The Second Federal Circuit Decision Weighing In On The Crowded Field Theory

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.

To compare trademarks for similarities, one must analyze the following factors: appearance, sound, connotation, and commercial impression. There are some general rules that provide guidance in this type of an evaluation. Trademarks must be viewed in their entireties. If a mark is comprised of both words and a design, the words or verbal portion of the mark will be considered the dominant element that will indicate the origin of the goods or services. The Board only focused on comparing the paw print elements and did not give due consideration to the word element “KELME”.

Turning our attention to the second factor, it must be recognized that evidence of third-party use is relevant to determine the strength or weakness of a trademark. If there is evidence that there are similar marks in use for similar goods or services, then the trademark will only be given a narrow scope of protection. Here Jack Wolfskin presented an overwhelming amount of evidence of paw print designs in trademark registrations for clothing. The Board gave this evidence very little weight, arguing that the registrations do not prove the marks are in use in commerce. The Board’s conclusion that this factor is neutral is not supported by substantial evidence.

In Juice Generation, Inc. v. GS Enterprises LLC, the Court held that evidence of third-party use is powerful even where the specific extent and impact of the usage is not established. Further, the Court held that evidence of third-party registrations is relevant to show that the overlapping element may have a well-recognized descriptive or suggestive meaning in the eyes of the consumer. In addition, this evidence shows that consumers have been educated to distinguish between different marks on the basis of minor distinctions.

In the end, the Federal Circuit court reversed the Board’s decision on likelihood of confusion. The court reasoned that based on the dissimilarities between the marks and the many third party marks that use a paw print design for clothing, there was no likelihood of confusion between the two marks. Asserting a strong argument on Appeal is critical. And to avoid having to appeal a final decision one must submit persuasive arguments in response to any Office Action issued by the USPTO.  If you need assistance with an Office Action or with another trademark matter, please contact our office.