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Articles Posted in Likelihood Of Confusion

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The case I am blogging about today, illustrates why federal registration is so important and how failing to register a mark can have devastating effects for your business. See Jean Leon, S.L. v. La Scala Restaurants, Corp., Opposition No. 91241804 (July 22, 2020) [not precedential], where an opposition was sustained despite the Applicant having senior common law rights. The Applicant was seeking to register the mark JEAN LEON’S LA SCALA for restaurant and cafe services and the registrant filed a Notice of Opposition. The Registrant/Opposer owned the mark JEAN LEON for wines. The Applicant opened a restaurant under the name JEAN LEON’S LA SCALA in Beverly Hills and started using the mark in 1962 but did not register the mark.

Clearly Applicant is the prior user of the mark at common law for restaurant services. However, that fact does not help Applicant with regard to the issue of priority in the opposition. Section 2(d) of the Trademark Act prohibits registration of a trademark if a mark resembles another mark as to cause confusion. See 15 U.S.C. §1052(d). One must remember that the policy behind Trademark law is not only to prevent consumer confusion, but it is also to encourage registration of marks.

The United States Court of Appeals for the Federal Circuit declared in part: “the board’s requirement that the registrant-opposer also be a prior user impermissively negates the statutory distinction (“or”) in Section 2(d) between a registered mark and a previously-used-but-unregistered mark, would permit simultaneous registration of the same mark for the same goods to different parties, and disregards–in effect conflicts with–Patent Office Rule 2.106(b), which forbids any attack (other than a request for cancellation) on the validity of a registration in an opposition;”, see King Candy Co., v. Eunice King’s Kitchen, 496 F.2d 1400, 182 USPQ 108, 110-11 (CCPA 1974). Therefore, Applicant’s prior use at common law is irrelevant to the question of whether Applicant can register its mark with the USPTO.

This highlights an important lesson that a senior first user must either oppose a confusingly similar mark when it publishes, or initiate a cancellation proceeding within five years from the registration date, or else the first user can lose the opportunity to effect cancellation. The first user of the mark is then penalized by the law and is unable to register its mark. However, the right to exclusive use may be determined in district court. If an opposition is sustained, then the Applicant-senior user is forced to undertake the financial burden to initiate a court action.

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In a recent Trademark Trial and Appeal Board (the “Board” or “TTAB”) decision a refusal is reversed based on the second DuPont factor. On the last day of December 2019, the Board issued a decision stating that the “related services doctrine (services provided in connection with the same goods) has no application here.” See In re Costa Farms LLC, Serial No. 87674168 (December 31, 2019) [not precedential]. In this case, the applicant was seeking registration of the mark GROW WITH US in standard characters on the Principal Register. The application identified the following goods, “Live flowers and living plants in International Class 31”. The Examining Attorney cited the mark, GROW WITH US in standard characters for the following services, “Distributorship services in the field of wholesale horticulture supplies and accessories” in International Class 35. The applicant appealed after the Examining Attorney issued a final refusal on likelihood of confusion grounds.

The Board, as in all decisions based on likelihood of confusion, stated that the two key considerations in the analysis are the similarities between the marks and the similarities between the goods and services. In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)). Another important consideration is the similarity of the trade channels and whether there would be the same customers for the goods and services. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). If there are DuPont factors that are not relevant to the facts of a particular case, the Board will only consider the pertinent factors. The other factors are treated as neutral.

Since the parties’ marks were identical, the Board focused on the similarities and differences of the goods and services. On this point, the law requires that the goods and services be related in some manner and/or that circumstances involving the marketing give rise to a mistaken belief that the goods and services come from the same source. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012). Analysis of the relatedness of the goods and services is based on the language used in the application and registration. One special rule that will apply here will be since the marks are legally identical there will be a lesser degree of relatedness required between the goods and services. See our blog post entitled, How To Overcome A 2(d) Likelihood Of Confusion Refusal, for more strategies in responding to Office Actions involving 2(d) refusals.

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In a recent case decided in November 2019, the Trademark Trial and Appeal Board (the “Board” or the “TTAB”) sustained an opposition filed by Baccarat S.A. on various grounds including likelihood of confusion. The applicant was seeking to register the mark BACCARAT in standard characters for alcoholic beverages, namely vodka. Baccarat (“opposer”) pleaded ownership of 20 of its registrations for the mark BACCARAT, some of the goods included, crystal, glasses, cups, vases, decanters, carafes, champagne buckets, jewelry, candle sticks, and tea pots. Since the Opposer pleaded its registrations, priority was not at issue. See our blog post entitled, How Fame Impacts A Likelihood Of Confusion Determination, for an earlier decision on this topic.

The Board reviewed the DuPont factors, and pointed out that if fame exists it plays a dominant role in the likelihood of confusion analysis because famous marks enjoy a broad scope of protection and exclusivity of use. See our webpage entitled, Famous Trademarks Receive A Broader Scope of Protection, for more information on this topic. The Board discussed how fame is determined. It stated that fame could be measured indirectly by the volume of sales and advertising expenditures for the goods and services identified by the mark at issue, and by the recognition received by independent sources, such as unsolicited media coverage. Also, important is the length of time the mark has been used for the relevant goods or services, and the general reputation of the goods and services. The numbers for sales, advertising and market share should be put into perspective by comparing the statistics to similar goods or services.

Opposer placed evidence into the record showing its predecessors-in-interest started producing glass products in 1764 in France and by 1892 had an import agency in New York. Production of glassware and other goods under the BACCARAT mark continued into current times. Sales figures were introduced that showed from the year 2000-2017 sales of BACCARAT branded goods and services totaled $458,430,809. Advertising figures demonstrated that from the years 2005-2017 $33,996,270 was spent to market its goods and services. The opposer advertises its branded goods in top magazines and newspapers such as Vanity Fair, Architectural Digest, The New York Times, The Los Angeles Times, and Forbes magazine.

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In a recent reversal by the Board, emphasis was placed on the importance of du Pont factor number six; see In re Simpson Industries, Inc., Serial No. 87635385 (October 7, 2019) [not precedential]. This likelihood of confusion factor, the number and nature of similar marks in use on similar goods, has been growing in importance since the decision in Juice Generation, Inc. v. GS Enterprises LLC, 115 USPQ2d 1671 (Fed. Cir. 2015) [precedential]. A number of cases have followed this precedential case and subsequent cases have bolstered the support for the “crowded field argument”.  In the most recent case of In re Simpson Industries, Inc., there were 13 uses and five third party registrations submitted in the record. In this case, the applicant was seeking to register RAINFOREST NUTRITION in standard characters for dietary and nutritional supplements. The Examining Attorney refused the applicant’s mark based on the registered mark RAINFOREST ANIMALZ, in standard characters for nutritional supplements. After the final refusal, the applicant appealed to the Board.

The goods were in part identical; therefore the Board presumed that the channels of trade and the classes of purchasers were the same for the applicant and the registrant. See Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011). The identity in part of the goods and the overlapping trade channels weighed heavily in favor of finding a likelihood of confusion. Moreover, since the goods are in part identical, a lesser degree of similarity between the marks is necessary to support a 2(d) refusal. See Bridgestone Americas Tire Operations, LLC v. Fed. Corp., 673 F.3d 1330, 1337, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012); In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012). Here, the marks are similar because they share the term RAINFOREST. However, because the applicant was able to prove that the shared term RAINFOREST was conceptually and commercially weak for nutritional supplements, the Board determined confusion was not likely.

The applicant demonstrated that the term RAINFOREST is widely used by third parties for both branding, and as a descriptive term for nutritional supplements, including foods and beverages. The applicant offered evidence to show that retail stores commonly used the term RAINFOREST to sell nutritional supplements, such as “Rainforest Pharmacy,” “Rainforest Nutritionals,” “Organic Rainforest Company” and “Rainforest Foods”. In addition, the applicant submitted evidence of certain teas that used the term RAINFOREST for branding, while advertising that the teas promote health benefits. The Board found this evidence probative since it considered teas to be related goods, even though the goods did not come in a pill or capsule form.

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Receiving an Office Action that refuses your trademark application can be overwhelming. Most importantly, trademark applicants should be armed with knowledge of the general rules that apply so effective arguments can be crafted for a response to the Office Action. A common mistake is that applicants submit the wrong type of arguments in reply to a 2(d) Likelihood of Confusion Refusal. See our firm page entitled, Likelihood of Confusion Refusals, 2(d) Refusals, to review the 13 factors considered in this analysis. Below are ten critical rules for trademark applicants to keep in mind when confronted with a likelihood of confusion refusal.

Rule 1- What if you have legally identical or virtually identical marks? If this is the case then, a lesser degree of similarity between the goods and services will suffice to find a likelihood of confusion.  In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); Gen. Mills, Inc. v. Fage Dairy Processing Indus. S.A., 100 USPQ2d 1584, 1597 (TTAB 2011); In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010). See also, In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009).

Rule 2- What if the goods or services overlap or if the goods or services are identical or virtually identical, then a lesser degree of similarity between the marks is necessary to support a determination that confusion is likely. See Bridgestone Americas Tire Operations, LLC v. Fed. Corp., 673 F.3d 1330, 1337, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012); In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); See also, Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012).

Rule 3- What if only one good or service of a long list overlaps with the cited registration? As long as there is an overlap with any one good or service, the other goods or services in that particular class need not be examined. Typically, likelihood of confusion will be found in connection with the class of goods or services with any overlap at all. See In re Wacker Neuson SE, 97 USPQ2d 1408, 1409 (TTAB 2010).

Rule 4- Another important rule dealing with goods or services that overlap or are identical is that the Board will presume that the distribution channels and the classes of consumers are the same for the applicant and the registrant. See Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011).

Rule 5- Be aware of the “Something More” Rule – When the relatedness of the goods and/or services is not evident, well known, or generally recognized, “something more” than the mere fact that the goods and services are used together must be shown. See, In re St. Helena Hospital, 113 USPQ2d 1082 (Fed. Cir. 2014) [precedential]. There is no per se rule as to what type of evidence will suffice under “something more”. Examples of types of “something more” evidence may include, a famous mark, actual use of a mark for both the goods and services at issue, or evidence of a large number of third-party registrations covering both the goods and services at issue. See, In re Coors Brewing Co., 343 F.3d at 1346, 68 USPQ2d at 1063.

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In a rare reversal by the Trademark Trial and Appeal Board (the “Board” or the “TTAB”), it was determined that there was no confusion among the marks NABOSO (English translation barefoot) and BAREFOOT for overlapping goods. See In re Naboso Technology, LLC, Serial No. 87236262 (February 27, 2019) [not precedential], where the applicant filed a trademark application for the foreign term NABOSO, a Czech word that translates to barefoot in English. The applicant’s goods included orthotics, yoga mats, and rubber flooring while the Registrant owned four marks, two for BAREFOOT in standard characters, and two for BAREFOOT Composite marks for orthotics, for rubber floor mats, and yoga accessories including yoga exercise mats. This case although not a precedent of the TTAB is a good case to cite if the applicant is faced with the Doctrine of Foreign Equivalents in a 2(d) refusal.  Based on In re Naboso Technology, LLC, the applicant should argue that the Examining Attorney or Board must weigh all the relevant du Pont factors in a confusion analysis, in particular all the elements of mark similarity, including appearance, sound and commercial impression against the similarity of meaning before rendering a decision.

The Board reminds us that the most important inquiry in a likelihood of confusion analysis is the cumulative effect of the similarities or the differences in the marks and the goods. Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).The applicant in this matter does not dispute that the goods are related. In fact, with the exception of applicant’s flooring the goods were identical to the registrant’s products. Therefore, the Board presumed that the channels of trademark and relevant consumers were the same. Both of these du Pont factors favored finding a likelihood of confusion.

Next the Board examined the similarities of the marks. The strength of a trademark is determined by both its inherent distinctiveness (conceptual strength) and its marketplace strength. To ascertain the conceptual strength, one must determine where the mark lies on the continuum, frequently referred to as the spectrum of distinctiveness. To learn more about determining the strength of a trademark, see the firm web page entitled, The Importance Of Selecting A Distinctive And Inventive Trademark. Both marketplace strength and inherent distinctiveness are reviewed under the du Pont factor known as the number and nature of similar marks in use on similar goods. It is important to keep in mind that the relevance of third party marks depends on whether or not the marks are in use in commerce. Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 73 UsPQ2d 1689 (Fed. Cir. 2005).

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Applicant was seeking to register the mark HONEYHOLE SANDWICHES in standard characters with a disclaimer on “sandwiches” for “restaurant with bar specializing in serving proprietary unique sandwiches, local beers, and alcohol in a vibrant eclectic environment”. The Examining Attorney refused the application due to a likelihood of confusion with the registered mark HONEYHOLE for alcoholic beverages except beer. The applicant appealed the refusal, the Board affirmed and required a “something more” showing to prove relatedness between restaurant services and alcoholic beverages. See In re Honeyhole Sandwiches Inc., Serial No. 87138294 (May 22, 2018) [not precedential].

When considering the similarities of the marks, the Board found them very similar in sight, sound, connotation, and commercial impression. This factor weighs in favor of confusion. There was no evidence of record to show the mark was commercially weak, therefore the sixth du Pont factor (the number and nature of similar marks on similar goods) also weighs in favor of confusion. Next the Board considered if the goods and services were commercially related. This evaluation must be based on the identifications in the application and registration. The Board noted that the “something more standard” cited by the Federal Circuit court had to be kept in mind. For more information on the “something more” rule imposed by the Federal Circuit, see our blog posts entitled, The Origin of the Something More Standard In Trademark Law, and The Federal Circuit Expands The Application Of Its Something More Standard. It has long been held that when analyzing one party’s services for providing food, i.e. a restaurant, and another party’s food and/or drink products, the fact that a restaurant may offer particular food or beverages doesn’t mean the parties’ goods and services are related.

Evidence must be produced that demonstrates something in addition to either similar or identical marks used for restaurant services and another’s food or beverage product. See In re Coors Beers Brewing Company, 343 F.3d 1340, 68 USPQ2d 1059 Fed. Cir. (2003), where there was no showing of “something more” sufficient to justify a relatedness between beer and restaurant services. Often, “something more” will be found if the restaurant specializes in the other party’s food or beverages. Moreover, if the Board finds that the mark is strong and of an arbitrary nature, this will be a factor weighing in favor of finding “something more”. In the case at bar, the mark HONEYHOLE was found to be commercially strong for alcoholic beverages. Moreover, the applicant’ identification states it serves alcohol and its menu demonstrates use of the mark HONEYHOLE for cocktails.

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In a recent case, The Trademark Trial and Appeal Board (the “Board” or “TTAB”) reversed a 2(d) refusal finding the applicant’s mark which contained words plus a design not to be similar enough to the registrant’s mark to cause a likelihood of confusion.  See In re Primeway International LLC, Serial No. 87059786 (January 9, 2019) [not precedential], where the applicant was seeking to register the mark INCOGNITO for footwear. The Examining Attorney determined that it caused a likelihood of confusion with the registrant’s mark STS INCOGNITO & Wolf Design for hats, hooded sweatshirts, jackets, shirts and t-shirts. In reversing the Examining Attorney, the Board pointed to several cases where a word mark and a word plus design mark were held not confusable because the design feature was the most visually prominent aspect of the mark. For more on design marks, see our web page entitled, Design Trademarks And How They Are Treated By Examining Attorneys.

The general rule is that when considering a mark that includes both words plus a design, the words are generally given greater weight because the words are more likely to be remembered by the consumer, and used to request or reference the goods or services. See In re Viterra, 671 F3d 1358, 101 USPQ2d 1905, 1911 (Fed. Cir. 2012). However, there is an exception to this rule and, in appropriate cases you should give greater weight to a prominent design feature. See Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KDAA v. Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1135 (Fed. Cir. 2015). In other words, you can accord more weight to a more distinctive element in a mark. In the case at bar, applicant’s mark features a wolf in sheep’s clothing with an arm extended out against large letters “STS”. Underneath the large wolf design in small letters is the word “incognito”. The Board held that the most prominent feature of the mark was the wolf design and the letters STS and not the shared term “incognito”.

The Board relied on several cases where the design aspect of the mark was viewed as the dominant feature of the mark. See a precedential case decided in 2014, In re Covalinski, 113 USPQ2d 1166 (TTAB 2014) [precedential], where the Board held that the goods for both marks were legally identical. The applicant applied to register the mark REDNECK RACEGIRL & Design, for athletic apparel, and the mark was initially refused by the Examining Attorney for causing a likelihood of confusion with the mark RACEGIRL for various clothing items. The refusal by the Examiner was grounded on the general rule mentioned above, but in that case, the exception to the rule should have applied. The Board reversed the refusal, finding that the first du Pont factor was determinative as the design of the mark was visually dominant, and rendered the term “Racegirl” difficult to read, while emphasizing the RR letters.

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The applicant in this matter, American Cruise Lines, Inc. is seeking registration of the mark, AMERICAN CONSTELLATION (standard characters) for cruise ship services, transportation of passengers by ship and conducting cruises for others. The Examining Attorney refused the application based on a likelihood of confusion with the registrant’s marks, CONSTELLATION and CELEBRITY CONSTELLATION, both in standard characters for the same cruise ship services. The Examining Attorney requested that the word “American” be disclaimed, but applicant submitted evidence that it had acquired distinctiveness. The claim of distinctiveness was based on use in commerce with four U.S. registrations using the term “American” for cruise ship services. The Examiner accepted the evidence. The applicant voluntarily disclaimed the right to use the term “Constellation”. After refusing the application, the Examining Attorney denied applicant’s request for reconsideration, and the applicant appealed to the Trademark Trial and Appeal Board (the “Board” or the “TTAB”). See In re American Cruise LInes, Inc., 128 USPQ2d 1157 (TTAB 2018) [precedential].

The Examining Attorney as part of its review considered two consent agreements (agreeing to use and registration of the mark AMERICAN CONSTELLATION) submitted by the applicant. Consent agreements are relevant under the du Pont factors. It bears on the market interface between an applicant and a registrant. See our webpage entitled, Resolving Trademark Disputes Without Litigation, for general information on consent agreements, and other means used to resolve these types of disputes.

Typically, the Board addresses the other relevant du Pont factors first, then determines the importance of the consent agreement. Regarding services, those are identical in this matter so there is a presumption that trade channels and classes of consumers are the same, weighing in favor of confusion. Regarding conditions of purchase, applicant submitted affidavit evidence that purchasers of its services exercised a heightened degree of care when purchasing cruise ship services. Affidavit evidence is to be considered probative in nature in an ex parte proceeding, if the affidavit refers to matters known or observed by the affiant.

Regarding similarities between the marks, the marks share the common term, Constellation. This is an arbitrary word used in conjunction with cruise ship services, and will be given broad protection. There is no per se rule that calls for a finding of confusion when a junior user’s mark incorporates the entire mark of the senior user, but certainly this increases the likelihood of confusion. The Board determined the marks were very similar in sound, connotation, appearance and commercial impression.

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A recent decision issued by the Trademark Trial and Appeal Board (“TTAB” or the “Board”) finds women’s athletic clothing and bicycle clothing related to electric bicycles for purposes of likelihood of confusion. The Applicant filed a trademark application for the mark LUNACYCLE in standard characters on the Principal Register for electric bicycles and related parts (frames and motors) in international class 12. The Examining Attorney refused the application citing the registration for the mark LUNA in a stylized format, view the stylization here,  for women’s bicycle clothing and clothing accessories in international class 25. Applicant appealed to the Board. See In re Cycles, Serial No. 87132160 (September 18, 2018).

The marks at issue must be considered as a whole and not dissected. More or less weight may be given to a particular aspect of the mark or a particular feature. Therefore, the visual appearance may be enough to conclude the marks are similar, the sounds of the marks when pronounced may be sufficient, the meanings of the marks in and of itself may be adequate to determine that this du Pont factor favors finding a likelihood of confusion. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985). Applicant argued that his mark incorporated the word lunacy, but there was no reason to believe consumers purchasing bicycles would perceive the term LUNACYCLE  as “lunacy cle”. The Board pointed out that there is no correct pronunciation for a trademark, and that it is more likely that consumers of bicycles would understand that the mark represented two words Luna and Cycle. Moreover it is likely that the consumer would focus on the arbitrary word Luna and less significance would be given to the generic word cycle.

In regard to the registrant’s mark, even though it contains a word LUNA and design features, the word is considered the dominant element of the mark, since consumers will use the word element to request the goods. Therefore, the term LUNA is the dominant feature of both marks. The rectangular feature of the mark is quite common and thus, not given much weight in the commercial impression, similar to a descriptive word that is disclaimed in a trademark. The Board concluded that the design features in registrant’s mark did not lessen the similarities between the marks, and that the similarities weigh in favor of finding a likelihood of confusion.

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