Publisher of Shape Magazine Prevails On Section 2(d) Opposition to 'Shapes' Mark

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Jan. 22 — If registered, the “Shapes” mark for beauty services would result in confusion with the “Shape” registration that has been used as a title of a fitness magazine for over 30 years, the Trademark Trial and Appeal Board held Jan. 21, sustaining a Section 2(d), 15 U.S.C. § 1052(d), opposition to the Shapes application (Weider Publ'ns LLC v. D&D Beauty Care Co., T.T.A.B., No. 91199352, 1/21/14).

With a total monthly audience of over 6 million, the publisher was easily able to demonstrate that its Shape marks—registered in 1989 for print and in 1998 for online services—were famous. The board also determined that the Shape and Shapes marks were “confusingly similar in appearance, sound, and overall commercial impression.”

The board found that the goods and services were similar despite the fact that the applicant intended to use the mark on a wide-range of beauty services, and not for any media-related services. “[T]he services identified in the application are of the type which are normally featured in opposer's magazine,” the board said. With the remaining confusion factors either neutral or weighing in favor of finding a likelihood of confusion, the board determined that the opposer had proved its Section 2(d) claim by a preponderance of the evidence.

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