Are All Baby Products Related? TTAB Says “No”

The United States Trademark Trial and Appeal Board (TTAB or Board) recently issued a refreshed opinion in the trademark dispute Naterra International, Inc. v. Samah Bensalem, where Naterra International, Inc. petitioned the TTAB to cancel Samah Bensalem’s registration for the mark BABIES' MAGIC TEA based on its own BABY MAGIC mark. On remand from the U.S. Court of Appeals for the Federal Circuit, the TTAB reconsidered an expert’s opinion about relatedness of goods based on the concept of “umbrella branding” and found that the goods are unrelated and therefore again denied the petition for cancellation.

Ms. Bensalem’s BABIES' MAGIC TEA mark is registered for "medicated tea for babies that treats colic and gas and helps babies sleep better" in Class 5. Naterra claimed that the BABIES' MAGIC TEA mark is confusingly similar to its longstanding BABY MAGIC trademark, which has been registered for a variety of baby toiletries and skincare products in Class 3. In addition to a likelihood of confusion claim, Naterra also alleged that its BABY MAGIC mark is famous and included a dilution by blurring claim in its petition.

In the initial TTAB proceedings, the Board found no likelihood of confusion, denying the petition for cancellation. In particular, the Board found the marks to be somewhat similar and acknowledged overlap in customer base and trade channels. Nonetheless, applying the doctrine of natural expansion, the Board held that Naterra had not provided sufficient evidence that consumers would view medicated baby teas as falling in the natural zone of expansion of baby toiletries, and therefore the goods are not related. The TTAB further found the BABY MAGIC mark is conceptually weak and that Naterra failed to unquestionably establish the fame of the BABY MAGIC mark. Naterra appealed, and the Federal Circuit vacated and remanded, instructing the TTAB to specifically reconsider evidence regarding the relatedness of the goods — a key factor in trademark law analysis.

On remand, Naterra relied primarily on expert testimony based on a marketing concept — “umbrella branding.” The expert explained “umbrella branding” from a global perspective that has been used in many worldwide industries where companies use old brand names for new products when the old product is well-known and well-regarded among consumers. As an example, the expert indicated that “Samsung sells flat-screen televisions, laptop computers, washing machines, life insurance, and even operates a theme park in South Korea.” Through testimony, the expert explained that the key concept in umbrella branding is the transfer of quality perceptions — that a multiproduct company’s umbrella branding for a new product signals the new product’s high quality based on the good brand and established reputation of an established product. The expert further listed five examples of umbrella brands in baby product categories:

• Vicks BabyRub Soothing Ointment and Vicks Children’s Botanicals Multicare Cough Relief Liquid Combo.
• Wellements Organic All-Purpose Balm and Wellements Organic Probiotic Gripe Water.
• Comforts baby bath and skincare products, and Comforts baby food, snacks, and beverages.
• Hello Bello baby rash cream and shampoo/body wash, and Hello Bello baby formula and kid’s vitamins.
• Zarbee’s Naturals baby skin balm, chest rub, and Zarbee’s Natural gripe water and cough syrup.

The expert reasoned that these examples showed that umbrella branding is quite common in the marketplace between baby skincare and baby ingestible products but did so without any documentary evidence concerning these third-party umbrella brands.

The Board criticized the expert testimony as “anecdotal accounts of five companies that provide umbrella branding” in the baby products industry and found this evidence insufficient because it did not specifically address the U.S. marketplace or the parties’ particular goods. Acknowledging that the expert testimony may indicate that goods in the general categories of baby skincare (such as lotions and cleansers) and baby ingestibles (such as gripe water or vitamins) sometimes emanate from a common source under the same marks, the Board found that there was no evidence that U.S. consumers perceive the specific goods identified in the parties’ registrations, namely, baby toiletries and medicated teas for colic and sleep, as likely to emanate from a single source.

The Board thus concluded the goods are not related for purposes of trademark law, weighing this factor heavily against finding a likelihood of confusion. This determination was ultimately dispositive in denying the cancellation petition, emphasizing the importance of concrete, jurisdiction-specific proof of relatedness in such disputes.

Practical Implications and Guidance

This decision highlights the need for specific U.S.-based evidence for product relatedness in trademark disputes. It is insufficient to generally reference how goods and services may be perceived globally. Rather, the TTAB is only concerned with the U.S. marketplace. Further companies that may want to rely on umbrella branding evidence in the future should ensure that the evidence relates to the specific goods or services identified in the parties’ filings — evidence indicating that goods or services in the general categories are related will not be sufficient.