The Board affirmed a refusal to register the proposed mark YOLA'S ALL NATURAL for ""cosmetics; anti-aging moisturizer; beauty serums; body scrub; body scrubs; facial moisturizers; facial scrubs; foot scrubs; hand scrubs; non-medicated anti-aging serum; non-medicated skin serums; skin moisturizer" [ALL NATURAL disclaimed], finding confusion likely with the registered mark YOLA BEAUTY (Stylized) for ""on-line wholesale and retail store services featuring skincare products" [BEAUTY disclaimed]. The Board rejected the applicant's arguments that the "design portion" of the cited mark is dominant, and that its own mark "clearly refers to IOLANDA SOUZA CRYAN," whose consent is of record. In re Yolas All Natural Inc., Serial No. 90131028 (July 12, 2022) [not precedential] (Opinion by Judge Thomas W. Wellington).
The Marks: The Board found the marks to be "very similar in appearance, sound and commercial impression," because "the primary and dominant source-identifying element of each mark is the literal term, or name, YOLA (or YOLA'S)." Even consumers who associate applicant's mark with a particular individual might still believe that applicant is affiliated with the retail services offered under the YOLA BEAUTY mark. The Board further noted that there was no evidence of YOLA or YOLA'S being used by others in connection with cosmetics and personal body products.
The Goods and Services: The Board found applicant's goods to be "very closely related to Registrant's 'on-line retail store services featuring skincare products'" Indeed, applicant's goods "are precisely the types of goods that Registrant is selling." Moreover, Examining Attorney Nora Buchanan Will submitted evidence of third-party retailers featuring skincare products under the same mark: e.g., SEPHORA, ULTA, KIEHL'S, ORIGINS, and L'OCCITANE. Thus, the involved goods and services "are not only closely-related but also that they can be found in some of the same trade channels and offered to the same class of consumers."
Applicant feebly argued that there was no evidence that the cited mark is famous or has acquired secondary meaning, but the Board pointed out that "the owner of the cited registration is not a party and the Examining Attorney is under no obligation to demonstrate exposure to or recognition of the cited mark in the marketplace." Applicant also pointed to the lack of evidence of actual confusion, but the Board pointed out that "in ex parte cases, the owner of the cited registration is not a party and there is generally no way to know whether the registration owner is likewise unaware of any instances of actual confusion, nor is it usually possible to determine that there has been any significant opportunity for actual confusion to have occurred." In any case, the test is likelihood of confusion, not actual confusion.
Conclusion: Balancing the relevant DuPont factors, the Board found confusion likely, and so it affirmed the Section 2(d) refusal.
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