How to Argue That There is No Likelihood of Confusion Due to a Crowded Field After the Federal Circuit’s Decision in Juice Generation v. GS Enterprises

Whether trying to overcome a likelihood of confusion refusal by an examining attorney or litigating a Section 2(d) likelihood of confusion claim in an opposition proceeding, arguing that there is no likelihood of confusion due to a crowded field (many similar marks in use for similar goods or services) has pretty much been hit or miss. In other words, there has been little consistency by examining attorneys at the ex parte prosecution level or by the Trademark Trial and Appeal Board (“TTAB”) in oppositions or cancellations. But a pair of recent decisions by the Federal Circuit should help change that—hopefully. It appears that both examining attorneys and the TTAB need to give more careful consideration and afford greater weight to evidence of a crowded field.

Federal Circuit’s July 20, 2015 Decision in Juice Generation v. GS Enterprises

In Juice Generation, Juice Generation appealed the TTAB’s decision to sustain GS Enterprises’ opposition and refuse to register Juice Generation’s PEACE LOVE AND JUICE trademark for juice bar services based on GS Enterprises’ prior trademark registrations for PEACE & LOVE for restaurant services. On appeal, Juice Generation argued, among other things, that the TTAB did not give adequate consideration to Juice Generation’s evidence that there were a substantial number of similar marks in use on similar goods. The Federal Circuit agreed and reversed the TTAB’s decision:
Although Juice Generation introduced evidence of a fair number of third-party uses of marks containing “peace” and “love” followed by a third, product-identifying term, see note 1, supra, the Board discounted the evidence because there were no “specifics regarding the extent of sales or promotional efforts surrounding the third-party marks and, thus, what impact, if any, these uses have made in the minds of the purchasing public.” GS Enters., 2014 TTAB LEXIS 264, 2014 WL 2997639, at *7. Accordingly, the Board determined it could not “find that customers have become conditioned to recognize that other entities use PEACE AND LOVE marks for similar services.” Id. The Board’s treatment of the evidence of third-party marks, we conclude, does not adequately account for the apparent force of that evidence.
 The “specifics” as to the extent and impact of use of the third parties’ marks may not have been proven, but in the circumstances here, Juice Generation’s evidence is nonetheless powerful on its face. The fact that a considerable number of third parties use similar marks was shown in uncontradicted testimony. In addition, “[a] real evidentiary value of third party registrations per se is to show the sense in which . . . a mark is used in ordinary parlance.” 2 McCarthy on Trademarks and Unfair Competition § 11:90 (4th ed. 2015) (emphasis added). “Third party registrations are relevant to prove that some segment of the composite marks which both contesting parties use has a normally understood and well-recognized descriptive or suggestive meaning, leading to the conclusion that that segment is relatively weak.” Id.; see Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 917 (CCPA 1976) (even if “there is no evidence of actual use” of “third-party registrations,” such registrations “may be given some weight to show the meaning of a mark in the same way that dictionaries are used”). Marks that are descriptive or highly suggestive are entitled to a narrower scope of protection, i.e., are less likely to generate confusion over source identification, than their more fanciful counterparts. See, e.g., Nat’l Data Corp. v. Computer Sys. Eng’g, Inc., 940 F.2d 676, Id. at *2 (Fed. Cir. 1991) (unpublished); Drackett Co. v. H. Kohnstamm & Co., 404 F.2d 1399, 1400, 56 C.C.P.A. 852 (CCPA 1969) (“The scope of protection afforded such highly suggestive marks is necessarily narrow and confusion is not likely to result from the use of two marks carrying the same suggestion as to the use of closely similar goods.”).
A copy of the Federal Circuit’s decision is available here: Juice Generation.

Federal Circuit’s August 19, 2015 Decision in Jack Wolfskin v. New Millennium Sports

 On the heels of its decision in Juice Generation, the Federal Circuit issued its decision in Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, SLU, which reiterated its position on the crowded field issue. In Jack Wolfskin, Jack Wolfskin had applied for an angled paw print design mark for clothing, and New Millennium opposed on the grounds that it would be confusingly similar to its design mark consisting of the word KELME and a paw print. The TTAB sustained the opposition, and Jack Wolfskin appealed arguing, among other things, that the TTAB did not properly consider its evidence of third party paw print trademark registrations. Again, the Federal Circuit agreed:
We agree with Jack Wolfskin that the Board erred in its consideration of this evidence. Jack Wolfskin presented extensive evidence of third-party registrations depicting paw prints and evidence of these marks being used in internet commerce for clothing.2 The Board too quickly dismissed the significance of this evidence. As we recently explained in Juice Generation, such extensive evidence of third-party use and registrations is “powerful on its face,” even where the specific extent and impact of the usage has not been established. 2015 U.S. App. LEXIS 12456, 2015 WL 4400033, at *4 (detailing the extensive use of marks used in connection with the food service industry that incorporate the words “Peace” and “Love” ). For example, evidence of third-party registrations is relevant to “show the sense in which a mark is used in ordinary parlance,” 2015 U.S. App. LEXIS 12456, [WL] at *4; that is, some segment that is common to both parties’ marks may have “a normally understood and well-recognized descriptive or suggestive meaning, leading to the conclusion that that segment is relatively weak,” id. In addition, evidence of third-party use of similar marks on similar goods “can show that customers have been educated to distinguish between different marks on the basis of minute distinctions.” 2015 U.S. App. LEXIS 12456, [WL] at *3 (internal quotation marks omitted). In this case, Jack Wolfskin’s evidence demonstrates the ubiquitous use of paw prints on clothing as source identifiers. Given the volume of evidence in the record, consumers are conditioned to look for differences between paw designs and additional indicia of origin to determine the source of a given product. Jack Wolfskin’s extensive evidence of third-party uses and registrations of paw prints indicates that consumers are not as likely confused by different, albeit similar looking, paw prints. The Board’s conclusion that this factor was neutral is not supported by substantial evidence.
A copy of the Federal Circuit’s decision is available here: Jack Wolfskin.

Download Boilerplate Language of the Legal Rule to Insert Into a Crowded Field Argument

As a result of the Federal Circuit’s two recent decisions overturning the TTAB for failing to properly consider evidence of a crowded field, I have revised the language in my template that I use to make a crowded field argument to try to overcome a likelihood of confusion refusal. If you’d like a copy, just click on the button below.

Click Here For The Crowded Field Template

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Bruno Tarabichi

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