In a precedent-setting opinion, the Trademark Trial and Appeal Board (TTAB) has rejected opposition to a trademark registration application that includes the word "SMOKES," stating that it is unlikely to be confused with the plaintiff's registered trademark "SMOK." The TTAB cited differences and common elements in the trademarks, as well as weaknesses in the "SMOK" mark and lack of evidence showing overlapping trade channels. The decision was made in the case of Shenzhen AVP Technology Co., Ltd. v. Fancy Pants Products, LLC, Opp. No. 91263919 (Oct. 31, 2022) (Goodman, Pologeorgis, English, ATJ), without the submission of a brief, testimony, or evidence by the trademark applicant.
Fancy Pants Products has submitted a trademark application, which includes the word "SMOKES". The application initially denied "smokes", indicating that Fancy Pants acknowledged that the term was not inherently unique to its products, which include "smoked...with tobacco substitutes containing delta-9 THC concentration not exceeding 0.3% (dry weight)", or cannabis-derived products compliant with the 2018 Farm Bill. Shenzhen Aipusen Technology Co., Ltd may oppose the registration of the Fancy Pants trademark, citing potential confusion with its own "SMOK" trademark rights. Aipusen claims to hold 11 registered trademarks for "SMOK" and variations for electronic cigarettes, parts, and related retail services, among other goods.
During the hearing, Fancy Pants did not give any testimony or provide evidence, nor did they submit any briefs. However, the committee noted that Fancy Pants was not required to submit these opinions because Avisoth carries the responsibility of proving their legal claim and their trademark infringement assertion through the use of superior evidence.
In consideration of the rights in question, the committee first investigated the trademark rights that Avipsa can rely on in the opposition procedure. Due to errors made by Avipsa in verifying its registration status and name resulting in its trademark registration records being improperly filed, the committee found that 10 of Shenzhen's 11 trademark applications were not properly recorded. Nevertheless, as Fancy Pants failed to object to Avipsa's common law use evidence, it was allowed to rely on common law rights for these 10 SMOK variant trademarks.
Once the scope of the trademark rights in question had been determined, the committee focused on the priority issue concerning the accused trademark of Avipsa. Regarding Avipsa's §2(f) trademark registration for the already registered SMOK trademark (and its corresponding goods and services), there was no dispute over its priority rights. As for Avipsa's common law rights in the so-called other 10 SMOK variant trademark families, the committee explained that Avipsa must first prove that it even has a "family" trademark, that is, a trademark with "recognizable shared characteristics" for Avipsa to use and promote in such a way as to create public recognition of the family.
Although the submitted testimony "in general" pertained to the sales of electronic cigarettes and their components and accessories, the committee believed that the testimony of Avipsos was "vague and non-specific" as it did not connect the sales of electronic cigarettes, components and accessories with any specific SMOK logo or set of logos on the accessories or related retail services. Additionally, there was no documentary evidence to support this association in the testimony of the witness. Therefore, the committee found insufficient evidence to support the use of any specific SMOK logo as a family using common law prior to the Fancy Pants priority date.
The committee has raised further questions regarding the claimed trademark series, as the trademark series principle requires proof that the "SMOK" series elements are not descriptive or highly suggestive, or "so common in the industry that it cannot serve as a distinctive feature" of the trademark. Avipsa did not contest the findings from the investigation, which showed that consumers may pronounce and spell their SMOK mark as the known term "smoke" with potential mistakes. However, evidence suggests that the term "smoke" has a descriptive meaning when associated with electronic cigarette products, as seen with the registration of electronic cigarette products in Shenzhen. Therefore, due to the descriptive meaning of the term "smoke", Avipsa had to strongly show the acquired distinctiveness of their SMOK trademark as a family feature. The opposing factor of the secondary meaning was considered, and Avipsa's limited evidence regarding the quantity and manner of advertising and trademark use was deemed unconvincing for acquiring distinctiveness. As Avipsa could not establish the acquired distinctiveness of the descriptive term "SMOK" as a feature of the SMOK trademark family, the committee believes Avipsa did not establish rights within the SMOK trademark family, and thus cannot make potential confusion claims based on such supposed rights.
Finally, the committee analyzed the possibility of confusion between the registered trademark SMOK and Fancy Pants' SMOKES logo.
The similarity of the marked goods and services and their similarity or dissimilarity in established or potential trade channels has been established. The committee weighed the first and third factors against the likelihood of confusion. Firstly, in examining the similarity of the trademarks, the committee found that the term "smoke" as a common element between the two trademarks was considered weak, as it describes or strongly suggests the parties' respective e-cigarette related goods. Therefore, although the committee found the marks to be similar in appearance, sound, and overall commercial impression, it deemed that the design element of the Fancy Pants mark was sufficiently distinctive from the SMOK mark of Avipsu to avoid confusion. While the board acknowledged that Fancy Pants' marijuana smoke was related to Avipsu's e-cigarettes, it found no overlap in the respective trade channels outlined in the record. The board noted that Avipsu had not demonstrated that its channels (such as smoke shops, vape stores, and convenience stores) were also ordinary trade channels for Fancy Pants' goods, which were primarily sold through local marijuana dispensaries.
Therefore, despite the fact that the trademark of the party involved covers related goods, the assessment results of existing evidence and testimony related to DuPont by the committee indicate that there is no likelihood of confusion between the SMOKES logo and the SMOK trademark registered in Shenzhen, and the objection has been dismissed.
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