Likelihood of confusion considered in context of pending application

United States of America

In In re Mighty Leaf Tea (Case 2009-1497, April 13 2010), the US Court of Appeals for the Federal Circuit has weighed in on the issue of likelihood of confusion in the context of a pending trademark application, affirming a refusal to register under 15 USC § 1052(d) (§2d of the Lanham Act).

The applicant sought registration of the two-letter mark ML in regular, typed letters (no stylization, no design) for personal care products and skincare preparations, including skin soap, body wash, bath salts and massage oil. The trademark examining attorney, and later the Trademark Trial and Appeal Board (TTAB), refused registration in light of a prior registration for the stylized mark ML MARK LEES for skin care products, including skin cleanser, skin lotion, powder and blush.

On appeal, the applicant argued that the examining attorney and the TTAB had erred in their conclusion that confusion was likely to result from its registration of ML. Specifically, the applicant argued that its mark was different from the cited registration because it did not include the stylized elements of the registered mark and it lacked the 'Mark Lees' term. Moreover, the applicant argued that the registered mark was weak and thus not entitled to a broad scope of protection because there were other ML marks on the register for related goods.

The Federal Circuit was not persuaded. Beginning by noting that the standard test for confusing similarity was the test originally set forth in EI DuPont De Nemours & Co (476 F2d 1357 (CCPA 1973)), the court reiterated that not all of the DuPont factors are relevant in every case, and that only the factors of significance need to be considered. The key factors at issue in this case were:

  • the similarity of the marks; and
  • the number and nature of similar third-party marks in use on similar goods.

Addressing the similarity of the marks, the court agreed with the TTAB that neither the stylized nature of the 'ML' in the registered mark, nor the presence of 'Mark Lees' were sufficient to eliminate the likelihood of confusion. The court accepted the TTAB’s conclusion that the 'ML' aspect of both the applicant’s mark and the cited registration were the dominant elements of the respective marks, and in view of the related - indeed overlapping - nature of the parties’ goods, the 'ML' of the applicant’s mark would likely be viewed as a shortened version of the registered mark, thus giving rise to a consumer belief that the parties’ goods emanated from the same source.

As to the applicant’s argument that its mark was for “standard characters” and was thus different from the stylized nature of the 'ML' element of the cited registration, the court found no error in the TTAB’s conclusion that, as a standard character mark, it was not limited to any particular rendition. As such, it could appear (and, indeed, in one of the specimens submitted by the applicant, did appear) in a stylized fashion similar in nature to the stylization of the 'ML' in the cited registration.

With respect to the alleged weakness of the cited registration, the court again found no error in the TTAB’s conclusion that the presence on the Trademark Register of the third-party registrations made of record by the applicant was insufficient to weaken the registration such that the applicant’s mark could also exist on the register without giving rise to a likelihood of confusion. Significantly, the applicant was unable to point to one third-party registration that included the letters 'ML' in proximity to one another, and not merely as a part of a larger mark. Rather, the applicant’s third-party evidence consisted of registrations for the marks MLE, MLUXE, M’LIS, JML and AMLAVI. While all of these registrations contain the letters 'ML', the fact that such letters did not stand alone and, more importantly, the fact that there was no evidence that the 'ML' element of these third-party marks had any recognized significance or meaning within the longer letter strings, entitled them to little weight on the issue of weakening the registered mark.

Finally, the applicant’s failure to proffer evidence that the third-party marks were actually in use in commerce was fatal to its claim that such third-party registrations were sufficient to weaken the cited registration. While third-party registrations may be helpful in establishing that a particular term has a recognized meaning (in the same way a dictionary might be used), the mere presence of a mark on the register is insufficient. In order for such references to be persuasive in an argument that a particular common element is weak, the evidence must show that such references are in use. Without evidence of use, there can be no support for the argument that consumers encounter the various marks in the marketplace and are thus accustomed to distinguishing between them based on their differences, thereby limiting the scope of protection to which any particular one is entitled.

Timothy J Kelly, Fitzpatrick Cella Harper & Scinto, New York

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