"likelihood of confusion"

The U.S. Trademark Trial and Appeal Board recently found no likelihood of confusion between two apparel marks.

In Manhattan International Trade, Inc. and Pure & Simple Concepts, Inc. v. Industrie IP Party, Limited, the Applicant sought to register the design mark FINEST QUALITY GARMENT MAKERS INDUSTRIE TURN OF THE CENTURY CLOTHING EST 1999 for clothing.   Upon viewing the logo, the largest portion of the mark is “Garment Makers Industrie.”  In its notice of opposition, Opposer alleged prior use and registration of a family of “INDUSTRY” marks for clothing, including INDUSTRY BY WORKWEAR, INDUSTRY UNION MADE PRODUCT, INDUSTRY GIRL, and additional marks for INDUSTRY with various design elements.  As in all trademark opposition cases involving likelihood of confusion, Opposer bore the burden of proof.

In analyzing the likelihood of confusion factors, the Board determined that the goods were, in part, identical.  Therefore, it also led to a presumption that the clothing products bearing the parties’ respective marks traveled in the same channels of trade.  The Board went on to state “the legal identity of the goods, close relationship of the goods and services, and their overlapping channels of trade and classes of purchasers not only weigh heavily in favor of finding a likelihood of confusion, but also reduce the degree of similarity between the marks necessary to find a likelihood of confusion.”  That being said, the Board concluded that in considering the parties’ marks in the entirety as to appearance, sound, connotation, and commercial impression, the “many differences between the marks outweigh their similarity.”

Moreover, the Board found that the Opposer’s INDUSTRY mark was weak, reasoning that:

the weaker an opposer’s mark, the closer an applicant’s mark can come without causing a likelihood of confusion and thereby invading what amounts to its comparatively narrower range of protection.

Based on the vast differences in the parties’ marks in their entireties, the weakness of the term “INDUSTRY” for clothing, and numerous references to third-party registrations containing the word “industry” in the record, the Board dismissed the opposition.

Practitioner’s Note:    The Board also ruled that the Opposer did not establish that it had a “family” of marks, as Opposer’s evidence as to consumer recognition and other factors necessary to establish a family of marks was weak.

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.

 

Trademark owners who are considering whether to bring a trademark opposition should keep in mind the Boy Scouts® motto: be prepared.  Not all trademark opposition cases are alike; therefore in assessing the strength of a particular case, it is wise to consider three elements that could have a significant impact on the likelihood of success.

1.  The Facts.  It is quite common for plaintiffs to file first and investigate later —  this is particularly true in trademark opposition cases.  In fact, many Opposers  believe that as a Plaintiff, they are in the right and that the Trademark Trial and Appeal Board  (“TTAB”) will deem the trademark applicant to be a bad-faith infringer who has usurped the Opposer’s trademark rights.  The TTAB, like all tribunals, decides matters based on the facts of each case, together with properly introduced evidence, as applied to the governing law.  Emotion is left at the courthouse door and is not persuasive.  Therefore, trademark opposers should be sure to investigate all facets of their case and any affirmative defenses that an Applicant may raise prior to filing a Notice of Opposition.

2.  The Law.  In trademark opposition cases where a likelihood of confusion is the basis of the claim, the TTAB looks to several factors in determining whether a likelihood of confusion exists.  These elements include the strength of the Opposer’s trademark, the similarity of the marks in sight, sound, and commercial impression, the similarity of the channels of trade, as well as the similarity of the products and/or services at issue that are associated with the parties’ trademarks.   A trademark opposer should carefully consider whether the legal factors necessary to prove its case exist based on proper due diligence and a review of all publicly available information regarding the Applicant’s commercial activities.

3.   The Adverse Party.   Many companies, particularly larger ones, are quick to file a Notice of Opposition (even with a less than stellar case), if they believe that the trademark applicant is not “deep-pocketed” and cannot afford the cost of litigation.  In fact, in some instances, this form of unfair economic leverage is known as “trademark bullying” as been addressed by the TTAB and the Trademark Office’s policy arm in an effort to level the playing field between large corporations and smaller businesses.   There are situations, however, where an Opposer with a strong case can properly use the litigation process as fair leverage to seek an early settlement of the case.

Trademark Attorney Notes:  Potential trademark opposers should do everything that they can to determine the likelihood of success of their case prior to filing a Notice of Opposition.   Such due diligence can include conducting a trademark search of similar third-party registrations, conducting an investigation of a trademark applicant’s commercial activities associated with the trademark at issue, and most importantly, review relevant case precedent of prior U.S. Trademark Trial and Appeal Board decisions.

Take cover, a trademark gunfight is brewing!

The First Shot: Duke University

John Wayne, our matinee idol, the symbol of the American West, is being tested once again.  No, not on the silver screen, but before the U.S. Trademark Trial and Appeal Board.  His antagonist?  Duke University, best known for stellar academics, bucolic settings, and Coach K.

Yes, it takes true grit to oppose The Duke.

In the trademark opposition, Duke University v. John Wayne Enterprises LLC,  the Opposer, Duke University (“Duke U.”), has challenged John Wayne Enterprise’s (“JWE”) application for registration of the mark DUKE for  “alcoholic beverages except beers, all in connection with indicia denoting the late internationally known movie star, John Wayne, who is also known as Duke.”  This is the latest chapter in Duke University’s fight against JWE, with Duke having either opposed or sought to cancel several other trademark registrations of JWE that contain the “Duke” moniker over the years.

In this most recent Notice of Opposition, Duke U. relies on several of its trademark registrations for “Duke” and its derivatives for a wide variety of goods and services, including Duke, Duke University, Dukie, and Iron Dukes ID.  Duke U. argues that JWE’s registration of the “Duke” moniker will be likely to cause confusion among the relevant consuming public as well as dilute Duke U.’s family of DUKE marks that it considers to be famous by virtue of the University’s long-standing use and sales of goods and services under the DUKE trademark.

The Big Gun Response- John Wayne Enterprises

Having had enough of Duke U.’s trademark confusion accusations, JWE has filed a federal lawsuit in U.S. District Court, seeking an order that JWE’s use of its Duke mark will not and does not cause confusion nor dilute Duke U.’s trademarks.   As reported by the Associated Press, there are over 250 existing federal trademark registrations that contain the name “Duke,” which may prove to be problematic to Duke University’s theory of its case.

Trademark Attorney Notes:  This case is a good example of when brand owners with well-known trademarks aggressively file trademark oppositions against third-party trademark applications that contain part or all of the Opposer’s trademark.  This strategy often results in a trademark applicant withdrawing its application and in certain instances, not proceeding to use its trademark in commerce.  There are a percentage of cases, however, as seems to be the case here, where the Applicant decides to make a stand.  The result?   The Opposer is forced to prove its case, something it does not have to do when successfully negotiating a trademark opposition settlement.  Therefore, trademark owners who oppose trademark applications should always make sure that they have a strong case, rather than gambling on the chance that the trademark owner will simply surrender without a fight.

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.

As a Connecticut trademark attorney, I often advise clients on the trademark registration process and what legal rights a United States Trademark registration grants.  Since there are many misunderstandings about trademark law, it is worthwhile to briefly discuss some best practices on how to protect trademarks and brand names here:

1.   Begin with a Full Trademark Search

A trademark search generally consists of a search of the United States Patent and Trademark Office records, state trademark office records, and common law listings to determine the availability for registration and use of a proposed trademark in interstate commerce.  The trademark search looks for identical trademarks as well as trademarks that may be “confusingly similar” to the trademark that is being considered for adoption by the searching party. 

2.   Have a Trademark Lawyer Provide a Written Legal Opinion

Analyzing the results of a trademark search requires experience and a detailed knowledge of applicable trademark law.  After the full trademark search is conducted, a qualified trademark lawyer should provide a written opinion as to the availability for registration and use of the trademark on the proposed goods and services.  The opinion should list all of the trademark search results of interest that are relevant to a determination of clearing the desired trademark for registration and use. 

3.  Prepare and File a Trademark Application

Once the trademark lawyer provides a favorable trademark search opinion, he or she should promptly prepare and file a trademark application with the U.S. Patent and Trademark Office.  Trademark applications can either be filed based on (a) existing use in commerce or (b) an intent to use in commerce if the applicant has not yet commenced use of the trademark on its products or services.  Once the trademark application is filed, it is assigned to an examining attorney in the Trademark Office to review the application for procedural and substantive requirements, and to deterimine whether the application will be either accepted or initially refused due to a likelihood of confusion with previously registered trademarks or for other reasons.

By following the above approach to trademark clearance and protection, companies can avoid many of the major risks and pitfalls associated with this nuanced area of trademark law.