Naterra Int’l, Inc. v. Bensalem

Authored by: Jeremy J. Gustrowsky

A recent decision highlights how important it is for the Trademark Trial and Appeal Board (TTAB) to fully consider all relevant evidence when deciding if two trademarks are likely to confuse consumers. In this case, Naterra International, Inc., the owner of the BABY MAGIC brand for baby skincare products, challenged the registration of BABIES’ MAGIC TEA, a mark used for medicated tea for babies. Naterra argued that the two marks were so similar that consumers might think the products came from the same source.

The TTAB originally ruled against Naterra, finding that the products were not related and did not travel in the same trade channels, and that Naterra’s mark was not famous enough to deserve extra protection. However, on appeal, the Federal Circuit found that the Board had not properly considered some key evidence. Specifically, the Board overlooked testimony that several companies sell both baby skincare and ingestible products under the same brand, which could suggest that consumers might expect such products to come from the same source. The Board also ignored an admission from the tea company that both parties used similar trade channels, such as online retailers like Walmart and Amazon.

The appeals court said that these errors were not harmless, because the Board might have reached a different conclusion if it had fully considered this evidence. The court also clarified that, when two marks are very similar and one part of the mark is generic (like “TEA”), the similarity should weigh heavily in the confusion analysis. However, the court agreed with the Board that Naterra had not proven its mark was famous, so fame did not need to play a dominant role in the analysis.

As a result, the court vacated the Board’s decision and sent the case back for further review, instructing the Board to consider all the relevant evidence about how related the products are and how they are sold. This case serves as a reminder that even small pieces of evidence can tip the scales in trademark disputes, and that the TTAB must carefully weigh all the facts before making a final decision.