Federal Circuit finds that 'paw print' trademarks can co-exist

In Jack Wolfskin Ausrustung Fur Draussen GmbH & Company KGAA v New Millennium Sports SLU (Case No 14-1789, August 19 2015, Chen J), on appeal from the Trademark Trial and Appeal Board (TTAB), the US Court of Appeals for the Federal Circuit has reversed the TTAB’s decision on the issue of likelihood of confusion with regard to two parties’ paw print trademarks, explaining that the TTAB did not properly compare the parties’ marks as a whole and failed to give proper weight to “significant evidence” of paw prints appearing in third-party trademark registrations in connection with clothing. However, the court affirmed the TTAB’s dismissal of a cancellation claim.

Outdoor apparel and clothing company Jack Wolfskin filed an application to register a “non-human paw print” design for use in connection with clothing goods and products for the outdoors. New Millennium Sports filed a notice of opposition at the TTAB opposing the registration of Jack Wolfskin’s trademark application, alleging a likelihood of confusion with New Millennium’s prior trademark registration for its design mark comprising the stylised word ‘Kelme’ adjacent a paw print. In response, Jack Wolfskin filed a counterclaim for cancellation of New Millennium’s registration, claiming that the company had abandoned use of the KELME (and paw print design) mark.

The TTAB rejected the trademark cancellation counterclaim, finding that New Millennium did not abandon its trademark registration, and sustained the opposition on the grounds that Jack Wolfskin’s paw print trademark was likely to cause consumer confusion with New Millennium’s prior registration. Jack Wolfskin appealed.

On appeal, Jack Wolfson argued that New Millennium ceased using the registered version of its KELME (and paw print design) trademark because the company was using a modified or modernised version of the trademark that was arguably different from the mark as depicted in the company’s 1994 registration. The evidence before the TTAB suggested that the KELME trademark was used by New Millennium exactly as it appeared on its certificate of registration between the years 1994 to 2004, after which the design mark was changed slightly. In dismissing the cancellation counterclaim, the TTAB relied on the concept of ‘tacking’, which provides a trademark owner the ability to rely on an earlier form of a mark when later using a modified version, so long as the modified version creates the same, continuous commercial impression as the registered mark.

The Federal Circuit agreed with the TTAB, finding that any changes to the word element of the mark were “minor stylistic alterations”. As for the paw print portion of the trademark, the court reaffirmed the TTAB’s conclusion that the design could not be interpreted as anything other than a paw and determined that the modernised version of the full trademark created the same, continuous commercial impression.

On the issue of likelihood of confusion, the TTAB considered seven relevant DuPont likelihood of confusion factors and concluded that the Jack Wolfskin paw print design mark “so closely resembles [the opponent]’s registered mark as to be likely to cause confusion… as to the source of [the] applicant’s goods”. On appeal, Jack Wolfskin argued that the TTAB’s conclusion was erroneous due to a lack of substantial evidence supporting two DuPont factors, namely, the similarity of the marks and the number and nature of similar marks in use in commerce.

The Federal Circuit agreed, noting that the similarity or dissimilarity of the marks should be compared in their entireties, and that it is improper to dissect a mark when it contains both text and design elements. The court also stated that the “verbal portion of the mark is the one most likely to indicate the origin of the goods to which it is affixed”. In this regard, the court determined that the TTAB failed to account for the literal element of the KELME (and paw print design) trademark and found no evidence to indicate that consumers recognise the paw print alone as being associated with New Millennium.

The Federal Circuit next looked at evidence demonstrating that numerous paw print design trademarks have been registered with the US Patent and Trademark Office (USPTO) in connection with clothing goods. The TTAB gave this evidence little weight because there was no proof that such third-party marks were actually in use in commerce and because a large portion of the marks were used in connection with school athletic teams and pet-related goods.

However, the court found that the TTAB erred in its review of the evidence, and instead stated that the evidence of the third-party paw print trademarks demonstrates the degree to which such marks are used in “ordinary parlance”. Because of the ubiquitous use of paw print trademarks in connection with clothing goods, the court found that consumers are conditioned to look for differences in such “weak” marks, as well as additional indicia of origin, such as the dominant ‘Kelme’ portion of New Millennium’s trademark. The Federal Circuit concluded that the TTAB’s likelihood of confusion analysis was not supported by substantial evidence and reversed and remanded for further consideration.

While a USPTO examining attorney or the TTAB may not always consider the existence of third-party trademark registrations to be persuasive in order to overcome a “likelihood of confusion” refusal, this case is an important reminder that such evidence can be highly effective when the marks at issue may be considered “weak” or relatively commonplace on the USPTO register and in commerce.

Sarah Bro, McDermott Will & Emery LLP, Orange County