Owner of SHAPE magazine successfully opposes ‘shape’ mark for beauty services

In Weider Publications LLC v D & D Beauty Care Company LLC (Opposition No 91199352, January 21 2014), the Trademark Trial and Appeal Board (TTAB) has sustained the opposition of Weider Publications LLC, the owner of the mark SHAPE, registered in Class 16 for “magazine relating to physical fitness and exercise” and in Class 42 for “computer services, namely providing online magazines in the field of health and fitness; and providing information in the field of health and fitness via a global communication information network site” (Weider also owns registrations for a stylised version of the mark SHAPE for similar goods and services and SHAPES for t-shirts and visors in Class 25), against an application for SHAPES covering “beauty salon services; day spa services, namely nail care, manicures, pedicures and nail enhancements; health spa services for health and wellness of the body and spirit, namely providing massage, facial and body treatment services, cosmetic body care services; and health spa services, namely cosmetic body care services" in Class 44. The opposition decision was based on a likelihood of confusion. 

The applicant had since at least September 2007 been using the mark SHAPES BROW BAR in connection with beauty, cosmetology and eyebrow threading salons, and had registered that mark for “beauty salons; cosmetology services and eyebrow threading services” in Class 44, apparently without conflict with the opponent. However, the applicant’s new application for the mark SHAPES, with a broader description of services in Class 44 than its existing registrations, triggered this opposition. 

In finding a likelihood of confusion, the TTAB noted the following with regard to the more relevant DuPont factors.

With regard to the fame of the opponent’s mark, the TTAB held that the opponent had produced sufficient evidence to show that a significant portion of the relevant consuming public recognised the opponent’s SHAPES mark as a source indicator. The opponent’s evidence included continuous use for 30 years on print magazines, with an average monthly circulation of over 1.6 million, and 15 years of use in connection with online magazines. In addition, the opponent’s website receives 3 million monthly unique visitors, 700,000 customers subscribe to the SHAPE online newsletter and the overall audience for SHAPE across all platforms is about 6 million per month. The TTAB held that circulation of this magnitude, coupled with a high volume of internet visitors, was compelling evidence of the fame of the opponent’s magazine. 

Further, SHAPE had substantial revenue since 2009 (which figure is confidential) and has been one of the top-rated magazine for advertisers for several years. The TTAB concluded that advertisers place a premium on running ads in the opponent’s magazine. Additionally, the opponent produced substantial evidence of special promotions between SHAPE magazine and third-parties and widespread media exposure, all of which weighed heavily in favour of finding the opponent’s mark famous for likelihood of confusion purposes. 

With regard to the similarity of the goods and services, the TTAB pointed out that the respective parties’ goods and services need not be identical, but that it was:

“sufficient that the respective goods and/or services of the parties are related in some manner, and/or that the conditions and activities surrounding the marketing of the goods and/or services are such that they would or could be encountered by the same persons under circumstances that could, because of similarity of the marks, give rise to the mistaken belief that they originate for the same source.” 

The TTAB held that the services identified in the applicant’s application are of the type that are normally featured in the opponent’s magazine. The evidence showed that about 25% of the editorial content of each issue of SHAPE magazine focused on beauty and fashion related topics, 24% focused on health and nutrition, and 26% on fitness and sports. Further, SHAPE magazine had numerous issues containing specific editorial reviews of health spas and spa services. In addition, SHAPE magazine has cross-promoted with spa operators and has sponsored and co-sponsored live events where spa and salon services have been offered. Thus the TTAB held that the opponent had submitted substantial evidence to show that there was a close relationship between the types of articles that routinely appear in its SHAPE magazine and the services identified by applicant in its application, weighing in favour of finding a likelihood of confusion. 

With regard to the channels of trade, the TTAB acknowledged that the parties’ respective goods and services travelled in distinct trade channels. However, the evidence of record also showed that both the opponent and the applicant target the same demographics audience, namely women of overlapping age spans, providing for an opportunity for confusion. 

With regard to third-party use, the TTAB found that the applicant’s evidence of third-party use of the term 'shape' was of limited probative value because the publications on which the mark was used by the third parties was highly specific to a particular industry unrelated to that of the opponent. Also, the evidence of use of SHAPE in connection with third-party use in multi-word marks, even when related to health and fitness, gave completely different commercial impressions when the marks were evaluated in their entirety. 

Finally, with regard to actual confusion, the applicant argued that it has been using SHAPES BROW BAR for years and co-existed without confusion. The TTAB held that because the mark at issue is now SHAPE and is filed for a broader range of services than for the “brow bar” registration, this was not persuasive.   

Thus, with most DuPont factors weighing in favour of the opponent, the TTAB sustained the opposition, finding a likelihood of confusion. 

Lara A Holzman, Alston & Bird LLP, New York