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Bottom line: The Board found “FACE FITNESS with its transliteration in katakana” similar to “RALPH LAUREN / FACE FITNESS”.

Here is another case regarding similarity of marks with / without designer’s name.  Compare with our case report No. 071 “Shade by Yoshiya Keiko” v. “Shade” and see what led to a different outcome.

The applicant filed an application for “FACE FITNESS with its transliteration in katakana” shown below designating cosmetic and toilet utensils [other than electric tooth brushes] in Class 21.  The examiner refused the application, citing a registration for “RALPH LAUREN / FACE FITNESS” shown below designating cosmetics, false nails, false eyelashes, dentifrices, etc. in Class 3.

<Applied-for mark>


<Cited mark>

The designated goods “cosmetic and toilet utensils” of the applied-for mark are related to “false nails, false eyelashes” of the cited registration.  So, the main issue is whether the applied-for mark is similar to the cited mark or not.

The Board observed the marks and found as follows:

<As for the applied-for mark>
The applied-for mark is literally pronounced as is in English.  “FACE FITNESS” is a kind of coined term and has no particular meaning.

<As for the cited mark>
- The cited mark is composed of “RALPH LAUREN” in the upper part and “FACE FITNESS” in the lower part.  The two parts are not unified semantically and visually.
- “RALPH LAUREN” is a well-known brand for clothing, and perfume is also sold under RALPH LAUREN brand.  The designated goods cosmetics, false nails, etc. of the cited mark are closely associated with the fashion business, and “RALPH LAUREN” is well-known in cosmetics and cosmetic utensils industry as well.
- “FACE FITNESS” is capable of functioning as a source identifier, let alone “RALPH LAUREN”. Perfume under RALPH LAUREN brand is sold with a product mark such as “POLO SPORT” or “ROMANCE”.  Thus, consumers will recognize that “RALPH LAUREN” is a house mark and “FACE FITNESS” is a product mark when they see the cited mark.

<Comparison>
- The marks are visually different as a whole.  However, the marks share “FACE FITNESS”.
- The marks are phonetically identical in part and semantically not comparable.
- Examining the above factors comprehensively, the marks are similar to each other.

<As for the applicant’s argument>
The applicant argued that the cited mark has sound corresponding to the entire mark or “RALPH LAUREN”, and does not have sound corresponding to “FACE FITNESS” alone as “FACE FITNESS” is weak in its distinctiveness.  However, there are no such circumstance that suggests “FACE FITNESS” is weak.  Each of “RALPH LAUREN” and “FACE FITNESS” independently functions as a source identifier.  Thus, the cited mark has sound corresponding to “FACE FITNESS”, and the applicant’s argument is not reasonable.

And so the Board affirmed the refusal.