The Trademark Act, formally, the Lanham Act of 1946, has been revised multiple times since its enactment, however, the recent Trademark Modernization Act, (the Act) is the most radical adjustment since 1988. Congress signed the Act into law on Dec. 27, 2020 with full bipartisan support. The Act contains several new procedures that are meant to help maintain and strengthen the effectiveness and reliability of the federal trademark register.

First, one of the Act’s main goals is to minimize the issuance of registrations falsely claiming use in commerce of a mark that the registrant has not used in the required manner. There are now two new ex parte post-registration proceedings to cancel unused trademarks. A trademark applicant can now file a petition with the USPTO to request that the USPTO Director initiate a proceeding to expunge or to reexamine a registration for a trademark that either has never been used in commerce or was not used in commerce prior to a particular Relevant Date (see infra). Both petitions will generally require a verified statement establishing that a thorough investigation was conducted prior to the petition regarding whether the mark had been properly used in commerce and/or maintained. The following two proceedings are of particular use to new applicants looking to create and use a viable trademark but find that they are blocked from registration due to unused marks.

1. Expungement: A trademark applicant can request that the USPTO remove some or all of the goods or services in a registration because a registrant did not use the trademark in commerce in connection with those goods or services. This petition must be filed within three to ten years of the registration date.
2. Reexamination: A trademark applicant can request that the USPTO remove some or all of the goods and services in a registration because the trademark was not used in commerce in connection with those goods and services on or before a particular relevant date. The Act defines the Relevant Date as: 1) The date that the registrant filed an averment of use to support an application filed with a §1(a) basis or 2) The third anniversary of a registration issued under either §44(e) or §66(a). This petition must be filed with the first five years after the trademark is registered and is mostly directed at registrations where a questionable specimen proving the trademarks use in commerce was submitted during the original examination of the application.

Once the petition is filed properly, the Director will determine whether or not a removal of goods or services from a registration will occur. If some or all of the goods or services are removed, the registrant may appeal the decision to the TTAB, and after that, the U.S. Court of Appeals for the Federal Circuit.

Second, the Act now provides for more flexible response periods for office actions. Previously, the Trademark Act required a trademark applicant to respond to an office action issued during examination within six months. Now, under the Act, trademark examiners will have greater flexibility in setting response deadlines for office actions. This adjustment authorizes the USPTO to shorten response deadlines to between 60 days and six months, provided the applicants can obtain extensions of time to respond up until the original six-month deadline. The applicant must pay the USPTO a filing fee for these requests for extension.

Third, the Act provides statutory authority for the USPTO letter of protest practice that allows third parties to submit evidence to the USPTO prior to registration in regard to the trademark’s registrability. The Act sets a two-month deadline for the USPTO to act on the submissions and authorizes it to charge a $50 fee for them. Moreover, the new procedure provides that the USPTO’s decision on whether to include the evidence in the application record is final and non-reviewable. Consistent with the requirements of the Act, the USPTO issued the following procedural rules that went into effect on Jan. 2, 2021. The rules require: 1) The submission must identify each legal ground for an examining attorney to refuse registration or issue a requirement; 2) the inclusion of evidence that supports those grounds and 3) a succinct description for each piece of supporting evidence.

Finally, the Act creates a uniform rule establishing a rebuttable presumption of irreparable harm. It provides that a trademark owner seeking injunctive relief is entitled to a rebuttal presumption of irreparable harm upon a finding of infringement or a likelihood of success on the merits. This rule will help trademark owners enforce their rights against infringers in federal court and unifies the law among the district courts.

Ultimately, the Act is meant to protect the relevant consuming public from confusion regarding the source of goods and services. It has also been enacted to better help protect trademark owners from fraudulent trademark filings, and allow new trademark registrants to register marks without being impeded by invalid marks.

In a 2020 non-precedential opinion, the Trademark Trial and Appeal Board affirmed the refusal of registration for the proposed mark SPIDER WOOD for “Decorative ornaments in the nature of natural sculptures of wood for use in terrariums, animal habitats, bird cages, floral arrangements, and interiorscape installations.” The TTAB found the mark to be merely descriptive under §2(e)(1).

When determining whether a mark is merely descriptive or suggestive, the Examining Attorney must look at the mark in its entirety, and if the mark “immediately conveys information concerning a feature, quality, or characteristic of the goods or services for which registration is sought,” then it is considered merely descriptive under §2(e)(1). Further, when determining whether a mark is merely descriptive, the Examining Attorney must consider the mark as a whole, and “do so in the context of the goods or services at issue.” See Real Foods Pty Ltd. v. Frito-Lay N. Am., Inc., 906 F.3d 965, 128 USPQ2d 1370, 1373 (Fed. Cir. 2018) and DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012).

 The applicant, Petglobe, first argued that the mark was suggestive, and not descriptive because the product “is a tangled mass of wood roots used in animal habitats,” that “does not have any other clear connection to spiders.” The Examining Attorney submitted a slew of evidence in the form of website excerpts that referred to, and offered, the sale of “spider wood” for terrariums and aquariums. The Board found that the applicant’s argument that the mark was suggestive because there was no clear connection to spiders was invalid. It concluded that the term, SPIDER WOOD, in connection with the goods listed in the application, did indeed have a distinct and commercial impression. It stated that the owners of terrariums, animal habitats and birdcages looking to buy “decorative ornaments in the nature of natural sculptures of wood,” would encounter the term SPIDER WOOD and “[would] immediately know that it is a type of driftwood without having to resort to a multi-step reasoning process, thought, or cogitation.” Therefore, the applicant’s argument that the addition of the word SPIDER before WOOD was negated by the evidence provided. It is important to note that in order for a mark to be found merely descriptive it does not have to describe all of the purposes, functions, characteristics or features of a good or service to be considered merely descriptive. It can be classified as such if the term describes one important function, attribute or property. In a similar fashion, the term does not need to describe all of the goods or services identified on the application, so long as it describes one of them.

The applicant then argued that it was the first to “develop” the mark and the first to use it. Therefore, it claimed that any other industry usage of the mark, for the same goods, was an infringement against its established unregistered trademark. This argument was quickly dismissed as the Board stated that simply because an applicant was the first user or “developer” of merely descriptive mark did not justify its registration if the only significance conveyed by the term was merely descriptive. “Trademark law does not countenance someone obtaining “a complete monopoly on use of a descriptive term simply by grabbing it first.” See KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 122, 72 USPQ2d 1833, 1838 (2004)

In conclusion, the Board affirmed the refusal of registration for the mark SPIDER WOOD as it was found to be merely descriptive under § 2(e)(1).

In a 2020 non-precedential opinion, the Trademark Trial and Appeal Board affirmed a §2(d) refusal of registration on the Principal Register for True Value’s (Applicant) mark MASTER RANCHER, for footwear, as it so resembled the registered mark RANCHMASTER, for footwear as well.

The Board began its analysis of the two marks starting with the first Dupont Factor, the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. Citing Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 169 USPQ 39, 40 (CCPA 1971), the Board focused on the “recollection of the average consumer, who normally retains a general rather than a specific impression of trademarks.” As both descriptions of the goods were “footwear,” the average purchaser is a general consumer.

Starting with the term MASTER, the Board found the Applicant’s mark MASTER RANCHER, was too similar to RANCHMASTER, and the transposition of the terms did nothing to change or create a new meaning, nor did the addition of the suffix “er” to the end of “Ranch.” The Applicant used the alternative definition of the term “master,” and defined it as “a man in charge of [a particular ranch].” It attempted to argue that this definition created a distinct difference in the meaning and commercial impression. However, the Board countered that the way in which it was used in the registered mark RANCHMASTER, may also possibly conjure the impression of a “greatly skilled or professional rancher,” with no contrary evidence.

In an attempt to further distinguish the mark, the Applicant asserted the term “master” was a house mark and claimed that the use of a house mark created a distinct commercial impression, and moreover, distinguished the mark in terms of appearance and sound. The Applicant made reference to five other marks in its appeal brief: MASTER MECHANIC, MASTER ELECTRICIAN, MASTER PLUMBER, MASTER PAINTER and MASTER TRADEMASMAN. Though the marks were referenced, no evidence was submitted to prove use of the marks, thus, the argument was empty. See In re Olin Corp., 124 USPQ2d 1327, 1335 n.22 (TTAB 2017), where the Board “declined to take judicial notice of registrations owned by applicant.”

The Applicant then asserted ownership of a family of MASTER-formative marks, but this argument failed for two main reasons. First, in order to prove the existence of a family of marks, an applicant must prove that the alleged family meets the following criteria: “(1) has a recognizable common characteristic; (2) that is distinctive and (3) that has been promoted in such a way as to create ‘recognition among the purchasing public that the common characteristic is indicative of a common origin of the goods or services.’” See J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1891 (Fed. Cir. 1991). The Applicant made no showing of any of the above criteria. Second, “a family-of-marks argument is not available to an applicant seeking to overcome a likelihood-of-confusion refusal.” See In re Cynosure, Inc., 90 USPQ2d 1644, 1645-46 (TTAB 2009).

In light of the above arguments, the Board found that the first Dupont Factor weighed in favor of finding a likelihood of confusion.

The Board briefly turned to the second and third Dupont Factors, the similarity or dissimilarity of the goods in connection with the marks, and the similarity or dissimilarity of the likely-to-continue trade channels. In analyzing these factors, the Board looked to the goods cited in the application and registration. The description for both sets of goods is “footwear,” therefore, since the description of the goods is identical, the Board presumed that the trade channels and purchasers were similar as well. Ultimately, these two Factors weighed very heavily in finding a likelihood of confusion.

Finally, the Applicant argued that its ownership of a prior registration of the mark MASTER RANCHER, for gloves, should provide a basis for registration. In citing  In re Strategic Partners, Inc., 102 USPQ2d 1397, 1399 (TTAB 2012), the Board noted, “[w[here an applicant owns a prior registration that is over five years old and the mark is substantially the same as in the applied-for application, this can weigh against finding that there is a likelihood of confusion.”

However, in the Strategic Partners case, the applicant’s existing registration coexisted with a cited registration for more than five years, and the goods in the prior registration were identical to those in the new registration. In this case, however, the Applicant’s prior registration was only two years old, and it was for gloves, not footwear, which moved it closer to the cited registration. Therefore, as opposed to the finding in Strategic Partners, the Board found that the Applicant’s prior registration did not negate the finding of a likelihood confusion between the Applicant’s mark, MASTER RANCHER and the registered mark RANCHMASTER.

In sum, the first three Dupont Factors weighed heavily in finding a likelihood of confusion, and the Applicant’s prior registration did not cancel this finding. Therefore, the Board affirmed the refusal to register under §2(d).

In a 2020 non-precedential opinion, the Trademark Trial and Appeal Board dismissed the §2(d) opposition against Lawson’s Finest Liquids, LLC’s (applicant), mark CHINOOKER’D IPA (IPA disclaimed) for beer, and found it unlikely to be confused with W. Clay Mackey’s (opposer), CHINOOK for “table wine and sparkling wine,” and his presumed common law rights in the same mark for beer.

Turning first to the opposer’s alleged common law rights to the mark CHINOOK for beer, the Board deemed the term generic, and therefore not protected by common law rights. At the core of any genericness case, is the issue of whether relevant members of the public use or understand the term in question in connection with the genus of the good being used under the mark. See Royal Crown, 127 USPQ2d at 1046. In this specific case, of CHINOOK for beer, the U.S. Department of Agriculture identified Chinook as a variety of hops, which is used in brewing beer. Moreover, the applicant’s expert witness testified a similar statement, and a slew of articles, unrelated to the opposer’s product,  supported the testimony. The Board found that the evidence clearly showed that “the relevant purchaser perceives Chinook as indicating a type of beer by referring to a key aspect of that product.” Ultimately, the Board concluded the opposer had no proprietary rights in the term, as it is generic when used in connection with beer, since the relevant public already perceived that the beer was brewed with Chinook hops.

The Board then turned its attention to the main issue: Whether or not the applicant’s mark CHINOOKER’D IPA, for beer, was likely to cause confusion with the opposer’s registered mark CHINOOK for “table wine and sparkling wine,” under §2(d) likelihood of confusion. It used the relevant Dupont Factors to come to its ultimate finding. Starting with the second Factor, the similarity or dissimilarity and nature of the goods in connection with the mark, the Board found the mark to be arbitrary for wine, as the opposer testified that the mark was meant to reference positive attributes of the Pacific Northwest. Therefore, the mark was considered inherently strong. Moving to the seventh Factor, the nature and extent of any actual confusion between the marks, the Board deemed this factor neutral as there was no reasonable opportunity for confusion to occur, which is what gives this factor any probative value. See Barbara’s Bakery Inc. v. Landesman, 82 USPQ2d 1283, 1287 (TTAB 2007). In examining the third and fourth Factors, similarity of trade channels and impulsive vs. careful buyers, the Board found that beer and wine are most often offered in the same trade channels to some of the same types of consumers. Since the two marks are for goods offered in the same trade channels, and neither appeal to any specific type of consumer, it was to be presumed that the purchasers of either sides’ goods would include both impulsive and careful consumers. Finally, the Board looked at the first Factor, the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression. It found that since the applicant’s mark encompasses a portion of the opposer’s mark, the two are similar in sound and appearance. However, the connotations of the marks are very dissimilar. The opposer’s mark was meant to suggest the Pacific Northwest, while the applicant’s mark “engenders the commercial impression of getting snockered (i.e., drunk) on beer made from Chinook hops.” In this fashion, the two marks do not have the same connotation or give off the same commercial impression.

In conclusion, the Board found confusion unlikely under §2(d) for CHINOOKER’D IPA for beer and CHINOOK for table and sparkling wines. Its ultimate decision was that the dissimilarity in the marks’ connotation and commercial impression heavily outweighed the similarity in sound and appearance. “Each of the evidentiary factors set out in DuPont, may, from case to case, play a dominant role.” As stated in Kellogg Co. v. Pack’em Enters., Inc., 951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed. Cir. 1991). The commercial impression, in this case, was particularly important as Chinook is generic for beer, and that ultimately made the applicant’s mark arbitrary, and inherently strong, as used in connection with the applicant’s goods.

Starting as a pilot program in 2012, the auditing program used by the USPTO is essential in maintaining the reliability of the user-based trademark register as an accurate reflection of marks in use in commerce. Registrations in the database are entitled to be maintained only for goods and services for which the mark is used in commerce or registrations for which temporary nonuse is excused due to extenuating circumstances. Since the registration is user-based, it is up to the user to maintain the registration, which can invariably lead to error. The occurrence of improper or inaccurate registration maintenance filings can jeopardize the validity of an owner’s registration, may unnecessarily block future applications and diminish the trademark registration’s ability to provide accurate information the public.

If an owner of a mark is audited, the USPTO will require the owner to show proof of the mark in connection with additional goods and services listed in the registration. If the owner cannot provide such proof for the specified goods and services, they will be removed from the registration. Which, as mentioned above, can help to negate the chances of unnecessarily blocking future applications.

Any owner of a trademark can be subjected to an audit if their registration meets the following requirements: The owner filed a §8 or §71 declaration of use in the appropriate timeline, and the registration includes at least one class with four or more goods or services. A registration including at least two classes with or more goods or services may be audited as well.

If a registration owner is audited, they will receive an office action from a post-registration examiner. The action will inform the owner that they’ve been selected for auditing and it will also identify two goods or services for each audited class. The owner must then submit proof for each of the identified goods or services.

If the USPTO accepts the submitted evidence, a notice of acceptance will be issued. If there are issues, or failure to provide sufficient proof, a second action will be sent. If an owner cannot provide sufficient proof, they must remove all goods and services from their registration for which they cannot provide proof of use, note, this does not simply mean the ones identified for audit, but for all goods and services that cannot be proven to be connected the mark in use.  The deadline for responding to a first or second office action is whichever of the following comes later: Six months after the issue date of the office, or the end of the statutory filing period, not including the grace period.

If an owner fails to respond to either a first or second office action by the deadline above, the registration may be canceled in its entirety. If extraordinary circumstances prevent an owner from responding on time, the owner may file a Petition to Director, asking for a waiver of timely response. For a fee, this petition may also be filed if an owner is dissatisfied with the post-examiner’s final decision. Following the submission of this petition, the Director will then review the record and determine whether or not the examiner made an error.

For more information regarding the post-registration proof of use auditing program visit USPTO.gov.

The United States Patent and Trademark Office will be setting and adjusting certain trademark and TTAB fees effective Jan. 2, 2021, and it will be the first this has happened in nearly three years. The fee changes and additions will allow the USPTO to continue to keep up with the costs of the Trademark Office’s and the TTAB’s workload projections for fiscal 2021. Moreover, the fees will help to further the USPTO’s strategic objectives in the following ways: (1) better aligning fees with costs, (2) protecting the integrity of the trademark register, (3) improving the efficiency of the agency processes and (4) ensuring financial sustainability to maintain effective trademark operations.

Below, are two charts showing the changes in the trademark applications and application-related fees and the changes in the TTAB fees.

Other information pertaining to the TTAB Fees cited from uspto.gov:

There is still no fee for a first 30-day extension request for filing a notice of opposition, filed through ESTTA. There is also no new fee for a first request.

New TTAB Fees For: 

1. Second, and subsequent, requests for an extension of time to file an appeal brief in an ex parte appeal filed through ESTTA: $100 per application

3. Appeal briefs in an ex parte appeal filed through ESTTA: $200 per class
4. requests for oral hearings: $500 per proceeding

In addition, the USPTO is implanting partial refunds for petitions to cancel in default judgments if the cancelation involves only a nonuse or abandonment claim, the defendant did not appear and there were no filings other than the petition to cancel.

For more information regarding the changes, and a complete list of all new and updated fees, visit uspto.gov.

The last two articles discussed the §8 Declaration of Use affidavit and the §9 Application for Renewal affidavit. Both of these documents must be filed within the timeline given and are necessary in order to maintain federal trademark status. This post will discuss the §15 Declaration of Incontestability document, which unlike the other two, is not necessary, but beneficial.

As discussed, prior, the §8 must be filed between every fifth and sixth anniversary of the trademark registration. During the first anniversary deadline, the trademark owner may choose to file a §15 Declaration of Incontestability. After five years of consecutive use, an owner may file a §15, which declares the trademark may be incontestable. When a mark becomes incontestable, it means that the mark is immune from challenge. In order to maintain this status, the owner must continue to file all of the proper paperwork within the allotted time, because a generic mark or a mark abandoned for nonuse may not be declared incontestable.

Simply, when a mark is declared incontestable, it means that it is immune from legal challenge, yet a situation may arise where grounds for legal challenge are allowed. This will be discussed below. When a trademark owner is seeking incontestability, he must be able to show that (1) no final legal decision has been issued against the mark; (2) there is no challenge pending against the mark; (3) the §15 was filed within the deadline (between the fifth and sixth anniversary of the mark’s trademark registration) and (4) the mark has not been deemed generic.

For a mark that has achieved incontestability, the registration can only be challenged for invalidity on limited grounds: (1) the registration or the incontestable right to use the mark was obtained by fraud; (2) the registrant abandoned the mark; (3) the mark is used to misrepresent the source of its goods or services; (4) the infringing mark is an individual’s name used in his/her own business, or is otherwise prohibited or reserved under the Lanham Act; (5) the infringing mark was used in commerce first – prior to the incontestable mark’s registration;  (6) the infringing mark was registered first;  (7) the mark is being used to violate the antitrust laws of the United States; (8) the mark lacks the strength or scope of protection necessary to avoid a likelihood of confusion; (9) the mark is functional in nature or (10) any equitable principles apply, including acquiescence, estoppel or laches.

It is imperative that throughout the life of the registration, the owner must continue to enforce his/her registration rights. Just because the mark has been declared incontestable, does not mean that the owner may neglect to file the appropriate documentation in a timely manner. Even with the §8, §9 and §15 a mark may still be canceled if the owner fails to keep up with the post-registration maintenance for the mark.

The previous post discussed filing a Declaration of Use under §8 of the Trademark Act, its importance and when it must be filed. This post will explain when and why it is necessary to file an Application for Renewal under §9 of the Trademark Act.

Simply, an Application for Renewal is a written request, by the trademark owner, submitted to the USPTO to keep the trademark active. The application must be filed within one year prior to the expiration of the registration, or within the six-month grace period after the expiration, which will come with a grace-period fee. However, if the §9 affidavit is not filed before the end of the grace period, the trademark registration will expire.

Every 10 years, the trademark owner must submit a combined Declaration of Use and Application for Renewal filing to the USPTO. The combined filing, along with a supporting specimen must be filed on a date that falls on or between the ninth and tenth anniversaries of registration. Or, for an extra fee of $100 per class, the documentation can be filed within the six-month grace period following the registration expiration date. Following the tenth anniversary of the trademark, the owner must file a §8 and §9 within the 12-month period proceeding every 10-year anniversary thereafter.

The combined filing must include the following: The trademark registration number; the name and address of the current trademark owner and a filing fee of $425 per class of goods or services listed in the registration.

Failure to submit any of the above documentation and supporting evidence will result in a trademark registration cancelation. Once the mark is canceled, the owner cannot have it revived or reinstated and must file a new trademark registration.

In a much earlier post on maintaining a trademark, filing a §8 affidavit was briefly touched on. However, this post will go more in-depth regarding what it is, what it does and why it’s required.

As a brief refresher, once an owner is granted a federal trademark registration, his rights can last indefinitely, as long as the mark is properly registered and continuously used in commerce in connection with the listed goods and services. Moreover, the owner must stick to a strict post-registration maintenance schedule. Understanding when and why to file a Declaration of Use is paramount to the maintenance of a trademark registration.

A §8 affidavit is simply a statement from the owner made to the USPTO affirming that the registered mark has been in continuous use for a five-year period. Along with the statement, the owner must also submit a specimen as evidence of use in commerce. The Declaration of Use, along with the specimen must be filed on a date that falls on or between the fifth and sixth anniversaries of registration (or for an extra fee of $100 per class,  it can be filed within the six-month grace period following the sixth anniversary).

If the owner fails to file the affidavit within the allotted time period, including the six-month grace period, the owner’s federal trademark rights will be canceled. If the rights are canceled, the only way to reclaim them is to file a new application for registration. However, it is important to note that simply because the federal trademark rights will be canceled, the trademark itself is not terminated and is still protected under common law and state rules.

Aside from the five-year mark, a Declaration of Use must also be filed along with a specimen when filing an Application for Renewal under §9 of the Trademark Act. The owner must file both affidavits on a date that falls on or between the ninth and tenth anniversaries of registration. (For an extra fee of $100 per class, it can be filed within the six-month grace period following the registration expiration date). Following the tenth anniversary of the mark, the owner must file a §8 and §9 within the 12-month period proceeding every 10-year anniversary thereafter.

In conclusion, a Declaration of Use under §8 of the Trademark Act is necessary for an owner to maintain federal trademark rights in his mark. The affidavit, along with the specimen serves as evidence to the USPTO that the mark has been used continuously in commerce for five years, for the goods and services listed. Failure to submit the declaration within the aforementioned deadlines will result in a cancelation of the mark’s federal trademark rights, and in order for them to be renewed, the owner must file a new trademark application. The following post will take a closer look at the importance of an Application for Renewal under §9 of the Trademark Act.

Under §2(d) of the Lanham Act, marks that are confusingly similar may not be registered with the USPTO.  When it comes to determining likelihood of confusion, the examining attorney considers the Dupont Factors. Often, the first two: (1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. (2) The relatedness of the goods or services as described in the application and registration(s), hold the most weight. However, there is no precedent that states that the first two are the most important. All of the factors must be considered equally in light of the evidence provided in each case. In the case below, a decision made by the Trademark Trial and Appeal Board was vacated and remanded by the U.S. Court of Appeals for the Federal Circuit, because the Board failed to consider all of the factors for which there was evidence.

In 2017, the Trademark Trial and Appeal Board affirmed the §2(d) refusal of the mark GUILD MORTAGE COMPANY for “mortgage banking services, namely, origination, acquisition, servicing, securitization and brokerage of mortgage loans.” (MORTGAGE COMPANY was disclaimed) Finding it confusingly similar with the registered mark GUILD INVESTMENT MANAGEMENT for “investment advisory services.” (INVESTMENT MANAGEMENT was disclaimed) In light of this, the Applicant appealed to the U.S. Court of Appeals for the Federal Circuit (CAFC).  In 2019, The CAFC issued a decision that vacated and remanded the TTAB’s decision “for further proceedings consistent the [its] opinion.” The CAFC stated that the Board failed to address the applicant’s arguments and evidence related to the eighth Dupont Factor, which examines the length of time during and conditions under which there has been concurrent use without evidence of actual confusion.

In a 2020 precedential opinion, on remand from the CAFC, the Board issued a final decision in regard to the mark GUILD MORTGAGE COMPANY.  As instructed, the Board reexamined the case giving more consideration to the eighth Dupont Factor. Starting with the first factor, the Board found that the dominant term in both marks was “guild.” Therefore, it ultimately found that the similarities between the marks, in accordance with “guild(‘s)” dictionary definition and overall commercial impression, outweighed the differences in sight and sound. The Board found that the first Dupont Factor weighed in favor of a finding of likelihood of confusion. As to the second factor, which examines the parties’ involved services, submissions of third-party registrations covering both mortgage banking and investment advisory services were enough to convince the Board that the services are related. Moreover, in accordance with the third factor, the Board found that the same consumers who seek mortgage banking services may also seek investment advisory services. Therefore, the channels of trade and classes of consumers are likely to overlap. Moving to the fourth factor, which examines the degree of purchaser care, the Board made its determination in light of Stone Lion Capital, 110 USPQ2d at 1163, which states that the decision must be based on the least sophisticated consumer. Regardless, the Board found that “consumers may exercise a certain degree of care in investing money, if not perhaps in seeking a mortgage loan for which they simply wish to get funded.” In sum, the fourth factor weighed mildly against finding a likely confusion.

Finally, the Board turned to examine the factor for which the case was remanded, the eighth factor. This factor looks at the length of time during and conditions under which there has been concurrent use without evidence of actual confusion. The eighth Dupont Factor requires consideration of the actual market condition, as opposed to the other factors in this case that require analysis based on the application and cited registration and do not consider evidence of how the Applicant and Registrant actually rendered their services in the marketplace. Considering the actual market condition, both services were based in Southern California and operated there for approximately 40 years with no evidence of actual confusion. Not only did both parties conduct businesses in the same state, they ultimately expanded into other states as well. However, there was no evidence to indicate any specific geographical areas of overlap between the consumer markets for the different services. Ultimately, though the parties both conducted business in California, and potentially in some of the same states nationwide, there was not enough evidence to show that “in the actual marketplace, the same consumers have been exposed to both marks for the respective services…” In conclusion, the Board deemed the eighth Dupont Factor neutral and after balancing the other relevant factors, found confusion likely and affirmed the refusal to register under §2(d) of the Lanham Act.

Though the Board ultimately ended up at the same conclusion as it did in 2017, it may have turned out differently if both parties had been heard from. In an ex parte context, there was not an opportunity for the Board to hear from the Registrant in regard to whether or not it was aware of any reported instances of confusion. Since the Board was only able to get “half of the story,” it gave limited probative value to the evidence provided for the eighth factor. This case demonstrates that the weight of each factor varies on a case-by-case basis.