A trademark appeal board has overturned an earlier refusal to register a stylized version of the number 12 as a trademark. According to a non-precedential opinion on January 28, the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board (“TTAB” or the “Board”) sided with Metabeauty, Inc., reversing a refusal to register its stylized “12” mark for use on skincare products and online retail services. In its decision, the TTAB found that despite some similarities to another party’s previously-registered “TWELVE COSMETICS” trademark, the Metabeauty mark is distinct enough to avoid a likelihood of consumer confusion.
A Bit of Background: In July 2022, Metabeauty filed a trademark application for registration for a stylized, light blue-green octagon containing the number “12.” The U.S. Patent and Trademark Office (“USPTO”) rejected the Miami-based beauty company’s application, finding that its mark is likely to cause confusion with an already-registered mark, TWELVE COSMETICS, for “cosmetics; private label cosmetics.” Metabeauty successfully appealed the USPTO’s refusal to the TTAB.
The Number 12 as a Trademark
In a detailed analysis late last month, the TTAB found key distinctions that weighed in favor of registration for Metabeauty’s mark, namely: the commercial weakness of “12” in the cosmetics industry, the overall dissimilarity of the two companies’ marks, and the presence of distinctive design elements in Metabeauty’s mark.
Primarily, the TTAB determined that the number “12” (and its word equivalent, “TWELVE”) is a weak source identifier in the beauty industry. Metabeauty successfully introduced evidence of at least ten third-party registrations featuring the number “12” or “TWELVE” for cosmetics, skincare, or hair care preparations. The Board found that these registrations indicated that the number was widely used in connection with cosmetics/beauty goods and as a result, had a limited scope of exclusivity.
With this in mind, the Board held that “the weaker [a registrant’s] mark, the closer an applicant’s mark can come without causing a likelihood of confusion and thereby invading what amounts to its comparatively narrower range of protection.” In other words, if a term or number that appears frequently in a given market is considered conceptually weak; this is good news for Metabeauty, as small differences between such marks can be sufficient to avoid confusion.
Beyond the conceptual weakness of the number itself, the TTAB also held that the two marks are sufficiently dissimilar to weigh against a likelihood of confusion. “While the word COSMETICS in Registrant’s mark is generic for the identified goods, is disclaimed and is less memorable than the word TWELVE,” the TTAB stated that “the structure and appearance of Registrant’s mark, two words, is very different from [Metabeauty’s] mark” due to “its green colored design element, [which] conveys a very different appearance and commercial impression.”
“Taking the marks in their entireties, we find the dissimilarities are sufficient to distinguish the marks given the weak nature of the numeral 12 and the word TWELVE in connection with cosmetics, including skin lotion,” the TTAB asserted.
Finally, the Board also placed significant weight on the design elements in Metabeauty’s mark. While the competing registration “TWELVE COSMETICS” is a standard character mark, which means it could be used in any stylization, the Metabeauty mark includes a specific graphical element: a curved-sided octagon in a light blue-green shade with the number “12” in white serif font. And while the TTAB emphasized that while phonetic similarities exist, it found that the visual differences between the two marks create a distinct commercial impression, further reducing the likelihood that consumers would mistake one mark for the other.
The Broader Implications of the TTAB’s Decision
The Board acknowledged that both parties’ goods and services overlap in the beauty sector, meaning they could be sold through similar channels to the same class of consumers, it ultimately found that these factors were outweighed by the weakness of “12” as a trademark and the distinct appearance of Metabeauty’s branding. The ruling is not a precedent of the TTAB but it could, nonetheless, have an impact for future cases where numbers or commonly used words are at issue in trademark disputes. At the same time, it underscores that brands cannot claim an exclusive right to weak terms, particularly in crowded markets like cosmetics, where numerical branding is widely adopted.
For emerging beauty brands, the decision signals a nuanced approach to trademark protection: while distinctiveness remains key, market context and third-party use can play a critical role in determining enforceability. For now, Metabeauty can proceed with its registration, marking a notable victory for brands navigating the complexities of securing trademark rights in the highly competitive beauty space.
>> Not the only opposition involving Metabeauty in play, Abercrombie & Fitch is looking to block Metabeauty’s application for registration for a stylized number 8 mark for use on cosmetics, arguing that registration of the mark “will inevitably capitalize upon the distinctiveness of the A&F 8 Mark, which have acquired renown as used by [Abercrombie].”
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