FabFitFun, Inc.

Trademark Trial and Appeal Board

Aug 23, 2018

No. 86847381 (T.T.A.B. Aug. 23, 2018)

This Opinion is a
Precedent of the TTAB

Hearing: January 24, 2018 Mailed: August 23, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re FabFitFun, Inc.
_____

Serial No. 86847381
_____

Jill M. Pietrini of Sheppard Mullin Richter & Hampton LLP
for FabFitFun, Inc.

Nicole Passman,1 Trademark Examining Attorney, Law Office 125,
Mark Pilaro, Managing Attorney.
_____

Before Cataldo, Mermelstein and Coggins,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:
FabFitFun, Inc. (“Applicant”) seeks registration on the Principal Register of the
standard character mark I’M SMOKING HOT for
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

1 The Trademark Examining Operation reassigned this case to Ms. Passman after the appeal
was instituted.
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preparations; non-medicated sun care preparations; non-medicated
toiletries; perfumes; potpourri; room fragrances; shaving preparations,
soaps for personal use in International Class 3.2

The Trademark Examining Attorney has refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
Applicant’s mark, when used in connection with the identified goods, so resembles
the mark SMOKIN’ HOT SHOW TIME in standard characters, registered on the
Principal Register for “cosmetics, mascara,” in International Class 3,3 as to be likely
to cause confusion, mistake or deception.
When the refusal was made final, Applicant appealed and filed a request for
reconsideration. Subsequently, the Examining Attorney denied the request for
reconsideration and the Board resumed the appeal. The Examining Attorney and
Applicant filed briefs and presented arguments at an oral hearing before this panel.
We reverse the refusal to register.
Likelihood of Confusion
When the question is likelihood of confusion, we analyze the facts as they relate
to the relevant factors set out in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357,
177 USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co., 315 F.3d 1311,
65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the relatedness of the

2 Application Serial No. 86847381, filed on December 13, 2015, based upon Applicant’s
allegation of a bona fide intent to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b).
3 Registration No. 4883039, issued on January 5, 2016.
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goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24 (CCPA 1976). We discuss the du Pont factors for which Applicant and
the Examining Attorney have presented evidence and arguments. “Not all of the [du
Pont] factors are relevant to every case, and only factors of significance to the
particular mark need be considered.” Coach Servs., Inc. v. Triumph Learning LLC,
668 F.3d 1356, 101 USPQ2d 1713, 1719 (Fed. Cir. 2012) (quoting In re Mighty Leaf
Tea, 601 F.3d 1342, 94 USPQ2d 1257 (Fed. Cir. 2010)).
A. Relatedness of the Goods/Channels of Trade/Consumers
With regard to the goods, channels of trade and classes of consumers, we must
make our determinations under these factors based on the goods as they are
identified in the application and cited registration. See In re Dixie Rests. Inc., 105
F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997). See also Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir.
2014); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001
(Fed. Cir. 2002); Octocom Sys., Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990). A proper comparison of the goods “considers
whether ‘the consuming public may perceive [the respective goods or services of the
parties] as related enough to cause confusion about the source or origin of the goods
and services.’” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1086 (Fed.
Cir. 2014) (quoting Hewlett-Packard, 62 USPQ2d at 1004).
In this case, the goods in the application and cited registration are identical as to
“cosmetics.” In view of the identity of the recited “cosmetics,” there is no need for us
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to further consider the relatedness of the goods. See SquirtCo v. Tomy Corp., 697 F.2d
1038, 216 USPQ 937, 938-39 (Fed. Cir. 1983) (holding that a single good from among
several may sustain a finding of likelihood of confusion); Tuxedo Monopoly, Inc. v.
Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) (likelihood of
confusion must be found if there is likely to be confusion with respect to any item that
comes within the identification of goods or services in the application). Nonetheless,
the Examining Attorney has also submitted internet website evidence demonstrating
that third parties provide cosmetics as well as incense, room fresheners, skin care
products and fragrances under the same marks.4 Thus, while unnecessary to our
determination, the Examining Attorney has established that these additional goods
are related to the “cosmetics” identified in the cited registration.5
“The authority is legion that the question of registrability of an applicant’s mark
must be decided on the basis of the identification of goods set forth in the application
regardless of what the record may reveal as to the particular nature of an applicant’s
goods, the particular channels of trade or the class of purchasers to which the sales
of goods are directed.” Octocom Sys., Inc., 16 USPQ2d at 1787. Because the goods
identified in the application and the cited registration are in-part identical as to
“cosmetics,” we must presume that the channels of trade and classes of purchasers of

4 March 30, 2016 Office Action at .pdf 9-15; October 7, 2016 Office Action at .pdf 16-50.
Page references to the application record refer to the downloadable .pdf version of the United
States Patent and Trademark Office (USPTO) Trademark Status & Document Retrieval
(TSDR) system. References to the briefs refer to the Board’s TTABVUE docket system.
5 We further observe that Applicant presented no argument or evidence regarding the
relatedness of the goods.
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“cosmetics” are the same as to these goods. See In re Viterra Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012); Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268
(TTAB 2003) (“Given the in-part identical and in-part related nature of the parties’
goods, and the lack of any restrictions in the identifications thereof as to trade
channels and purchasers, these clothing items could be offered and sold to the same
classes of purchasers through the same channels of trade”); In re Smith & Mehaffey,
31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are legally identical, they
must be presumed to travel in the same channels of trade, and be sold to the same
class of purchasers”).
We find that the du Pont factors of the relatedness of goods, channels of trade and
classes of consumers weigh in favor of likelihood of confusion.
B. Conditions of Sale
Neither identification of goods restricts the recited cosmetics by price. In the
absence of any limitations suggesting otherwise, we find that the cosmetics at issue
include lower cost make-up items that may be purchased without a high degree of
care.6 “When products are relatively low-priced and subject to impulse buying, the

6 Internet evidence of record shows various cosmetics offered for sale at $12 to $32, and the
goods identified in the cited registration offered for sale at €1.99, which would appear to be a
modest price in U.S. dollars. October 7, 2016 Final Office Action at 26-50; Applicant’s
response to the Examining Attorney’s first Office Action at 70-78. These relatively
inexpensive items may be subject to impulse purchase. See L’Oreal S.A. v. Marcon, 102
USPQ2d 1434, 1441 (TTAB 2012); Wet Seal Inc. v. FD Mgmt. Inc., 82 USPQ2d 1629, 1640-41
(TTAB 2007). Although the latter evidence apparently reflects the price of cosmetics in a
foreign market, we have given it limited weight to the extent it confirms that cosmetics can
include relatively inexpensive items. Applicant does not contend that cosmetics are limited
to high-priced items such that consumers would exercise a heightened degree of care in their
purchasing decisions.
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risk of likelihood of confusion is increased because purchasers of such products are
held to a lesser standard of purchasing care.” Recot Inc. v. M.C. Becton, 214 F.3d 1322,
54 USPQ2d 1894, 1899 (Fed. Cir. 2000). As a result, this du Pont factor also favors a
finding of likelihood of confusion.
C. Strength or Weakness of the term Smokin’/Smoking Hot for Cosmetics
We consider the conceptual strength of “smokin(g) hot” in relation to cosmetics.
The Examining Attorney submitted the following definition of “smoking hot:”
“attractive, sexy looking, very hot.”7 In the context of cosmetics, we find that this
definition indicates that the purpose or intended result of the cosmetics offered under
the marks at issue is to render the user’s appearance “smoking hot.” Given the
meaning “smoking hot” has in relation to the goods, the term has some degree of
conceptual weakness in connection with cosmetics and is at best highly suggestive
when used in connection with such goods.
We next consider Applicant’s argument concerning the number and nature of
third-party uses of “smokin’ hot” for beauty products. Applicant argues that in “its
Office Action Response and Request [for] Reconsideration, Applicant presented
evidence of many third party marks that employ the term SMOKIN HOT for beauty
products.”8 In support of this contention, Applicant introduced into the record with
its September 26, 2016 Response to the Examining Attorney’s first Office Action
screenshots from third-party websites displaying various “SMOKIN’ HOT” formative

7 March 3, 2016 first Office Action at .pdf 7-8. Definition retrieved from
macmillandictionary.com/us/dictionary/American/smoking-hot.
8 7 TTABVUE 20.
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marks and other uses in connection with a variety of cosmetics, including the
following:9
bobbibrowncosmetics.com, on a page titled BOBBI BROWN SMOKING
HOT, offers Smokey Eye cosmetics prizes to women who submit photos
to #SmokingHot under the banner ARE YOU #SMOKINGHOT?;

vibe.com contains an article on a page titled MAC Cosmetics Launches
Smoking Hot Temperature Rising Collection, discussing MAC
Cosmetics’ new line of cosmetics entitled Temperature Rising, although
it appears that the term “Smoking Hot” is used by the author to describe
the collection rather than as a trademark or trade name;

drugstore.com offers for sale Wet n Wild MegaLast Lip Color, in the color
Smokin’ Hot Pink 905D;

amazon.com offers for sale Too Faced SMOKIN’ HOT LASHES mascara
and eyeliner;

facebook.com features a page entitled Smokin’ Hot Makeup, an online
store offering clothing and jewelry, but apparently not makeup;

amazon.com.uk offers for sale Barry M Cosmetics Eyeshadow Palette,
Smokin Hot, although the price therefor is listed in pounds, and it is not
clear to what extent, if any, this webpage will be viewed by consumers
in the United States; and

ebay.com.uk offers for sale Maybelline SMOKIN’ HOT Mascara Eyeliner
Color Tattoo Xmas Gift Set containing mascara and eyeliner, although
it is not clear to what extent this webpage will be viewed by U.S.
consumers.

Applicant further introduced into the record with its April 14, 2017 Request for
Reconsideration additional screenshots from the following third-party websites:10
essie.com offers for sale SMOKIN’ HOT nail polish;

amazon.com offers for sale Layer’r Shot Deodorant, Smokin Hot;

9 At .pdf 132-177.
10 At .pdf 9-33.
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amazon.com offers for sale Bare Escentuals Eye Shadow (Smokin’ Hot);

amazon.com offers for sale e.l.f. Nail Polish, Smokin Hot and e.l.f. Super
Glossy Lip Shine Smokin’ Hot;

amazon.com offers for sale L.A. Girl Inspiring Eyeshadow Palette,
You’re Smokin’ Hot!;

amazon.com offers for sale Ultime Pro Matte Lip Crayon Smokin’ Hot;
and

ebay.com offers for sale Pop Beauty Smokin’ Hot Eyeshadow Trio.

Applicant thus has made of record a total of ten third-party uses of SMOKIN’
HOT formatives as marks for cosmetics in general and, in particular, eye makeup
of various colors and shades. In addition, Applicant introduced four other
examples of SMOKIN’ HOT used either as marks in the United Kingdom, or as
descriptive terms applied to makeup, although as noted above, it is not clear to
what extent, if any, U.S. consumers will be exposed to these UK websites. While
Applicant has not presented specific evidence concerning the extent and impact of
these uses, it nevertheless presented “evidence of these marks [incorporating the
phrase ‘smokin’ hot’] being used in internet commerce” for the cosmetics and mascara
identified in the cited registration. “Evidence of third-party use of similar marks on
similar goods is relevant to show that a mark is relatively weak and entitled to only
a narrow scope of protection.” Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin, 396
F.3d 1369, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005) (citation omitted). Internet
printouts, such as those offered by Applicant, “on their face, show that the public may
have been exposed to those internet websites and therefore may be aware of the
advertisements contained therein.” Rocket Trademarks Pty Ltd. v. Phard S.p.A., 98
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USPQ2d 1066, 1072 (TTAB 2011). While the Federal Circuit has held that “extensive
evidence of third-party use and registrations is ‘powerful on its face,’ even where the
specific extent and impact of the usage has not been established,” see Jack Wolfskin
Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797
F3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015) (emphasis added) (citing Juice
Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir.
2015)), we believe that the record of third-party use in this case reflects a more modest
amount of evidence than that found convincing in Jack Wolfskin and Juice Generation
wherein “a considerable number of third parties’ use [of] similar marks was shown.”
Id.11 Ultimately, we do not believe the evidence of weakness here is as persuasive as
that in either Juice Generation or Jack Wolfskin.
Nevertheless, based on the totality of the evidence, including the dictionary
definition, we find that the shared phrase SMOKIN’ [SMOKING] HOT is somewhat

11 Applicant also made of record with its September 26, 2016 Response to the Examining
Attorney’s first Office Action copies of 18 third-party registrations, issued on the Principal
Register to a number of entities for SMOKING HOT or SMOKIN’ HOT formative marks for
a variety of goods and services that are unrelated to those at issue, including cigar stores,
websites featuring barbeque and grilling videos, computer game software and gaming
machines, yoga instruction, restaurant and catering services, electronic cigarettes, hats,
women’s health consulting services, and food items. In this case, however, because none of
the third-party registrations introduced into the record by Applicant recite goods or services
relating to goods identified in the challenged application and cited registration, this evidence
has little, if any, probative value with regard to the weakness of the cited mark as to
cosmetics and mascara. See Palm Bay, 73 USPQ2d at 1693 ) (“Evidence of third-party use of
similar marks on similar goods is relevant to show that a mark is relatively weak and entitled
to only a narrow scope of protection.”) (emphasis added; citation omitted); In re i.am.symbolic,
LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1751 (Fed. Cir. 2017) (disregarding third-party
registrations for goods in other classes where the proffering party “has neither introduced
evidence, nor provided adequate explanation to support a determination that the existence
of I AM marks for goods in other classes, … support a finding that registrants’ marks are
weak with respect to the goods identified in their registrations”); accord Hunt Foods & Indus.,
Inc. v. Gerson Stewart Corp., 367 F.2d 431, 151 USPQ 350, 353 (CCPA 1966).
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weak in that it at best suggests a desired result of using the identified cosmetics,
while the third-party uses discussed above tend to show consumer exposure to third-
party use of the term on similar goods. Overall, we find the evidence suggests that
consumers of cosmetics will look not just to the “SMOKIN’ [SMOKING] HOT”
component of marks containing the phrase to identify and distinguish source, but also
to the other parts of the marks. Here, the other part of the registered mark is SHOW
TIME, and there is nothing in the record to indicate that this aspect of the registered
mark is strong or weak.12 Accordingly, we find on this record that the component
“SMOKIN’ HOT” is somewhat weak.
The registered mark, SMOKIN’ HOT SHOW TIME, on the other hand, has not
been shown to be either particularly strong or particularly weak. On balance, we do
not believe that, on this record, the relative strength of the cited mark in its entirety
weighs significantly one way or the other. Rather, the relative weakness of the
component term SMOKIN’ HOT common to both marks weighs somewhat in favor of
a finding of no likelihood of confusion.
D. Similarity/Dissimilarity of the Marks
We consider Applicant’s mark I’M SMOKING HOT and the registered mark
SMOKIN’ HOT SHOW TIME and compare them “in their entireties as to appearance,
sound, connotation and commercial impression.” Palm Bay Imps. Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691

12 A dictionary definition of SHOWTIME, discussed infra, does not establish that the term is
weak in relation to the identified goods.
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(Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). The marks “must be considered
… in light of the fallibility of memory.” St. Helena Hosp., 113 USPQ2d at 1085
(quoting San Fernando Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565 F.2d 683,
196 USPQ 1 (CCPA 1977)). The proper focus is on the recollection of the average
consumer, who retains a general rather than specific impression of the marks.
Winnebago Indus., Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980);
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975); see also
Gegenuber Dem Julichs-Platz v. Chesebrough-Pond, Inc., 470 F.2d 1385, 176 USPQ
199, 200 (CCPA 1972) (“Side-by-side comparison is not the test. The focus must be on
the ‘general recollection’ reasonably produced by appellant’s mark and a comparison
of appellee’s mark therewith.”) (citation omitted). Because, as found earlier, the goods
at issue in this appeal are cosmetics without any reference to price point, the average
consumer includes ordinary users of cosmetics.
As a preliminary point, at oral hearing, Applicant’s counsel argued that customers
occasionally refer to the products identified in the cited registration by the mark
SHOW TIME SMOKIN’ HOT, rather than the way it is registered — SMOKIN’ HOT
SHOW TIME, and that we should consider this other construction of the mark in
making our determination regarding its similarity to the mark in the involved
application. Applicant relies, for this proposition, on the decision of the Federal
Circuit in In re Hearst Corp., 982 F.2d 493, 25 USPQ2d 1238, 1239 (Fed. Cir. 1992).
Applicant’s reliance upon Hearst is nevertheless inapposite.
The Federal Circuit in Hearst stated as follows:

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The Board, analyzing the marks for confusing similarity,
found that “varga” was the dominant element of the
VARGA GIRL mark, and that “girl” was merely descriptive
and thus could not be afforded substantial weight in
comparing VARGA GIRL with VARGAS. The Board erred
in its analytic approach. Although undoubtedly “varga”
and “vargas” are similar, the marks must be considered in
the way they are used and perceived. See In re Nat’l Data
Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).
Marks tend to be perceived in their entireties, and all
components thereof must be given appropriate weight. See
Opryland USA Inc. v. Great Am. Music Show, Inc., 970
F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992).

The appearance, sound, sight, and commercial impression
of VARGA GIRL derive significant contribution from the
component “girl”. By stressing the portion “varga” and
diminishing the portion “girl”, the Board inappropriately
changed the mark. Although the weight given to the
respective words is not entirely free of subjectivity, we
believe that the Board erred in its diminution of the
contribution of the word “girl”. When GIRL is given fair
weight, along with VARGA, confusion with VARGAS
becomes less likely.

Id. In Hearst, the Federal Circuit held that the Board failed to give appropriate
weight to the term GIRL in our consideration of the relatedness of the VARGA GIRL
mark to the VARGAS mark in the cited registration. When read in context, it is clear
that the Federal Circuit’s decision in Hearst, consistent with longstanding precedent
and subsequent decisional law, stands for the proposition that we must consider the
mark as registered or applied for in its entirety, not that we must consider a variation
on the registered mark because consumers may refer to it in such a manner. In this
case, registration has been refused based on the mark in the cited registration, not
on any variation of it that the registrant or its customers may in fact use. Therefore,
in determining whether confusion is likely we limit ourselves, as we must, to a
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comparison of the applied-for mark with the registered mark. See In re Viterra, 101
USPQ2d at 1908, (citing du Pont, 177 USPQ at 567).
The only common element in the marks is the term SMOKIN’ HOT/SMOKING
HOT and, as discussed above, this term is weak as a source identifier in the field of
cosmetics. See In re Bed & Breakfast Registry, 229 USPQ 818, 819 (Fed. Cir. 1986)
(“The record shows that a large number of marks embodying the words ‘bed and
breakfast’ are used for similar reservation services, a factor that weighs in favor of
the conclusion that BED & BREAKFAST REGISTRY and BED & BREAKFAST
INTERNATIONAL are not rendered confusingly similar merely because they share
the words ‘bed and breakfast.’”); see also Trademark Manual of Examining Procedure
(TMEP) § 1207.01(b)(viii) (October 2017) and authorities cited therein (“If the
common element of two marks is ‘weak’ in that it is generic, descriptive, or highly
suggestive of the named goods or services, it is unlikely that consumers will be
confused unless the overall combinations have other commonality.”). While we are
mindful that weak marks still deserve protection from registration of a similar mark
for similar goods/services, see China Healthways Institute, Inc. v. Wang, 491 F.3d
1337, 1340, 83 USPQ2d 1123, 1125 (Fed. Cir. 2007), the registered mark is not
SMOKIN’ HOT but rather SMOKIN’ HOT SHOW TIME. We must evaluate whether
that mark in its entirety is sufficiently similar to Applicant’s mark I’M SMOKING
HOT that consumers would mistakenly believe the goods emanate from a common
source.
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As an initial matter, the informal spelling of SMOKIN’ in the registered mark
versus the traditional spelling of SMOKING in Applicant’s mark does little to create
a distinction between them. For words ending in —ing, the elision of the final letter
“g” and addition of an apostrophe is a common form of contraction that would be easily
recognized by prospective purchasers. “Contractions of a term do not alter the
essential identity of character and meaning between the full word and the
contraction.” In re South Bend Toy Mfg. Co., 218 USPQ 479, 80 (TTAB 1983) (LIL’
LADY BUGGY vs. LITTLE LADY); In re Strathmore Prods., Inc., 136 USPQ 81, 82
(TTAB 1962) (“it is ... apparent that these marks have the same meaning for, in effect,
the registered mark [GLISS’N] is but a contraction of the word “glisten.”).
Regarding the appearance and sound of the marks, in Applicant’s mark I’M
SMOKING HOT the term SMOKING HOT modifies the term I’M. By contrast,
SMOKIN’ HOT in the registered mark SMOKIN’ HOT SHOW TIME, modifies the
term SHOW TIME. This difference in structure renders the marks only somewhat
similar in appearance and sound.
Turning to connotation and overall commercial impression, as discussed above,
“smoking hot” is defined as “attractive, sexy looking, very hot.”13 In relation to
cosmetics, the term “smokin[g] hot” appears to describe or at best suggest a desired
result of using the goods, i.e., that they will make one appear to be attractive and
sexy. Use of the term “smokin[g] hot” by third parties, discussed above, supports this

13 March 3, 2016 first Office Action at .pdf 7-8. Definition retrieved from
macmillandictionary.com/us/dictionary/American/smoking-hot.
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meaning. “Show time” is defined as “the time at which an entertainment, such as the
showing of a movie, is scheduled to start; slang the time at which an activity is to
begin.”14 Thus, Applicant’s mark connotes an individual’s declaration that “I am
attractive or sexy looking,” and the registered mark connotes the time for sexy
entertainment or activity to begin. These connotations and the overall impressions
conveyed by the marks in their entireties are more different than they are similar.
While both generally connote attractiveness or sexiness due to the shared component
SMOKIN’ HOT/SMOKING HOT, Applicant’s mark in its entirety conveys the
impression of a statement regarding one’s personal appearance and the registered
mark conveys sexy entertainment.
Taken in their entireties, the marks are more dissimilar than similar in
appearance, sound and connotation and, overall, convey somewhat different
commercial impressions. In view thereof, the du Pont factor of the similarity or
dissimilarity of the marks favors a finding of no likelihood of confusion.
E. Balancing the Factors
In conclusion, we find that the goods are identical in part as to “cosmetics” and
are presumed to be available in the same channels of trade at all price points to the
same classes of consumers. However, the marks I’M SMOKING HOT and SMOKIN’
HOT SHOW TIME are more dissimilar than similar, and evidence of record
establishes that, while the registered mark in its entirety is neither strong nor weak,

14 5 TTABVUE 46. Applicant’s April 14, 2017 Request for Reconsideration. Definition
retrieved from ahdictionary.com/word/search.html?q=showtime.
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the marks’ common term SMOKIN’ HOT or SMOKING HOT is relatively weak in
connection with the goods at issue. Because of the overall differences between the
marks and the weakness of the term shared by them, we find that confusion is not
likely between Applicant’s mark I’M SMOKING HOT and the mark SMOKIN’ HOT
SHOW TIME in the cited registration.
Decision: The refusal to register based on likelihood of confusion under Section
2(d) of the Trademark Act is reversed.