The Trademark Trial and Appeal Board decided a case in the cosmetics industry. In In re Spatz Laboratories, the Trademark Trial and Appeal Board decided whether mascara was related to “eye shadow; eye shadow pigments; pigment powders for cosmetic use.” As in most likelihood of confusion cased decided by the Board, it reiterated that any determination of relatedness needs to be made on the identification of goods descriptions in the application. If those descriptions do not contain any limitations, then the Board will not read any limitations into the descriptions based on what may be happening in the real world marketplace.
The examining attorney relied on 15 third-party registration for a single mark that was registered for both mascara and eye shadow. As it has found in the past, the Board held that third-party registrations are probative of the relatedness of goods or services. The examining attorney also offered evidence of third-party websites offering both mascara and eye shadow for sale.
The applicant attempted to argue that cosmetics are purchased with care; thus, the sophistication of the cosmetic consumer would obviate any likelihood of confusion. However, the Board, focusing solely on the low price of cosmetics, concluded the opposite that consumers are unsophisticated.
Price is not the only factor determining the sophistication of a consumer. I would tend to agree with the applicant that cosmetic purchases are more involved than the Board’s portrayal of them as an impulse buy. However, the applicant likely did not offer any evidence to support the time a cosmetic consumer will spend inspecting different products before ultimately making a purchasing decision.
As searchers, we would be aware of the arguments and evidence that may be required to overcome a refusal when our clients are more apt to accept some registration risk. The reason for this is to suggest possible clarifications to an identification of goods or services description at the application stage to avoid a conflict or to get the client thinking about the effort it may require to ultimately get a registration.