The Board dismissed this Section 2(d) opposition to registration of MINT VELVET for jewelry; leather goods, bags and wallets, and clothing, and for retail store, Internet, and catalogue services regarding said goods [VELVET disclaimed], finding the mark not likely to cause confusion with the registered mark MIDNIGHT VELVET for mail order and catalogue services in the field of housewares, jewelry, clothing, handbags, and cosmetics. The differences in the marks and the weakness of the word VELVET as a formative led the Board to rule in applicant's favor. Midnight Velvet, Inc. v. Sabre Retail Fashion Limited, Opposition No. 91223400 (August 30, 2017) [not precedential] (Opinion by Judge Thomas Shaw).

Because the goods and services overlap, the Board presumed that those goods and services travel in the same channels of trade to the same classes of consumers. Moreover there were no restrictions in the application and pleaded registrations as to the price of the goods, and so the Board presumed that they are marketed to ordinary consumers who may purchase on impulse.

Opposer maintained that its mark is famous in view of nearly thirty years of use and substantial sales and advertising. The Board found that MIDNIGHT VELVET is commercially strong, but the evidence fell short of proving fame, particularly due to lack of evidence regarding the size of the catalog market, and whether opposer's advertising expenditures are large or small relative to other catalog companies. Moreover, there were no examples of unsolicited media coverage. Thus although opposer has had market success, there was a lack of evidence as to the impact of opposer's mark on the minds of consumers. Nevertheless, the Board found MIDNIGHT VELVET to be commercially strong, though not famous.

Turning to the sixth du Pont factor, the record included 40 third-party registrations for marks containing the word VELVET in connection with clothing, jewelry, or retail clothing store services. Applicant also provided website excerpts showing use of VELVET as part of a brand name.

The Board observed that, under Jack Wolfskin and Juice Generation, evidence of third-party use can show that "customers have been educated to distinguish between different marks on the basis of minute distinctions," even without evidence of the extent of use. In short, evidence of use by others may be "powerful on its face," and so the Board concluded that opposer is entitled to a "narrower range of protection" for its MIDNIGHT VELVET mark. Opposer "cannot bar the registration of every mark comprising VELVET also used in connection with clothing and accessories." Marks that include the word VELVET will bar the registration of a mark "as to which the resemblance ... is striking enough to cause one seeing it to assume that there is some connection, association or sponsorship between the two."

Finally, turning to a comparison of the marks at issue, the Board found the critical distinction to be the difference in connotation and commercial impression. MINT VELVET suggests a light green fabric. MIDNIGHT VELVET suggests a fabric of dark blue or black. "Applicant's mark suggests lightness and freshness whereas Opposer's marks suggest darkness and elegance." In view of the many third-party registrations for marks identifying other velvet colors (e.g., RED VELVET, PEACH VELVET, BLUE VELVET, GREY VELVET), the fact that both marks suggest colored velvet is not enough to find confusing similarity between the marks.

We find that when viewed against the background of significant third-party usage and registration of VELVET marks, the differences between the parties’ marks in connotation and commercial impression outweigh the similarity in sound. This factor weighs in favor of a finding of no likelihood of confusion.

And so the Board dismissed the opposition.