Look Beyond the Registration to Determine Likelihood of Confusion
Just in time for the holiday shopping season, the Trademark Trial and Appeal Board's recent decision in Anthropologie, Inc. and Urban Outfitters Wholesale, Inc. v. Happy Green Company LLC is a good reminder of why, when clearing a new trademark for use and registration, it is important to (1) consider the totality of the circumstances of how marks are actually used in commerce, and (2) not rely on a search of the U.S. Patent and Trademark Office database alone to determine if a mark is available.
Anthropologie opposed registration of the mark for bath salts, bath soaps, cosmetics and fragrance, among other things, in International Class 3, on the ground that the Applicant's mark, when applied to their goods, is likely to cause confusion with their own mark, ANTHROPOLOGIE, for retail department store services, and their previously used common law mark, ANTHRO, for their loyalty card program.
The Board found that although Anthropologie did have common law rights to the mark ANTHRO for its customer loyalty card program, it did not establish additional rights in the mark for any goods or services beyond the loyalty program. However, the Board did find that the ANTHRO loyalty card, when combined with Opposer's retail services featuring beauty and cosmetic products, is similar enough to the beauty and cosmetic goods offered under the mark to weigh in favor of Anthropologie. The Board concluded that purchasers familiar with Anthropologie and the products offered in the course of their retail services would be likely to mistakenly believe that goods using the mark originate from the same entity, and sustained the opposition to the mark.