When peace and love are not enough: consider it all

In Juice Generation Inc v GS Enterprises LLC (Case No 14-1853, July 20 2015, Taranto J), the US Court of Appeals for the Federal Circuit has reversed a refusal by the Trademark Trial and Appeal Board (TTAB) to register the mark PEACE LOVE AND JUICE in connection with juice bar services due to likelihood of confusion with the registered mark PEACE & LOVE for use with restaurant services.

Juice Generation, a New York City juice bar chain, applied for registration of the mark PEACE LOVE AND JUICE in 2012. GS Enterprises opposed the application, asserting likelihood of confusion with GS’s family of registered marks containing 'peace & love'. The TTAB sided with GS after evaluating the 13 DuPont factors, concluding that 'peace love', or the “dominant” portion of Juice Generation’s mark, was “virtually identical in appearance and sound” to GS’s PEACE & LOVE mark. Juice Generation appealed.

The Federal Circuit reversed, holding the TTAB had inadequately assessed the weakness of GS’s marks in light of evidence that third parties had used and, in some cases, registered marks containing the words 'peace' and 'love' for use in connection with restaurant services. Some examples in the record were PEACE LOVE AND PIZZA, PEACE LOVE & BARBECUE and PEACE LOVE YOGURT. Third-party use “bears on the strength or weakness of an opposer’s mark” because it suggests that the public has been conditioned to distinguish between highly similar marks. The TTAB discounted this evidence because of the lack of “specifics regarding the extent of sales or promotional efforts surrounding the third-party marks”, but the court found the evidence “nonetheless powerful on its face”. The TTAB should have inquired whether PEACE & LOVE is merely suggestive or descriptive in the food service industry.

GS’s earlier statements to the Patent and Trademark Office during prosecution made such an inquiry “particularly important”. GS’s application for the PEACE & LOVE mark was initially rejected due to likelihood of confusion with the mark PEECE LUV CHICKEN, to which GS responded that its mark gave “the overall commercial impression of a restaurant that has a theme and atmosphere of the counterculture prevalent in the 1960s and 1970s”. These statements supported Juice Generation’s position that PEACE & LOVE is a descriptive or suggestive mark.

Further, citing the well-established principle that a mark must be considered as a whole, the court held that the TTAB erred in considering only the words 'peace' and 'love' in Juice Generation’s mark. Juice Generation’s application had disclaimed the word 'juice', but even disclaimed elements are relevant, as “confusion is evaluated from the perspective of the purchasing public, which is not aware that certain words or phrases have been disclaimed”. Though it is permissible to deem certain features of a mark less important than others, it is erroneous to ignore them and fail to consider the mark in its entirety. The court remanded the case and instructed the TTAB to assess the strength or weakness of GS’s marks and to consider Juice Generation’s mark as a whole.

Esther Eunjin Lin, McDermott Will & Emery LLP, Boston