ARDEN B for clothing blocks ARDENBEAUTY for cosmetics

In The Wet Seal Inc v FD Management Inc, the US Patent and Trademark Office's Trademark Trial and Appeal Board has sustained an opposition by The Wet Seal Inc to the registration of the mark ARDENBEAUTY for cosmetics and haircare products by a subsidiary of Elizabeth Arden Inc.

Elizabeth Arden claimed priority of use of the ARDENBEAUTY mark based upon (i) its predecessors' use and registration of ELIZABETH ARDEN marks and names for a variety of cosmetics and beauty care products dating back to 1921, and (ii) extensive advertising including use of the mark ARDEN alone. Elizabeth Arden also claimed ownership of numerous long-standing registrations of ELIZABETH ARDEN marks. Further, in settling a prior opposition against registration of ARDEN B for its women's clothing and retail store services, Wet Seal had agreed never to use ARDEN B in connection with cosmetics, skin care, hair care or fragrance products or as the name of stores specializing in such products, in return for consent to its use and registration of ARDEN B for its women's clothing, accessories and store services.

The present opposition proceeding was filed by Wet Seal against Elizabeth Arden's subsequent application to register ARDENBEAUTY for an extensive list of cosmetics and beauty care products, prior to issuance of Wet Seal's ARDEN B registrations, which had been delayed and refiled for reasons not relevant to the present matter. Wet Seal's common law rights arising from use of ARDEN B were the only grounds for the opposition.

Dealing first with the issue of priority, the board characterized the attempt to associate ARDENBEAUTY with ELIZABETH ARDEN and ARDEN alone as 'tacking' arguments, permitted only in rare instances and requiring that the marks sought to be tacked be legal equivalents - that is, indistinguishable from one another or creating the same commercial impression with consumers. The board found that the marks are not legally equivalent, based on the presence of the name Elizabeth in one and the word 'beauty' in the other, and also because of the absence of trademark rights owned by Elizabeth Arden in the name Arden alone. It therefore concluded that Elizabeth Arden had failed to establish priority for ARDENBEAUTY for cosmetics products over Wet Seal's common law rights in ARDEN B for clothing.

Turning to the issue of likelihood of confusion, the board then applied the test of In re EI DuPont de Nemours & Co (476 F2d 1357, 177 USPQ 563 (CCPA 1973)) and methodically analyzed the facts of this proceeding in terms of the factors set out in that case, emphasizing "the two key considerations" of similarities and dissimilarities between the marks, and between the goods and services of the parties. The board compared the marks in their entireties, as required, but giving greater weight to the dominance of the common component ARDEN and finding that purchasers may view ARDEN B as simply an abbreviated version of ARDENBEAUTY - that is, a slight variation of the same mark.

The board then found that the parties' goods and services not only are related through sales in the same retail outlets, but also are:

• closely related, complementary products;
  
  
• sold to the same classes or overlapping classes of customers; and
  
  
• relatively inexpensive products subject to impulse purchases.

Finally, considering the 10th DuPont factor relating to the interface between the applicant and the owner of a prior mark, which includes consideration of agreement provisions designed to preclude confusion, the board rejected Elizabeth Arden's argument that the settlement agreement "negates any likelihood of confusion". It stated that nothing in the agreement addressed Elizabeth Arden's rights in ARDEN alone or precluded Wet Seal from asserting its rights in ARDEN B against Elizabeth Arden. Instead, the board found that the agreement actually implied that there would be a likelihood of confusion between certain ARDEN marks for the parties' goods and services in their respective fields.

Accordingly, the board sustained the opposition on the grounds of likelihood of confusion.

Thomas M Small, Birch Stewart Kolasch & Birch LLP, Los Angeles