Identical Marks and Relatedness Trump Weakness of Cited Mark

Overview

The Trademark Trial and Appeal Board (TTAB) affirmed a refusal to register the mark DEO for non-electric diffusers in International Class 21, citing a likelihood of confusion with a pre-existing registration for the identical mark DEO used in connection with air fragrance reed diffusers and aromatic essential oils in International Class 3.

Although the Board found the mark slightly weakened conceptually and commercially, that weakness could not overcome the identical marks and closely related goods traveling through the same channels of trade.

Background

The Applicant filed an application seeking to register the mark DEO in standard characters for “Non-electric diffusers for air fragrancing preparations, namely, reusable containers with releasably joined parts to hold and dispense scents in a space” in International Class 21.

The Trademark Examining Attorney refused registration on two primary grounds: first, under Section 2(e)(1), finding the mark merely descriptive of the identified goods; and second, under Section 2(d), citing a likelihood of confusion with the registered mark DEO, a standard-character mark registered on the Principal Register for “air fragrance reed diffusers” and “aromatics essential oils” in International Class 3.

Following a final refusal on both grounds, the Applicant appealed to the Trademark Trial and Appeal Board.

How the Board Analyzed the DuPont Factors

DuPont #6: The Strength of the Cited Mark

The Applicant contended that the term "DEO" was inherently weak based on the Examining Attorney’s own analysis during the descriptiveness portion of the refusal. The Board evaluated both the conceptual and commercial strength of the registration.

Conceptually, because the cited mark issued on the Principal Register without a claim of acquired distinctiveness, it was presumed to be inherently distinctive. However, the Board acknowledged that evidence showing a "normally understood and well-recognized descriptive or suggestive meaning" can support a conclusion that a mark is relatively weak. The record contained significant internet evidence demonstrating that "DEO" is a common abbreviation for "deodorant." The Board concluded that this evidence established "slight conceptual weakness" because the term is suggestive of products used as deodorants.

Commercially, the Board found that while the sample size was not extensive enough to show "widespread third-party use," it was sufficient to find the cited mark "at least somewhat commercially weak." Consequently, the Board determined the cited mark was entitled to a "slightly narrower scope of protection," a factor that weighed slightly against a conclusion of likelihood of confusion.

DuPont #1: Similarity of the Marks

The Board found the analysis of the first Dupont factor straightforward. The Applicant’s mark, DEO in standard characters, was identical to the cited registered mark. The Board stated, "we have no reason to conclude that the nature of the respective goods somehow changes the connotation or commercial impression of the term." Because the marks were identical, the Board found that this factor weighed "heavily in favor of a conclusion that confusion as to source is likely."

DuPont #2: Relatedness of the Goods

The second DuPont factor assessed the relatedness of Class 21 containers and Class 3 oils and fragrance diffusers. The Examining Attorney argued these goods were related because they commonly emanate from the same source and are used together by consumers for the same purpose, providing evidence from several third-party websites to support this position.

The Board agreed with the Examining Attorney, noting that consumers are "accustomed to encountering the respective goods being offered together by the same source under the same mark." The Board emphasized that the goods need not be competitive: rather, they are related if encountered under circumstances giving rise to the mistaken belief that they originate from the same source. The Board highlighted that "where, as here, the respective marks are identical, the degree of similarity between the goods required to support a finding of likelihood of confusion declines."

The Applicant attempted to argue that its goods were "essentially mechanical components" while the Registrant’s goods were "personal care products." The Board dismissed this argument, stating that the issue is not whether consumers would confuse the goods themselves, but whether they would be confused as to the source. The Board found the goods were complementary, as non-electric diffusers are intended to disperse scents using aromatic oils and reeds.

Therefore, this factor weighs in favor of a likelihood of confusion.

DuPont #3: Trade Channels and Classes of Consumers

The Board examined the established and likely-to-continue channels of trade. Because neither the application nor the cited registration contained restrictions on trade channels or consumer classes, the Board was required to presume that the goods travel through "all normal channels of trade for such goods" and are available to "all classes of purchasers of such goods."

The third-party website evidence previously discussed supported the finding that the goods are encountered by the same classes of consumers in the same channels. Therefore, this factor also weighed in favor of a likelihood of confusion.

DuPont #4: Purchasing Conditions and Sophistication of Purchasers

The final relevant factor addressed buyer sophistication and the care taken during a purchase. The Applicant argued, without providing supporting evidence, that consumers of personal care products are more "discerning" and focused on safety and effectiveness, leading to a higher level of investigation. The Board rejected this assertion, noting that "attorney argument is no substitute for evidence."

Because the identifications were unrestricted, the Board had to consider the "least sophisticated potential purchaser," which in this case included members of the general public. The Board noted that the goods could be relatively inexpensive, suggesting impulse purchases rather than careful, sophisticated deliberation. In the absence of evidence to the contrary, the Board concluded that purchasers would exercise ordinary care and that even sophisticated purchasers are not immune to source confusion when identical marks are involved.

Consequently, this factor was deemed neutral.

Board’s Decision

The TTAB affirmed the refusal to register the Applicant's DEO mark under Section 2(d) of the Trademark Act.

In reaching its conclusion, the Board balanced the relevant factors and found that the identity of the marks and the close relatedness of the goods outweighed the slight conceptual and commercial weakness of the cited mark. The Board emphasized that even weak marks are entitled to protection against identical marks used on related goods. The decision made clear that source confusion is likely because identical marks are applied to goods that travel through the same trade channels to overlapping classes of purchasers.

The Board declined to address the refusal under Section 2(e)(1) for mere descriptiveness, as the Section 2(d) holding was dispositive.