The Elemental Clash: Why Skincare and Supplements Under One Mark Can Lead to Trademark Refusal

Table of Contents

1. Key Highlights:
2. Introduction:
3. Deconstructing Mark Similarity: Beyond Surface-Level Distinctions
4. The Intertwined World of Skincare and Supplements: Redefining "Related Goods"
5. Consumer Sophistication: The "Least Sophisticated" Standard
6. The Absence of Actual Confusion: A Double-Edged Sword
7. Broader Implications for Brand Strategy and IP Protection
8. Navigating the Trademark Refusal Process
9. Conclusion: A Clear Verdict for Brand Distinction
10. FAQ:

Key Highlights:

• The USPTO refused registration for ELEMENTAL BEAUTY for skincare due to likely confusion with BEAUTY IS ELEMENTAL for nutritional supplements, highlighting the stringent standards for trademark distinctiveness.
• The Trademark Trial and Appeal Board (TTAB) found significant similarities in appearance, sound, connotation, and commercial impression between the marks, despite applicant arguments regarding linguistic nuances and word dominance.
• Crucially, the Board deemed skincare preparations and nutritional supplements to be related goods, citing extensive third-party evidence of companies offering both under the same brand, often promoting them for coordinated skin health regimens.

Introduction:

The landscape of intellectual property law is complex, particularly when it comes to trademarks designed to distinguish goods and services in the marketplace. Businesses invest heavily in creating unique brand identities, only to face the rigorous scrutiny of the United States Patent and Trademark Office (USPTO). A recent, illuminating case, In re Circadia by Dr. Pugliese, Inc., underscores the challenges inherent in securing trademark rights, especially when marks share conceptual elements and goods traverse seemingly distinct consumer categories. Circadia by Dr. Pugliese, Inc., sought to register the mark ELEMENTAL BEAUTY for "professional non-medicated skincare preparations," disclaiming "BEAUTY." This application, however, was met with a refusal from the USPTO, citing a likelihood of confusion with the existing registered mark BEAUTY IS ELEMENTAL, which covers "nutritional supplements." The ensuing appeal before the Trademark Trial and Appeal Board (TTAB) delved deep into the nuances of trademark similarity, the relatedness of goods, and the perceptions of the ordinary consumer. This case serves as a powerful illustration of the factors the USPTO considers when evaluating potential consumer confusion and offers critical insights for businesses navigating the intricate world of brand protection.

Deconstructing Mark Similarity: Beyond Surface-Level Distinctions

At the heart of any trademark dispute lies the assessment of mark similarity. The USPTO, and subsequently the TTAB, evaluates marks based on their appearance, sound, connotation, and overall commercial impression. Circadia argued that its mark, ELEMENTAL BEAUTY, conveyed a different message than BEAUTY IS ELEMENTAL. Specifically, Circadia contended that ELEMENTAL BEAUTY "evokes a natural, elemental aesthetic, suggesting purity and simplicity in skincare—a concept tailored to topical beauty products." In contrast, they posited that BEAUTY IS ELEMENTAL, as a declarative slogan, "asserts that beauty is inherently fundamental, projecting a philosophical or health-focused message suited to ingestible supplements." These divergent connotations, Circadia believed, would create entirely different commercial impressions.

However, the Board remained unconvinced by these arguments. It observed that the terms ELEMENTAL and BEAUTY do not convey such "clearly different connotations" when applied to the goods at issue. This highlights a fundamental principle in trademark law: the analysis is not conducted in a vacuum but always in the context of the goods or services with which the marks are associated. While a nuanced linguistic distinction might exist in abstract, the practical commercial impression, particularly on consumers, is paramount.

Circadia further attempted to differentiate the marks by asserting that ELEMENTAL dominated its mark, while BEAUTY was the focus of the cited mark. This argument, too, failed to sway the Board. The TTAB reiterated that a mark must be considered in its entirety. The presence of the word BEAUTY in Circadia’s mark, even if disclaimed (meaning the applicant doesn't claim exclusive rights to the term itself, but only to the mark as a whole), contributes significantly to the overall similarity. Disclaiming a term does not remove it from the consumer’s perception of the mark. A consumer encountering "ELEMENTAL BEAUTY" would still perceive "BEAUTY" as a key component, irrespective of the legal disclaimer.

The Board concluded that consumers are "unlikely to notice the 'nuanced linguistic difference' that Applicant asserts exist between the marks." This statement underscores the practical, rather than purely academic, approach the USPTO takes. Average consumers are not expected to be linguists dissecting the subtle shades of meaning. Instead, they form impressions quickly. Both marks, the Board found, convey the overarching idea of beauty possessing an "elemental quality or characteristic," leading to similar commercial impressions. The different grammatical structures or the addition of the word "IS" were deemed insufficient to alter this fundamental similarity. This comprehensive analysis led the Board to conclude that the first DuPont factor—the similarity or dissimilarity of the marks in their entireties—weighed heavily in favor of a likelihood of confusion.

This aspect of the ruling serves as a crucial reminder for brand developers: while a clever linguistic twist might seem to differentiate a mark, the USPTO evaluates consumer perception, not just grammatical structure. The more prominent and shared elements between marks, especially when those elements are key to the commercial impression, the higher the likelihood of a refusal. A common pitfall is overestimating the average consumer’s attention to detail or their ability to discern subtle distinctions in fast-paced commercial environments.

The Intertwined World of Skincare and Supplements: Redefining "Related Goods"

Perhaps the most compelling aspect of the Board’s decision revolved around the relatedness of the goods: "professional non-medicated skincare preparations" versus "nutritional supplements." At first glance, topical creams and ingestible pills might appear distinct. Circadia argued for these inherent differences in nature and function. However, the Examining Attorney, Elaine Xu, presented a robust body of evidence demonstrating that in the contemporary marketplace, these categories are far from mutually exclusive.

The evidence presented by the Examining Attorney was multifaceted and highly persuasive. It included:

1. Internet Evidence of Co-branding: More than a dozen third-party companies were shown to offer both skincare preparations and nutritional supplements under the same mark and on the same website. This direct evidence powerfully illustrated that consumers are accustomed to encountering these two product types from a single brand source.
2. Third-Party Registrations: Sixteen use-based third-party registrations were submitted, covering both non-medicated skincare preparations and nutritional supplements. This demonstrates a pattern of businesses successfully registering trademarks for both categories, further solidifying the idea that these goods are commercially related. The existence of such registrations indicates that the USPTO has, in other instances, recognized the interconnectedness of these product lines.

The Board directly addressed Circadia's argument about the fundamental differences between the products by highlighting that the evidence included "multiple examples of brands offering both skincare products and supplements, with the latter often promoted specifically for their potential benefits to the skin." This observation is critical. The market has evolved to explicitly link internal health (through supplements) with external appearance (through skincare). Many dietary supplements are marketed with claims of improving skin elasticity, reducing wrinkles, or enhancing complexion from within. Products containing collagen, hyaluronic acid, vitamins C and E, or probiotics are frequently positioned as "beauty from within" solutions.

Furthermore, several of the third-party supplements cited in the evidence even included the word "skin" in their names, removing any ambiguity about their intended purpose. This explicit branding reinforces the consumer’s understanding of a direct connection between the supplement and skin health.

The Board’s conclusion on this point was unequivocal: "Such evidence supports a finding that consumers seek both Applicant’s and Registrant’s goods for the same purpose, to improve and care for their skin." This "same purpose" criterion is a cornerstone of relatedness analysis. If consumers purchase different types of goods to achieve the same end goal – in this case, skin improvement – then those goods are likely to be considered related for trademark purposes.

Adding further weight to this finding, the Board noted that "at least two of the companies that offer skincare preparations and nutritional supplements promote the goods for use as part of a coordinated regimen of skincare, providing further support for a finding that the goods are complementary and related." The concept of a "coordinated regimen" is particularly salient. Consumers are increasingly encouraged to adopt holistic beauty routines that combine topical treatments with ingestible products for enhanced efficacy. This synergistic approach blurs the traditional lines between cosmetics and internal wellness, making it highly probable that consumers would assume products with similar marks, even if physically different, originate from the same source if they serve a common beauty or health objective.

This facet of the ruling has broad implications for industries where product lines are expanding and converging. The rise of "nutricosmetics" or "beauty-from-within" products epitomizes this trend. A brand known for its anti-aging creams launching a collagen supplement would be a natural extension in the eyes of many consumers. Therefore, a competitor using a similar mark for either product category creates a high risk of confusion, as consumers might readily assume a common origin. This principle extends beyond beauty to other sectors where lifestyle brands integrate seemingly disparate goods or services under a unified brand identity.

Consumer Sophistication: The "Least Sophisticated" Standard

Another critical factor in assessing likelihood of confusion is the degree of care exercised by the relevant consumers. Circadia argued that consumers for its professional non-medicated skincare preparations were "highly sophisticated, exercising significant care in their purchases." This argument is often advanced by applicants whose goods are premium-priced, require specialized knowledge, or are sold through professional channels. The logic is that more discerning consumers are less likely to be confused by similar marks because they conduct thorough research and are attentive to detail.

However, Circadia provided no evidence to support this assertion. In the absence of such evidence, the Board defaults to a fundamental principle of trademark law: "we 'must make our determination based on the least sophisticated consumer.'" This standard is designed to protect all consumers, not just the most diligent ones. While some consumers might indeed exercise significant care when purchasing high-end skincare or specialized supplements, others may make impulse buys or rely on brand recognition and superficial cues. The law seeks to prevent confusion for the entire spectrum of potential buyers.

The "least sophisticated consumer" standard means that if there's a plausible scenario where even a moderately attentive consumer could be confused, then a likelihood of confusion exists. It does not mean protecting a completely inattentive or careless consumer, but rather one who, for whatever reason, may not meticulously analyze every detail of a product or its branding. For goods like skincare and nutritional supplements, which range from mass-market to luxury, the consumer base is diverse. Therefore, assuming a uniformly high level of sophistication without concrete evidence is generally an uphill battle. This emphasizes the importance of providing robust empirical data or market studies if an applicant wishes to argue for a higher standard of consumer care.

The Absence of Actual Confusion: A Double-Edged Sword

Circadia also pointed to the lack of evidence of actual confusion as a factor mitigating against refusal. In trademark law, evidence of actual confusion, while not strictly necessary to prove likelihood of confusion, can be highly persuasive when present. However, its absence is often given less weight, especially in certain circumstances.

The Board acknowledged Circadia’s argument but quickly countered it by noting a crucial detail: the subject application was based on "intent to use." This means Circadia had not yet commenced commercial use of the ELEMENTAL BEAUTY mark when the application was filed. Consequently, there was no opportunity for concurrent use of Circadia's mark and the registered mark (BEAUTY IS ELEMENTAL) in the marketplace. Without concurrent use, there can be no actual confusion. Therefore, the absence of actual confusion in this specific scenario holds little probative value.

The lack of actual confusion becomes a more meaningful factor when both marks have been in active, concurrent use in the marketplace for a significant period without incident. Even then, courts and the USPTO recognize that actual confusion can be difficult to prove and is not a prerequisite for a finding of likelihood of confusion. The core inquiry remains whether confusion is likely, not whether it has already occurred. This principle protects consumers proactively by preventing potentially confusing marks from entering the marketplace in the first place.

Broader Implications for Brand Strategy and IP Protection

The Circadia case offers invaluable lessons for businesses developing and protecting their brand identities, particularly those operating in the ever-expanding health, wellness, and beauty sectors.

1. Holistic Brand Vision: Companies must adopt a holistic view of their brand and its potential extensions. If a brand intends to operate across seemingly disparate product categories that share a common consumer purpose (e.g., beauty, health, performance), it must consider how its marks will be perceived across these categories from the outset. A mark that seems distinctive for skincare might be problematic if the company later branches into supplements, or vice-versa, especially if similar marks already exist in the adjacent category.

2. Thorough Trademark Clearance: The case underscores the absolute necessity of comprehensive trademark clearance searches. These searches should not be limited to the exact goods or services an applicant intends to offer immediately but should extend to related categories where consumer confusion could arise. This includes searching for marks associated with complementary products, alternative solutions to the same problem, and even products marketed by competitors under a unified brand. Had Circadia conducted a broader search that included nutritional supplements, the conflict with BEAUTY IS ELEMENTAL might have been identified earlier.

3. Understanding Market Convergence: The decision highlights the ongoing trend of market convergence, where traditional industry boundaries are blurring. "Beauty from within" is just one example. Others include functional foods and beverages, smart home devices that integrate disparate services, or fashion brands moving into home goods. Trademark strategies must adapt to this reality, recognizing that goods once considered unrelated might now be seen as originating from a single source by consumers.

4. The Weight of Third-Party Evidence: The Examining Attorney's success in this case was largely due to the compelling third-party evidence. This demonstrates that intellectual property disputes are not just about legal arguments but also about understanding and presenting market realities. For applicants and registrants alike, collecting and presenting evidence of how consumers perceive various goods and services in the marketplace can be pivotal. This includes industry reports, market studies, competitor websites, and promotional materials.

5. Nuance vs. Impression: Brand names are not just words; they are carriers of commercial impressions. While legal teams might focus on linguistic nuances, the USPTO ultimately prioritizes the average consumer's overall impression. Brands must be distinctive enough to stand out not just to a legal expert, but to a hurried shopper. This often means aiming for marks that are not merely "different enough" but truly unique and unlikely to trigger association with existing brands in relevant fields.

6. Importance of Evidence in Arguments: When making assertions to the USPTO, such as claims about consumer sophistication or the unrelatedness of goods, concrete evidence is crucial. Bare assertions, no matter how intuitively appealing, often fail to persuade without supporting data, market analysis, or expert testimony. This is particularly true when challenging the presumptions of relatedness or consumer behavior.

Navigating the Trademark Refusal Process

When faced with a USPTO refusal, applicants have several avenues. Initially, they can respond to the examining attorney, attempting to persuade them that a likelihood of confusion does not exist. This involves presenting arguments and, often, evidence, as seen in this case. If the examining attorney maintains the refusal, the applicant can appeal to the Trademark Trial and Appeal Board (TTAB), an administrative body within the USPTO.

The TTAB functions as an appellate court for trademark matters arising from examining attorneys’ decisions, and also handles opposition and cancellation proceedings. Its decisions are non-precedential, meaning they don't set binding legal precedent for all future cases, but they provide strong guidance and insight into the USPTO's thinking. Further appeals can be made to the U.S. Court of Appeals for the Federal Circuit or, in some cases, through a civil action in a U.S. District Court.

The Circadia case demonstrates a typical journey through this process, where the applicant challenged the examining attorney’s decision before the TTAB, only to have the refusal affirmed. Each stage requires careful legal strategizing and a thorough understanding of trademark law principles and evidence presentation.

Conclusion: A Clear Verdict for Brand Distinction

The TTAB's decision in In re Circadia by Dr. Pugliese, Inc. serves as a robust reminder of the high bar for trademark registration. The Board meticulously weighed the similarities of the marks, the relatedness of the goods, and the principles governing consumer perception. Its finding that ELEMENTAL BEAUTY for skincare was confusingly similar to BEAUTY IS ELEMENTAL for nutritional supplements underscores the evolving nature of product categories and the need for brands to establish clear, distinct identities in an increasingly integrated marketplace. For businesses, the takeaway is clear: brand protection requires foresight, comprehensive due diligence, and an acute awareness of how consumers truly perceive product connections, rather than relying solely on perceived linguistic or functional distinctions. The elemental truth is that in the world of trademarks, clarity and distinctiveness remain paramount.

FAQ:

Q1: What is the primary purpose of a trademark? A1: The primary purpose of a trademark is to identify and distinguish the goods and/or services of one source from those of others. It helps consumers recognize the origin of products and services, fostering brand loyalty and preventing confusion in the marketplace.

Q2: What are the main factors the USPTO considers when determining a "likelihood of confusion" between two trademarks? A2: The USPTO, through the TTAB, primarily considers the "DuPont factors," established in In re E. I. DuPont DeNemours & Co.. While there are 13 factors, the most frequently emphasized are: (1) the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression; and (2) the similarity or dissimilarity of the goods or services as described in the application and registration. Other factors include the channels of trade, the conditions of sale, the number and nature of similar marks in use on similar goods, and the degree of care likely to be exercised by purchasers.

Q3: Can two marks be considered "similar" even if they have different grammatical structures or extra words? A3: Yes, absolutely. As shown in the Circadia case, the Board found that ELEMENTAL BEAUTY and BEAUTY IS ELEMENTAL were similar despite their structural differences. The key is the overall commercial impression and whether consumers are likely to perceive the marks as conveying a similar message or originating from the same source. Subtle linguistic differences often fail to distinguish marks in the eyes of the average consumer.

Q4: How does the USPTO determine if different types of goods, like skincare and nutritional supplements, are "related"? A4: Goods are considered related if they are of a nature that the public would likely believe they originate from the same source, or are sponsored by or affiliated with that source, if sold under similar marks. This determination often involves looking at:

• Purpose: Do the goods serve the same or a complementary purpose (e.g., both for skin improvement)?
• Channels of Trade: Are they sold through the same retail outlets or online platforms?
• Purchasers: Are they bought by the same class of consumers?
• Third-Party Evidence: Is there evidence of other companies selling both types of goods under a single brand? This was a critical factor in the Circadia case.
• Promotional Linkages: Are they promoted together or as part of a coordinated regimen?

Q5: What is the "least sophisticated consumer" standard, and why is it used in trademark examination? A5: The "least sophisticated consumer" standard means that trademark decisions must consider whether confusion is likely for even the less discerning members of the purchasing public. It aims to protect all consumers, not just those who meticulously research every purchase. This standard acknowledges that consumers may make hurried decisions or not pay close attention to minor details. It's used to prevent consumer confusion proactively and broadly, ensuring brand clarity across the entire market segment.

Q6: Does the absence of "actual confusion" guarantee a trademark will be registered? A6: No. While evidence of actual confusion (or its absence) can be a factor, it is rarely dispositive. The core legal test is whether confusion is likely, not whether it has already occurred. Furthermore, in cases like Circadia where the application is based on "intent to use" and the mark has not yet been in commercial use, the absence of actual confusion holds very little weight because there hasn't been an opportunity for confusion to arise in the marketplace.

Q7: What does it mean if a word in a trademark is "disclaimed"? A7: When a word in a trademark is disclaimed, it means the applicant is not claiming exclusive rights to that specific word apart from the mark as a whole. This often happens with generic, descriptive, or highly laudatory terms (e.g., "BEAUTY" for beauty products). While a disclaimer might satisfy certain technical requirements, it does not remove the disclaimed word from the overall commercial impression of the mark. Consumers still see and read the word, and it contributes to how they perceive the entire mark, as the Board noted in the Circadia case.

Q8: What steps can a company take to minimize the risk of trademark refusal due to likelihood of confusion? A8: To minimize risk:

1. Conduct thorough trademark clearance searches: Go beyond exact matches and include phonetic equivalents, conceptual similarities, and searches in related goods/services categories.
2. Choose strong, distinctive marks: Fanciful (made-up words) or arbitrary (common words used in an unrelated context) marks are generally stronger than suggestive or descriptive marks.
3. Consider all aspects of the mark: Think about its appearance, sound, meaning, and overall impression from the perspective of an average consumer.
4. Anticipate future product extensions: Consider if your brand might expand into related categories and choose a mark that works across these potential extensions without conflict.
5. Seek expert legal advice: Consult with an experienced trademark attorney who can guide you through the search, application, and any potential refusal processes.