Federal Circuit Denies Louis Vuitton’s “Apogée” Registration

Robins Kaplan LLP

Robins Kaplan LLP

Apogée or ApHogee: that is the question. Do those look or sound similar to you? Not to Louis Vuitton. But the Federal Circuit disagreed, and on July 5 ruled that the luxury brand could not register the word “Apogée” as a trademark for its perfume.

Last year, the Trademark Trial and Appeal Board (“TTAB”) refused to register Louis Vuitton’s applied-for trademark, “Apogée,” because of the likelihood of confusion with the already registered mark “Apoghee,” belonging to KAB Brands LLC, a hair products brand. Louis Vuitton applied for the mark back in 2015 to protect the name of a perfume it had recently developed. It also sought to register the mark for a wide range of cosmetic and skincare products. The Examining Attorney preliminarily approved the mark, but just a day later KAB protested Apogée’s registration, arguing that consumers are likely to confuse the two marks. The Examining Attorney sided with KAB and refused registration.

Louis Vuitton appealed that decision arguing the TTAB erred in finding that consumers are likely to confuse the applied-for mark “Apogée” with the registered mark “Aphogee.” Section 2 of the Lanham Act says that registration of a mark can be refused when the mark “so resembles a mark registered in the Patent and Trademark Office . . . as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive.”

The luxury retailer alleged that the two marks were “manifestly different in sight, sound, and commercial meaning,” because a consumer would recognize that Apogée is French for “height.” On the other hand, a consumer would understand that the “pH” in “ApHogee” creates the impression that the product relates to “a low acidity or alkalinity,” it argued. But because neither marks are a recognizable English word, “nothing suggests that a consumer would not similarly translate ‘Apohgee’ into ‘height’ as a variant of Apogee” the Federal Circuit opined.

The Federal Circuit also found that the goods, perfumery and hair care products, are related because they are “complementary products which often emanate from the same source” and also found that the products go through similar channels of trade like high-end retail stores. And it was irrelevant that Louis Vuitton’s perfume retailed for $350 a bottle and KAB’s hair care products for $11 a bottle because the ApHogee registration and Apogée application do not restrict purchasers or pricing. This means that Louis Vuitton could develop a low-cost perfume or KAB could create a high-end shampoo. All of these factors, coupled with its finding that the marks were similar in sight, sound and commercial impression led to the panel’s rejection of Louis Vuitton’s applied-for mark. The full opinion can be read here.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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