Famous trademarks are set to enjoy an even broader range of pro- tections than they have traditionally enjoyed thanks to a recent US Patent and Trademark Office Trademark Trial and Appeal Board (TTAB) decision. Specifically, the TTAB determined that a famous mark may bar the registration of other marks covering goods or services that are not similar to, or even competitive with, the goods or services offered under the famous mark.
D&D Beauty filed an application to register the mark SHAPE for a range of beauty-related services. Weider Publications, publisher of Shape magazine, opposed D&D’s application claiming, among other things, that it would create confusion with Weider’s own registration for the mark SHAPE for health and fitness magazines.
As the first step in its likelihood-of-confusion analysis, the TTAB asked whether Weider’s SHAPE mark was famous. Fame is important because a famous mark is generally entitled to broader protection than a mark that is not famous. The TTAB found that Weider’s SHAPE mark was famous for two primary reasons: (1) Weider had continuously used the SHAPE mark for more than 30 years, and (2) Weider’s audience for its magazine across all platforms was large, at approximately six million people per month.
The TTAB found that because Weider’s SHAPE mark was famous, it did not matter that D&D sought to register its SHAPE mark for a product that was not similar to, or even competitive with, the magazines sold under Weider’s SHAPE mark.
According to the TTAB, consumers may confuse a similar mark with a famous mark when the two trademarks cover goods or services that are merely “related in some manner” or marketed in a way that causes them to be encountered by the same consumers.
Because Weider’s famous SHAPE trademark covers health and fitness magazines, Shape magazine often featured beauty-related services (such as those listed in D&D’s application). In fact, approxi- mately 30 percent of the advertising in each issue of Shape covered beauty- and fashion-related products and services. In addition, Weider cross-promoted Shape with spa operators, and the magazine featured a significant amount of beauty-related content. Weider and D&D both marketed their products towards the same broad base of potential consumers: women within essentially the same age group. For these reasons, the TTAB decided that consumers could be confused and believe that D&D’s SHAPE services were related to Weider’s magazine, such that there was a likelihood of confusion between the two marks. As a result, the TTAB sustained Weider’s opposition and refused D&D’s trademark application.
While a broader scope of protection is good news for owners of famous brands, this TTAB decision should ring alarm bells for famous and not-so-famous brand owners alike. Anyone thinking of adopting a new trademark should consider whether that mark is famous in another product or service category before filing a trademark application.