Likelihood of Confusion

When a brand owner’s trademark application is opposed,  there is a helpful checklist that it should consider.   By doing so, it will help the applicant assess the merits of the case, and determine the best course of action moving forward.   Here are some of the top defenses that can call into question the likelihood of success of a trademark opposer’s claims:

Lack of standing.  Standing is a threshold issue that an Opposer must establish before the merits of the case are even considered.   It is required in every inter partes proceeding before the Board.  This is to determine that there is an actual case or controversy between the parties.   Standing requires that the Opposer show a real interest in the outcome of the proceeding, as well as a reasonable basis for its claim of being damaged should the Applicant’s trademark registration issue.

Lack of priority.    A trademark opposer must show that its trademark rights are superior to those asserted by the Applicant.  Trademark Rule 2.122(b)(2) provides that it is not merely enough for an opposer to rely on its date of first use of a mark shown in its trademark registration.  Rather, the Opposer must prove, through competent evidence, that its first use dates are prior to those claimed by the Applicant. 

No likelihood of confusion.   In cases where it is alleged that the Applicant’s mark is likely to cause confusion with the Opposer’s mark under Section 2(d) of the Trademark Act, the Trademark Trial and Appeal Board will look to the factors for likelihood of confusion set forth in the case In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 (CCPA 1973).   Some of the  DuPont factors that the TTAB will consider in its analysis include:

  • the similarity or dissimilarity of the marks
  • the similarity or dissimilarity of the goods (or services)
  • the fame of the prior mark
  • actual confusion

Since the TTAB places greater weight on the similarity of the parties’ marks and the similarity of their goods and/or services, special consideration of these two factors should be made.

The above discussion contains just some of the considerations that an Applicant should review in determining the merits of a trademark opposer’s case.   Where a Notice of Opposition does not contain these elements, or if the evidence does not support it, the Applicant should pursue applicable affirmative defenses and other remedies that may be available.

Carl’s Jr. has prevailed in a surprising trademark opposition before the United States Trademark Trial and Appeal Board.

In Carl’s Jr. Restaurants LLC v. AKM Food Svcs. LLC., the Applicant, AKM filed a trademark application for THE GREEN PEPPER in standard characters, for restaurant services in International Class  43.   Carl’s Jr. filed a notice of opposition to oppose the application based on a likelihood of confusion with its family of GREEN BURRITO marks, including the following:

  • Reg. No. 3015454 for the mark GREEN BURRITO (“Burrito” disclaimed) in standard characters for restaurant services in International Class 43;
  • Reg. No. 2924101 for the mark GREEN BURRITO & Design (“Burrito” disclaimed) for restaurant services in International Class 43;
  • Reg. No. 1689454 for the mark THE GREEN BURRITO & Design for restaurant services in International Class 43; and
  • Reg. No. 3526233 for the mark GREEN BURRITO in standard characters for various food items for consumption on and off the premises in International Class 29 and 30.

In analyzing the likelihood of confusion factors, the Board affirmed that two key considerations are the similarities of the marks and the relatedness of the goods and/or services.  In comparing the Opposer’s GREEN BURRITO word mark for restaurant services and applicant’s THE GREEN PEPPER mark for restaurant services, the Board concluded that the dominant portion of the parties’ marks was the word “green,” and given the fact that they both appeared as the first part of a compound mark, that “green” was the term that purchasers would most likely remember.   The Board further noted that similarity in any one of the elements of sound, appearance, meaning, or commercial impression is sufficient to support a finding of likelihood of confusion — in appropriate cases.    Given the additional fact that both marks were for restaurant services,  the Board concluded that a likelihood of confusion indeed could exist and therefore sustained the opposition on the issue of likelihood of confusion in favor of Carl’s Jr.