COVID-19 Notice: We Remain Here For You. Learn More.

Articles Posted in Likelihood Of Confusion

Recent Trademark Trial and Appeal Board (“Board”) Decisions continue to reinforce the importance of good evidence demonstrating similar trademarks in use to weigh against finding a likelihood of confusion. See In re Loew’s Hotels, Inc., Serial Nos. 88425357, 88433338, 88433342, and 88433348 (May 11, 2022) [not precedential], where two refusals for registration were affirmed and two refusals were reversed. The applicant was seeking to register 4 marks: (1) CLOVER CLUB (CLUB disclaimed) standard characters and three stylized or composite marks; (2) ESTD. CLOVER CLUB 2019; (3) CLOVER CLUB MADE IN TEXAS; and (4) MADE IN TEXAS CLOVER CLUB ESTD. 2019. The cited marks were CLOVER, in standard characters and CLOVER in stylized font, both owned by the same registrant. The applicant and registrant identified restaurant services respectively in the application and registration.

The most interesting part of the Board decision involved the sixth DuPont factor, the number and nature of similar marks in use for similar services. This factor is incredibly important because it affects the scope of protection afforded the cited mark(s) and the degree of similarity of the marks required to prove likelihood of confusion. The purpose of third-party use evidence of similar marks is to prove consumers have been educated to differentiate between minute differences. See Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315, 128 USPQ2d 1686, 1693 (Fed. Cir. 2018) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005). See our web page entitled, Overcoming A 2(d) Refusal With The Crowded Field Argument, for more on this topic.

To make this type of evidence of record, applicants should submit copies of the third-party’s website or social media pages. Only including a hyperlink for the third-party website or information about the website in the appeal brief is insufficient. The third-party use evidence must be relevant as to goods and/or services and based on similarities to the cited mark. The Federal Circuit has determined that evidence of third-party use can be powerful on its face even though specifics as to the extent and impact of use of the third-party trademarks may not have been demonstrated. Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671 (Fed. Cir. 2015). See also, Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015).

The Trademark Trial and Appeal Board (the “Board”) issued a precedential decision last week that will be helpful to applicants submitting either a Consent Agreement or a Coexistence Agreement to overcome a likelihood of confusion refusal. Dare Foods Inc. filed an application to register the proposed mark RAINCOAST DIP in standard characters with a disclaimer for “DIP” for snack foods. The Examining Attorney refused the application based on a registration for RAINCOAST TRADING, in standard characters with a disclaimer for “TRADING” for various seafood products.

The Board reversed the refusal stating, “clothed consent agreements where competitors have clearly thought out their commercial interests should be given great weight, and the USPTO should not substitute its judgment concerning likelihood of confusion for the judgment of the real parties in interest without good reason, that is, unless the other relevant factors clearly dictate a finding of likelihood of confusion.” See In re Dare Foods Inc., 2022 USPQ2d 291 (TTAB 2022) [precedential]; Four Seasons Hotels, 26 USPQ2d at 1073 (quoting In re N.A.D. Inc., 754 F.2d 996, 224 USPQ 969 (Fed. Cir. 1985)); see also DuPont, 177 USPQ at 568; Am. Cruise Lines, 128 USPQ2d at 1163. See the firm’s blog post entitled, A Precedential Board Decision Giving Great Weight To Consent Agreements, where the Board again reversed a refusal to register while giving substantial weight to the consent agreement entered into between the parties. The Board for In re Dare Foods Inc., concluded a detailed, “clothed” consent agreement will play a dominant role in a likelihood of confusion analysis.

In this case, the Board reviewed the following DuPont factors, similarities of the marks, similarities of the goods, the trade channels and classes of consumers, and the market interface and co-existence agreement. Regarding the marks, it was a simple task. Both applicant’s and registrant’s mark use the identical term RAINCOAST, and both marks contain a descriptive element that was disclaimed in each respective mark. Not only is the dominant element shared, but RAINCOAST appears as the first element in both marks. The marks in their entireties are similar.

In a recent reversal by the Trademark Trial and Appeal Board (the “Board” or the “TTAB”),  In re Just a Pinch Recipe Club, LLC, Serial No. 88463841 (April 15, 2021) [not precedential], it becomes evident that just because two trademarks share terms, this may not be enough to find a likelihood of confusion. There must be an evaluation of whether the shared terms are distinctive terms and thus strong or highly suggestive or descriptive terms and therefore weak. Assuming that one of the marks contains additional terms (other than the shared terms) that consumers can rely on to distinguish the goods, then the fact that the marks share identical terms may not be enough to support a 2(d) refusal. The applicant in In re Just a Pinch Recipe Club, LLC, was seeking to register the standard character mark PINCH IT! RECIPE BOX (RECIPE disclaimed), and the registrant’s mark was THE RECIPE BOX (RECIPE was disclaimed and the mark was in standard characters). Both parties’ goods were for mobile phone application software for managing recipes. There was no dispute that the goods were related, and the TTAB in the end determined that the goods were either legally identical or closely related.

This case turned on the first (similarities and dissimilarities of the marks) and sixth (number and nature of similar marks in use on similar goods) DuPont factors. When assessing whether DuPont factor one weighs in favor of finding a likelihood of confusion the marks in their entireties must be evaluated. This means examining the similarities in the appearance, sound, meaning and commercial impression of the marks. Similarity in any one of these elements may be sufficient to find the marks confusingly similar. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018). This test focuses on the recollection of the average customer, who retains a general rather than specific impression of marks. In re i.am.symbolic, llc, 127 USPQ2d 1627, 1630 (TTAB 2018).

An important consideration for the comparison of marks’ similarities is whether the marks share identical terms, and whether the shared terms are the dominant part of each respective mark. The dominant term of the registrant’s mark was “RECIPE BOX”. The Board determined that the dominant term of the applicant’s mark, PINCH IT! RECIPE BOX was PINCH IT! The TTAB’s logic was that the term PINCH IT! was arbitrary and it was the first element of applicant’s mark. The first part of a mark is often its dominant portion. See, e.g., In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing Presto Prods., Inc. v. Nice-Pak Prods. Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (the first part of a mark “is most likely to be impressed upon the mind of a purchaser and remembered”); Palm Bay Imps., 73 USPQ2d at 1692. Here, the exclamation mark draws attention to the first element and underscores it. Moreover, both marks disclaimed the term “Recipe” since it is descriptive of the parties’ respective goods. The dominant element of the mark will be given greater weight in the likelihood of confusion analysis. The Board concluded that PINCH IT! was the dominant part of the applicant’s mark.

Continue reading

Since about 90 percent or more of 2(d) cases appealed are affirmed by the Trademark Trial and Appeal Board (the “Board”), it is unlikely that the Board disagrees with the Examining Attorney’s conclusions. However, the Board did not see eye to eye with the Examining Attorney on this recently decided matter. In my opinion, the Board got this one right.  The Applicant was seeking to register the mark SIMONIZ CERAMICSHIELD for paint sealant for exterior surfaces of vehicles. The Examining Attorney refused registration based on the mark PLATINUM CERAMIC SHIELD in standard characters and PLATINUM CERAMIC SHIELD & Design for clear coating protectant for use on vehicles with the term “Ceramic”`disclaimed. The Board reversed finding the dominant word in each mark was the first term, SIMONIZ and PLATINUM respectively which allowed consumers to distinguish the sources of the sealant products. See In re Simoniz USA, Inc., Serial No. 85865135 (TTAB November 3, 2020).

In this case, the relatedness of the products was not disputed. Both products are used on vehicles to protect the exterior of the vehicle from environmental elements such as water, air etc. The analysis focused on the similarities and dissimilarities of the marks, since both the Applicant and the Examining Attorney agreed that the first du Pont factor was dispositive in this case. Often, properly identifying the dominant portion of the mark will lead to the ultimate conclusion of whether there will be confusion between the sources of two goods and/or services.

The Examining Attorney argued that the first terms in the respective marks, SIMONIZ and PLATINUM were suggestive and that the more distinctive terms were the shared terms “CERAMIC SHIELD”. The Examining Attorney submitted dictionary definitions for the words Simonize (meaning to polish) and Platinum (of a superior quality). However, the Board, did not agree with the Examining Attorney’s argument that the first terms were suggestive. The Applicant’s mark SIMONIZ CERAMICSHIELD does not use the spelling listed in the dictionary “Simonize”. In addition, the dictionary definition states that the term SIMONIZE has an origin in the term SIMONIZ which is a trademark for metal polish referring to Applicant’s mark. The Board also emphasized the fact that Applicant owns multiple SIMONIZ registrations for coating products for automobiles, including paints, sealants and polishes. The mark SIMONIZ has been in commerce in use with these types of products for over 100 years. SIMONIZ is the oldest brand of automobile products in the marketplace.

Continue reading

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.

Continue reading

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.

Continue reading

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.

Continue reading

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.

Continue reading

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.

Continue reading

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).

Continue reading