Naterra International, Inc. v. Samah Bensalem

United States Court of Appeals
for the Federal Circuit
______________________
NATERRA INTERNATIONAL, INC.,
Appellant
v.
SAMAH BENSALEM,
Appellee
______________________
2022-1872
______________________
Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board in No.
92074494.
______________________
Decided: February 15, 2024
______________________
J ORGE MIGUEL HERNANDEZ, Carstens, Allen, & Gour-
ley, LLP, Plano, TX, argued for appellant. Also repre-
sented by D AVID W. C ARSTENS .
J EFFREY STURMAN , Sturman Law LLC, Denver, CO, ar-
gued for appellee.
______________________
Before M OORE, Chief Judge, STOLL and CUNNINGHAM ,
Circuit Judges.
CUNNINGHAM , Circuit Judge.
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NATERRA INTERNATIONAL , INC. v. BENSALEM 2
Naterra International, Inc. (“Naterra”) appeals from a
decision of the Trademark Trial and Appeal Board
(“Board”) denying Naterra’s petition for cancellation of Sa-
mah Bensalem’s BABIES’ MAGIC TEA standard character
mark registration. Naterra Int’l, Inc. v. Samah Bensalem,
No. 92074494, 2022 WL 1237887, at *1, *21 (T.T.A.B. Apr.
4, 2022) (“Decision”). Naterra challenges the Board’s con-
clusion that there was no likelihood of confusion between
Naterra’s BABY MAGIC mark and Bensalem’s BABIES’
MAGIC TEA mark. For the reasons below, we vacate the
Board’s denial of Naterra’s cancellation petition and re-
mand for further proceedings.
I. BACKGROUND
Bensalem owns the registration for the standard char-
acter mark BABIES’ MAGIC TEA for “medicated tea for
babies that treats colic and gas and helps babies sleep bet-
ter.” Decision at *1; J.A. 48 (Trademark Reg. No.
4,771,300). Naterra owns four registrations for the stand-
ard character mark BABY MAGIC covering numerous toi-
letry goods.1 See Decision at *1. In June 2020, Naterra
filed a Petition for Cancellation alleging that the use of
Bensalem’s BABIES’ MAGIC TEA mark in connection with
Bensalem’s goods would likely “cause confusion, mistake,
1 See J.A. 50 (Trademark Reg. No. 1,228,079) (body
powder, body oil, and skin cleanser); J.A. 51 (Trademark
Reg. No. 1,055,375) (hair shampoo); J.A. 52–54 (Trade-
mark Reg. No. 580,657) (skin lotion); J.A. 55 (Trademark
Reg. No. 3,890,083) (baby hair conditioner; baby lotion;
baby oil; baby powder; baby shampoo; baby wipes; bath
soaps in liquid, solid, or gel form; bubble bath; cologne;
laundry detergent; non-medicated bath preparations; non-
medicated diaper rash cream; non-medicated diaper rash
ointments and lotions; skin cleansers; skin conditioners;
and sunscreen); see also Decision at *4 (finding Naterra’s
“pleaded registrations are valid and owned by [Naterra]”).
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NATERRA INTERNATIONAL , INC. v. BENSALEM 3
or deception,” and is therefore in violation of Section 2(d) of
the Lanham Act. J.A. 65 ¶ 31; see also Decision at *1; J.A.
56–58, 63–65.
The Board denied Naterra’s petition because Naterra
failed to prove a likelihood of confusion. Decision at *21.
The Board conducted its likelihood of confusion analysis
under the factors set forth in In re E.I. DuPont DeNemours
& Co., 476 F.2d 1357, 1361 (CCPA 1973) (“the DuPont fac-
tors”).2 Decision at *6. First, the Board found Naterra
“fail[ed] to carry [its] burden to clearly show [ ]that its
BABY MAGIC mark is commercially strong, let alone fa-
mous” and the mark therefore “f[ell] somewhere in the mid-
dle of the fame spectrum” for DuPont factor five. Id. at *12;
see also id. at *7–11. The Board found DuPont factor six to
be neutral, and thus concluded that the BABY MAGIC
mark is entitled to “the normal scope of protection to which
inherently distinctive marks are entitled.” Id. at *12 (in-
ternal quotation marks omitted). The Board also con-
cluded that DuPont factor one favored finding likelihood of
confusion because the marks were “more similar than
2 “The thirteen factors are as follows: (1) similarity
of the marks; (2) similarity and nature of goods described
in the marks’ registrations; (3) similarity of established
trade channels; (4) conditions of purchasing; (5) fame of the
prior mark; (6) number and nature of similar marks in use
on similar goods; (7) nature and extent of actual confusion;
(8) length of time and conditions of concurrent use without
evidence of actual confusion; (9) variety of goods on which
mark is used; (10) market interface between applicant and
owner of a prior mark; (11) extent to which applicant has a
right to exclude others from use of its mark; (12) extent of
potential confusion; and (13) any other established proba-
tive fact on effect of use.” Zheng Cai v. Diamond Hong,
Inc., 901 F.3d 1367, 1371 n.2 (Fed. Cir. 2018) (citing
DuPont, 476 F.2d at 1361).
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NATERRA INTERNATIONAL , INC. v. BENSALEM 4
dissimilar as to appearance, sound, connotation and com-
mercial impression.” Id. at *15; see also id. at *12–14. The
Board also found that DuPont factors two (similarity and
nature of goods) and three (similarity of established trade
channels) weighed against a finding of likelihood of confu-
sion, concluding that Naterra had “failed to demonstrate
that the parties’ respective goods are related in any man-
ner, or that they travel within the same trade channels to
the same class of purchasers.” Id. at *19; see also id. at
*15–18. Lastly, the Board found that DuPont factors four,
eight, ten, and twelve were neutral. Id. at *19–20.
In weighing the relevant DuPont factors, the Board
gave “particular weight” to the lack of “probative evidence
showing the relatedness of the parties’ respective
goods, . . . coupled with the somewhat weak inherent na-
ture of [Naterra’s] BABY MAGIC mark, [and] the lack of
demonstrated commercial strength (let alone fame) and
similar trade channels.” Id. at *21. After weighing the
pertinent DuPont factors, the Board found Naterra failed
to prove a likelihood of confusion. See id.
Naterra appeals. We have jurisdiction under 28 U.S.C.
§ 1295(a)(4)(B).
II. Standard of Review
Section 2(d) of the Lanham Act provides the registra-
tion of a mark may be refused if it is “likely, when used on
or in connection with the goods of the applicant, to cause
confusion” with another registered mark. 15 U.S.C.
§ 1052(d); see QuikTrip W., Inc. v. Weigel Stores, Inc., 984
F.3d 1031, 1034 (Fed. Cir. 2021). “Likelihood of confusion
is a question of law based on underlying factual findings
regarding the DuPont factors.” Spireon, Inc. v. Flex Ltd.,
71 F.4th 1355, 1362 (Fed. Cir. 2023) (citing In re i.am.sym-
bolic, llc, 866 F.3d 1315, 1322 (Fed. Cir. 2017)). “We review
the Board’s factual findings on each relevant DuPont factor
for substantial evidence, but we review the Board’s weigh-
ing of the DuPont factors de novo.” QuikTrip, 984 F.3d at
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NATERRA INTERNATIONAL , INC. v. BENSALEM 5
1034. “Substantial evidence is such relevant evidence as a
reasonable mind would accept as adequate to support a
conclusion.” Zheng Cai, 901 F.3d at 1371 (internal quota-
tion marks omitted). “Not all of the DuPont factors are nec-
essarily relevant or of equal weight in a given case, and any
one of the factors may control a particular case.” Tiger Lily
Ventures Ltd. v. Barclays Cap. Inc., 35 F.4th 1352, 1362
(Fed. Cir. 2022) (internal quotation marks omitted). “Only
the DuPont factors of significance to the particular mark
need be considered in the likelihood of confusion analysis.”
Id. (internal quotation marks omitted).
III. D ISCUSSION
Naterra raises two issues on appeal. First, Naterra
contends that substantial evidence does not support the
Board’s finding that the similarity and nature of the goods
(DuPont factor two) and trade channels (DuPont factor
three) disfavor a likelihood of confusion. Appellant’s Br.
13, 17; see also id. at 14–16, 18. Second, Naterra argues
that the Board erred by failing to give greater weight to the
similarity of the marks (DuPont factor one) and the fame
of the BABY MAGIC mark (DuPont factor five) in its over-
all likelihood of confusion analysis. Id. at 10–13. We ad-
dress each issue in turn.
A.
We first turn to Naterra’s arguments regarding
DuPont factors two and three. See id. at 13, 17.
i.
The second DuPont factor “considers whether the con-
suming public may perceive the respective goods and ser-
vices 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, 752 (Fed. Cir. 2014)
(cleaned up) (citation omitted). Naterra argues that the
Board failed to consider pertinent evidence indicating that
several companies sell baby ingestible products and baby
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NATERRA INTERNATIONAL , INC. v. BENSALEM 6
skin care products under the same mark in concluding that
the parties’ goods were not related. Appellant’s Br. 13–15.
In reaching the conclusion that the goods are not re-
lated, the Board rejected Naterra’s theory of relatedness
known as “umbrella branding” and “natural zones of ex-
pansion.” Decision at *16–18. In the context of discussing
the issue of natural expansion, the Board stated that Na-
terra’s expert “provided several examples of other umbrella
baby brand companies that purportedly provide certain
products in both the baby skincare product category and
the baby ingestible product category.” Id. at *17 (cleaned
up). The Board rejected this expert testimony as “unsup-
ported by underlying evidence.” Id.
However, testimony that third-party companies sell
both types of goods is pertinent to the relatedness of the
goods. See Recot, Inc. v. Becton, 214 F.3d 1322, 1328–29
(Fed. Cir. 2000) (finding the Board erred in declining to
consider lay evidence that several companies sell both pet
and human food products). Furthermore, Bensalem’s coun-
sel admitted at oral argument that the third-party evi-
dence is “absolutely very relevant.” Oral Arg. at 15:55–
16:16, https://oralarguments.cafc.uscourts.gov/de-
fault.aspx?fl=22-1872_06062023.mp3. We cannot discern
if the Board also considered and rejected this testimony
outside its discussion of the issue of natural expansion.
See, e.g., Packard Press, Inc. v. Hewlett-Packard Co., 227
F.3d 1352, 1358 (Fed. Cir. 2000) (vacating and remanding
because the court could not “discern from the Board’s brief
discussion” whether the Board applied the wrong test); De-
cision at *18 (noting an “absence of evidence showing that
other companies in [Naterra’s] industry also sell medicated
teas”); J.A. 134 ¶¶ 13–17. Because we cannot discern
whether the relevant evidence was properly evaluated, we
remand to the Board for further consideration and expla-
nation of its analysis under this factor.
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NATERRA INTERNATIONAL , INC. v. BENSALEM 7
At oral argument, Bensalem’s counsel also argued that
the Board’s conclusion on this factor at most constitutes
harmless error. See Oral Arg. at 10:12–50. This argument
was raised for the first time at oral argument and is thus
forfeited. See SEKRI, Inc. v. United States, 34 F.4th 1063,
1071 n.9 (Fed. Cir. 2022). Additionally, even if we were to
consider the merits of Bensalem’s argument, we find the
argument unpersuasive. The Board relied on the rejection
of the third-party evidence in finding no relatedness. See
Decision at *16, *18. Among other things, the Board fur-
ther found the fact that “this case is devoid of probative ev-
idence showing the relatedness of the parties’ respective
goods” “carrie[d] particular weight” in arriving at the con-
clusion that Naterra failed to prove a likelihood of confu-
sion. Id. at *21. Because the Board might reach “an
answer to the overall likelihood-of-confusion question dif-
ferent from the answer the Board gave in the decision on
review,” the error is not harmless. See Juice Generation
Inc. v. GS Enters. LLC, 794 F.3d 1334, 1341 (Fed. Cir.
2015).
ii.
The third DuPont factor considers “[t]he similarity or
dissimilarity of established, likely-to-continue trade chan-
nels.” In re Detroit Athletic Co., 903 F.3d 1297, 1308 (Fed.
Cir. 2018) (quoting DuPont, 476 F.2d at 1361). Naterra ar-
gues that the Board’s finding on the third factor is not sup-
ported by substantial evidence because it ignored
Bensalem’s admission that the parties’ goods are sold in
similar trade channels. Appellant’s Br. 17–18; J.A. 109 ¶ 7.
We agree.
The Board addressed some but not all of the evidence
relevant to the third DuPont factor. For example, the
Board found there to be “no dispute that the classes of cus-
tomers for both parties’ areas of business are the same or
overlapping (i.e., parents and caregivers).” Decision at *18.
The Board also considered evidence that the parties’ goods
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NATERRA INTERNATIONAL , INC. v. BENSALEM 8
were offered together online by Walmart and Amazon, J.A.
119–21 ¶¶ 15–16, but ultimately found the third factor to
weigh against a finding of likelihood of confusion, indicat-
ing that “[w]ithout more persuasive evidence, we cannot
conclude that the trade channels are the same in this case.”
Decision at *18–19.
However, the Board failed to address Bensalem’s re-
sponse to the request for admission, admitting that both
parties “utilize similar channels of trade in connection with
the trademarks.” J.A. 109 ¶ 7. This request for admission
is relevant to the inquiry under the third factor. Moreover,
the Board did not identify in its decision any evidence
showing a lack of similarity in trade channels. Decision at
*18–19; Appellee’s Br. 30–31; Oral Arg. at 12:27–53. Ac-
cordingly, a reasonable mind could not accept the available
evidence as adequate to support the Board’s finding that
the third DuPont factor weighs against a finding of likeli-
hood of confusion. See Zheng Cai, 901 F.3d at 1371.
For the first time at oral argument, Bensalem’s counsel
similarly contends that the Board’s finding with respect to
the third DuPont factor is at most harmless error. See Oral
Arg. at 12:56–13:33. We again find this argument for-
feited. Even if we consider this argument on the merits, it
fails. The Board relied on the lack of similar trade chan-
nels in finding Naterra failed to prove a likelihood of con-
fusion. Decision at *21. Because the Board might reach
“an answer to the overall likelihood-of-confusion question
different from the answer the Board gave” if it considered
the admission regarding the trade channels, the error is
not harmless. See Juice Generation, 794 F.3d at 1341.
Accordingly, we vacate the Board’s decision and re-
mand for further proceedings. On remand, the Board
should consider all the relevant evidence related to the sec-
ond and third DuPont factors.
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NATERRA INTERNATIONAL , INC. v. BENSALEM 9
B.
Naterra additionally argues that the Board incorrectly
weighed DuPont factors one and five in its likelihood of con-
fusion analysis. See Appellant’s Br. 10–13. We address
each factor in turn.
i.
Regarding the first DuPont factor, Naterra does not
dispute the Board’s finding that the BABY MAGIC and
BABIES’ MAGIC TEA marks were “more similar than dis-
similar as to appearance, sound, connotation and commer-
cial impression.” Decision at *15; see Oral Arg. at 5:43–51
(Naterra conceding to “hav[ing] no issue with the Board’s
factfinding”). Rather, Naterra contends that the Board
erred in its weighing of this factor, arguing that it
“should—at a minimum—weigh heavily in favor of finding
a likelihood of confusion if not be dispositive in the analy-
sis.” Appellant’s Br. 12; see also id. at 10–11. We find Na-
terra’s argument to be persuasive.
The Board erred in failing to weigh the first DuPont
factor heavily in favor of a likelihood of confusion finding.
Decision at *21. This court’s holding in Detroit Athletic is
instructive, where we found that similarity of the marks
“weighs heavily in the confusion analysis” because the
Board found that the marks’ “lead words are their domi-
nant portion and are likely to make the greatest impression
on consumers.” 903 F.3d at 1303–04. While the words
“Co.” and “Club” technically differentiated the marks, the
court found those words were merely descriptive and “un-
likely to change the overall commercial impression engen-
dered by the marks.” Id. at 1304. Similarly, here, the
Board found that “the first two words of [the] BABIES’
MAGIC mark and the entirety of [the] BABY MAGIC mark
look and sound almost the same and have the same conno-
tation and commercial impression.” Decision at *13. More-
over, just like in Detroit Athletic, the Board here found that
TEA is “a generic term” having “no source-identifying
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NATERRA INTERNATIONAL , INC. v. BENSALEM 10
significance” and “is the ultimate in descriptiveness.” Id.
at *14 (citation omitted). Accordingly, the first DuPont fac-
tor should “weigh[] heavily in the confusion analysis.” De-
troit Athletic, 903 F.3d at 1303–04. The Board here erred
in concluding otherwise.
We decline to address Naterra’s additional argument
that this first factor is dispositive. Because we also vacate
the Board’s decision in light of the errors with respect to
the analysis of the second and third DuPont factors, we re-
mand to the Board to address this argument after consid-
ering all the relevant DuPont factors. See Hewlett-Packard
Co. v. Packard Press, Inc., 281 F.3d 1261, 1265 (Fed. Cir.
2002) (explaining the likelihood of confusion analysis “con-
siders all DuPont factors for which there is evidence of rec-
ord” but may focus on dispositive factors); In re Guild
Mortgage Co., 912 F.3d 1376, 1381 (Fed. Cir. 2019) (vacat-
ing the Board’s decision and remanding for the Board to
reconsider one of the DuPont factors and “to reconsider its
likelihood of confusion determination in the first instance
in light of all the evidence”).
ii.
Lastly, we address Naterra’s argument relating to the
fifth DuPont factor, fame. See Appellant’s Br. 12–13. On
this factor, the Board found there to be no evidence regard-
ing “sales or advertising expenditures in connection with
[Naterra’s] trademark;” no evidence regarding “critical as-
sessments or notice by independent sources of the products
identified by the mark;” and no evidence regarding “gen-
eral reputation of [Naterra’s] BABY MAGIC mark.” Deci-
sion at *10. The Board also rejected Naterra’s Executive
President’s testimony as self-serving and “unsupported by
any corroborating evidence.” Id. at *10–11. Lastly, the
Board found Naterra’s foreign registrations “d[id] not aid
[the] determination” on fame in the United States. Id. at
*12. Therefore, the Board did not find the BABY MAGIC
mark “commercially strong, let alone famous,” and instead
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NATERRA INTERNATIONAL , INC. v. BENSALEM 11
found the mark “somewhat conceptually weak” and that it
“falls somewhere in the middle of the fame spectrum.” Id.
at *9, *12 (emphasis added).
On appeal, Naterra does not challenge the Board’s fact-
finding on this factor. See Oral Arg. at 5:43–51. Instead,
Naterra argues that the Board erred as a matter of law in
failing to give greater weight to fame in its likelihood of
confusion analysis. Appellant’s Br. 12–13. We disagree.
Naterra relies on Recot to argue that when present, fame
“plays a dominant role” in the likelihood of confusion anal-
ysis. See id. But Recot is inapposite because in that case
the mark’s fame was “unquestionably established.” 214
F.3d at 1327. Here, fame was not unquestionably estab-
lished. See Decision at *12. Therefore, the Board did not
err in failing to give fame a dominant role in the overall
likelihood of confusion analysis. Recot, 214 F.3d at 1327.
IV. CONCLUSION
We have considered Naterra’s remaining arguments
and find them unpersuasive. We conclude the Board erred
in weighing the first DuPont factor and failed to address
relevant evidence concerning the third DuPont factor. We
also cannot discern whether the Board properly addressed
relevant evidence concerning the second DuPont factor.
Accordingly, we vacate the Board’s decision and remand for
further proceedings consistent with this opinion.
VACATED AND REMANDED
COSTS
Costs awarded to appellant.
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