In one of the early opinions of 2025, the Trademark Trial and Appeal Board (TTAB) reversed the Examining Attorney’s refusal to register a mark based on likelihood of confusion. See In re Metabeauty, Inc., Serial No. 97492557 (January 28, 2025) [not precedential]. In my opinion, the decision is noteworthy because it relied on only ten third party registrations (and technically only nine) as basis to conclude the shared term “12” is conceptually weak and therefore must receive a restricted scope of protection under U.S. trademark law. When multiple trademarks share a common term and co-exist on the Trademark Register it is referred to as a “crowded field”. See the previous blog posts discussing the crowded field theory, https://www.newyorktrademarkattorneyblog.com/the-federal-circuit-sends-a-strong-message-to-the-ttab/ and also https://www.newyorktrademarkattorneyblog.com/the-second-federal-circuit-decision-weighing-in-on-the-crowded-field-theory/ to better understand this important trademark principle.
The Applicant was seeking to register the number 12 in an octagon shape claiming green as a feature of the mark for nonmedicated skin care preparation in international class 003 and in class 035 for online retail store services featuring medical supplies, cosmetics, tools used for application of skin care preparations among other goods. The Examining Attorney refused the application based on a registration for TWELVE COSMETICS for private label cosmetics in class 003. The Applicant appealed the refusal. The Applicant did not contest the goods were related for confusion purposes. Therefore, the relatedness of the goods was not in dispute, and it was also held that the trade channels overlapped. Moving on to the similarities of the marks, the first consideration is whether the only literal term in the mark, 12 has any weakness for cosmetic products. A trademark’s legal strength is determined by its distinctiveness and its marketplace strength. In re Chippendales USA Inc., 622 F.3d 1346, 1353-54 (Fed. Cir. 2010).
The cited mark, TWELVE COSMETICS is registered on the Principal Register without a claim of acquired distinctiveness, thus it is presumed inherently distinctive. However, even marks on the Principal Register will vary in strength depending on if the mark is considered to be fanciful, arbitrary or suggestive. Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 1325 (Fed. Cir. 2017). Third-party registrations are important evidence to show the conceptual strength (distinctiveness) of a trademark since it will “‘show the sense in which a mark is used in ordinary parlance,’ that is, some segment that is common to both parties’ marks may have ‘a normally understood and well-recognized descriptive or suggestive meaning, leading to the conclusion that that segment is relatively weak[.]”’ Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 1374 (Fed. Cir. 2015). It is possible to conclude from third party registrations that a mark is weak due to a specific term, and slight differences can be enough to distinguish one source from another source.
Here, the TTAB pointed out that two of the third-party registrations were owned by one source and therefore, technically only nine third parties are relevant, bringing the third party registration count down by one. The number 12 or twelve suggests a form of measurement, and therefore the nine third party marks demonstrate the common element 12 or twelve is conceptually weak for cosmetic goods. Applicant’s mark contains a carrier element an octagon in green color with the number 12 inside the geometric shape. The design elements add to the commercial impression and aid in distinguishing the mark from the other 12/twelve marks for cosmetic goods. Moreover, the TTAB argues that although the registrant’s mark TWELVE COSMETICS contains a disclaimed term, it does provide a structure and appearance different than Applicant’s mark.
This case continues sending a strong message to Examining Attorneys that third-party registrations alone can be evidence of a term’s recognized meaning. Once this is demonstrated, it may be concluded that the mark is weak and in addition, the dissimilarities between the marks may be sufficient to distinguish the sources of the marks. Prior to this decision, according to my count, the least amount of third-party registrations accepted to prove a weak mark was twelve. Now we have ten, and technically nine due to the two marks owned by one third party. We must keep in mind that In Juice Generation, Inc. v. GS Enterprises LLC, the Court held that evidence of third-party use is powerful even where the specific extent and impact of the usage is not established. The “crowded field” argument should not be overlooked when receiving a likelihood of confusion refusal. If you have questions, regarding how to successfully leverage a “crowded field” argument to overcome a 2(d) refusal or other trademark related questions, please feel free to contact the firm for a courtesy consultation.