Third-Party Use of Similar Marks Relevant to Strength of Opposer’s Trademark

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Federal Circuit Review – Issue No. 65-01
Evidence of Third-Party Use of Similar Marks on Similar Goods Is Relevant to the Determination of Strength and Weakness of an Opposer’s Mark.

Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., No. 2014-1789, 2015 U.S. App. LEXIS 14514 (Fed. Cir. Aug. 19, 2015) (Before Lourie, Bryson, and Chen, J.) (Opinion for the court, Chen, J.). Click Here for a copy of the opinion.

Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA (“Wolfskin”) applied to register a design mark consisting of an angled paw print for use with its clothing, footwear, and accessory products. New Millennium (“NM”) filed an opposition asserting that Wolfskin’s mark would likely create confusion with NM’s KELME mark. Wolfskin denied the allegation and counterclaimed to cancel NM’s KELME mark for abandonment. The Trademark Trial and Appeal Board (“Board”) sustained NM’s opposition and refused Wolfskin’s application.

On appeal, the Federal Circuit agreed with the Board that NM had not abandoned its KELME mark. “A trademark owner abandons its mark if use of the mark has been ‘discontinued with intent not to resume.’” In addition, a trademark owner using a modified version of its registered mark may avoid abandonment of the original mark “if the modified version ‘creates the same, continuous commercial impression.’” Here, NM’s original registered mark consists of the word KELME on the left and an image of a paw print on the right. NM modified the mark by altering the font of KELME and the style of the paw print (adding claws). NM has been using the modified mark since 2004. The Federal Circuit concluded that these modifications were minor – the KELME element “still appears in all capital, block style lettering” and the paw element “still appears to be a paw.” Therefore, a reasonable fact-finder could conclude that “the new version creates the same continuing commercial impression as the registered mark.” The Court affirmed the Board’s dismissal of Wolfskin’s cancellation counterclaim.

The Federal Circuit agreed with Wolfskin that there was insufficient evidence of a “likelihood of confusion.” The similarity of marks should be compared “in their entireties as to appearance, sound, connotation and commercial impression.” Here, the Board acknowledged the obligation to evaluate the marks in their entirety. However, it only considered the “appearance, sound, and connotation” of the paw print and ignored the impact of the KELME portion (the more dominant portion) because “companies that use marks consisting of a word plus a logo often display their logos alone, unaccompanied by the literal portions of their trademarks.” The Court held that this statement by the Board alone, without substantial evidence, could not “warrant disregarding the verbal portion of a composite mark.”

The Court also disagreed with the Board’s dismissal of Wolfskin’s evidence of third party paw print registrations and uses in commerce. “Evidence of third-party use bears on the strength or weakness of an opposer’s mark.” Here, the evidence demonstrated “ubiquitous use of paw prints on clothing as source identifiers.” Given the widespread use of paw prints, consumers would know to look for additional indicia of origin rather than just the paw designs. The evidence, therefore, demonstrated that “consumers are not as likely confused by different, albeit similar looking, paw prints.”

In conclusion, the two marks were dissimilar because the dominant KELME element in NM’s mark was absent from Wolfskin’s mark. In addition, substantial evidence of third-party registrations and uses of paw prints on clothing indicated that NM’s mark was weak, i.e. it had a narrow scope of protection. Therefore, the Court reversed the Board’s ruling and concluded that there was no likelihood of confusion between NM’s and Wolfskin’s marks.

The Author

Joseph Robinson

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

Joseph Robinson

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

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