Posts Tagged ‘Trademark Trial and Appeal Board’

Examining The Dupont Factors on a Case-by-Case Basis

Sunday, April 5th, 2020

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.

 

Another Case Involving Likelihood of Confusion

Saturday, March 28th, 2020

In keeping with the likelihood of confusion theme, this post will detail another case where a mark was refused under §2(d) of the Lanham Act. Like the previous case, the examining attorney along with the Trademark Trial and Appeal Board both used the Dupont Factors to determine whether the marks were confusingly similar.

In a 2020 non-precedential decision, the Trademark Trial and Appeal Board affirmed the refusal for registration for the mark JUSTICE NETWORK. The Board agreed that the mark was confusingly similar to JUSTICE CENTRAL. Both parties used their marks for various forms of television programming. The Board started with the second Dupont Factor which focuses on the similarity of services provided. While both parties used their marks for various forms of programs, the opposer, and owner of the mark JUSTICE CENTRAL, used the mark for a narrower scope of programming consisting of “programs in the field of law and courtroom legal proceedings.” However, the applicant, and owner of JUSTICE NETWORK, did not specify the range of programs offered, therefore there was overlap in the parties’ services and the Board found the services to be “legally identical.” Next, the Board moved onto the first Dupont Factor which is the similarity of the marks. Ultimately, the Board found the two marks, JUSTICE CENTRAL and JUSTICE NETWORK, similar and therefore the first Dupont Factor weighed in favor of finding a likelihood of confusion. In examining the first factor, the Board started with the term justice, which is the dominant word in both marks. The Board stated, “[c]onsumers in general are inclined to focus on the first word or portion in a trademark.” Equally important, the Board concluded that the term network was highly descriptive, if not generic and therefore “has less source-identifying significance and is clearly subordinate.” In finding this, the Board discredited any differences between the two terms “network” and “central.” The opposer, and owner of the mark, JUSTICE CENTRAL, argued the seventh, eighth and ninth Dupont Factors as well. The seventh being the fame of the prior mark, the eighth being the nature and extent of any actual confusion and the ninth being concurrent use. In regard to the seventh factor, the Board found very little compelling evidence from either side and deemed both the eighth and ninth factors neutral. Turning back to the first two factors, the Board found that the marks gave the “same overall impression” and the parties’ offered “overlapping services offered in the same trade channels to the same classes of customers.” In summation, the Board sustained the opposition and affirmed the refusal for registration.

Likelihood of Confusion Case

Sunday, March 15th, 2020

In the post on likelihood of confusion, the Dupont Factors were discussed. Though there are nine factors, not all of them are relevant or applicable in every case. The first two factors are the most important across the board. After taking them into consideration, an examining attorney will look to the remaining factors in order to support a finding of likelihood of confusion. If there is enough evidence to support such a finding, a mark may be deemed unregistrable with the USPTO under §2(d) of the Lanham Act. The following is a case that was taken before the Trademark Trial and Appeal Board on the grounds of likelihood of confusion.

In a 2020 non-precedential decision, the Trademark Trial and Appeal Board affirmed the refusal for registration for the mark HARDROK EQUIPMENT INC. for “distributorship services in the field of industrial machinery and parts therefor in the mineral and aggregate industries” (EQUIPMENT INC. disclaimed). The Board found confusion to be likely with the previously registered mark HARDROCK for “rock drills, drill bits, and other drilling equipment.” Turning to the first factor in the Dupont Factors, the Board found that the two marks are “quite similar in appearance, sound, and connotation and commercial impression when considered in their entireties.” In that manner, the first factor was satisfied. The second factor, relating to the relatedness of the goods and services, is examined based on what was described in the registration and application. The Board concluded that even though the applicant and the cited registered mark owner did not have identical goods, “they substantially overlap, which weighs in favor of finding a likelihood of confusion.” Therefore, the second factor was satisfied. The applicant then cited the fourth factor: The conditions under which and buyers to whom sales are made, i.e., “impulse” vs. careful, sophisticated purchasing. In this case, the fourth factor supported a finding that confusion was not likely, however, the first two factors are the most heavily considered. Simply because other factors may be relevant or applicable, does not mean they outweigh the first two. In summation, the Board found that “[s]ophistication of buyers and purchaser care are relevant considerations but are not controlling on this factual record.” So, the Board affirmed the §2(d) refusal for registration.

Genericness Cases

Saturday, March 7th, 2020

The previous post discussed generic marks, which are the weakest type of mark on the Spectrum of Distinctiveness. Generic marks are not registrable on either the Principal Register or the Supplemental Register. A mark is considered generic if the mark is comprised wholly, or partially of a term(s) that the public primarily associates with a genus of goods or services.

Below, are two recent Trademark Trial and Appeal Board decisions affirming refusal for registration under §§ 2(e)(1) and 2(f) of the Lanham Act:

In a 2019 precedential opinion, the Trademark Trial and Appeal Board affirmed the refusal for registration of the generic mark MALAI, for ice cream. The Board ultimately found that the relevant public would understand the term MALAI to refer to a critical part of “ice cream, gelato, dairy-free ice cream, frozen yogurt, frozen desserts, ice cream sandwiches, sorbet, freezer pops and ice cream sundaes.” The Board applied the two-part inquiry set forth in H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F .2d at 990, 228 USPQ at 530 (Fed. Cir. 1986) to determine whether or not a mark is generic. For the first part of the inquiry, asking what the genus of the goods or service at hand is, there was no argument that the applicant’s identification of his goods satisfied this prong. In this case, the relevant consuming public consists of ordinary consumers who eat and purchase ice cream and equivalent products. The Board then looked at the second prong of the inquiry that asks how the relevant public perceives the term MALAI in the context of the applicant’s goods. Supporting evidence for genericness, included a dictionary definition of the term and a Wikipedia entry for “Ras Malai” as a kind of dessert as well as several articles, recipes and internet materials that identified the term as a cream.  Both pieces of evidence showed that the word MALAI “is commonly used in the English language as a genus of rich, high-fat creams commonly used in Indian and South Asian culinary dishes, especially dishes with a sweet taste.” The Board agreed with the examining attorney that the evidence showed that “malai” has its own English meaning for cream as a cooking ingredient. The Board agreed that there is no hard-and-fast rule the name of any ingredient in a product would be considered generic, but in this specific case, the public comprehends the ingredient name “to refer to a key aspect or sub-category of the genus of the goods, it is generic for those goods;” see Royal Crown, 127 USPQ2d at 1046; see also In re Empire Tech. Dev. LLC, 123 USPQ2d 1544 (TTAB 2017). In light of this, the Board affirmed the refusal to register on the Supplemental Register under §23 of the Lanham Act.

In a 2020 non-precedential opinion, the Trademark Trial and Appeal Board affirmed the refusal for registration of the generic mark FIDGET CUBE on the Supplemental Register, for “stress relief exercise toys.” (Note that FIDGET was previously disclaimed.) The Board found that the term was a “generic name of the subgenus or subcategory of Applicant’s identified goods.” As a main defense, the applicant argued that he was the first user of the term FIDGET CUBE. However, the fact that no third-party registrant had used the term, does not negate a finding of genericness. The examining attorney submitted dictionary definitions of equivalent words, third-party registrations disclaiming “fidget,” and Internet product reviews, online retailer advertisements and online articles referring to “fidget cubes.” The Board remarked that there was no ban on evidence taken from Internet forums or blogs. The Board then turned to evidence that showed the term FIDGET CUBE generic for a type of stress-relieving toy. In a final, and unconvincing, argument, the applicant attempted to argue that there were other names for the type of product, including terms such as “fidget dice, infinity cube, fidget box, stress cube, stress block and dodecahedron.” In light of these alternative names, the applicant rationalized that there was no need for competitors to use the term FIDGET CUBE to describe their products. The Board was quick to remind the applicant that there can be more than one generic term for a particular genus of goods or services. In summation, the Trademark Trial and Appeal Board affirmed the refusal to register under §23 and §45 of the Lanham Act.

Generic marks may not be registered on the Principal Register or the Supplemental Register in any case. If the mark is comprised wholly, or in part, by generic material, where the generic term(s) retain significance to the relevant public, the mark is generic. When conducting the two-part inquiry, an examining attorney must look at the mark as a whole. Unlike other marks on the Spectrum of Distinctiveness, generic marks cannot acquire distinctiveness, nor can an applicant argue first use as an immunization against genericness.

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