The Federal Circuit recently issued two trademark decisions on the subject of third party use evidence and the weight that should be given to a crowded field argument. Both of these cases deserve attention. These decisions will have a significant impact on future decisions rendered by the Trademark Trial and Appeal Board (“TTAB” or the “Board”) and will also impact the decisions of USPTO examining attorneys. This week’s post will feature the case of Juice Generation, Inc. v. GS Enterprises LLC, ____ F.3d ___, 2015 WL 4400033 (Fed. Cir. July 20, 2015).
Juice Generation, Inc. (“Juice Generation”) applied to the USPTO to register the mark PEACE LOVE AND JUICE (as both a standard character mark & a design mark) for juice bar services. GS Enterprises (“GS”) opposed the application on the ground that it would cause a likelihood of confusion with its family of marks, containing the phrase “PEACE & LOVE” for restaurant services. The Board sustained the opposition and refused to register Juice Generation’s mark and Juice Generation appealed the decision. The Federal Circuit vacated the Board’s decision and remanded the case to the Board so it could consider and evaluate the trademark as a whole because the Court held there was no evidence to suggest it considered the mark in its entirety. Moreover, the Federal Circuit stated consideration must also be given to the third-party use evidence.
The Board evaluated whether there was a likelihood of confusion by looking at the thirteen factors identified in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). See our web page entitled, Likelihood Of Confusion Refusals, 2(d) Refusal, where all thirteen factors are set forth. The Board reviewed the factors and determined that the similarities between the marks, the services, and the trade channels, as well as the similarities of the buyers and the purchasing conditions weighed in favor of finding a likelihood of confusion. Interestingly enough, when reviewing factor six, the number of similar marks in use, the Board held that either this factor was neutral or that it weighed slightly against finding confusion. The Court held that the Board did not sufficiently assess the strengths or weaknesses of GS’s marks and this is directly related to the sixth factor. Further, the Federal Circuit Court held that the Board gave inadequate consideration to Juice Generation’s three-word mark as a whole.
Juice Generation presented evidence of third party marks incorporating the terms “peace and love” in connection with restaurant services and food products. Many of the marks used by third parties were three term marks similar to its own mark. Evidence of third-party use is relevant to show the strength or weakness of a trademark. See In re Coors Brewing Co., 343 F.3d 1340 (Fed. Cir. 2003), where it was held that evidence of third party use of similar marks on similar goods is relevant to prove that a mark is relatively weak and entitled to a narrow scope of protection. It can also prove that consumers have been educated to distinguish these similar marks on the basis of slight modifications. When a party uses a relatively weak trademark the law permits a competitor to come closer in use than if the mark was strong.
In this case, the Board discounted the evidence of third-party use because there was no showing of the extent of sales or promotional efforts. However, the Federal Circuit declared that the third-party evidence was powerful on its face without needing to demonstrate the specifics. The Court held that third-party registrations are relevant to prove that the elements used by third parties are well understood for a descriptive or suggestive meaning, thus leading to the conclusion that the element is relatively weak. See our webpage entitled, Other Considerations In A Likelihood Of Confusion Analysis, where third-party registrations are discussed in more detail.
This finding underscores the general principle that marks that are descriptive or highly suggestive are entitled to a narrow scope of protection. See Anthony’s Pizza & Pasta Int’l Inc., 95 USPQ2d 1271 (TTAB 2009), where it was shown through third-party registrations and telephone listings that the name “Anthony’s” was extensively adopted, registered and used as a mark for Italian restaurants and pizzerias. As mentioned above, the Federal Circuit Court concluded that the case must be remanded to the Board so it can analyze all the evidence and ascertain where on the trademark spectrum GS’s mark(s) fall.
The Court also instructed the Board to reassess Juice Generation’s mark as a whole including the generic portion which is disclaimed. See Opryland USA Inc. v. Great Am. Music Show, Inc., 970 F.2d 847 (Fed. Cir. 1992), where it was held that the Board erred by giving no weight to a generic term. The rationale for this holding is that since the public does not know that a term is disclaimed, it may use the generic term to distinguish the marks and for this reason even disclaimed portions of trademarks must be considered in a likelihood of confusion analysis. In my opinion, this decision provides much needed guidance and makes logical sense. The decision will have a significant impact upon future Board decisions, as well as influence over the decisions made by the Examining Attorneys. If you have any questions, relating to this case or to the impact the decision may have on your pending trademark prosecution, please feel free to contact our office.