‘Reasonable manners’ standard rejected in examinations, as well as oppositions

United States of America

In In Re Viterra Inc (Case 11-1354, March 6 2012), reviewing the decision of the Trademark Trial and Appeal Board (TTAB) refusing to register the trademark XCEED for agricultural seed, the US Court of Appeals for the Federal Circuit has upheld the refusal, finding that the XCEED mark was likely to cause confusion with the registered word and design mark X-SEED for the same goods. 

The applicant applied to register the trademark XCEED, in standard characters, for agricultural seed. The examining attorney refused registration, finding that the applicant’s mark was likely to cause confusion with the registered word and design mark X-SEED, consisting of a large stylised letter 'X' in the colour red with the term '-Seed' appearing in smaller letters in the colour black outlined in grey:

The examining attorney refused registration after concluding that the parties’ goods were identical and that the parties’ marks were phonetic equivalents and visually similar. On appeal, the TTAB affirmed the rejection, giving “heavy weight” to the identical nature of the parties’ goods. Concerning appearance of the marks, the TTAB applied its 'reasonable manners' standard, explaining that, “when an applicant seeks registration of its word mark in standard characters, then the TTAB must consider all reasonable manners in which those words could be depicted”. Under that standard, the TTAB found that one reasonable variation of the applicant’s XCEED mark could include a large capital letter 'X' followed by the term 'ceed' in smaller letters, which would resemble the registrant’s pre-existing mark.

On appeal to the Federal Circuit, the applicant argued that the distinctive design and colour elements of the pre-existing X-SEED mark rendered it visually different from the XCEED mark. The TTAB had rejected that argument under the 'reasonable manners' standard. In effect, because the applicant had applied to register its mark in standard character form, it was not limited to any particular depiction of the mark and, if permitted to register it, the applicant could conceivably use a format similar to the pre-existing registered mark which would cause confusion. 

After the TTAB issued its decision in this case, the Federal Circuit issued a decision in an appeal from a TTAB decision in an opposition rejecting the 'reasonable manners' test as unduly narrow and not required by statute, regulation or case law. In Citigroup v Capital City Bank Group, the Federal Circuit held that a standard should be used that allows a broader range of marks to be considered in the likelihood of confusion analysis when a standard character mark is at issue. 

The applicant tried to distinguish Citigroup, arguing it should not apply in an ex parte trademark examination, but should be limited to inter partes proceedings such as oppositions. The Federal Circuit rejected the proposition that the 'reasonable manners' test should apply in trademark examinations yet not trademark oppositions, explaining that the analysis in both types of cases - whether there is a likelihood of confusion - is the same. Therefore, the court held that Citigroup applies equally in the context of trademark examinations. Ultimately, the court upheld the TTAB’s rejection of the application, finding likelihood of confusion based significantly on the parties’ identical goods and similar marks.  

Rita Weeks, McDermott Will & Emery LLP, Washington DC 

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