"likelihood of confusion"

Before filing a trademark opposition, be sure to assess whether you will be likely to prevail. By doing so, you can potentially save thousands of dollars in attorney’s fees and avoid subjecting your brand to unnecessary risks.

The determination of whether to file a trademark opposition to contest a third-party’s trademark application is not always simple. Before filing a notice of opposition, the potential Opposer should take into account the following considerations:

Causes of Action.  Under the Trademark Act, there are numerous grounds under which to bring an opposition.  Some of the more common grounds include that:

(a) the mark, when used in connection with Applicant’s applied for goods or services, is likely to cause confusion with Opposer’s previously used or registered mark;

(b)  the Applicant did not have a bona fide intent to use its mark in commerce at the time of filing

(c)  Applicant’s mark is merely descriptive of its goods or services

(d)  there was no bona fide use in commerce of Applicant’s mark prior to its filing a use-based registration

Merely pleading the grounds for opposition is not enough; the Opposer must prove the elements of its claims by a preponderance of the evidence.

Proof.   Every opposer must establish procedural and substantive proofs in order to prevail.

(a)  Standing.   An Opposer must first establish its standing to bring and maintain a trademark opposition before the Trademark Trial and Appeal Board.  Standing is satisfied when the Opposer shows that it has a legitimate interest in the outcome of the proceeding (i.e., it is not a mere intermeddler) and that it will be damaged should the registration issue.  If the Opposer cannot establish its standing, then the action will be dismissed and the substantive grounds for the opposition will not be considered.

(b)  Priority.   In cases where a likelihood of confusion is alleged pursuant to Section 2(d) of the Trademark Act, the Opposer must establish that it has priority trademark rights that are superior to Applicant’s constructive or actual first use dates.  Priority rights may be shown through a prior registration, earlier trademark use, or use analogous to trademark use.

(c)  Substantive considerations.  Once an Opposer meets its procedural threshold requirement of standing, the elements of proving its case differ depending on the specific grounds of the Opposition.  To establish a Section 2(d) case for likelihood of confusion, the Board undertakes the 13-part test found in the case In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).   A discussion of this test may be found here.  With regard to establishing that Applicant’s mark is merely descriptive pursuant to Section 2(e) of the Act, the Opposer must show that the mark merely describes a feature, characteristic, ingredient, purpose, or function, or use for the applied for goods.   A discussion of the test for mere descriptiveness may be found here.

Practice Tip:  Companies and in-house counsel who are considering filing a notice of opposition can discuss the implications of doing so with the author.  In addition to filing a notice of opposition, there are other alternatives that can be discussed depending on the business goals of the client.  Being fully apprised of these options will serve the interests of the brand owner client.

In a trademark opposition proceeding, a party alleging a likelihood of confusion pursuant to Section 2(d) of the Trademark Act is required to establish specific elements of proof.  If you are a potential opposer, you will have the burden of proving the following evidentiary factors by a preponderance of the evidence:

Standing.  Standing is a threshold issue that must be determined in every trademark opposition or trademark cancellation before the U.S. Trademark Trial and Appeal Board.   In order to establish standing, the Opposer must show that it has a legitimate interest in the outcome of the proceeding and that it will be damaged should the defendant’s application issue.  In a likelihood of confusion case,  the Opposer’s standing can be established by introduction into evidence of a preexisting registration that it owns, its later-filed application that was refused based on the Applicant’s mark, or common law use that predates Applicant’s constructive date of first use.

Priority.   In Section 2(d) cases, the Opposer has the burden to prove priority of use as well as likelihood of confusion by a preponderance of the evidence.  A party may establish its own priority rights through ownership of a preexisting registration, through actual use, or through use analogous to trademark use.   Of the three, the least burdensome method is to show ownership of a prior registration.

Likelihood of Confusion.  Once the Opposer introduces evidence of its standing and priority, it must show that Applicant’s mark is likely to be confused with the Opposer’s pleaded marks.  The analysis of whether a likelihood of confusion exists has been enunciated in the 13 part test found in the case seminal case  In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973) (the “DuPont Factors”).   In its many decisions that have applied the Dupont Factors test, the Board has held that some of the main factors are the similarity of the parties’ marks, similarity of the goods or services, and similarity of the trade channels.  Other important factors are the strength of the Opposer’s mark and the number of  similar third-party registrations that already exist on the register.

Practice Tips:  In evaluating the likelihood of success of a trademark opposition proceeding brought pursuant to Section 2(d), it is important for the potential Opposer to first assess its standing and priority.  If the Opposer’s priority cannot be established, then the the Board will deny the Opposition.  This means that the issue of likelihood of confusion is moot and will not be considered.  By fully vetting the likelihood of success of an opposition prior to filing it, the Opposer may save thousands in litigation fees and not subject its valuable trademark registrations to undue risk.  For further information on establishing evidence to support a Section 2(d) case, you may refer to our earlier post on the subject.

To discuss a trademark opposition or trademark cancellation case on the grounds of likelihood of confusion, please contact the author.

A trademark opposition may be commenced based on a likelihood of confusion with a prior registered mark.   The statutory basis for a likelihood confusion cause of action may be found in Section 2(d) of the Trademark Act.

To prevail on a Section 2(d) claim, the Opposer must prove by a preponderance of the evidence the following:

Standing.  Standing to bring or maintain an action consists of two elements.  First is that the Opposer has a legitimate stake in the outcome of the proceeding.  In other words, that it is not a mere intermeddler.  Second is that the Opposer must allege that it will be damaged if the application for registration issues.  Proof of a prior existing trademark registration is a common method for an Opposer to prove its standing.  Since standing is a low threshold, it is often met.  However, Opposers must be careful to include proof of its standing in its Notice of Opposition.  The failure to do so may result in dismissal of the proceeding.

Priority.   In a likelihood of confusion case, the Opposer must also establish that it has priority.  This means that it has superior trademark rights to that of the Applicant.  This can be proven by either asserting a prior trademark registration, prior common law use, or use analogous to trademark use.  In any of the above examples, the Opposer must show that its use predates the Applicant’s filing date (in the case of an intent to use application) or use dates based on a use-based application.

Likelihood of Confusion.   Assuming the Opposer can prove standing and priority, it then must show that Applicant’s mark is likely to cause confusion with the Opposer’s prior rights.  To do so, the Trademark Trial and Appeal Board looks to a 13-part test set forth in the seminal case  In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973) (the “DuPont Factors”).   Although the weight given to the relevant DuPont factors may vary, the following two factors are key considerations in any likelihood of confusion analysis:

  • The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
  • The relatedness of the goods or services as described in the application and registration(s).

In addition to the above-factors, the Board also looks to the following key factors in making its determination:

  • Similarity of the parties’ trade channels
  • The conditions under which sales are made to buyers (impulse or sophisticated purchasing decision)
  • The number and nature of similar marks on similar good
  • Evidence of actual confusion

Each likelihood of confusion case is different as applied to the relevant Dupont Factors.  Therefore, it is important for an Opposer to thoroughly analyze the relevant legal standard and factual support for your case prior to bringing a trademark opposition proceeding.

Editor’s note:  If your trademark opposition is opposed based on a likelihood of confusion, it is advisable to speak with a qualified trademark opposition attorney.  Likewise, if you wish to oppose a third-party trademark application on the grounds that it is likely to cause confusion with your company’s prior trademark, it is best to review the guidelines contained in this article.  To discuss your case or for further information, feel free to contact the editor.

A recent trademark opposition decision by the U.S. Trademark Trial and Appeal Board is an example in how an Opposer should properly establish use analogous to trademark use.

In Dexas International, Ltd v. Ideavillage Products Corp., the Opposer filed an Opposition against Applicant’s Mark, SNACKEEZ DUO  for “beverage ware; household containers for foods; thermal insulated containers for food or beverages; bottles, sold empty for beverages; cups for beverages; insulating sleeve holder for beverage cups; portable beverage and food container holder” in International Class 21.  In support of its notice of opposition, Opposer relied on its priority use of its common law mark SNACK-DUO as used on food and drink containers.   Opposer grounds for the opposition was a likelihood of confusion under Section 2(d) of the Trademark Act.

To establish proof of its priority common law use, the Opposer submitted seven declarations and three deposition testimonies.   The declarants and witnesses included the President of World Pet Association that hosted a industry trade show where Opposer displayed its SNACK-DUO product; the President of ICD Publications that ran an advertisement of Opposer’s SNACK-DUO product in its September 2014 print issue; and Opposer’s Sales, Marketing, and Project Management Directors.

To prevail on the ground of likelihood of confusion under Section 2(d) of the Lanham Act, based on a previously used mark, it is the Opposer’s burden to prove both priority of use and likelihood of confusion by a preponderance of the evidence.   Here, since Opposer did not have a prior registration and did not establish first use prior to Applicant’s constructive first use date, it had to establish its priority rights based on use analogous to trademark use.  In addition, Opposer introduced evidence of a shipment of two samples of its SNACK-DUO product to a retailer that was done prior to Applicant’s constructive first use date.

What is use analogous to trademark use?  Use analogous to trademark use is invoked for the purpose of establishing priority in a 2(d) likelihood of confusion case.   The predicate for such a claim is that the relevant consuming public must associate the mark with the party invoking such analogous use.  Such proof may include prior advertising in newspapers or other consumer or trade publications; including press releases.  Here, the Opposer was able to show analogous use activities that predated Applicant’s constructive first use date through advertising in a trade show publication that reached over 25,000 recipients as well as generated pre-sales inquiries.  It also placed its SNACK-DUO product on display at the Super Zoo Trade Show, attended by over 16,000 individuals and 910 companies.  Opposer’s product won second-place for new products for dogs.

Based on a totality of the evidence, the Board found that Opposer had indeed established its priority through use analogous to trademark use and went on to find a likelihood of confusion between the parties’ marks.   The opposition was sustained in favor of the Opposer.

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A recent trademark cancellation action by Major League Baseball against an individual who had a registration for sports apparel is another victory for well-established brand names.

In Major League Baseball Properties, Inc. v. Christopher Webb, MLB petitioned to cancel U.S Reg. No.  4472701 for the mark MAJOR LEAGUE ZOMBIE HUNTER and design, for “clothing, namely, short and long sleeve t-shirts, sweatshirts, jackets, baseball hats, and beanies,” in Class 25, registered on the Supplemental Register.   The grounds were a likelihood of confusion under Section 2d of the Trademark Act, as well as dilution.  MLB also asserted that Respondent’s registration was void ab initio since Respondent never had a bona fide intent to use its mark in commerce as well as fraud on the Trademark Office.  In support of its standing and likelihood of confusion and dilution claims, MLB introduced four of its trademark registrations for MAJOR LEAGUE BASEBALL, including the MAJOR LEAGUE BASEBALL word mark, MAJOR LEAGUE BASEBALL and Design mark and two design marks of its iconic baseball player with bat and ball logo.  Three of MLB’s registrations were for apparel goods in International Class 25.

In a preliminary ruling on MLB’s motion for summary judgment on Respondent’s lack of bona fide intent to use its own mark in commerce and fraud, the TTAB granted  summary judgment on MLB’s standing and no bona fide use of Respondent’s mark on sweatshirts, jackets, baseball hats, and beanies. The TTAB denied Petitioner’s motion for summary judgment on no bona fide use of Respondent’s mark on t-shirts and fraud.

MLB claimed that its trademarks are strong, which would entitle it to a wide latitude of protection for likelihood of confusion purposes.  Based on its evidence of extensive sales, advertising, and wide spread recognition of the MLB brand, the Board agreed.  It went to to  conclude that the parties’ goods (at least some of them) were legally identical, which would presume that the channels of trade and classes of purchasers are the same.    Finally, it observed that the parties’ design marks gave a confusingly similar commercial impression. Based on a totality of the circumstances, the Board found the Respondent’s mark to be confusingly similar to MLB’s marks and accordingly ordered Respondent’s registration be cancelled.

Trademark cancellation tip for large brands  Well-established brands are often successful in trademark cancellation proceedings based on the strength of their trademarks and supporting evidence.  Therefore, it is important for brand owners to create a repository of historical sales and advertising figures, as well as marketing and advertising specimens and trade channels that shows widespread use and consumer recognition of its marks.

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Prevailing in a TTAB opposition proceeding against a food and beverage company proves to be sweet for the makers of Nutella.

In Ferrero S.p.A. v. Ruchi Soya Industries Limited,  Ferrero, who is the owner of the NUTELLA spread brand, opposed Applicant’s mark NUTRELA for a wide variety of food and beverage products in International Classes 29 and 30.  The Opposer relied on four registrations of NUTELLA and NUTELLA and Design for its well-known hazelnut spread, beverages, and an extensive list of meat and dairy products, as well as coffee, tea, and desserts and other food items.

In its likelihood of confusion analysis, the Board first considered if the marks NUTELLA and NUTRELLA and Design were similar in sight, sound, meaning, and commercial impression.  It concluded the differences between the marks to be insignificant, so this factor weighed in favor of a finding of a likelihood of confusion.  it then compared the NUTELLA mark and goods listed in Reg. No. 4192415 (which consisted of a large assortment of food and beverage products with Applicant’s goods, some of which were overlapping to Opposer’s goods.  While the analysis to determine whether a likelihood of confusion exists under Trademark Act 2(d) takes into account all the relevant facts in evidence, two of the key factors are similarity of the marks and similarity of the goods.   The TTAB first considered the fame of Opposer’s NUTELLA mark, as famous marks are afforded a broad scope of protection.  Based on Opposer’s evidence of widespread success, recognition and sales, the Board found that the NUTELLA mark is famous.

The TTAB next went on to assess the similarity of the parties’ respective goods.   Noting that several of the parties’ goods are legally identical, it indicated that it did not need to make the same determination for all other goods.  In other words, a similarity between the parties’ goods for a certain class will apply to all goods in that class. Moreover, where Applicant’s and Opposer’s goods are in-part identical, the TTAB presumes that the channels of trade and classes of purchasers for those goods are the same.   Based on a totality of the facts, the TTAB concluded that a likelihood of confusion existed and entered judgment in favor of the Opposer.

Editor’s Note:   If you are the Opposer in a TTAB Opposition proceeding, be sure that your evidentiary proof of sales, marketing, and advertising expenditures are introduced to ensure the support of your case.  To learn more about proving likelihood of confusion, please contact us.

No likelihood of confusion this time as the TTAB finds beer and wine to be unrelated goods.

In Justin Vineyards & Winery LLC v. Crooked Stave, LLC, Applicant Crooked Stave, LLC sought registration of the word mark HOP SAVANT, with “HOP” disclaimed, for “beer” in International Class 32.  Opposer Justin Vineyards and Winery opposed the application based on a likelihood of confusion with its preexisting registration of the mark SAVANT for wine in International Class 32.

The Board looked at the relevant Dupont factors for likelihood of confusion (13 in total), starting with the strength of Opposer’s mark.  It concluded that based on the record, Opposer’s SAVANT mark had both  conceptual and commercial strength.  Accordingly, it concluded that Opposer’s mark was inherently distinctive, having achieved at least some marketplace recognition during its nearly twelve years of use.  With regard to the similarity of the marks, the Board also opined that both parties’ mark included the identical “savant” component, with Applicant’s “hop” portion of its compound mark disclaimed.  Therefore, for comparison purposes, the marks were identical, making this factor weigh in Opposer’s favor.

The most interesting analysis was of the similarity of beer and wine as set forth in the parties’ respective applications.  Despite that fact that beer and wine have been held to be similar goods in numerous other cases before the TTAB and the Federal Circuit, the Board reiterated that each case must be decided on its own facts and evidence.   It also indicated that there is no per se rule regarding the similarity of alcoholic beverages.  Here, the Board concluded that Opposer did not introduce enough evidence to establish that beer and wine are sufficiently related that consumers expect them to emanate from the same source under the same mark.

The Federal Circuit has ruled that even a single Dupont factor may found to be dispositive in a likelihood of confusion analysis.  Here, the Board found that since the Opposer could not establish that the parties’ respective goods (i.e., beer and wine) were related for likelihood of confusion purposes, then the opposition should be dismissed.

Editor’s Note:  The burden of an Opposer to establish the relatedness of beer and wine in every single case (without much weight given to case precedent) is somewhat —well— burdensome.  Would it be too much to ask that the Board take notice of the relatedness or non-relatedness of certain goods as the Trademark Office routinely does during the trademark examination process?  This could be one reason why U.S. trademark opposition and cancellation proceedings are some of the most expensive in the world.  

A trademark opposition involving beverage trademarks was the subject of our most recent post.  Now, we review a trademark cancellation dispute between two beverage trademark owners.  In both proceedings, the grounds were a likelihood of confusion pursuant to Section 2(d) of the Trademark Act.

In Rebel Wine Co. LLC v. Piney River Brewing Co., Rebel Wine petitioned to cancel Piney River’s Registration No. 4597351 of the mark MASKED BANDIT for beer and brewed malt based alcoholic beverages in the nature of beer.   Rebel Wine plead ownership of Registration Nos. 33119263 and 39743404 both for the mark BANDIT for wine and alcoholic beverages except beers.  The U.S. Trademark Trial and Appeal Board found that Petitioner had priority based on its earlier registrations.

In analyzing the likelihood of confusion between the beverage trademarks, the Board reiterated the well-known rule that two key considerations are the similarities between the marks and the relatedness of the goods.  Considering the marks in their entireties, it found that MASKED BANDIT and BANDIT are similar, therefore weighing in favor of likely confusion.   With regard to the relatedness of goods factor, the proper test is whether consumers would tend to believe that the parties’ respective products emanate from the same source.  Here, the Board observed that both parties had beer and/or wine in the goods covered by its registrations.  The Board also noted that it often concludes that “beer” and “wine” are related goods for purposes of likelihood of confusion.  In the end, it opined that in this proceeding was no different and found that the parties’ respective goods were related.   It also found that the trade channels of the parties and purchasing conditions were similar.  As a result of the totality of the evidence, the Board granted the petition based on a likelihood of confusion and Piney River’s trademark registration for MASKED BANDIT was cancelled.

Practice Note:  While the Board had indicated that each proceeding is different, when it comes to the similarity between wine and beer, it almost inevitably concludes that the two goods are related for purposes of likelihood of confusion.  This is despite the fact that here, Respondent introduced 237 pairs of third-party registrations of the same or very similar marks for wine and beer, respectively, owned by different companies.

For purposes of likelihood of confusion, not all beverage trademarks are created equal.

In Patrón Spirits International AG v. Conyngham Brewing Company, the Applicant sought registration of the mark PIRATE PISS for “beer, ale, and lager” in International Class 32.   Opposer Patron had opposed the application based on its ownership of the previously registered marks PYRAT and PYRAT RUM for distilled spirits and rum in International Class 32.  Patron had disclaimed exclusive rights in and to the term “rum” as uses in the latter mark separate and apart from the mark as shown.  In support of its case, Patron had submitted its registrations, and various internet printouts showing various spellings of the term “pirate.”  In addition, it introduced 13 third-party registrations showing marks where the goods contained both beer and rum.  However, of these, only 6 were use-based registrations, prompting the Board to observe:

Opposer’s submission of the six relevant third-party registrations is not very convincing for purposes of showing that beer and rum are sufficiently related that consumers expect them to emanate from the same source.

There is no per se rule that all beverages are related for purposes of likelihood of confusion.   The Board noted that while beer and wine are often found to be related in trademark oppositions involving beverages, each case must be weighed by its own facts and evidence.   Here, the Board proceeded to conclude that Opposer could not evade its burden of proving relatedness of the goods by “bootstrapping upon previous factual findings made in other decisions on different records.”   In the end, it believed that the both the quality and quantity of Opposer’s evidence was insufficient to prove that beer and rum are related goods for purposes of likelihood of confusion.  This factor, as well as the unique connotation and strong commercial impression of Applicant’s mark helped to distinguish it from Opposer’s mark.  Accordingly, the Board dismissed the Opposition and ruled in favor of Applicant.

Practice Tip:  In proving the relatedness of beverage trademarks, an Opposer should cite to as many third-party use based registrations as possible and further present probative evidence that the related goods in question are in use by the same source.  Note, however, that if the marks being compared are identical or highly similar, the degree of relatedness required between the respective goods need not be as great.

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.