The Trademark Trial and Appeal Board (“TTAB”) found that there was no likelihood of confusion between the “SMOKES & Design” mark owned by Fancy Pants Products, LLC (“Applicant”), generally used in connection with cannabis products, and the “SMOK” mark owned by Shenzhen IVPS Technology Co. Ltd (“Opposer”), generally used in connection with electronic cigarettes. Shenzhen IVPS Tech. Co. v. Fancy Pants Prods., LLC, Opp. No. 9126391, 2022 TTAB LEXIS 383, 2022 WL 16646840 (TTAB Oct. 31, 2022). Applicant’s victory before the TTAB was achieved even though it did not submit any brief, testimony or evidence. The TTAB held that none of these submissions was required as Opposer alone bore the burden of proof to show standing and to support its “likelihood of confusion” claim by a preponderance of the evidence.

In its precedential ruling, the Board first considered what trademark rights Opposer could rely upon in the opposition proceeding. The Opposer pled ownership of eleven federal trademark registrations related to various SMOK marks as well as a family of marks “around the wording SMOK.” The Board held that to make registrations properly of record for consideration by the Board, the Trademark Rules require the submission of current status and current title copies of registrations or current copies of electronic database records showing status and title when the notice of opposition is filed. “[U]ndated copies of the electronic database records of the Office are not sufficient to make a registration of record because the Board cannot ascertain whether they are ‘substantially’ or ‘reasonably’ contemporaneous with the filing of the notice of opposition or petition to cancel. For the same reason, plain copies of registrations generally are not sufficient to make a registration of record. But if the pleaded registration issued ‘substantially’ or ‘reasonably’ contemporaneous with the filing of the notice of opposition or petition to cancel, the undated copy of the electronic database record of the Office or plain copy of the registration will be sufficient to establish current status and title and will be considered competent evidence.”

Applying this standard, the Board determined that 10 of the registrations Opposer had pled were not properly before the Board. However, the Board found that Applicant’s failure to object to testimony regarding the use of various SMOK marks meant that Opposer could rely upon its common law rights in these marks by implied consent if the evidence demonstrated such rights.

The Board then considered whether Opposer had established a family of SMOK marks or common law rights. Merely having several registrations for marks containing a common element is insufficient to prove a family of marks. Instead, a party must show priority in the family of marks and that the marks were promoted together to create consumer recognition of the common element in the family of marks.

Here, the Board found that Opposer’s evidence was too vague and non-specific to meet its burden of showing a family of SMOK marks or common law rights in the SMOK marks for which testimony had been submitted. Because the SMOK element is the phonetic equivalent to “smoke,” the element is descriptive of electronic cigarettes. Thus Opposer would need to make a “strong showing” of acquired distinctiveness of SMOK for it to serve as a family feature.

Because Opposer has not provided evidence that its claimed SMOK family feature has been used and promoted together in a manner sufficient to create public recognition prior to Applicant’s effective filing date, nor established the acquired distinctiveness of the asserted SMOK family feature, the Board held that Opposer had not established a family of SMOK marks and “cannot prevail on a likelihood of confusion claim that is predicated on ownership of the family of marks.” The same conclusion was quickly reached with respect to Opposer’s claim to common law rights in certain SMOK marks.

The Board finally turned to the question of likelihood of confusion based only on the single SMOK registration properly of record. The Board first considered the similarity of Applicant’s “SMOKES & Design” mark:

with Opposer’s standard character SMOK mark. The Board determined that both marks were inherently weak so “the addition of the broken concentric circle design and incorporation of the two elongated letters ‘s’ to the disclaimed term SMOKES in Applicant’s mark is sufficient to render Applicant’s mark as a whole distinguishable from Opposer’s mark to avoid confusion.”

The Board next determined that consumers could use electronic cigarettes in connection with cannabis so the goods are related. However, because cannabis may only be sold in regulated establishments, and electronic cigarettes may be sold in any smoking shops, vaping shops, or convenience stores, the channels of trade are distinct. The Board concluded that, based upon the relevant DuPont factors, there was no likelihood of confusion and dismissed the notice of opposition.