We are a boutique IP firm located in Osaka, Japan, specializing in trademark, design, specific unfair competition and copyright matters.

Bottom line: The Board found confusion is likely between TIFFANIA for soaps and cosmetics and Tiffany known for jewelry.

Tiffany & Co. filed an opposition against TIFFANIA for soaps and cosmetics registered without any office action.

First, the Board recognized Tiffany is an abbreviation of Tiffany & Co., the use of Tiffany dates back at least to 1972 and has been used since, and that the mark is well-known in Japan for jewelry.

The Board then assessed the degree of similarity of marks.  The marks at issue are similar in appearance with the only difference at the ending and also similar in sound as the first three sound [ti-fa-ni] is in common and differ only at the ending.  The marks are not comparable in connotation.

As to the degree of relatedness between toiletries and jewelry, the Board found that these products are closely related to each other because both are mostly for women’s ornamentation and their use and consumers overlap.

In view of the well-known status of the cited mark, similarity of the marks and relatedness of the goods, the Board found that consumers are likely to associate the opposed mark with the opponent’s well-known mark, and wrongly believe that the goods bearing the opposed mark and the opponent’s goods come from the same or organizationally/economically linked undertaking.  Accordingly, the opposed mark falls under Section 4-1-15 of Trademark Act.

The registrant did not file any counter argument.  And the Board revoked the registration.