New York Trademark Attorney Blog
This Trademark Trial and Appeal Board (TTAB) dispute involves the mark SHAPE (in both standard character and stylized format) owned by Weider Publications, LLC (Opposer) and the trademark SHAPES in standard character format owned by D & D Beauty Care, LLC’s (Applicant). See Weider Publications, LLC v. D & D Beauty Care Company, LLC, 109 USPQ2d 1347 (TTAB 2014) [precedential]. The Applicant attempted to register SHAPES for beauty salon services, day spa services, and health spa services. The Opposer owns several registrations for the mark SHAPE, among them : (1) a magazine relating to physical fitness and exercise, in print format and online; (2) DVDs and CD-Roms featuring audio and video recordings in the areas of health, fitness and nutrition; and (3) apparel. Weider Publications filed a Notice of Opposition on the grounds of priority of use, and likelihood of confusion under Section 2(d) of the Trademark Act, and likelihood of dilution by blurring under Section 43(c) of the Trademark Act. The Applicant did not contest the Opposer’s priority of use. Therefore, the only issue to be determined is likelihood of confusion.
Likelihood of confusion must be proven by the Opposer by a preponderance of the evidence. When one of the parties alleges its trademark is “famous” under the definition of trademark law, often the TTAB will commence its analysis with the fame factor under the du Pont paradigm. Fame has a different definition under likelihood of confusion than it does under dilution. For purposes of likelihood of confusion, fame arises as long as a ” significant portion of the relevant consuming public … recognizes the mark as a source indicator.” See Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed Cir. 2005). Other relevant factors are volume of sales, length of time the trademark has been used in commerce, the reputation of the products and services, advertising expenditures of the goods and/or services sold under the mark, and recognition by independent sources of the goods and/or services identified by the trademark.
The evidence demonstrated that the Opposer had used the trademark SHAPE with its goods and services for over 30 years to identify its print magazine and for 15 years in connection with its online magazine. The print version of SHAPE magazine reached over 1.6 million readers while the online SHAPE magazine received an average of 3 million visitors per month. In addition, there is a newsletter wherein 700,000 readers subscribe. In the end, the audience for SHAPE magazine across all platforms is approximately 6 million per month. Deposition testimony supported these facts. There was also testimony regarding what an advertiser spent in the print version of the magazine for a full page ad – $182,000. SHAPE magazine generated substantial revenue since 2009. It received multiple awards and widespread media coverage. Regarding the fame determination, the Board concluded that for purposes of likelihood of confusion, the SHAPE marks were famous for its print magazine and online content.