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February 1, 2019 Vol. 74 No. 2 Back to Bulletin Main Page

UNITED STATES: No Likelihood of Confusion Found Between I’M SMOKING HOT and SMOKIN’ HOT SHOW TIME Marks

The U.S. Patent and Trademark Office (USPTO) Trademark Trial and Appeal Board (TTAB), in an August 23, 2018, precedential decision, reversed a finding of likelihood of confusion between an application for the mark I’M SMOKING HOT and a cited registration for SMOKIN’ HOT SHOW TIME. Even though the goods covered under both marks were “identical,” the different overall commercial impression and weakness of a common term in the two marks made confusion unlikely. In re FabFitFun, Inc., 127 USPQ2d 1670, 1677 (TTAB 2018).

FabFitFun, Inc., a California-based retailer of beauty products, applied for a U.S. trademark registration for the word mark I’M SMOKING HOT for a list of goods in International Class 3, including “cosmetics and makeup.” The USPTO refused registration under Section 2(d) of the Lanham Act, asserting a likelihood of confusion existed with a registration for the word mark SMOKIN’ HOT SHOW TIME for “cosmetics, mascara.” FabFitFun appealed to the TTAB.

Using the well-worn multifactor analysis from the seminal In re E. I. du Pont de Nemours & Co. case, the TTAB determined that several factors weighed in favor of a finding of likelihood of confusion. For example, one of the goods described under the application and cited registration, “cosmetics,” was identical. In addition, the “channels of trade,” “classes of consumers,” and “conditions of sale” factors favored confusion as well.

Despite the above, FabFitFun prevailed based on two arguments. First, it presented a “modest amount of evidence” showing that the common term “Smoking Hot” is relatively weak due to its suggestive nature and use in advertising in the beauty industry. The TTAB considered this evidence along with the definition of the phrase and found that its relative weakness weighed against a likelihood of confusion.

Second, the TTAB analyzed whether the two marks were similar, focusing on their overall meaning due in part to the weakness of the common term “Smoking Hot.” It found that the “applicant’s mark connotes an individual’s declaration that ‘I am attractive or sexy looking,’ [but] the registered mark connotes the time for sexy entertainment or activity to begin.” In re FabFitFun, Inc., at 1677.

As a result, even though several du Pont factors leaned toward a finding of likelihood of confusion, the TTAB reversed the refusal because the marks conveyed different overall commercial impressions. The USPTO did not appeal the TTAB decision, and FabFitFun’s application has been allowed for registration.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.

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