The USPTO refused registration of the mark HONEYCOMB WAXING STUDIO for body waxing services [WAXING STUDIO disclaimed], finding a likelihood of confusion with the mark HONEYCOMB SALON & Design for hair salon services [SALON disclaimed]. The Board found the services to be related, but what about the marks? How do you think this came out? In re Averi Skye Enterprise, LLC, Serial No. 87830306 (June 22, 2020) [not precedential] (Opinion by Judge Thomas W. Wellington).
The Marks: The word HONEYCOMB dominates both marks, but "honeycomb" may have a different connotation in each. "[I]n the context of body waxing services,the term 'honeycomb' will be understood as a play on the beeswax in actual honeycombs," whereas for hair salon services, "consumers will likely perceive a double entendre involving the composite words “honey” and “comb” and their individual meanings in the context of hair styling. The Board concluded that the marks are "are overall slightly more similar than not."
Strength of the Cited Mark: Applicant submitted printouts from more than 35 different third-party websites showing the term HONEYCOMB used in connection with hair salons across the country. There was no evidence that these businesses are related. In fact, the printouts came from different website addresses and the word HONEYCOMB appears in different stylizations and often alongside various logos.
[T]he number of third-party uses in this case is in line with what has been relied upon by our primary reviewing court in previously finding weakness based on extensive third party use of the same or similar term. Indeed, the Federal Circuit has twice characterized evidence of third-party use as “powerful on its face,” for purposes of demonstrating weakness, based on fewer third-party uses than what we have before us in this case. See Jack Wolfskin, 116 USPQ2d at 1136 (paw print found weak in connection with clothing based on a record comprising 14 third-party registrations and uses of paw print marks); and Juice Generation, 115 USPQ2d at 1674 (26 third party registrations and uses of marks containing the words “Peace” and “Love”).
The Board therefore found that the term HONEYCOMB is a weak formative for salon services, including hair salons.
[P]ut into context here, consumers viewing the two marks can rely upon subtle differences between the marks, such as Registrant’s scissors design element that separates the words HONEY and COMB, as well as the term SALON, and Applicant’s addition of the wording WAXING STUDIO for purposes of distinguishing the marks and perceiving that the two marks are identifying two unrelated businesses.
The Board also noted that several of the third-party business also offer waxing services, indicating the weakness of HONEYCOMB for waxing services.
In view of the commercial weakness of the term HONEYCOMB in connection with salon services, including hair styling, and the overall slightly different suggestive meanings of this term in one mark versus the other, we find that the sixth DuPont factor weighs in favor of not finding confusion likely.
The Services: The evidence showed a close relationship between body waxing and hair salon services, including seven different third parties advertising hair styling and waxing services from the same locations. The evidence also indicated that these services can be advertised in the same trade channels, directed to the same class of consumers.
Conclusion: The Board concluded the consumers will distinguish the marks based on their differences, and so confusion is not likely. It therefore reversed the refusal to register
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TTABlogger comment: Now that's the way to use Jack Wolfskin and Juice Generation.
Text Copyright John L. Welch 2020.
