The U.S. Trademark Trial and Appeal Board (TTAB) recently denied Shaklee Corporation’s effort to register the mark “IN HARMONY WITH NATURE” for online retail services, citing a potential risk of confusion with an existing trademark for personal care products. This ruling underscores the complexities of trademark law, particularly in balancing the protection of established rights with the ambitions of businesses seeking to expand into new markets.
Shaklee contended that its mark was sufficiently distinct from the registered “CRAFTED WITH LOVE IN HARMONY WITH NATURE” and that its prior use of the phrase in other contexts should suffice to counter the rejection. The TTAB dismissed both arguments, emphasizing that the similarity between the marks and their shared target markets created a significant likelihood of consumer misunderstanding. The board’s application of the DuPont factors - evaluating the marks themselves, the goods they represent, and the channels of trade - highlighted the stringent criteria required for expanding a trademark into a different industry.
The case raises a pivotal issue: under what conditions does a brand’s history justify overriding existing trademark protections? While trademark law is designed to prevent consumer confusion, it also allows for adaptability when brands evolve. However, the TTAB’s decision implies that such adaptability is constrained. A company’s prior use in one sector does not automatically grant it the right to enter another, as the board stressed that prior registrations must be nearly identical and cover the same goods or services to qualify for exceptions like the Strategic Partners precedent.
The TTAB noted that most of Shaklee’s previous registrations included additional text or covered unrelated services, rendering them inadequate to override the Du, factors analysis. This reinforces a core principle: trademark law prioritizes precision over brand loyalty or market presence.
The broader debate revolves around whether the Strategic Partners exception should be expanded to accommodate well-known house marks. While a prominent brand may enjoy strong consumer recognition, trademark law remains focused on preventing confusion rather than facilitating brand expansion. Allowing exceptions based on fame could inadvertently weaken the rights of smaller businesses that may have registered similar marks first.
For businesses, the lesson is clear: trademark monitoring must be thorough. Even if a mark is used in one industry, its expansion into another requires a rigorous assessment of existing registrations. The TTAB’s decision reaffirms that trademark law is not a license for unchecked brand growth - it is a framework to safeguard consumers and ensure equitable competition.
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The Shaklee case illustrates the fine line trademark law must navigate. While innovation is encouraged, it must not come at the expense of existing rights. The strict application of the DuPont factors ensures that expansion does not compromise the integrity of the trademark system. As brands continue to evolve, the challenge lies in aligning legal standards with the realities of a dynamic marketplace without undermining the foundational principles of trademark protection.