Abstract The author Anisha A. Mehta is an associate in the Chicago office of Ulmer & Berne. This article For years, it was well-established that a trade mark applicant could only rely on third-party references to show a lack of confusion with a prior-filed trade mark if the applicant put forth evidence of actual use and recognition of such third-party marks. Without evidence of actual use and recognition, the third-party references were given limited probative value. In 2015, the Federal Circuit turned the standard on its head in two back-to-back decisions, Juice Generation and Jack Wolfskin. The Federal Circuit significantly narrowed the scope of protection provided to trade mark owners, explaining that the mere existence of third-party marks is ‘powerful on its face’ without evidence of the extent of use or recognition in the marketplace. As a result of the Federal Circuit’s precedential decisions, new trade mark applicants have been able to show no likelihood of confusion in situations where they likely would not have been successful before. However, recent case law interpreting the Federal Circuit’s standards gives teeth back to trade mark owners when third-party uses are asserted against them. In trade mark proceedings before the US Patent and Trademark Office (USPTO), evidence of third-party use of similar marks on similar goods (or lack thereof) can play a strong part in determining the strength or weakness of a registered mark and, ultimately, whether a new mark can be registered. A substantial amount of third-party use can show that a registered mark is weak; the weaker the mark, the closer an applicant’s mark can come without causing a likelihood of confusion and thereby invading what amounts to a relatively narrow scope of protection.1 For years, it has been well-established that when asserting that a prior registration is weak to support an argument of a lack of confusion, an applicant is required to put forth evidence of actual use and recognition of third-party marks.2 The rationale behind requiring evidence of actual use in the marketplace and recognition by consumers was that this evidence was necessary to evaluate whether the third-party use was so widespread as to have had any impact on the perception of consumers. The Court of Customs and Patent Appeals (CCPA) had explained how the mere existence of such third-party registrations and third-party references does not act as evidence of what happens in the marketplace or that consumers are familiar with such third-party marks.3 Thus, without evidence of actual use and recognition, such as sales and advertising, courts deemed third-party marks as having limited probative value, that is, only persuasive for the purpose of providing the meaning of a term within a trade mark, not the scope of protection afforded to the mark. This is no longer the case. The Federal Circuit turned this well-established standard on its head in two consecutive decisions in 2015, stating that while ‘[t]he “specifics” as to the extent and impact of use of the third parties’ marks may not have been proven, … Juice Generation’s evidence is nonetheless powerful on its face’.4 The precedential decisions have resulted in the Trademark Trial and Appeal Board (‘TTAB’ or the ‘Board’) finding other ways in which to limit third-party evidence. The Federal Circuit’s decision in Juice Generation was immediately followed by Jack Wolfskin,5 reinforcing the same principles on third-party evidence and narrowing the scope of protection provided to trade mark owners. The court’s new standard was that the sheer volume of third-party marks shows that consumers would be able to distinguish between marks on the basis of minute distinctions, even without evidence of widespread use or how the third-party marks are perceived or recognized by consumers in the marketplace. Specifically, in Juice Generation, the Federal Circuit reversed the Board’s refusal to register the mark ‘PEACE LOVE AND JUICE’ and a design for use in connection with its juice bar services. The Federal Circuit rejected the argument that the third-party registrations were entitled to little weight without supporting specific evidence of sales and advertising. Instead, ‘the Board inadequately assessed and weighed the strength and weakness of [the registered] marks.’6 An adequate assessment meant giving more weight to the number and nature of similar marks on similar goods, or third-party marks, regardless of their use or impact in the marketplace. The substantial amount of third-party marks coupled with the reinforcement that each mark should be analysed in its ‘entirety’ was the tipping point for the Federal Circuit to conclude that there was no likelihood of confusion between these marks. In Jack Wolfskin, the Federal Circuit explicitly held that ‘the Board erred in its consideration’ of the extensive evidence presented by Jack Wolfskin.7 Here, the applicant presented significant evidence of third-party registrations as well as uses on the internet depicting paw prints used on clothing. The court held that the Board had incorrectly found a likelihood of confusion between the two marks primarily because it failed to recognize the relatively narrow range of protection afforded to marks involving paw print designs. The court’s rationale was that the extensive evidence would condition consumers to look for distinguishing features in the paw print designs, no matter how minute, for ‘additional indicia of origin to determine the source of a given product.’8 Thus, the existence of many third-party marks coupled with the reliance on consumers’ abilities to distinguish the marks set the new standard in according sufficient weight to third-party marks in the record. As a result of these precedential Federal Circuit decisions, the threshold for new trade mark applicants in proving a lack of likelihood of confusion under the sixth factor has significantly lowered: that is, new applicants have successfully rebutted likelihood of confusion claims due to a prior registration’s narrowed scope of protection in situations where the applicant may not have prevailed before. However, while it seemed as though the Federal Circuit gave free rein to applicants asserting third-party marks and made it easier for applicants to register their marks with less of a fight from owners of prior registrations, the redefined standards laid out in Juice Generation and Jack Wolfskin are continually being interpreted and further developed. Shortly after the Federal Circuit decisions, the TTAB grappled with the leniency provided by Juice Generation and Jack Wolfskin in which applicants could assert third-party marks without evidence of the extent of use and impact on consumers. In Vitasoy International,9 the Board sustained an opposition against applicant’s mark VITA for ‘coffee’ on likelihood of confusion grounds in favour of opponent’s registration of VITA for ‘tea drinks’ despite applicant’s argument that the registered mark VITA for ‘coffee’ was weak in light of its asserted third-party registrations, relying on Juice Generation and Jack Wolfskin. The Board noted that these examples provided little to no persuasive value because of their status and lack of use shown in their respective prosecution histories, such as the reliance on foreign applications for which no maintenance documents evincing use had been filed or pending applications filed under a 1(b) intent-to-use basis where no allegation of use was filed.10 The rejection of third-party evidence based on the substance of the applications and file histories shows the Board’s effort in salvaging the previous use-based standard of evidence. However, the Board ultimately sustained the opposition due to the fact that the goods reflected in the various third-party registrations were simply too broad and inapplicable, covering items such as fish products, canned tomatoes, olive oil, pasta, bakery desserts and energy drinks. With the exception of one VITA-formative registration, the applicant’s third-party evidence was irrelevant to the goods at issue. Thus, the Board distinguished Vitasoy International, where third-party evidence included far too broad a range of goods, from Juice Generation and Jack Wolfskin, where third-party evidence involved the very same restaurant services and clothing at issue. In other cases, the Board held that there were enough similar third-party marks covering closely related goods to justify the weakness of an opponent’s mark, following the Federal Circuit’s direction. In the precedential decision, Primrose Retirement,11 the Board found that relevant customers were in fact exposed to numerous ROSE and ROSE-formative marks and names specifically in connection with senior living communities such that these consumers likely had become alert to minute distinctions among the various marks. Here, the applicant submitted evidence of eight registered marks as well as over 90 websites in connection with senior living or assisted living communities. Thus, the Board deemed opponent’s mark, PRIMROSE, as weak and deserving of narrow protection and allowed the registration of applicant’s ROSE SENIOR LIVING mark based on the high volume of applicable third-party marks. Developments along these lines give teeth back to trade mark owners when a variety of third-party uses are asserted against them, especially where the parties’ marks and/or goods are much narrower in scope. For instance, it would be unreasonable for an applicant to expect that the assertion of various similar third-party marks would weaken an opponent’s mark simply because they fall within the same classification of goods identified on the Principal Register. For example, in Potion 10,12 the Board dismissed third-party evidence of ‘POTION’-formative registrations in Class 003 and internet references for various beauty products. The fact that the opponent’s mark, POTION 9, and the applicant’s marks, POTION 10 MIRACLE REPAIR SHAMPOO and POTION 10 MIRACLE REPAIR CONDITIONER, each covered hair care preparations in Class 003 did not warrant the applicant’s use of all types of Class 003 goods, that is, various beauty products, such as oils, fragrances, lotions, and so on, as support for weakening opponent’s mark. Here, applicant put forth 30 third-party registrations that included the term POTION, of which only 12 related to hair care products, as well as 43 internet references that included the term POTION, of which only 17 related to hair care products. Thus, only some of these third-party marks were relevant to the goods. The Board then went one step further in the assessment of third-party marks: among the relevant POTION-formative third-party registrations and internet references relating to hair care products, the Board concluded that none of them portrayed the common term in the same POTION-plus-number format as that of the applicant’s marks and opponent’s POTION 9 mark, rendering even the hair-related third-party marks unpersuasive.13 In other words, the parties’ marks were closer to one another with respect to similarity in their overall commercial impressions as well as similarity of their respective goods, more so than to that of any third-party registration or reference. Thus, the applicant’s third-party evidence was irrelevant and had no impact on the strength of the opponent’s registration. Importantly, the Board uniquely narrowed the manner in which third-party evidence should be utilized by applicants. Not only should the goods associated with third-party marks be close enough to the goods at issue as to have an impact on the consumers of those goods, but the format, structure and syntax of the marks themselves and how the marks are presented to the public can also be a significant and determinative factor in establishing whether third-party marks have any impact on the strength or weakness of a registered mark. Notably, a broad range of goods can make an opponent more susceptible to ‘weakness’, or a narrowed scope of protection, due to the existence of a larger pool of comparable third-party marks. In Midnight Velvet,14 the applicant put forth evidence of 40 third-party registrations for marks including the term VELVET in connection with overlapping goods as that of the parties’ goods, such as jewellery, clothing and retail clothing store services. The Board relied on the above-mentioned Federal Circuit precedent in concluding that opponent’s MIDNIGHT VELVET mark deserved a very narrow scope of protection and that applicant’s MINT VELVET mark could be registered. Here, the opponent’s goods listed in its registration were extremely broad, including clothing, watches, jewellery, handbags, shoes, accessories, cosmetics, fragrances and catalogue services for kitchen items and houseware. Had the range of goods in the registration been smaller—perhaps only jewellery—the impact of various third-party marks covering an assortment of goods would likely have been unpersuasive. In conclusion, the Federal Circuit’s strong declaration of third-party marks being ‘powerful on its face’ in Juice Generation removed the requirements of showing actual use and recognition of cited third-party marks, allowing third-party marks to be more loosely and frequently cited against trade mark owners. However, the Board has honed in on ways in which third-party evidence must be properly tailored to the marks at issue, restoring structure and necessary parameters in the examination of the number and nature of third-party marks in the marketplace. The structure and syntax of the marks as well as how the marks are presented to consumers are notable factors. Importantly, the main way in which the Board has limited third-party evidence post-Juice Generation is by carefully comparing the parties’ goods and services with that of the cited third-party marks in order to examine the appropriate scope of goods and services, avoiding an overly broad analysis. The Board’s persistent examination as to the relevant aspects of citing third-party marks, despite the widespread authority provided by the Federal Circuit, takes consumer perception back into account, which is ultimately the reason for such a factor to exist in a likelihood of confusion analysis. Footnotes 1 Evidence of third-party use was and continues to be evaluated under the sixth factor of the du Pont factors, ie ‘the number and nature of similar marks in use on similar goods’, in a likelihood of confusion analysis or dispute. In re E. I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973). While this is one of many du Pont factors, it has been a driving factor in the likelihood-of-confusion analysis in recent years. 2 See Anthony’s Pizza & Pasta Int’l Inc. vAnthony’s Pizza Holding Co., 95 1271 U.S.P.Q.2d (T.T.A.B. 2009), aff’d 415 Fed. Appx. 222 (Fed. Circ. 2010) (restricting the scope of protection given to the name ‘Anthony’ because of evidence of actual, extensive use of the third-party registrations through telephone listings using the name Anthony for Italian restaurants and pizzerias). 3 See AMF Inc. vAm. Leisure Products, Inc., 177 U.S.P.Q. 268, 269 (C.C.P.A. 1973) (further noting that the existence on the principal register of confusingly similar marks should not aid an applicant to register an additional mark likely to cause confusion, mistake or deception). 4 Juice Generation, Inc. vGS Enters. LLC, 115 U.S.P.Q.2d 1671, 1674 (Fed. Cir. 2015) (emphasis added). 5 Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA vNewMillenniumSports, S.L.U., 116 U.S.P.Q.2d 1129 (Fed. Cir. 2015). 6 Juice Generation, 115 U.S.P.Q.2d at 1674. 7 Jack Wolfskin, 116 U.S.P.Q.2d at 1136 (emphasis added). 8 Jack Wolfskin, 116 U.S.P.Q.2d at 1136–7. 9 Vitasoy International Holdings Limited vCaffe Vita, Inc., 2015 BL 408452 (T.T.A.B 30 November 2015) (not precedential). 10 Id, at *4. 11 Primrose Retirement Communities, LLC vEdward Rose Senior Living, LLC, 122 U.S.P.Q.2d 1030 (T.T.A.B. 2016). 12 See The Wella Corp. vIt’sa 10, Inc. andIt’sa New 10, LLC, 2017 BL 340007 (T.T.A.B. 28 August 2017) (not precedential). 13 Id. 14 Midnight Velvet, Inc. vSabre Retail Fashion Limited, 2017 BL 340009 (T.T.A.B. 30 August 2017) (not precedential). © The Author(s) 2018. Published by Oxford University Press. All rights reserved.
Journal of Intellectual Property Law & Practice – Oxford University Press
Published: Mar 7, 2018
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