Likelihood of Confusion

The U.S. Trademark Trial and Appeal Board has disclosed first and second quarter filing and pendency statistics for 2018.   Year to date (YTD) statistics as compared to the same period in 2017 include the following:

U.S. Trademark Trial and Appeal Board filings

  • extensions of time to oppose:  9,498  (+2.7% YTD)
  • trademark oppositions: 3,211 (+4.3% YTD)
  • trademark cancellations: 1,143 (+8.8% YTD)
  • trademark appeals: 1,643 (+4% YTD)

Pendency of Proceedings  (commencement to completion processing times)

  • trial cases (average):  140.6 weeks (-10.6% YTD)
  • trial cases (median):  126 weeks (-14.9% YTD )
  • ACR trial cases (average): 112 weeks (-6.2% YTD)

Contested Motions

  • decisions issued:  535 (+8% YTD)
  • average pendency: 9 weeks (+15.4% YTD)
  • cases awaiting decision: 172 (+17% YTD)

Of note is the increase in trademark cancellation proceedings as well as trademark oppositions.  This may be a sign of greater brand enforcement efforts by companies.  At the same time, there are mixed performance trends within the TTAB itself.  While the pendency of proceedings has decreased, the average pendency of contested motions has increased.   One reason may be due to the inability of counsel to fully cooperate in discovery disputes, with an increase in contested motions being an unfortunate result.

TTAB filing and performance data for 2015 and 2016 may be found here.

Practitioner’s Note:   The importance of cooperation with opposing counsel in the prosecution or defense of TTAB proceedings should not be overlooked.   Where antagonism and lack of communication are the norm, increased client expenses and unnecessary motion practice often follow.  This can have a direct impact on the  risk and costs associated with trademark opposition proceedings. 

When it comes to trademark oppositions, it pays to be Kühl.

In Alfwear Inc. v. Shuff, the U.S. Trademark Trial and Appeal Board was asked to consider whether the Applicant’s KU:L and design trademark for bicycles in International Class 12 created a likelihood of confusion with Opposer’s asserted “family” of KUHL trademarks for inter alia, clothing, bottled water, textile fabrics, lip balm and other items.  Of interesting note is that Opposer’s trademark registrations on which it had relied to constitute a family consisted of multiple variants of the English translation of “cool,” including KUHL, KÜHL, and KUUL.

Family of trademarks.   The Federal Circuit has defined a family of trademarks as a group of marks having a recognizable common characteristic; however, simply using a series of similar marks does not a family make for purposes of protection.  Instead, there must be a recognition among the relevant consuming public that the marks are indicative of a common origin, which is generally established by considering the use, advertising, and distinctiveness of the marks as a whole.  Here, the Opposer introduced evidence that showed that although it used multiple spellings of its “Kühl” mark, it did not establish sufficient proof that it had extensively used all of them in commerce, and in particular, “Kuul” and “Kuhl,” such that it created a family of trademarks.

Likelihood of Confusion.  While there are at least 25 separate grounds that an Opposer may assert for the basis of a trademark opposition, by far, the most prevalent is likelihood of confusion pursuant to Section 2(d) of the Trademark Act.  In determining whether a likelihood of confusion exists under Section 2(d), the Board looks to several factors, with two key considerations being the similarities between the marks and the similarities between the goods or services.  In comparing the similarities between the marks, the Board, unsurprisingly, noted that closeness in spelling between the parties’ marks, and also concluded that consumers were likely to pronounce the two marks similarly.  In analyzing the similarity of the parties’ goods, the Board concluded that since there was ample evidence introduced of third-party party registrations and websites offering both bicycles and outdoor apparel together, this tended to support the conclusion that the Opposer’s and Applicant’s goods were similar.  The TTAB went on to find that since the parties’ goods were offered in the same channels of trade to consumers who exercise a low degree of purchasing care, confusion was likely such that the Opposition was sustained in favor of Opposer.

Practitioner’s Note:  Opposer was unsuccessful in convincing the Board that its “Kühl” marks were famous, despite the fact that it sells its products bearing the Kühl mark in over 1,0000 retail outlets nationwide.  This is due to the fact that Opposer’s introduction of advertising and sales figures alone did not provide context as to the level of exposure and recognition that consumers  might have had to the Kühl trademark in order for it to be considered famous.  The Kühl mark, was, however, deemed to be strong for purposes of the Section 2(d) likelihood of confusion analysis.

 

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.

 In the trademark opposition case, Halo Trademarks Limited v. Halo 2 Cloud LLC,
Trademark imagethe Opposer opposed the intent to use application of Applicant’s mark HALO  for handbags, briefcases,  electric adapters and a wide variety of other business accessories on the ground of likelihood of confusion under Section 2(d) of the Trademark Act.  As the basis for its opposition, Opposer relied on its previously used HALO and HALO and Design marks for numerous business accessories in International Class 18, including certain goods applied for by Applicant.
To prevail on a likelihood of confusion claim brought under Trademark Act Section 2(d), a party must first prove that:
  • it owns “a mark registered in the Patent and Trademark Office or a mark or trade name previously used in the United States …and not abandoned….” Trademark Act Section 2, 15 U.S.C. § 1052.

Here, the Opposer did not have a registration for its own HALO marks and therefore was required to establish its prior proprietary rights in and to the mark through testimony and documentary evidence showing actual use or use analogous to trademark use.   Accordingly, the Opposer sought to rely on its intent to use application for HALO to establish constructive use priority rights in and to the mark.  The filing date of Opposer’s intent-to-use applications was March 19, 2010, which preceded Applicant’s filing date of its HALO mark of May 5, 2014.  Neither party took testimony evidence and submitted notice of reliance of their respective applications and discovery requests and responses.

The  U.S. Trademark Trial and Appeal Board ruled that the Opposer was entitled to rely on the filing dates of its intent to use applications to establish constructive use of its HALO mark as of that date pursuant to Section 7(c) of the Trademark Act.  That being said, in order to prevail based on trademark priority, any judgment entered in favor of the Opposer would be contingent on the Opposer actually using its marks in commerce and registration issuing on its pending applications.  In addition to establishing priority of rights, the Opposer would still have to bear its burden under Section 2(d) that Applicant’s HALO mark was likely to be confused with the HALO marks of Opposer.
The Board concluded that the parties’ respective marks as examined in connection with the goods and respective trade channels, pointed towards the conclusion that they were confusingly similar in sight, sound, meaning, and commercial impression such that the Opposition should be granted and registration refused.   Therefore, the Board entered judgment, contingent on the issuance of the Opposer’s pending applications.

 

In a recent decision under Section 2(d) of the Trademark Act, the United States Trademark Trial and Appeal Board analyzed what factors make a trademark arbitrary and strong for purposes of a likelihood of confusion analysis.  Indigo Star, Inc. and H2d Properties, Inc. v. Patti’s Enterprises, L.L.C.

Applicant filed two applications for the trademark THE PINK TRACTOR (one in words and the other a design mark) for ” retail store services featuring a wide variety of women’s clothing, apparel, footwear, fashion accessories, and jewelry”  in international class 35.   Opposer, H2d Properties, Inc.  filed notices of opposition against registration of applicants marks based on  a likelihood of confusion with Opposer’s TRACTOR BRAND JEANS® and TRACTOR® marks for men’s, women’s, children’s clothing in International Class 25.

In its likelihood of confusion analysis, the Board first considered whether the marks were similar  in sound, appearance, meaning, and commercial impression.  For comparison purposes, the Board used Opposer’s TRACTOR word mark (not its TRACTOR BRAND JEANS mark) to evaluate with Applicant’s THE PINK TRACTOR marks.  The Board found that the “tractor” portion of  opposer’s mark was the dominant portion, further indicating that the term tractor did not have any significance with regard to clothing or retail services; thus the registered mark was considered to be arbitrary and strong.   This conclusion was further supported by the fact that the term “pink”  in applicant’s mark was admitted by applicant to be suggestive of a color for girl’s clothing.

The Board went on to state that goods can also be held to be confusingly similar to related services, and that a goods-to-goods comparison is not always required:

We have often held that confusion is likely where one entity uses a mark for goods and another uses the same or a similar mark for a retail store that sells such goods.

(citing cases that made such a finding with regard to general merchandise stores and furniture and women’s clothing stores and cosmetics).

Although the Applicant did not present any evidence at trial, the board raised the important legal issue that in a trademark opposition proceeding, the Opposer always bears the burden of proof to establish its claims by a preponderance of the evidence.  This serves as an important reminder that brand owners and trademark attorneys should always be sure that each and every element of its case-in-chief has adequate factual and evidentiary support.