In March 2019, the United States Patent and Trademark Office (USPTO) refused the registration of a mark by Concentra B.V. which consisted of three-dimensional packaging of a male torso in association with perfumes, essential oils and articles for body and beauty care.
The issue arose as a result of another registered mark (U.S. Reg. No. 2141962) that also consists of a three-dimensional male torso for use in association with perfumes.
The Board recognized that there were differences between the marks: the Applicant’s mark had a more proportioned torso that was muscular and defined, whereas the registrant’s mark had a more slender upper body with shorter arms.
However, the Board found that under actual marketing conditions “consumers do not necessarily have the luxury of making side-by-side comparisons between marks” and must instead rely on “imperfect recollections.”
The Examiner concluded that when viewed in their entirety both the Applicant’s mark and the cited mark were similar “in sight, connotation and commercial impression”, and would likely be referred to by consumers as the perfume container in the shape of a male torso. This, together with the identical nature of the goods, weighed heavily in favour of a finding of confusion, and therefore Concentra B.V.’s application was refused.
For more information about trademark registration and how to avoid pitfalls, please contact us.