More Support For “The Crowded Field Argument”

Applicant sought to register a standard character mark, SQUEEZE JUICE COMPANY for fruit and vegetable juices, smoothies, juice bar services, smoothie bar services, and cafe services. Applicant received a refusal as to both classes due to a likelihood of confusion with the cited registration, SQUEEZE in stylized lettering with a design of a goblet and a lemon being squeezed above the goblet, compare the marks. The cited registration identified juice bar services and bar services. The applicant appealed the refusal and the Trademark Trial and Appeal Board (the “Board” or the “TTAB”) reversed the refusal. See In re Boston Juicery, LLC, Serial No. 86877537 (August 21, 2018) [not precedential].

Both applications cited “juice bar services” therefore the services are identical in part. In addition, the Examining Attorney produced third-party website evidence that demonstrated that juice is commercially related to juice bar services. Since the services are identical, there is a presumption that the consumers and the trade channels are the same. Therefore, the two du Pont factors, of relatedness of the goods and services, and the similarity of the trade channels favor a finding of likelihood of confusion.

Next the Board evaluated the marks. It held that the design element only emphasized the literal meaning of the term “Squeeze.” The large lettering of the literal term “Squeeze” in Registrant’s mark causes the trademarks to be similar in sound, appearance, meaning and commercial impression. Both marks communicate the message that the goods and/or services will include freshly squeezed juice. This factor also weighs in favor of finding a likelihood of confusion. This case is unusual because once a determination is made that the marks are very similar, the goods and/or services are related, and the trade channels are the same, it is unlikely that the Board will reverse a 2(d) refusal based on the other du Pont factors. Here a single du Pont factor is dispositive, outweighing the other factors.

The last du Pont factor evaluated was the number and nature of similar marks on similar goods or services (the strength of the trademark). Third party registrations are typically produced to show a mark is either descriptive, suggestive or so commonly used that the consumer will look to other elements of the mark to distinguish the source of the goods or services. See Juice Generation, Inc. v. GS Enters LLC, 794 F.3d 1334, 115 USPQ2d 1671 (Fed. Cir. 2015). See also, In re Hartz Hotel Servs. Inc., 102 USPQ2d 1150 (TTAB 2012). If the shared element used in both marks is commonly used in one particular industry and therefore, it has a well-understood descriptive or highly suggestive meaning, the term will be considered legally weak, and be given a narrow scope of protection. See Tektronix, Inc. v. Daktronics,Inc., 534 F.2d 915 [189 USPQ 693] (CCPA 1976). In Tekronix, the Court held that third party registrations alone, without evidence of actual use of the marks is enough for some weight to be given to the fact that the mark is used in the same manner as the dictionary definition.

Here, the Board emphasized the fact that if the subject mark is either highly suggestive or descriptive, it simply is less likely to cause confusion in the marketplace as to source. The rationale is that consumers are accustom to seeking out differences in marks, when a common word appears as part of a brand. These types of marks are given a narrow scope of protection in comparison to fanciful or arbitrary trademarks. See also, National Data Corp. v. Computer System Eng’g, Inc. 940 F.2d 676 (Fed. Cir. 1991) (unpublished). The next question to ask is how much and what kind of third party evidence is necessary to overcome a 2(d) refusal. In Juice Generation, Inc. v. GS Enters LLC, 794 F.3d 1334, 115 USPQ2d 1671 (Fed. Cir. 2015), the applicant presented extensive evidence of third party use. This consisted of 26 third party uses or registrations demonstrating similar marks for similar goods and/or services.  In Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. Millennium Sports, S.L.U., 2015 U.S. App. LEXIS 12456, there were 16 similar marks in use for similar goods. In the case at bar, there were only 12 third party registrations (all owned by different entities) related to fruit juices and related services. Yet the Board held that this was sufficient to prove the subject mark (SQUEEZE JUICE COMPANY) was highly suggestive of juice.

This case instructs us on the point that third party evidence can tip the scales in overcoming a likelihood of confusion refusal, but it will depend on the quality and quantity of third party registrations and uses. The cases appear to be trending towards giving more weight to “the crowded field argument”. If you have questions regarding a likelihood of confusion refusal or other questions relating to trademarks, please feel free to contact the firm for a courtesy consultation.