Association of the United States Army loses registration battle

In In re Association of the United States Army, the US Patent and Trademark Office's Trademark Trial and Appeal Board (TTAB) has affirmed the examining attorney's refusal to register ASSOCIATION OF THE UNITED STATES ARMY (and 'Eagle' design) for "association services, namely, promoting the interests of active members of the United States Army, National Guard, reservists, civilians, retirees and family members" in view of three prior registrations for marks featuring the words 'US ARMY' filed by the Department of the Army for various types of employment and career counselling services and related software. The TTAB engaged in a detailed analysis of the likelihood of confusion factors set forth in In re EI du Pont de Nemours & Co, 476 F2d 1357 (CCPA 1973), in reaching its conclusion.

First, the TTAB considered the similarity of the marks, noting that the focus is on the recollection of the average purchaser rather than a side-by-side comparison. Also, the TTAB confirmed that although marks must be considered in their entireties, it is not improper to give more weight to the dominant feature of a mark in determining the commercial impression the mark creates. The TTAB acknowledged that designs are significant elements of a mark, especially when considering the mark's appearance, but the word elements of the marks in issue in this case were likely to be recognized and used by purchasers as the primary source indicating feature. Thus, the TTAB found that the words 'US ARMY' and 'US ARMY RESERVE' in the cited marks and the words 'UNITED STATES ARMY' in the applicant's mark were the dominant source-indicating features because the term 'US Army' is a well-recognized designation in view of its national prominence as the name of one of the branches of the US military.

In finding the marks similar in terms of connotation, the TTAB discounted the design features of the marks as contributing little, if anything, to the marks' connotations. The TTAB then dissected the marks and analyzed the similarities and differences of each element in reaching its conclusion that the marks were similar in connotation. Although the designs used with the marks made them somewhat dissimilar in appearance, the overall commercial impression they created was similar, and this factor therefore weighed in favour of a finding of likelihood of confusion.

In finding that the parties' respective services are related, the examining attorney made of record six third-party registrations that covered association services similar to the applicant's services, and various types of employment and career development services. The TTAB found these registrations to be probative to the extent they suggested that the goods or services they covered were of a kind that emanated from a single source under a single mark. In addition, the record included printouts from the applicant's website which showed that the applicant offered employment and career related services as part of its association services. Based on this evidence, the TTAB found the applicant's association services to be related to the services in the cited registrations.

The trade channels and classes of purchasers and users of the parties' respective services were also found to be similar, namely, current, former and potential members of the US Army and their families.

The TTAB rejected the applicant's contention that the relevant purchasers are careful and knowledgeable about the parties and their respective services. The applicant relied on form declarations from 13 of its members, which said that the affiant did not believe the applicant to be connected with the US Army. The TTAB declined to conclude from this evidence that all military personnel similarly would understand that the applicant was not connected with the US Army. Also, because users of the applicant's services included civilians, the TTAB reasoned that these "ordinary persons" would be likely to be confused.

The TTAB recognized that there were no instances of actual confusion and noted that the marks had coexisted in the marketplace for over 50 years without any apparent confusion. The evidence of long-time coexistence was sufficient to establish that the absence of confusion was legally significant and entitled to some weight in the likelihood of confusion analysis, despite the ex parte nature of the proceeding.

The applicant further argued that the US Army impliedly consented to its use of its mark. The TTAB rejected this assertion, noting that while the US Army may have consented to the applicant's use of its mark, there was nothing in the record from which the TTAB could infer that the US Army also consented to the registration of the applicant's mark.

Based on all of these factors, the TTAB concluded that although the absence of confusion weighed in the applicant's favour, that factor was not dispositive. It found that factor to be outweighed by the evidence pertaining to the other duPont factors that pointed to the existence of a likelihood of confusion.

Susan Progoff, Fish & Neave Intellectual Property Group of Ropes & Gray, New York

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