Articles Posted in Likelihood Of Confusion

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A recent Trademark Trial and Appeal Board (“Board”) decision from last week emphasizes the detailed analysis required when comparing a composite mark (in this case words and a design) to a design mark. Here, the applicant, the University of Houston System (“Applicant”) is seeking to register a mark, UHCL Hawks and a design of a flying hawk (view here) for various goods in international classes 16, 21, 25, and 41. Retail Royalty Company (“Opposer”) filed a Notice of Opposition based on the ground of likelihood of confusion based on its ownership of U.S. Registration 3878197 (hereinafter “Flying Eagle Mark”) a design image of a flying eagle (view here). Opposer’s Flying Eagle Mark is registered for various goods in class 3 (creams and perfumes etc.), 18 (handbags and wallets etc.), 25 (various apparel), and 35 (retail store services featuring clothing, sunglasses, jewelry etc.). Opposer claims rights in prior registered marks for AMERICAN EAGLE OUTFITTERS and “AMERICAN EAGLE family of marks” for a broad range of lifestyle products.

Opposer did not directly argue that its mark was “famous”, but did argue the Flying Eagle Mark was “strong and entitled to broad protection”. Opposer also stated that its mark has been used in widespread and extensive advertising and the company maintains strong sales in relationship to the branded goods. These statements were supported by substantial evidence. The net U.S. sales for the years 2010-2015 were over $3 Billion. However, the evidence showed that Opposer’s Flying Eagle Mark does not have a strong commercial presence or consumer recognition except with retail clothing goods and services.

Conversely, Applicant argued that the Flying Eagle Mark was not strong, but instead was dramatically diluted by the existence of numerous third party bird design marks for general retail including clothing. Applicant argued that purchasers have become conditioned to numerous bird marks in the marketplace and are capable of distinguishig the sources by small differences in the marks. Among the co-existing marks are bird designs of Hollister (owned by Abercrombie and Fitch) and Eddie Bauer. The Board reviewed numerous bird design marks submitted by the Applicant (120 were submitted) and referenced twelve in the decision stating,” we find the following as bearing the closest resemblance to Opposer’s (or Applicant’s) bird logo.” And of the twelve only a few were identified as bearing a strong resemblance. The Board stated that to assess the strength of the mark, they evaluate the inherent strength based on the trademark alone and also the commercial strength based on marketplace recognition by consumers.

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A Consent Agreement is a written agreement between two trademark owners where typically one party agrees that the other party can use and register its mark. It is usually triggered by a refusal issued in an Office Action by the USPTO. See our web page entitled, Resolving Trademark Disputes Without Litigation, for general information regarding how a Consent Agreement can aid in registering a trademark or in facilitating a resolution in a trademark dispute. In a recent case before the Trademark Trial and Appeal Board (the “Board”) it was determined that the parties’ Consent Agreement was not sufficient to avoid a likelihood of confusion between the sources of the trademarks. See In re Bay State Brewing Company, Inc., Serial No. 85826258 (TTAB February 25, 2016) [precedential], where the Board in a precedential decision determined that despite the parties’ Consent Agreement, consumer confusion was likely to occur.

Bay State Brewing Company, Inc. (the “Applicant”) filed an application for the mark TIME TRAVELER BLONDE in standard characters for beer. The Examining Attorney refused the application on the grounds that when the mark TIME TRAVELER BLONDE is used with the Applicant’s goods it causes a likelihood of confusion with a previously registered word mark, TIME TRAVELER for beer, ale, and lager. There was a final refusal issued and an appeal followed.

Under a 2(d) analysis, all the du Pont factors that are relevant to the facts in evidence are considered. The Applicant offered a Consent Agreement for consideration. It is relevant because it relates to the market interface between the Applicant and the Registrant. Regarding the relatedness of the goods, both parties are using the trademarks to brand beer. Therefore the goods are identical with respect to beer. Because the goods are in part identical, the trade channels and classes of consumers are presumed to be the same. Another factor weighing in favor of finding a likelihood of confusion is the condition of sale. Beer is inexpensive and often subject to impulse purchases.

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One of the many grounds an Examining Attorney can cite for a refusal of a trademark application is likelihood of confusion between a proposed trademark and a mark contained either in a pending application or a prior registration. A Section 2(d) Refusal is a trademark refusal based on likelihood of confusion grounds. If dissatisfied with a refusal, an applicant can appeal the decision to the Trademark Trial and Appeal Board (“TTAB” or “Board”) of the United States Patent & Trademark Office (“USPTO”). This is an extremely common ground for refusal, however when appealed often the refusal is affirmed. In the year 2014, there was a 90% affirmance rate for refusals based on likelihood of confusion grounds. Recently, the Board issued a reversal, see In re SDI Petroleum, LLC, Serial No. 86011946 (November 30, 2015).

The applicant in In re SDI Petroleum, LLC was seeking registration of the mark DASH NEIGHBORHOOD for retail store services featuring gasoline. The Examining Attorney refused the application based on prior registrations for the marks DASH IN and D DASH & Design for retail store services featuring convenience store items and gasoline. The registered marks are owned by the same registrant. The applicant requested reconsideration and that was denied and the appeal proceeded.

A likelihood of confusion analysis will consider all relevant facts in evidence and the factors set forth in In re E.I. du Pont de Nemours & Co 476 F.2d 1357, 177 USPQ 563 (CCPA 1976). The Board first reviewed the services. The marks contained services that were in part identical. There were no restrictions in the identification of services pertaining to the channels of trade. Since the identifications were in part identical, it is presumed that the trade channels and classes of consumers are overlapping for those identical services. Therefore, trade channels and services weigh in favor of finding likelihood of confusion.

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H.J. Heinz Company and Promark Brands (collectively “Opposers”) commenced opposition proceedings against GFA Brands (the “Applicant”) attempting to block registration of the mark SMART BALANCE based on their registrations for the mark SMART ONES. The Opposers use their mark to brand frozen entrees, frozen desserts and other frozen foods, while the Applicant identified frozen entrees, desserts, and frozen snack foods in their applications for SMART BALANCE. See ProMark Brands Inc. and H.J. Heinz Company v. GFA Brands, Inc., Opposition Nos. 91194974 and 91196358 (March 27, 2015) [precedent]. Applicant did not counterclaim for cancellation of the Opposers’ registrations, therefore priority was not in issue. The primary issue centered on likelihood of confusion. The Board’s analysis focused on the similarities between the marks, the relatedness of the goods and the trade channels, the degree of care made in purchasing decisions, and the fame of Opposers’ mark.

The general rule for comparing the parties’ marks is that the trademarks must be considered in their entireties focusing on the appearance, sound, connotation and commercial impression. Then, it is appropriate to inquire if one element is dominant in creating the commercial impression. It is reasonable to give more or less weight to a particular element of the mark. See our firm site page entitled, Similarities In Trademarks.

In this case, the marks share the term “smart” which is a laudatory term and considered to be descriptive. Descriptive marks are weak by nature and will not be given the same scope of protection as an inherently distinctive mark. To support the position that the term “smart” is descriptive and weak, Applicant introduced into evidence third-party registrations and third party uses of the term “smart” in the food industry. Often the word “smart” is used in marketing food products to mean low calorie, low in fat, heart healthy, nutrient rich, high in fiber, etc.

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Kinney Family Vinters LLC doing business as Occasio Winery (“Applicant”) filed a trademark application for the mark APOTHEOSIS for various types of wine. E. & J. Gallo Winery (“Opposer”) filed a Notice of Opposition, claiming prior use of the mark APOTHIC for wine. It was undisputed that the Opposer has used the trademark APOTHIC for wine since 2010. Applicant filed an intent-to-use application on January 18, 2012. Therefore, there was no dispute pertaining to priority rights. The primary issue in this case is likelihood of confusion. See E. & J. Gallo Winery v. Kinney Family Vinters LLC d/b/a Occasio Winery, Opposition No. 91207656 (March 10, 2015) [not precedential].

The two primary considerations in a likelihood of confusion analysis are the similarities of the marks and the relatedness of the goods or services. Opposer bears the burden of establishing likelihood of confusion by a preponderance of the evidence. This standard requires that the evidence be sufficient to determine that the claim is more likely to be true than not. In this case the goods analysis is a simple one as both parties are seeking to use their trademarks in connection with wine. Therefore the goods are identical.

When the goods are identical it is presumed that the trade channels and the classes of purchasers are also identical. See In re Vitterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012). This rule applies even when there is no evidence regarding trade channels. The Trademark Trial and Appeal Board (the “Board”) is entitled to rely on this presumption.

The Applicant attempted to introduce evidence that he utilizes a membership system that involves among other things methods of sales different than Opposer’s methods and maintained a sophisticated customer base. However, the Board determined that since this type of information was not included in the identification of the trademark application, it could not be considered. Applicant’s identification includes “wine” without any restrictions or limitations. Since the parties’ goods are identical, it is therefore presumed that the trade channels and classes of consumers are overlapping which leads to another rule that works to the Opposer’s benefit and the applicant’s detriment. Under these circumstances, the degree of similarity of the marks required for a finding of likelihood of confusion is lessened or reduced.

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Thor Tech, Inc. (“Applicant”) sought to register the mark TERRAIN, in standard character form for “recreational vehicles, namely, towable trailers”. The Examining Attorney refused to register Applicant’s mark based on a likelihood of confusion with General Motors’ (“Registrant”) registration for the mark TERRAIN for “motor vehicles, namely, trucks”. The Trademark Trial and Appeal Board (the “Board”) reversed the refusal to register. See In re Thor Tech, Inc., Serial No. 85667188 (January 26, 2015) [precedential]. To learn about the basics of these types of trademark refusals, see our webpage entitled, Likelihood Of Confusion Refusals -2(d) Refusals.

This precedential decision is significant for several reasons. The first reason is that even though the marks were identical for complementary goods, the Board held that there was not a likelihood of confusion between the marks. The second important factor is that often evidence of third-party registrations is not given great weight in a likelihood of confusion analysis. Here, the Applicant managed to impress the Board with its third-party registrations, so much so that the Board reversed the refusal to register the mark. Lastly, this case is noteworthy because the Board overwhelmingly affirms refusals to register based on findings of likelihood of confusion. In 2014, the Board affirmed about 90% of the Examiners 2(d) refusals. Yet, here the Board reversed the refusal even though the marks were identical and the uses of the goods were complementary.

Once the Board concluded that the parties’ marks were identical, it moved on to consider the similarities between the goods. Applicant’s goods are recreational vehicles defined as large vehicles typically containing a bathroom, kitchen, and beds for use during travel. Applicant’s vehicles are also towable which means that attaching them to a truck, van or car can transport the trailers. Registrant’s goods are trucks. The Examining Attorney submitted into evidence two third-party registrations that showed that trucks and trailers may emanate from the same source.

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Happy Green Company LLC, (“Applicant”) filed a trademark application with the United States Patent and Trademark Office (“USPTO”) for the mark Anthō for goods in International Class 3 including, but not limited to beauty products and cosmetics; skin care preparations; and perfumes and colognes. Anthropologie, Inc. and U.O. Merchandise, Inc. (“Opposers”) opposed the registration with the Trademark Trial and Appeal Board (“TTAB”) based on likelihood of confusion grounds in connection with their two marks (registrations). These marks include: (1) ANTHROPOLOGIE for retail department store services, clothing, handbags, and clothing and fashion accessories and (2) ANTHRO for customer affinity loyalty services. Each of the Opposers established its standing for the proceeding. See  Anthropologie, Inc. and Urban Outfitters Wholesale, Inc. v. Happy Green Company LLC, Opposition No. 91204412 (Oct. 21, 2014) [not precedential].

Regarding the services rendered under the mark ANTHROPOLOGIE, the record shows that identical types of goods are sold through the retail store including moisturizers, perfumes and colognes, and bath salts, but under third-party manufacturers. In connection with the trademark ANTHRO the record demonstrated that it is used as a nickname and/or an abbreviation for ANTHROPOLOGIE, in addition to being used for customer loyalty programs. Customers receive a card branded with the name ANTHRO that they present at check out. This card keeps track of the customers’ purchases and allows them to return items without a receipt. There have been 2.3 million cards issued since the inception of the program. Evidence showed that ANTHRO is used on blogs and on social media platforms by consumers to refer to Opposer and its goods and services. Opposers also presented evidence showing common law rights for the mark ANTHRO for administering a customer service program in connection with retail services for a department store featuring cosmetics and beauty products.

For purposes of likelihood of confusion, the Board compared the marks Anthō and ANTHRO. Neither party submitted evidence of meaning for their respective marks therefore, it was not considered. However, based on the similarity of the appearance and sound alone, the Board held that the marks were very similar. The first Du pont factor favors the Opposers. Next, the Board considered the Applicant’s goods and the Opposers’ services. It is well settled law that goods and services need not be identical or even competitive to support a finding of likelihood of confusion. The goods and services only need to be related in some way or the conditions or the activities surrounding the marketing of the goods or services lead to the same consumers encountering the marks and due to the similarities between the marks, consumers could have the mistaken belief the marks originated from the same source.

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United Trademark Holdings, Inc. (Applicant) filed an application for the mark ZOMBIE CINDERELLA in standard character format for dolls. The Examining Attorney refused registration pursuant to § 2(d) of the Trademark Act, 15 U.S.C. § 1052(d) based on a likelihood of confusion with the registration, WALT DISNEY’S CINDERELLA & Design owned by Disney Enterprises Inc. (Registrant). The Disney mark is registered in multiple international classes, most relevant for this analysis is International Class 28 for “toys, namely, plush toys, action figures, dolls, soft sculpture toys, and stuffed toys”.  After a final refusal Applicant appealed to the Trademark Trial and Appeal Board (the “Board”). See In re United Trademark Holdings, Inc., Serial No. 85706113 (October 9, 2014).

The Board noted that the goods of the Applicant and the Registrant were identical. Both parties used their trademark to brand dolls. Since the goods were identical the Board was entitled to presume that the Applicant’s and the Registrant’s goods moved in the same channels of trade and were offered to the same classes of consumers. This presumption is warranted even though there was no evidence presented by the parties in connection with trade channels. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012). For information on the goods and services analysis see our webpage entitled, The Importance Of The Relatedness Of The Goods Or Services.

The Board then moved on to consider the similarities between the marks. For more details on the similarity analysis see our web page entitled Similarities In Trademarks. The Board reminded the parties of several general rules before analyzing the specific features of the marks. Since the goods are identical, the degree of similarity required to find a likelihood of confusion is not as great as where there are differences between the goods or services. If trademarks share common terms, then the additions or deletions made to the mark may be enough to avoid a likelihood of confusion. This may be the case, if the modifications to the mark convey a different commercial impression or if consumers are not likely to view the common term as distinguishing the source because the common term is descriptive or diluted. See Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011), where it was held that CAPITAL CITY BANK would not be confused with CITIBANK due to the common use of “City Bank” in the banking industry.

Regarding the specific facts, the Board agreed with the Applicant’s argument that the term “Cinderella” is diluted by third party use and is commercially weak. Applicant bases its theory on the fact that the story of “Cinderella” is a well-known narrative going back to 1697 with a famous fairytale character of Cinderella. Upon hearing the name Cinderella consumers expect a product associated with the character Cinderella. The evidence showed that there was widespread recognition for the character Cinderella. The record demonstrated that based on third-party use of the term “Cinderella”, the mark will be entitled to a limited scope of protection. Applicant made of record multiple third-party registrations using the term “Cinderella” (but mostly for unrelated goods) and nine marketplace uses of the mark CINDERELLA in connection with dolls. Applicant’s evidence demonstrated that the term “Cinderella” was weak and diluted for dolls depicting the character Cinderella.

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A recent court case in the Eastern District of California, E. & J. Gallo Winery v. Grenade Beverage LLC, No. 1:13-cv-00770 (E.D. Cal. Aug. 15, 2014), seems to underscore a trend of court decisions and TTAB findings where alcoholic and non-alcoholic beverages are considered related for purposes of a likelihood of confusion analysis. In this recent case, the court held that GALLO (for wines) and EL GALLO (for energy drinks) were similar trademarks and that the products were related. There was not much evidence produced by the parties that showed use of the products in the marketplace. Therefore, the Court relied on the similar spellings of the terms “Gallo” and “El Gallo” and inferred that based on the spellings of the terms, purchasers would likely pronounce the marks in the same way.

Regarding the analysis of the relatedness of the goods, the questions usually focus on the following: (1) are the products complementary; (2) are the products sold to the same class of consumers; and (3) are the products similar in use and function. A close proximity of the goods is not necessarily required. Here both products are in the beverage industry. Thus, they have similar use and function. Given that both products are beverages, there is a reasonable inference that they utilize similar marketing channels. Through deposition testimony, Gallo Wines contended that it would market its wine in convenience stores, supermarkets, liquor stores, restaurants, and bars. One of the Plaintiff’s witnesses attested to the fact that energy drinks and wines are sold in the same aisle of the grocery store. Therefore, the court concluded that the marketing channels of the two products overlapped to a certain degree.

The degree of care factor favors Plaintiff here. The rationale is that Plaintiff’s wines cost somewhere between $5.99-$9.99 a bottle. It has been held that consumers are likely to exercise less care when the goods are relatively inexpensive and that confusion is more likely when less care is employed. Several other factors also favored the Plaintiff. After reviewing all the evidence, the Court granted Plaintiff’s motion for summary judgment on all of its claims. It issued a permanent injunction against the use of EL GALLO for energy drinks.

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On June 12, 2014, The Trademark Trial and Appeal Board (“TTAB” or the “Board”) reviewed the Appeal of Fibre-Crafts Materials Corp. (“Applicant”) who had filed a trademark application for the mark BENDASTIX for jewelry making kits and arts and crafts hobby kits for making toys. The Examining Attorney refused the application based on a likelihood of confusion with Merchant Media, LLC’s (“Registrant”) registrations for the marks BENDAROOS (standard character and stylized versions) and BENDAMODEL (standard character) for “flexible building, modeling, and craft toys, namely bendable toys”.  See In re Fibre-Craft Material Corp., Serial No. 86727475 (June 12, 2014). The TTAB reversed the refusal. The Board determined that the Registrant’s marks contained a highly suggestive term (“Bend”) in connection with its goods and therefore was entitled to a narrow scope of protection which would allow Applicant’s mark BENDASTIX to co-exist.

The Board relied on the factors in In re E.I. du Pont Nemours & Co., 476 F.2d 1357 177 USPQ 563 (CCPA 1973), and analyzed the probative facts in the record. First the goods were compared as recited in the trademark application and registrations. The applicant was seeking registration for kits for making jewelry and arts and crafts hobby kits for making toys. The Board held that the record did not present any facts to support a relationship between jewelry kits and toys that are bendable. However, the Board found that Applicant’s arts and crafts hobby kits could include bendable toys. Neither the Applicant nor the Registrant limited the trade channels in which the goods will be distributed. At this point in the analysis, the du Pont factors weigh in favor of finding a likelihood of confusion for Applicants craft kits, but not its jewelry making kits.

The next step in the analysis is to evaluate the strength of the marks. The Board will look to the number of similar trademarks on like goods. If multiple third party marks use a particular term for similar goods, the mark may be considered weak. See Palm Bay Imp. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The Board provided an example of a highly suggestive term (“Grand Hotel”) that when used in connection hotel branding was considered weak. In the instant case, due to the extensive use of the term BEND for toys, those marks that incorporate this highly suggestive term, receive a narrow scope of protection. The extensive use of the term BEND demonstrates that consumers have become accustom to distinguishing “BEND” marks in the toy category, based on minor differences between the marks.

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