Turns out that even when you remove a vowel from your brand name (as many companies have been doing), there may still be competition on the trademark front – but maybe not confusion. That is one of the things to be garnered from an opinion from the Trademark Trial and Appeal Board (“TTAB” or the “Board”). In a non-precedential opinion issued on February 18, the TTAB dismissed opposition proceedings brought by Givn Goods, Inc. against IBMG, LLC’s applications to register the “GIVN” word mark for use on cosmetics and online retail store services. Givn Goods argued that the registration of “GIVN” by IBMG would likely cause confusion with its own “GIVN” mark, which it uses on bottled water.
Not so, according to the TTAB, which held that despite the identical nature of the trademarks, Givn Goods failed to demonstrate that the goods and services were sufficiently related or that they shared overlapping trade channels, highlighting the complexities of trademark disputes, particularly when the trademarks are identical but used in seemingly unrelated industries.
Water versus Cosmetics
At the heart of the matter are two consolidated oppositions, which Givn Goods, Inc. – the owner of a registration for “GIVN” for use on bottled drinking water – waged against IBMG, LLC in an effort to block its bids to register the same mark for use on range of cosmetics products and online retail store services. Givn Goods argued that the identical nature of the trademarks would likely cause confusion among consumers and thus, the applications for registration should be denied.
In its (successful) defense, IBMG maintained that the goods and services associated with its and Givn Goods’ trademarks are sufficiently different to avoid any likelihood of confusion.
Identical Marks, Different Goods/Services
In the newly-issued opinion, the TTAB, tasked with determining whether consumers would be misled into believing the two companies’ products came from the same source due to the shared “GIVN” name, acknowledged that the marks are identical in appearance, sound, connotation, and commercial impression. Against that background, the Board considered the relatedness of the goods and services and the channels of trade, among other things – factors that largely weighed in favor of IBMG.
> No Overlap in Goods/Services or Trade Channels: The TTAB emphasized that Givn Goods’ registration covers “bottled drinking water” while IBMG’s applications involve cosmetics and online retail services in the beauty industry. Despite the identical names, the Board found that “on their face, [IBMG’s cosmetics goods/services] do not themselves show or suggest any overlapping trade channels with drinking water, or shared consumers.” Givn Goods primarily distributes its products through food retail outposts, coffee chains, and online platforms like Amazon. Conversely, IBMG’s goods and services were associated with beauty and cosmetics channels, thereby, reducing the potential for consumer confusion with regard to the companies’ trademarks.
> Lack of Evidence of Commercial Strength: Givn Goods attempted to argue that its “GIVN” mark is commercially strong due to its presence in over 3,000 stores and partnerships with major distributors like US Foods and Sysco. However, the TTAB found that the evidence of commercial success was moderate at best and did not demonstrate the high level of consumer recognition required to establish a strong mark.
> No Bad Faith by IBMG: Givn Goods argued that IBMG applied for the mark in bad faith, citing a lack of bona fide intent to use it in commerce. However, the TTAB clarified that bad faith in the context of likelihood of confusion requires an intent to deceive consumers, which was not proven by Givn Goods.
> Evian and Aquafina as Examples: Still yet, the TTAB rejected Givn Goods’ attempts to prove relatedness of the goods by pointing to other brands that sell both water and cosmetic products under the same trademark, namely, Evian (which sells facial mists) and Aquafina (which offers up lip balm, lip gloss, and lip exfoliants). The TTAB was not persuaded by either example, stating that Evian markets its water and facial sprays on separate websites with no overlapping retail channels.
While Aquafina’s bottled water and lip balm are both available on Amazon, the Board still found that “the mere coexistence of both products among the vast array of goods offered by Amazon does not persuade us that the goods are in the same trade channel.” In fact, “There is no evidence to suggest that customers would search Amazon and encounter both types of goods on the same webpages, or even under the same Amazon department.”
In short: The TTAB found that these examples fail to establish a marketplace trend that would lead consumers to expect cosmetics and bottled water to come from the same source. (This is probably the most interesting aspect of the matter in light of the fact that brands are readily expanding the scope of their offerings, which we previously dove into here, thereby, potentially broadening the “zone of natural expansion” for consumer goods/services across the board. A recent example on this front: Boeing’s successful effort to block the registration of a 787-centric trademark for use in connection with online retail services featuring sneakers).
In dismissing Givn Goods’ oppositions, the TTAB ruled that IBMG’s applications for “GIVN” in connection with cosmetics and online retail services could proceed.
THE BOTTOM LINE: The TTAB’s decision reiterates the well-established fact that identical trademarks can co-exist (without the risk of confusion) if the goods and services are unrelated, and the channels of trade do not overlap. Beyond that, it also highlights the importance of establishing commercial strength through substantial evidence of consumer recognition and marketplace impact.
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