Articles Tagged with Likelihood Of Confusion Reversal

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Earlier this summer the Board relied on the “Something More” standard in reversing a refusal to register a trademark for beer. See In re Iron Hill Brewery, LLC, Serial No. 86682532 (July 28, 2017). The Applicant was seeking to register the mark CANNIBAL in standard characters for beer. There was a registered mark CANNIBAL for restaurant services and the Examining Attorney held that there was a likelihood of confusion between the two CANNIBAL marks. See our blog post entitled, The Origin Of The Something More Standard In Trademark Law, for a review of prior cases applying this standard. The application of this standard can be traced back to In re Coors Brewing Co. 343 F.3d 1340 (Fed. cir. 2003) and Jacobs v. Int’l Multifoods Corp., 668 F.ed 1234 (CCPA 1982). Cases following have expanded the reach of this standard in likelihood of confusion cases.

In this case, the Examining Attorney refused Applicant’s CANNIBAL mark for beer on 2(d) grounds and made this refusal final. The Applicant appealed to the Board after the request for reconsideration was denied. The Board started its likelihood of confusion analysis with evaluating the goods and services. Since the marks are identical, the Examining Attorney was required to show something more than the same mark was used to brand restaurant services and food or beverage products. In other words, the Examiner could not simply argue that since restaurants occasionally sell their own beer, beer and restaurant services are related. There is no general rule in trademark law that certain goods and services are related.

In prior cases, the Board found the “something more” standard satisfied, when evidence has been shown that registrant’s mark is very unique and strong or if there was evidence that Applicant’s restaurant specialized in Registrant’s type of food products. See In re Coors Brewing Co., where the Court held that it was not sufficient to find a relatedness of the goods and services based only on the fact that a tiny percentage of all restaurants use the same mark for both its restaurant services and to brand beer. The Examining Attorney in this case, produced evidence of websites from restaurants and argued that these restaurants also sold beer, but did not show evidence that the same trademark was used to brand both the restaurant services and the beer.

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One of the many grounds an Examining Attorney can cite for a refusal of a trademark application is likelihood of confusion between a proposed trademark and a mark contained either in a pending application or a prior registration. A Section 2(d) Refusal is a trademark refusal based on likelihood of confusion grounds. If dissatisfied with a refusal, an applicant can appeal the decision to the Trademark Trial and Appeal Board (“TTAB” or “Board”) of the United States Patent & Trademark Office (“USPTO”). This is an extremely common ground for refusal, however when appealed often the refusal is affirmed. In the year 2014, there was a 90% affirmance rate for refusals based on likelihood of confusion grounds. Recently, the Board issued a reversal, see In re SDI Petroleum, LLC, Serial No. 86011946 (November 30, 2015).

The applicant in In re SDI Petroleum, LLC was seeking registration of the mark DASH NEIGHBORHOOD for retail store services featuring gasoline. The Examining Attorney refused the application based on prior registrations for the marks DASH IN and D DASH & Design for retail store services featuring convenience store items and gasoline. The registered marks are owned by the same registrant. The applicant requested reconsideration and that was denied and the appeal proceeded.

A likelihood of confusion analysis will consider all relevant facts in evidence and the factors set forth in In re E.I. du Pont de Nemours & Co 476 F.2d 1357, 177 USPQ 563 (CCPA 1976). The Board first reviewed the services. The marks contained services that were in part identical. There were no restrictions in the identification of services pertaining to the channels of trade. Since the identifications were in part identical, it is presumed that the trade channels and classes of consumers are overlapping for those identical services. Therefore, trade channels and services weigh in favor of finding likelihood of confusion.

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