Practice Areas

Print PDF

When similar trademarks don’t create likelihood of confusion

Link to the newsletter here  

The Trademark Trial and Appeal Board (TTAB) recently snuffed out opposition to a trademark registration for the mark “SMOKES.” To the surprise of some, it determined that consumers were unlikely to confuse it with the existing mark “SMOK.” How the TTAB distinguished between the two seemingly similar marks in Shenzhen IVPS Technology Co. Ltd. v. Fancy Pants Products, LLC, is worth a review.

The case ignites

Fancy Pants Products LLC filed a trademark application for the mark SMOKES (stylized) covering nonmedicinal cannabis cigarettes. Shenzhen IVPS Technology Co. Ltd. opposed the registration on the ground of likelihood of confusion.

Shenzhen claimed to own 11 registered SMOK and SMOK-related marks for, among other things, e-cigarettes, parts and components. After further review, it turned out that the company had properly submitted only one registration — for the mark SMOK in standard form. The remaining Shenzhen registration submissions didn’t adhere to TTAB requirements and therefore weren’t considered.

Fancy Pants didn’t take any testimony or introduce any evidence, nor did it file a brief in the matter. But, as the TTAB noted, it wasn’t required to do so. Shenzhen had the burden to prove its claim, and the TTAB found that it had failed to do so.

The TTAB goes in the weed(s)

The TTAB focused its likelihood of confusion analysis on the one properly registered mark. Such analyses typically rely on the 13 DuPont factors (named after the court case where they were first articulated). Every factor isn’t always relevant, depending on the facts, but the TTAB explained that two key considerations in any analysis are: 1) the similarities between the marks, and 2) the similarities between the goods or services. In this case, it also assessed the similarity of the established and likely-to-continue channels of trade for the two parties’ goods.

The board began by considering whether average purchasers who encounter the two marks would be likely to assume a connection between the parties. Because the word portions of the marks were descriptive — or “weak” — the marks’ designs were more significant. The TTAB found that Fancy Pants’ design elements, including two elongated “s” letters that evoked a lit cigarette, rendered its mark sufficiently distinguishable from Shenzhen’s mark to avoid confusion.

As for the similarity of the goods, SMOK’s registration covered a variety of goods, but the TTAB concentrated on e-cigarettes. It noted that, even if the parties’ goods are different from each other, confusion can arise if the circumstances around their marketing are such that they could lead to the mistaken belief that they emanate from the same source. Therefore, the fact that e-cigarettes aren’t limited to tobacco, but also can be used with cannabis, supported a finding of likelihood of confusion.

That brought the TTAB to the channels-of-trade factor. According to testimony, Shenzhen’s goods were sold online and through smoking shops, vaping shops and convenience stores. Its customers typically were over 21 years old and sought an alternative to cigarette smoking.

Shenzhen argued that the class of consumers for both parties’ goods was the same because both goods targeted consumers seeking alternatives to traditional cigarettes and were sold through the same venues. The TTAB, however, found no evidence that consumers who sought such cigarette alternatives also sought or used cannabis goods.

In addition, Shenzhen’s website evidence as a whole didn’t show that both types of goods were offered on the same websites. Some of the third-party websites selling e-cigarettes and parts offered only tobacco products. In addition, several of those offering only cannabis products appeared to be local dispensaries that required local pickup in states where cannabis is sold legally. Because the trade channels were distinct for the parties’ goods, this factor favored a finding of no likelihood of confusion.

Up in smoke

The TTAB ultimately dismissed the opposition. Although the goods were related, the marks were dissimilar and the channels of trade didn’t overlap, so consumer confusion between them was unlikely.

Sidebar: “Family of marks” claim fizzles out

The plaintiff in Shenzhen (see main article) also claimed that it had a “family” of SMOK marks (for example, SMOK FASHION, SMOK MODS, SMOK ECIG and SMOK TECHNOLOGY) that it had used before the defendant filed its trademark application for SMOKES. A family of marks is a group of marks with a common feature (here, the word SMOK). A family arises only if the buying public recognizes the feature as indicative of a common source of the goods.

The TTAB found that Shenzhen didn’t establish a family of marks. Because the alleged SMOK, as a family feature, was merely descriptive, Shenzhen had to show that it had acquired distinctiveness. In other words, the mark needed to have a “secondary meaning” aside from “smoke” to preclude others from using it.

The only evidence relevant to the secondary meaning question was testimony that Shenzhen had “relatively modest” advertising expenses for the mark — $1 million over six years. The TTAB concluded that the alleged SMOK family feature hadn’t acquired distinctiveness.