Articles Tagged with How To Overcome A Likelihood Of Confusion Refusal

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A year ago,  I posted a blog that featured a case that had appealed to the U.S. Court of Appeals for the Federal Circuit (the “Federal Circuit”) and the Court reversed a decision by the Trademark Trial and Appeal Board (“TTAB” or the “Board”). The case of In re St. Helena Hospital, 113 USPQ2d 1082 (Fed. Cir. 2014) [precedential], expanded the “something more” standard. I see more and more cases relying on the “something more” standard to prevail in likelihood of confusion disputes. To provide readers with a thorough understanding of this standard, it is necessary to review the cases of In re Coors Brewing Co., 343 F.3d 1340 (Fed. Cir. 2003) and Jacobs v. International Multifoods Corp., 668 F.2d 1234 (CCPA 1982) (the “Jacobs” case).

The Coors Brewing Company (“Coors”) was seeking to register the mark BLUE MOON & Design for a brand of beer. The Examining Attorney refused the trademark application for BLUE MOON & Design on the ground that it would cause a likelihood of confusion with another registered mark for BLUE MOON & Design for restaurant services. The Board upheld the Examiner’s refusal based on the determination that the two marks were similar for likelihood of confusion purposes and that restaurant services and beer were related goods and services.

The Federal Circuit court agreed with the determination that the trademarks were similar with regard to appearance, sound, meaning and commercial impression, but disagreed with the conclusion that restaurant services were related to beer. The Federal Circuit compared the two design marks and found that generally the marks were similar due to the literal portion of the marks being identical “BLUE MOON”. However, there were differences in the design logos that dictated that the finding of similarity between the marks was less important.

The Court in Coors refers to the earlier decision in Jacobs to highlight the ruling that restaurants serving both food and beverages will not be enough to render food and beverages related to restaurant services for purposes of likelihood of confusion. The Jacobs Case held that something more needs to be demonstrated to prove a likelihood of confusion between even identical marks used for food products and restaurant services. Coors offered exceptionally persuasive evidence on the issue of whether beer is related to restaurant services.

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