YOU BE THE JUDGE. Exploring Likelihood of Confusion Through Recent Federal Circuit and TTAB Decisions

Transcription

1 YOU BE THE JUDGE Exploring Likelihood of Confusion Through Recent Federal Circuit and TTAB Decisions

2 Overview Likelihood of Confusion is the Standard 2

3 Likelihood of Confusion Factors In re E.I. du Pont de Nemours & Co., F2d. 1357, 177 USPQ 563 (CCPA 1973) Similarity of the Marks Similarity of the Goods/Services Similarity of established, likely-to-continue trade channels Conditions under which, and to whom, sales are made Fame of opposer s mark Third-party marks Actual confusion/contemporaneous use Length of time with concurrent use and no actual confusion Variety of goods on which a mark is not used Extent of potential confusion Any other established fact probative of the effect of use 3

4 The Board of Regents, The University of Texas System v. Southern Illinois Miners, LLC, 110 USPQ2d 1182 (TTAB 2014) [precedential] Southern Illinois Miners Applications: MINERS Class 16: books, brochures, bulletins, charts, guides, etc. concerning professional baseball Class 25: professional baseball imprinted clothing, namely, athletic uniforms, golf shirts, headgear, etc. Class 41: entertainment in the nature of professional baseball games 4

5 The Board of Regents, The University of Texas System v. Southern Illinois Miners, LLC, 110 USPQ2d 1182 (TTAB 2014) [precedential] Board of Regents, The University of Texas System (Opposed Class 16 and 25 only) Mark Goods and Services MINERS Entertainment services, namely, sponsoring and conducting college athletic exhibitions and competitions in Class 41 MINERS Printed programs for college sporting events and media guides in Class 16 MINERS College imprinted clothing, namely, shirts, hats and baby shirts in Class 25 MINERS Miniature basketballs in Class 28 Clothing, namely, shirts, hats, baby shirts and baby pants in Class 25 and various educational and entertainment services in Class 41 Shirts, jackets, warm-up suits, sweat shirts, sweat pants, caps, bandanas, shorts, scarves, ponchos, raincoats, tank tops, sweat bands, cloth baby bibs, baby panties and dresses, wrist bands, belts, socks, wind suits in Class 25 5

6 The Board of Regents, The University of Texas System v. Southern Illinois Miners, LLC, 110 USPQ2d 1182 (TTAB 2014) [precedential] Counterclaim Partial cancellation under Section U.S.C. 1068; Trademark Rule 2.133(b), 37 C.F.R (b) Grants board authority to restrict the goods and services in an adverse party s registrations if the registration is overly broad or ambiguous The party seeking the limitation must prove The adverse party is not using its mark on the goods or services sought to limited and A finding of likelihood of confusion will be avoided by the entry of the restriction of the goods or services 6

7 The Board of Regents, The University of Texas System v. Southern Illinois Miners, LLC, 110 USPQ2d 1182 (TTAB 2014) [precedential] YOU BE THE JUDGE Confusion: OPPOSITION SUSTAINED Goods are the Same: Different types of imprinting College/professional could result in identical goods with same marks 7

8 In re Allegiance Staffing, 115 USPQ2d 1319 (TTAB 2015) [precedential]. ALLEGIANCE STAFFING for temporary employment agency services provided to others, not including hospitals and healthcare providers [STAFFING disclaimed] V. Eight Registrations for ALLEGIS including one for personal recruitment and placement services for temporary and permanent positions 8

9 In re Allegiance Staffing, 115 USPQ2d 1319 (TTAB 2015) [precedential]. Does it matter if applicant Allegiance Staffing previously owned a registration for ALLEGIANCE STAFFING for the same services until 2012 when applicant inadvertently failed to renew the registration? What if six of the eight ALLEGIS registrations cited against the current ALLEGIANCE STAFFING application were approved for publication over the old AS registration? 9

10 In re Allegiance Staffing, 115 USPQ2d 1319 (TTAB 2015) [precedential]. YOU BE THE JUDGE NO CONFUSION: du Pont Factor 13 Any other established fact probative of the effect of use 10

11 The North Face Apparel Corp. v. Sanyang Industry Co. Ltd., Opposition No (September 18, 2015) [precedential] Sanyang Industry Co. Ltd. Application: Wide range of goods/services Cl. 7 lawnmowers, tractors, engines and parts and other goods Cl. 11 lights and accessories for vehicles and other goods Cl. 12 automobiles, motorcycles, electric scooters, electric bikes and parts thereof, etc. Cl. 16 various paper goods, pens, prints, calendars and other goods Cl. 25 swimsuits, shirts, beachwear, vests, t-shirts, etc. Cl. 35 advertising and design services, retail department stores, retail stores featuring clothing, textiles; retail furniture stores and various other services Cl. 37 automotive maintenance and repair 11

12 The North Face Apparel Corp. v. Sanyang Industry Co. Ltd., Opposition No (September 18, 2015) [precedential] North Face opposed the applications in all Classes Class 18 backpacks, duffel bags Class 20 sleeping bags Class 22 tents and tent accessories Class 25 various items of clothing, boots, shoes 12

13 The North Face Apparel Corp. v. Sanyang Industry Co. Ltd., Opposition No (September 18, 2015) [precedential] V. North Face argued likelihood of confusion and dilution Introduced evidence of fame of annual sales in the millions and its total company-wide advertising figures Argued its goods are sold at stores that also sell bikes and scooters Argued it has clothing specifically designed for use on motorcycles and scooters Argued it sponsors bicycle races North Face did not challenge Sanyang s use 13

14 The North Face Apparel Corp. v. Sanyang Industry Co. Ltd., Opposition No (September 18, 2015) [precedential] YOU BE THE JUDGE Confusion Cl. 25 and 35: Identical goods (clothing) and retail sales of clothing is related to clothing No Confusion in others: Not famous, goods are unrelated 14

15 Digest of In re Franciscan Vineyards, Inc., No (Fed. Cir. Dec. 9, 2014) PINNACLE V. Apple juices and apple-based non-alcoholic beverages Wine 15

16 Digest of In re Franciscan Vineyards, Inc., No (Fed. Cir. Dec. 9, 2014) YOU BE THE JUDGE NO CONFUSION: Goods Unrelated 16

17 Allagash Brewing Company v. Cathie A. Pelletier, Opposition No (September 22, 2015) ALLAGASH ( Beer ) V. ALLAGASH WILD ( jellies and jams; marmalades ) 17

18 Allagash Brewing Company v. Cathie A. Pelletier, Opposition No (September 22, 2015) =? 18

19 Allagash Brewing Company v. Cathie A. Pelletier, Opposition No (September 22, 2015) YOU BE THE JUDGE CONFUSION: Opposition Sustained Beer is sufficiently commercially related to jams and jellies such that consumers could be confused as to source. Both are sold in retail stores where brands may overlap. 19

20 Jack Wolfskin Ausrustung fur Draussen GmbH & Co. v. New Millennium Sports, S.L.U., 116 USPQ2d 1129 (Fed. Cir. 2015) [precedential] V. Both for use in connection with various items of clothing TTAB Sustained Opposition finding goods are, in part, identical, the channels of trade would be presumed to be all normal channels, and the marks are visually similar notwithstanding the opposer s mark also includes the word KELME 20

21 Jack Wolfskin Ausrustung fur Draussen GmbH & Co. v. New Millennium Sports, S.L.U., 116 USPQ2d 1129 (Fed. Cir. 2015) [precedential] Jack Wolfskin argued the that the Board erred with regard to two of the du Pont factors Similarity of the Marks Number and Nature of Third Party Marks 21

22 Jack Wolfskin Ausrustung fur Draussen GmbH & Co. v. New Millennium Sports, S.L.U., 116 USPQ2d 1129 (Fed. Cir. 2015) [precedential] YOU BE THE JUDGE NO CONFUSION: Dissimilarity of the marks the dominate portion is the word and paw print designs are weak What if Millennium had registered the paw print design alone? What if Millennium had plead common law rights in the paw print alone? 22

23 In re i.am.symbolic, llc, Serial Nos , , and (October 7, 2015) [precedential] I AM Class 3 cosmetics; hair care preparations; skin care preparations; shower and bath gels; tooth paste and mouthwash, among other products Class 9 sunglasses and sunglass cases and various other goods such as electronic devices, software, DVDs and which are not at issue Class 14 bracelets; clocks; jewelry; key chains, among other products 23

24 In re i.am.symbolic, llc, Serial Nos , , and (October 7, 2015) [precedential] Reg. No I AM Perfume in Class 3 Reg. No Sunglasses in Class 9 Jewelry, bracelets, necklaces, watches among other goods in Class 14 Reg. No I AM Silicone stretchable wrist band in the nature of a bracelet in Class 14 i.am.symbolic, llc, amended its description of goods to include that the applied-for goods are associated with William Adams, professionally known as will.i.am 24

25 In re i.am.symbolic, llc, Serial Nos , , and (October 7, 2015) [precedential] YOU BE THE JUDGE Confusion: Refusal to Register Confirmed Reverse Confusion 25

26 Jeffrey Feulner, P.A. v. Cordell Practice Management, LLC Cancellation No (October 26, 2015) MEN S DIVORCE V. MEN S DIVORCE LAW FIRM 26

27 Jeffrey Feulner, P.A. v. Cordell Practice Management, LLC Cancellation No (October 26, 2015) MEN S DIVORCE on supplemental registry for legal services. Petitioner claimed a likelihood of confusion and a priority of use for MEN S DIVORCE LAW FIRM 27

28 Jeffrey Feulner, P.A. v. Cordell Practice Management, LLC Cancellation No (October 26, 2015) YOU BE THE JUDGE CONFUSION: Cancelled The mark MEN S DIVORCE on the Supplemental Registry was predated by the unregistered mark MEN S DIVORCE LAW FIRM used for the similar services. 28

29 In re Aquamar, Inc., 115 USPQ2d 1122 (TTAB 2015) [precedential] MARAZUL for fish and seafood products, namely, frozen and fresh processed fish and seafood, and imitation crab meat. Applicant indicated that the wording MARAZUL has no meaning in a foreign language even though the Examining Attorney required Applicant to provide a translation statement that mar azul means blue sea in Spanish. BLUE SEA for non-live fish and frozen fish 29

30 In re Aquamar, Inc., 115 USPQ2d 1122 (TTAB 2015) [precedential] 30

31 In re Aquamar, Inc., 115 USPQ2d 1122 (TTAB 2015) [precedential] YOU BE THE JUDGE Confusion: Refusal to Register Confirmed 31

32 Tootsie Roll Industries, LLC v. Keelen and Breckenfeld, Opposition No (October 5, 2015) [not precedential] FLUFF IT UP V. FLUFFY STUFF FLUFFY STUFF COTTON CANDY POPS 32

33 Tootsie Roll Industries, LLC v. Keelen and Breckenfeld, Opposition No (October 5, 2015) [not precedential] The parties stipulated that TRI has standing TRI s FLUFFY STUFF mark has priority TRI s currently uses FLUFFY STUFF mark on cotton candy TRI has registrations for FLUFFY STUFF for cotton candy Applicant filed FLUFF IT UP mark for natural cotton candy TRI s cotton candy has artificial flavors TRI doesn t offer fresh hand spun cotton candy at live venues Applicant sold FLUFF IT UP goods as vendor or participated at festivals, private parties and other live events and the product is sold pre-packaged To the best of the parties knowledge, other than the subject marks, no other FLUFF or FLUFFY marks are used Accelerated Case Resolution 6 months from the time the parties agreed to ACR until briefing was over 33

34 Tootsie Roll Industries, LLC v. Keelen and Breckenfeld, Opposition No (October 5, 2015) [not precedential] YOU BE THE JUDGE Confusion: Opposition Sustained 34

35 Questions? Thank you for playing YOU BE THE JUDGE Jodi DeSchane, Counsel David Merritt, Associate