The TTAB recently hit a sour note for Shaklee Corporation, affirming on appeal a Section 2(d) refusal of its application to register IN HARMONY WITH NATURE for “online retail store services” because it found the mark too close to the registered CRAFTED WITH LOVE IN HARMONY WITH NATURE, already in use for personal care products by a different entity.
Shaklee, aside from an argument that the marks are dissimilar on their face, relied heavily on the argument that owning other registrations which included the wording IN HARMONY WITH NATURE would be sufficient to overcome the refusal.
Both arguments were found unconvincing, and the outcome raises an important question: how far should trademark law bend to allow companies to grow their house marks across industries?
Why is this case important?
The case deals with an increasingly evident area of tension in trademark law: the protection of existing rights against the practical needs of businesses to expand under their established brands.
Companies invest heavily in cultivating house marks that span product lines and different industries but hold consumer goodwill. After all, a house mark serves no purpose other than indicating a source which, ultimately, is the goal of trademark law.
Yet, when those businesses seek to extend their marks into new areas of commerce, and use their house mark as a source indicator, they may still find themselves hemmed in by the contours of pre-established trademark rights in that new industry.
This would not be as much of a problem if businesses could expand live trademark registrations. However, trademark registrations are fixed; once issued, they cannot be expanded to cover new goods or services.
In this particular case, the TTAB found the mark IN HARMONY WITH NATURE too close to the registered CRAFTED WITH LOVE IN HARMONY WITH NATURE, already in use for personal care products based on a strict DuPont analysis. The board concluded that the similarity of the marks, combined with overlapping goods and trade channels, created a likelihood of confusion.
On the marks themselves, Shaklee argued that the opening phrase “CRAFTED WITH LOVE” dominated the cited registration, giving the overall impression a distinctive tilt. The TTAB disagreed, finding instead that Shaklee’s proposed mark could be seen simply as a trimmed-down version of the longer registered mark, further enhancing likelihood of confusion.
The TTAB also found it “self-evident” that personal care products and online retail services selling such products are closely related, a conclusion reinforced by third-party evidence. Because those goods and services travel in the same trade channels, the second and third DuPont factors strongly supported the refusal.
Interestingly, Shaklee’s fallback argument leaned heavily on its history of owning registrations with the phrase IN HARMONY WITH NATURE, invoking the TTAB’s much-discussed Strategic Partners decision. But the board refused to stretch that precedent.
Only one of Shaklee’s earlier registrations matched the mark exactly, and it covered educational services, not retail. The others included lengthier phrases with differences that the board found to be material. Because of this, the board concluded that Shaklee did not meet the “unique circumstances” in Strategic Partners, where the applicant already owned an almost identical registration for the same goods.
Shaklee also relied on the TTAB’s non-precedential decision in Semillas Fito, a somewhat similar decision to Strategic Partners, where prior identical registrations tipped the balance in favour of the applicant.
But again, with no “unique circumstances” (ie, identical prior registrations) to save the day, the board held that Shaklee’s prior rights were simply insufficient to warrant an exception to a regular DuPont analysis. And this analysis found the two marks to be confusingly similar. The result: registration refused, leaving Shaklee with few options other than getting creative with new filings.
In sum, this case underscores just how limited the Strategic Partners exception really is.
Prior registrations will only tip the balance where the earlier and applied-for marks are essentially identical and cover the same goods or services. Applicants cannot rely on broader brand history or “family of marks” arguments to avoid a refusal if the core DuPont factors (eg, goods, trade channels or similarity of marks) point toward confusion.
The broader policy question is: should companies with house marks enjoy a wider exception to the application of a DuPont analysis across industries, or should industries remain siloed to protect existing trademark users? Not subjecting house marks to a strict DuPont analysis would virtually obtain a similar result to the possibility of expanding an existing registration, just without priority benefits.
Expanding the Strategic Partners exception
One potential path forward involves expanding the Strategic Partners exception, which is currently limited to almost identical marks for the same goods or services.
Broadening this exception to include more than just identical goods could better accommodate the commercial need to extend brand reach without requiring entirely new registrations for each new good. However, expanding this exception must be carefully calibrated to avoid undermining the rights of smaller or earlier trademark owners.
The rights of pre-existing trademark users remain a critical counterbalance in this policy equation. Protecting these users against encroachment from larger brands ensures a competitive marketplace and prevents monopolisation. Without such protections, smaller businesses may be forced to abandon valuable trademarks or face costly litigation simply because a more famous brand seeks to expand its footprint.
Another policy consideration is the need to avoid consumer confusion; of course, the expansion of Strategic Partners needs to account for the overarching principle of protecting consumers from confusion when purchasing goods or services in the market place.
That is why perhaps fame should play a role.
A famous house mark functions as a strong source indicator across a wide spectrum of industries, often transcending the traditional boundaries that the DuPont analysis is designed to protect.
A famous mark is less likely to cause confusion because of the brand recognition of its commercial indicia.
Fame could be the balancing factor that could justify the expansion of Strategic Partners, while still protecting the rights of pre-existing trademark users. Consider, for example, if a famous company operating in technology sought to register its mark for online retail store services featuring personal care products. Should the existence of a smaller, pre-existing registration for a confusingly similar matter be enough to block it? Consumers are increasingly used to marks spanning industries other than the original industry that made them famous.
An open question
The current set-up, a strict application of the DuPont factors and the Strategic Partner exception, gives full weight to existing registrations, but it risks undervaluing the market reality that some house marks carry enormous consumer recognition across industries.
In contrast, carving out an exception for fame might allow powerful brand owners to expand more freely, but at the expense of smaller businesses whose rights would be more easily displaced.
The Shaklee decision reflects the current state of the law: fame and brand history are not enough to bypass a DuPont analysis unless the facts line up precisely with Strategic Partners. Whether trademark policy should evolve to give greater weight to famous house marks remains an open and difficult question.
This article was first published on World Trademark Review (www.WorldTrademarkReview.com) on September 6, 2025.
