Third-Party Use Evidence Causes TTAB To Reverse Two Refusals

Recent Trademark Trial and Appeal Board (“Board”) Decisions continue to reinforce the importance of good evidence demonstrating similar trademarks in use to weigh against finding a likelihood of confusion. See In re Loew’s Hotels, Inc., Serial Nos. 88425357, 88433338, 88433342, and 88433348 (May 11, 2022) [not precedential], where two refusals for registration were affirmed and two refusals were reversed. The applicant was seeking to register 4 marks: (1) CLOVER CLUB (CLUB disclaimed) standard characters and three stylized or composite marks; (2) ESTD. CLOVER CLUB 2019; (3) CLOVER CLUB MADE IN TEXAS; and (4) MADE IN TEXAS CLOVER CLUB ESTD. 2019. The cited marks were CLOVER, in standard characters and CLOVER in stylized font, both owned by the same registrant. The applicant and registrant identified restaurant services respectively in the application and registration.

The most interesting part of the Board decision involved the sixth DuPont factor, the number and nature of similar marks in use for similar services. This factor is incredibly important because it affects the scope of protection afforded the cited mark(s) and the degree of similarity of the marks required to prove likelihood of confusion. The purpose of third-party use evidence of similar marks is to prove consumers have been educated to differentiate between minute differences. See Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315, 128 USPQ2d 1686, 1693 (Fed. Cir. 2018) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005). See our web page entitled, Overcoming A 2(d) Refusal With The Crowded Field Argument, for more on this topic.

To make this type of evidence of record, applicants should submit copies of the third-party’s website or social media pages. Only including a hyperlink for the third-party website or information about the website in the appeal brief is insufficient. The third-party use evidence must be relevant as to goods and/or services and based on similarities to the cited mark. The Federal Circuit has determined that evidence of third-party use can be powerful on its face even though specifics as to the extent and impact of use of the third-party trademarks may not have been demonstrated. Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671 (Fed. Cir. 2015). See also, Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015).

Applicant argued that “clover” has a well understood meaning of “good fortune” or “luck”. However, some of the examples of use did not have this meaning. Out of the 27 uses submitted by the applicant, the Board found 20 to be probative. The Federal Circuit has not set a standard for the number of third-party uses required to be persuasive. However, we can look to Juice Generation, Inc. where there were 26 examples of third-party uses and registrations and to Jack Wolfskin, where there were 14 examples. In addition, the Board found 12 examples of third-party registrations sufficient in In re Boston Juicery LLC, Serial No. 86877537 (August 21, 2018) [not precedential], where it reversed a 2(d) refusal finding the term “Squeeze” was highly suggestive for juice products.

In the case at bar, the Board was conflicted because the second DuPont factor (finding the services legally identical) and the sixth DuPont factor (finding the mark commercially weak) were at odds. Next, the Board carefully considered the first DuPont factor. It concluded that the first two applications containing the marks, CLOVER CLUB (CLUB disclaimed) standard characters and a stylized mark ESTD. CLOVER CLUB 2019, were too similar to avoid confusion and affirmed the refusals. However, regarding the third and fourth applications containing the marks, CLOVER CLUB MADE IN TEXAS (a composite mark); and MADE IN TEXAS CLOVER CLUB ESTD. 2019 (stylized), the Board found those marks sufficiently different to avoid confusion. This case is a great example of the detailed analysis required (note the 47-page decision) to evaluate whether there will be likelihood of confusion between two marks. To learn the fundamentals on this topic, see our web page entitled, Overcoming a Likelihood Of Confusion Refusal. If you still have questions regarding 2(d) refusals or questions regarding trademark registration, please contact the firm for a courtesy consultation.