In an earlier blog post, I stated that there were two significant decisions on the subject of how to use third-party evidence to demonstrate a crowded field of similar marks for similar goods or services. See our blog post entitled The Federal Circuit Sends A Strong Message To The TTAB, where the case of Juice Generation, Inc. V. GS Enterprises LLC, ____ F.3d____, 2015 WL 4400033 (Fed. Cir. July 20, 2015) was discussed. The second Federal Circuit decision, Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. Millennium Sports, S.L.U., 2015 U.S. App. LEXIS 12456, was issued in August of this year and it instructs the Trademark Trial and Appeal Board (the “Board” or “TTAB”) on when it is appropriate to extend only a narrow scope of protection to a mark based on a crowd field. This case underscores the general rule that not all trademarks are given a broad scope of protection.
In Jack Wolfskin, the Appellant/Applicant applied to register a design mark consisting of a paw print for use with apparel, footwear and accessories. To view Jack Wolfskin’s design mark click on this hyperlink. To view the Appellee’s paw print mark click on this hyperlink. The Appellee opposed the trademark application on the grounds of likelihood of confusion. The TTAB sustained the opposition and refused to register the mark. Jack Wolfskin appealed to the Federal District court and the court agreed with the Appellant that the Board incorrectly found a likelihood of confusion between the two marks. The Board failed to recognize the significant evidence of paw print designs appearing in third-party registrations for use with clothing.
The determination of whether there is a likelihood of confusion between the sources of two marks is a question of law based on the relevant facts. The Du Pont factors that are relevant to the record must be examined. Jack Wolfskin asserted on appeal that the Board’s likelihood of confusion analysis was flawed because there was insufficient evidence to support two important factors: similarities of the marks and the number and nature of similar marks in use.