow threading salons, and offers these services under the registered mark SHAPES BROW BAR. Applicant filed the application to register SHAPES based on its intent to use the mark. 

The Board ruled that SHAPE is a famous mark for purposes of the likelihood of confusion analysis, which “plays a dominant role in the likelihood of confusion analysis.” The Board stated that fame for likelihood of confusion purposes arises so long as a “significant portion of the relevant consuming public…recognizes the mark as a source indicator” and it may be “measured indirectly by the volume of sales and advertising expenditures of the goods sold under the mark.” The Board considered opposer’s circulation and subscriber figures and found that figures of that magnitude, “coupled with the high volume of unique Internet visits, are compelling evidence demonstrating fame of a magazine in print, online, or app form.” The Board also concluded that advertisers place a premium on running ads in SHAPE magazine.

The Board noted that it is “well established that trademarks and/or service marks consisting of the singular and plural forms of the same term are essentially the same mark” and concluded that the marks are highly similar.

The Board also concluded that a likelihood of confusion exists in “cases in which the goods or services of the defendant are of a type normally featured in the plaintiff’s magazine and/or there is some type of advertising tie-in between the goods or services of the defendant and those featured in the magazine.” In this case, approximately 35% of opposer’s editorial content and 30% of its advertisements related to beauty and fashion. Opposer’s magazine also included reviews of health and beauty spas and products. The Board found that opposer showed a “close relationship between the types of articles that routinely appear in its SHAPE magazine and the services identified by applicant in its application.”

Although the parties’ respective goods and services travel in distinct trade channels, the Board found that the parties both target the same potential consumer – women of essentially the same or overlapping age span.

Finally, the Board acknowledged that SHAPES has some suggestive significance in the area of health and fitness, but that opposer’s mark SHAPE has achieved such a degree of fame that it is a distinctive mark that signifies only opposer as the source. 

On balance, the Board found that confusion was likely and sustained the opposition.  Because the Board found likelihood of confusion, it did not address opposer’s dilution claim. 

Weider Publications, LLC v. D & D Beauty Care Company, LLC, 109 USPQ2d 1347 (TTAB 2014). January 27, 2014. [precedential].