This past summer, the Court of Appeals for the Federal Circuit issued two decisions providing valuable insights on how the TTAB should evaluate evidence of third party marks and compare marks as a whole in the likelihood of confusion analysis in opposition proceedings. See Juice Generation, Inc. v. GS Enterprises LLC, No. 2014-1853, 2015 WL 4400033 (Fed. Cir. July 20, 2015) and Jack Wolfskin Ausrustung Fur Draussen GmbH v. New Millennium Sports, S.L.U., No. 2014-1789 (Fed. Cir. Aug. 19, 2015). Taken together, these two decisions show that extensive third party use and registration of marks, even without accompanying evidence of the marketplace impact and consumer perception of the third party marks, should be given significant weight in the adjudication of likelihood of confusion claims in TTAB opposition and cancellation proceedings. In addition, the Board must do more than pay “lip service” to considering the similarity of marks as a whole. It must demonstrate that it has evaluated the impact of additional distinguishing matter – even where additional terms are descriptive or generic – and give due weight to the presence of a distinctive word element in a stylized design mark.
In the first opinion issued by the Federal Circuit in Juice Generation, GS Enterprises had opposed an application by Juice Generation to register the mark PEACE LOVE AND JUICE in a stylized design for juice bar services, based on GS Enterprises’ family of prior registered marks containing the phrase PEACE & LOVE for restaurant services. The Federal Circuit vacated and remanded the TTAB’s decision sustaining the opposition, reasoning that the Board had not adequately assessed the weakness of opposer’s PEACE & LOVE marks based on evidence of third party use and registrations and had not sufficiently considered dissimilarities in the respective marks as a whole.
The TTAB recognized that evidence of third party use of similar marks can show that customers have been “educated to distinguish between different marks on the basis of minute distinctions” and demonstrate the weakness of the opposer’s rights, which in turn leads to a narrower scope of protection for opposer’s mark. But the Board discounted the applicant’s evidence of a “fair number” of similar third-party marks on the ground the applicant had failed to provide “specifics regarding the extent of sales or promotional efforts surrounding the third-party marks”. The CAFC held that even without the “specifics” regarding the extent and commercial impact of the third-party marks, the Board should have given more weight to applicant’s evidence, including the existence of the registrations without accompanying evidence of the extent of marketplace use. The court reasoned that third party registrations are relevant to prove that that mark at issue “has a normally understood and well-recognized descriptive or suggestive meaning”, rendering the mark relatively weak. On remand, the Board was directed to conduct an analysis of all of the evidence relevant to the strength or weakness of opposer’s marks and “the resulting effect on the overall likelihood-of-confusion determination.”
The Federal Circuit in Juice Generation also criticized the Board’s assessment of the similarity of the marks. The Board had found that the words “PEACE LOVE” were the dominant part of applicant’s mark, but gave inadequate consideration to the additional words “AND JUICE,” and how applicant’s three word phrase might convey a distinct meaning in consumers’ minds vs. opposer’s two word phrase. While the Board could properly afford more or less weight to particular components of a mark, and it was correct in noting that the word JUICE is generic, the Board erred in giving no significance to the additional word JUICE. This omission was held to be “impermissible notwithstanding that the term is generic and disclaimed… This is so because confusion is evaluated from the perspective of the purchasing public, which is not aware that certain words or phrases have been disclaimed.”
In the Jack Wolfskin decision issued a month later, the Federal Circuit built on its holdings in Juice Generation in a case involving an application by Jack Wolfskin to register a paw print design in four different classes:
The application was opposed by New Millennium Sports, based on its registration for the mark KELME with paw print design:
The CAFC reversed the TTAB’s holding that the marks were confusingly similar, finding that “the Board failed to properly compare New Millennium’s mark as a whole to Jack Wolfskin’s mark and also failed to recognize, in light of the significant evidence of paw prints appearing in third-party registrations and usage for clothing, the relatively narrow scope of protection afforded to marks involving paw prints.”
The Federal Circuit held that the Board had failed to give sufficient weight to opposer’s “voluminous” evidence of third party paw print designs used and registered in connection with clothing, on the ground that most of the evidence showed use of the design as “secondary source indicators” to identify college and high school sports teams or pet-related goods and services: “The Board too quickly dismissed the significance of this evidence. As we recently explained in Juice Generation, such extensive evidence of third party use and registration is ‘powerful on its face’ even where the specific extent and impact of the usage has not been established.” In addition, in considering the similarity of the marks, the Board had focused too narrowly on the paw print element of the registered mark, and thus “failed to appreciate that the KELME element is unlike anything that appears in Jack Wolfskin’s applied-for mark.” The Board also lacked a sufficient evidentiary basis for finding that New Millennium used its paw print design without the accompanying distinguishing word mark. In sum, the Board “essentially disregarded” the verbal portion of New Millennium’s mark and thus failed to effectively consider the similarity of the marks as a whole.
The Federal Circuit imparts important lessons in these two decisions: If you are a party attempting to rely on the strength of your mark in an opposition or cancellation proceeding in order to achieve a broad scope of enforcement protection, you cannot sit back and assume that evidence of third party marks and registrations will be discounted if the opposing party has not adduced evidence of the commercial impact and extent of use of the third party marks. Indeed, it may be incumbent on the mark owner to rebut the evidence of third party use and registrations by demonstrating that the third party marks and registrations have had no or minimal impact on the commercial strength of its mark. Conversely, if you are defending a likelihood of confusion claim and want to attack the strength of your opponent’s mark, it is worth presenting as much evidence as you can of third party use and registrations, even if you don’t have the resources to develop evidence showing the extent of commercial use or recognition of such third party marks.
In terms of the similarity of the marks, the whole mark counts in the likelihood of confusion analysis. Even if additional elements are weak or generic, the TTAB should be asked to take into account the entirety of the marks at issue when assessing confusing similarity. Further, literal word elements can play a significant role in distinguishing otherwise similar design marks.