TTABlog Test: Is 'ISABEL MARANT' Confusable With 'MARANT' For Perfumes And Cosmetics?

Author:Mr John L. Welch
Profession:Wolf, Greenfield & Sacks, P.C.
 
FREE EXCERPT

The USPTO refused to register the mark ISABEL MARANT for perfumes and cosmetics, on the ground of likelihood of confusion with the registered mark MARANT for the same goods. Applicant argued that ISLABEL MARANT is the name of a famous designer while the cited mark MARANT "is an acronym for the owner's name and not a surname." Moreover, Applicant owns three registrations for the mark ISABEL MARANT for goods including eyeglasses, jewelry, clothing, and bags. How do you think this came out? In re IM Production, Serial No. 79206371 (September 4, 2019) [not precedential] (Opinion by Judge Cindy B. Greenbaum).

Applicant did not dispute the relatedness of the goods but argued that they travel in different channels of trade, since Applicant markets its goods in its own outlets and at high-end retailers, whereas registrant sells its products through its website. The Board was unmoved, since there are no such limitations in the application or cited registration. Because the goods are in-part legally identical, the Board must presume that those goods travel in the same trade channels to the same classes of consumers. Furthermore, the products are not limited as to price point or quality, and so the Board must consider even modestly priced goods. These factors weighed heavily in favor of affirmance of the refusal.

Moreover, there is nothing in the nature of the identified products to suggest that the purchasers are particularly sophisticated or careful. The standard of care that the Board must consider is that of the least sophisticated potential purchaser. See Stone Lion, 110 USPQ2d at 1163.

Turning to the marks, Applicant contended that they differ in appearance and sound, and that they create different commercial impressions because ISABEL MARANT is the name of a famous designer, whereas Registrant's mark MARANT "is an acronym for the owner's name and not a surname." The Board, however, agreed with Examining Attorney Louis Kolodner that the marks are similar overall "because the applied-for mark appears to be the full name version of the registered mark."

The Board found the marks to be "very similar" in appearance, sound, connotation, and commercial impression.

Here, the given name "Isabel" in Applicant's mark modifies the surname...

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