Decisions · 86847381
In re FabFitFun, Inc.
Serial No. 86847381 · Decided 2018-08-23 · Section 2(d) Ex Parte Appeal
What happened
The Board reversed a refusal to register I’M SMOKING HOT for cosmetics and personal care products, finding that even though the goods overlap with a prior registration for SMOKIN' HOT SHOW TIME (cosmetics, mascara), the two marks are more dissimilar than similar overall and their shared phrase is only somewhat weak, so confusion is not likely.
The marks
Applicant
I'M SMOKING HOT
"Cosmetics and makeup; personal care products, namely, body lotion, body butter, shower gel, soap, body polish, body and foot scrub, and non-medicated skin creams; fragrances; body shimmer powder; non-medicated lotions and gels for face and body care; non-medicated skin care preparations; essential oils; false eyelashes; fingernail decals; fingernail embellishments; hair care preparations; incense; nail care preparations; non-medicated bath preparations; non-medicated lip care preparations; non-medicated sun care preparations; non-medicated toiletries; perfumes; potpourri; room fragrances; shaving preparations, soaps for personal use," in International Class 3
Cited registration
SMOKIN' HOT SHOW TIME
"Cosmetics, mascara," in International Class 3
How the marks compared
| Dimension | Finding | What the Board said |
|---|---|---|
| sound | Somewhat Similar | The shared term SMOKIN' HOT/SMOKING HOT modifies a different word in each mark (I’M vs. SHOW TIME), rendering the marks only somewhat similar in appearance and sound. |
| appearance | Somewhat Similar | Same structural difference as sound; an informal apostrophe contraction (SMOKIN' vs. SMOKING) did not meaningfully distinguish the marks. |
| meaning | Dissimilar | I’M SMOKING HOT connotes a personal declaration of attractiveness, while SMOKIN' HOT SHOW TIME connotes the start time for sexy entertainment; these connotations are more different than similar. |
| commercial impression | Dissimilar | Overall, the marks convey somewhat different commercial impressions despite sharing the weak phrase SMOKIN' HOT/SMOKING HOT. |
More dissimilar than similar
du Pont factors that bore on the outcome
| # | Factor | Weight | What the Board found |
|---|---|---|---|
| 1 | Similarity of the marks | Dispositive — Favored Applicant | I’M SMOKING HOT and SMOKIN' HOT SHOW TIME convey different overall impressions, and the shared SMOKIN' HOT element is weak. |
| 2 | Relatedness of the goods or services | Favored Refusal | The cosmetics are identical in part. |
| 3 | Similarity of trade channels | Favored Refusal | With in-part identical goods, the channels and consumers are presumed to overlap. |
| 4 | Conditions of sale and buyer sophistication | Favored Refusal | Inexpensive cosmetics are bought without heightened care, favoring confusion. |
| 6 | Number and nature of similar marks in use | Dispositive — Favored Applicant | Dictionary meaning plus a modest quantum of third-party use showed SMOKIN' HOT is conceptually and commercially weak for cosmetics. |
Why this decision is significant
Precedential decision providing a detailed model of how conceptual weakness (dictionary definition) and commercial weakness (a modest, sub-Jack Wolfskin/Juice Generation quantum of third-party use) combine to narrow a mark’s scope of protection, and clarifying that In re Hearst does not permit substituting an alleged customer-used variant for the mark as actually registered.
Research significance is Trademark Valet's editorial rating of how useful a decision is to practitioners. It is not a statement of precedential weight — that is the separate Precedential field, which comes from the Board.
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The original record
Read the opinion and every filing on the Board's own docket. The summary above is our paraphrase, not a quotation from the opinion. The opinion is the authority.
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