Precedential No. 35: TTAB Grants MIRAGE BRANDS Cancellation Petition Due To Likelihood Of Reverse Confusion

• Published date: 30 December 2021
• Subject Matter: Consumer Protection, Intellectual Property, Consumer Law, Trademark
• Law Firm: Wolf, Greenfield & Sacks, P.C.
• Author: Mr John L. Welch

In an otherwise straightforward Section 2(d) analysis, the Board ruled that confusion is likely between Respondent's registered marks MIRAGE BRANDS (standard form) and MIRAGE BRANDS & Design [BRANDS disclaimed], and Petitioner Mahender Sabhnani's previously used and registered mark ROYAL MIRAGE & Design, all for perfume. Finding that "Respondent's presence in the marketplace is considerably greater than that of Petitioner," the Board saw "a circumstance of reverse confusion in which consumers exposed to Respondent's marks for perfumes who encounter Petitioner's mark for perfume are likely to believe mistakenly that Petitioner's goods originate with Respondent." Mahender Sabhnani v. Mirage Brands, LLC, 2021 USPQ2d 1241 (TTAB 2021) [precedential] (Opinion by Judge Christopher Larkin).

Priority: "In a cancellation proceeding . . . in which both parties own registrations, priority is an issue." Double Coin Holdings, Ltd. v. Tru Development, 2019 USPQ2d 3373409, at *4 (TTAB 2019). The earliest date on which Respondent could rely was November 23, 2016, the filing date of its underlying applications. Petitioner Sabhnani had an October 27, 2000 filing date of his underlying application and so he established priority of use.

Reverse Confusion: The Board observed that weighing of the DuPont factors "must take into account the confusion that may flow from extensive promotion of a similar or identical mark by a junior user." In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).

The term "reverse confusion" has been used to "describe the situation where a significantly larger or more prominent newcomer 'saturates the market' with a trademark that is confusingly similar to that of a smaller, senior registrant for related goods or services." Id. (quoting Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947, 24 USPQ2d 1001, 1010 & n.12 (7th Cir. 1992))

The Board noted that Petitioner did not expressly pleaded reverse confusion, but it "'does not have to be specifically pleaded so long as the plaintiff asserts that the respective marks are so similar as applied to the respective goods or services as to be likely to cause confusion.'" Top Tobacco, 101 USPQ2d at 1175 n.18 (quoting Am. Hygienic Labs. v. Tiffany & Co., 12 USPQ2d 1979, 1983 n.7 (TTAB 1989))." The Board is "obligated to consider confusion in whatever manner it presents itself under Trademark Act Section 2(d)."

Respondent's sales figures were "multiple orders of magnitude larger...