As stated in section 1207.01 Likelihood of Confuion of the Trademark Manual of Examination Procedure: In the ex parte examination of a trademark application, a refusal under §2(d) is normally based on the examining attorney's conclusion that the applicant's mark, as used on or in connection with the specified goods or services, so resembles a registered mark as to be likely to cause confusion. (See TMEP §1207.02 concerning §2(d) refusals to register marks that so resemble another mark as to be likely to deceive, and TMEP §1207.03 concerning §2(d) refusals based on unregistered marks. Note: Refusals based on unregistered marks are not issued in ex parte examination.)

The examining attorney must conduct a search of Office records to determine whether the applicant's mark so resembles any registered mark(s) as to be likely to cause confusion or mistake, when used on or in connection with the goods or services identified in the application. The examining attorney also searches pending applications for conflicting marks with earlier effective filing dates. See TMEP §§1208 et seq. regarding conflicting marks. The examining attorney must place a copy of the search strategy in the file.

If the examining attorney determines that there is a likelihood of confusion between applicant's mark and a previously registered mark, the examining attorney refuses registration under §2(d). Before citing a registration, the examining attorney must check the automated records of the Office to confirm that any registration that is the basis for a §2(d) refusal is an active registration. See TMEP §716.02(e) regarding suspension pending cancellation of a cited registration under §8 of the Act or expiration of a cited registration for failure to renew under §9 of the Act.

Also, if Office records indicate that an assignment of the conflicting registration has been recorded, the examining attorney should check the automated records of the Assignment Services Branch of the Office to determine whether the conflicting mark has been assigned to applicant.

In In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), the Court of Customs and Patent Appeals discussed the factors relevant to a determination of likelihood of confusion. In ex parte examination, the issue of likelihood of confusion typically revolves around the similarity or dissimilarity of the marks and the relatedness of the goods or services. The other factors listed in du Pont may be considered only if relevant evidence is contained in the record. See In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003) ("Not all of the DuPont factors may be relevant or of equal weight in a given case, and ‘any one of the factors may control a particular case,'" quoting In re Dixie Restaurants, Inc., 105 F.3d 1405, 1406-07, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)); In re National Novice Hockey League, Inc., 222 USPQ 638, 640 (TTAB 1984). In an ex parte case, the following factors are usually the most relevant:

  • The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
  • The relatedness of the goods or services as described in an application or registration or in connection with which a prior mark is in use.
  • The similarity or dissimilarity of established, likely-to-continue trade channels.
  • The conditions under which and buyers to whom sales are made, i.e., "impulse" vs. careful, sophisticated purchasing.
  • The number and nature of similar marks in use on similar goods.
  • A valid consent agreement between the applicant and the owner of the previously registered mark.

The Court of Appeals for the Federal Circuit has provided the following guidance with regard to determining and articulating likelihood of confusion:

The basic principle in determining confusion between marks is that marks must be compared in their entireties and must be considered in connection with the particular goods or services for which they are used (citations omitted). It follows from that principle that likelihood of confusion cannot be predicated on dissection of a mark, that is, on only part of a mark (footnote omitted). On the other hand, in articulating reasons for reaching a conclusion on the issue of confusion, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties (footnote omitted). Indeed, this type of analysis appears to be unavoidable.

In re National Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 750-51 (Fed. Cir. 1985).

There is no mechanical test for determining likelihood of confusion. The issue is not whether the actual goods are likely to be confused but, rather, whether there is a likelihood of confusion as to the source of the goods. In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993), and cases cited therein. Each case must be decided on its own facts.

The determination of likelihood of confusion under §2(d) in an intent-to-use application does not differ from the determination in any other type of application.

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  • Our determination under Section 2(d) is based upon an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion.
    • ProQuest Information and Learning Company v. Jacques R. Island, Opposition No. 91158016, (TTAB 2007)
      • Our determination under Section 2(d) is based upon an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
    • The B.V.D. Licensing Corporation v. Florencio Rodriguez, Opposition No. 91157529, (TTAB 2007)
      • We now turn to the question of likelihood of confusion. Our determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue. See In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); see also, In re E.I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
    • Fort James Operating Company v. Royal Paper Converting, Inc., Opposition No. 91122964, (TTAB 2007)
      • Our determination of the issue of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
    • Parfums de Coeur, Ltd. v. Lory Lazarus, Opposition No. 91161331, (TTAB 2007)
      • This brings us to the issue of likelihood of confusion. Our determination of this issue is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
    • The Black & Decker Corporation v. Emerson Electric Co., Opposition No. 91158891, (TTAB 2007)
      • Our determination of the issue of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., supra. See also, In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
    • 7-Eleven, Inc. v. Lawrence I. Wechsler, Opposition No. 91117739, (TTAB 2007)
      • Our determination of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also, In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 UPSQ2d 1201, 1203 (Fed. Cir. 2003).
    • In re Ginc UK Limited, Serial No. 78618843, (TTAB 2007)
      • Our determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
    • The Wet Seal, Inc. v. FD Management, Inc., Opposition No. 91157022, (TTAB 2007)
      • Our determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
    • Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, Opposition No. 91160856, (TTAB 2007)
      • Our determination of the issue of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. duPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
    • Nike, Inc. v. WNBA Enterprises, LLC, Opposition No. 91160755, 91160763, (TTAB 2007)
      • Our determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
    • In re Continental Graphics Corporation, Serial No. 75/033,628, (TTAB 1999).
      • Our determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue. See In re E.I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
    • In re Thomas H. Wilson, Serial No. 75/285,881, (TTAB 2001).
      • Our determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue. See In re E.I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
    • Time Warner Entertainment Company L.P. v. Karen L. Jones, Opposition No. 112,409, (TTAB 2002).
      • Our likelihood of confusion determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the likelihood of confusion factors set forth in In re E. I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
    • Baseball America, Inc. v. Powerplay Sports, Ltd., Opposition No. 91120166, (TTAB 2004).
      • Our likelihood of confusion determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the likelihood of confusion factors set forth in In re E. I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
    • Knight Textile Corporation v. Jones Investment Co., Inc., Opposition No. 91153852, (TTAB 2005).
      • Our likelihood of confusion determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
    • Ava Enterprises, Inc. v. Audio Boss USA, Inc., Opposition No. 91125266, (TTAB 2006).
      • Our determination of the issue of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. duPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
    • Starbucks U.S. Brands, LLC and Starbucks Corporation d.b.a. Starbucks Coffee Company v. Marshall S. Ruben, Opposition No. 91156879, (TTAB 2006).
      • Our determination of likelihood of confusion is based upon our analysis of all of the probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion. See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
    • In re Mark Thomas, Serial No. 78334625, (TTAB 2006).
      • Our determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue, including the similarities of the marks and the similarities of the goods and/or services. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
    • In re Homeland Vinyl Products, Inc., Serial No. 76361399, (TTAB 2006).
      • Our determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
    • Mattel, Inc. v. Funline Merchandise Co., Inc., Cancellation No. 92040128, (TTAB 2006).
      • Our determination of the issue of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
    • In re The W.W. Henry Company, L.P., Serial No. 78401595, (TTAB 2007).
      • Our likelihood of confusion determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the likelihood of confusion factors set forth in In re E. I. duPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
    • In re Microsoft Corporation, Serial No. 78/013678, (TTAB 2003).
      • Our determination under Section 2(d) of the Act is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue. See In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); In re E.I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
    • Blue Man Productions, Inc. v. Erich Tarmann, Opposition No. 91154055, (TTAB 2005).
      • With respect to the issue of likelihood of confusion, our determination of this issue is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
    • In re Box Solutions Corp., Serial No. 76267086, (TTAB 2006).
      • We now turn to the refusal under Section 2(d). Our determination of the issue of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
    • In re Big Pig, Inc., Serial No. 78249582, (TTAB 2006).
      • Our determination of the issue of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
    • Maids to Order of Ohio, Inc. v. Maid-to-Order, Inc., Cancellation No. 92040571, (TTAB 2006).
      • Our determination of the issue of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. duPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
  • In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and/or services.
    • In re Paper Doll Promotions, Inc., Serial No. 76451078, (TTAB 2007)
      • In any likelihood of confusion analysis, two key, although not exclusive, considerations are the similarities of the marks and the similarities of the goods or services. Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976)("The fundamental inquiry mandated by Section 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks").
    • ProQuest Information and Learning Company v. Jacques R. Island, Opposition No. 91158016, (TTAB 2007)
      • In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the relationship of the goods and/or services. Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
    • Parfums de Coeur, Ltd. v. Lory Lazarus, Opposition No. 91161331, (TTAB 2007)
      • In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
    • In re Ginc UK Limited, Serial No. 78618843, (TTAB 2007)
      • In any likelihood of confusion analysis, however, two key considerations are the similarities or dissimilarities between the marks and the similarities or dissimilarities between the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
    • The Wet Seal, Inc. v. FD Management, Inc., Opposition No. 91157022, (TTAB 2007)
      • In any likelihood of confusion analysis, however, two key considerations are the similarities or dissimilarities between the marks and the similarities or dissimilarities between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
    • Nike, Inc. v. WNBA Enterprises, LLC, Opposition No. 91160755, 91160763, (TTAB 2007)
      • In any likelihood of confusion analysis, however, two key considerations are the similarities or dissimilarities between the marks and the similarities or dissimilarities between the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
    • In re Continental Graphics Corporation, Serial No. 75/033,628, (TTAB 1999).
      • In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
    • In re Infinity Broadcasting Corporation of Dallas, Serial No. 75/689,077, (TTAB 2001).
      • In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the services. Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
    • INTERLEGO AG and LEGO SYSTEMS, INC. and KIRKBI AG v. ABRAMS/GENTILE ENTERTAINMENT, INC. and MJJ MULTIMEDIA LLC, Opposition No. 103,612, (TTAB 2002).
      • In any likelihood of confusion analysis two key, although not exclusive, considerations are the similarities of the goods and the similarities of the marks. Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). ("The fundamental inquiry mandated by Section 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.")
    • Alfacell Corporation v. Anticancer, Inc., Cancellation No. 92032202, (TTAB 2004).
      • In any likelihood of confusion analysis, two key considerations are the similarities or dissimilarities between the marks and the similarities or dissimilarities between the goods. Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
    • Ava Enterprises, Inc. v. Audio Boss USA, Inc., Opposition No. 91125266, (TTAB 2006).
      • In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
    • Centraz Industries, Inc. v. Spartan Chemical Company, Inc., Opposition No. 91159335, (TTAB 2006).
      • In any likelihood of confusion analysis, two key considerations are the similarities or dissimilarities between the marks and the similarities or dissimilarities between the goods. Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
    • In re Homeland Vinyl Products, Inc., Serial No. 76361399, (TTAB 2006).
      • In any likelihood of confusion analysis, however, two key considerations are the similarities or dissimilarities between the marks and the similarities or dissimilarities between the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
    • Mattel, Inc. v. Funline Merchandise Co., Inc., Cancellation No. 92040128, (TTAB 2006).
      • In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
    • In re Box Solutions Corp., Serial No. 76267086, (TTAB 2006).
      • In any likelihood of confusion analysis, however, two key considerations are the similarities or differences between the marks and the similarities or differences between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
    • In re Big Pig, Inc., Serial No. 78249582, (TTAB 2006).
      • In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
    • Maids to Order of Ohio, Inc. v. Maid-to-Order, Inc., Cancellation No. 92040571, (TTAB 2006).
      • In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
  • Our determination under Section 2(d) is based on an analysis of all of the facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue.
    • Miss Universe L.P., LLLP v. Community Marketing, Inc., Opposition No. 91160627, (TTAB 2007)
      • Our likelihood of confusion determination under Section 2(d) is based on an analysis of all of the facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue (the du Pont factors). See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
    • In re Association of the United States Army, Serial No. 76578579, (TTAB 2007).
      • Our likelihood of confusion determination under Section 2(d) is based on an analysis of all of the facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue (the du Pont factors). See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
    • Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (TTAB 2007)
      • Our determination under Section 2(d) is based on an analysis of all of the facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
    • Motion Picture Association of America, Inc. v. Respect Sportswear, Inc., Opposition No. 91153141, (TTAB 2007)
      • Our likelihood of confusion determination under Section 2(d) is based on an analysis of all of the facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue. See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
    • Barbara's Bakery, Inc. v. Barbara Landesman, Opposition No. 91157982, (TTAB 2007)
      • Our likelihood of confusion determination under Section 2(d) is based on an analysis of all of the facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue (the du Pont factors). See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
    • In re Infinity Broadcasting Corporation of Dallas, Serial No. 75/689,077, (TTAB 2001).
      • Our determination under Section 2(d) is based on an analysis of all of the facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
    • In re Infinity Broadcasting Corporation of Dallas, Serial No. 75/689,077, (TTAB 2001).
      • Our determination under Section 2(d) is based on an analysis of all of the facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
    • Alfacell Corporation v. Anticancer, Inc., Cancellation No. 92032202, (TTAB 2004).
      • Our determination under Section 2(d) is based on an analysis of all of the facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
    • DC Comics v. Pan American Grain Mfg. Co. Inc., Opposition No. 91125404, (TTAB 2005).
      • Our determination of likelihood of confusion is based on an analysis of all of the facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
    • Centraz Industries, Inc. v. Spartan Chemical Company, Inc., Opposition No. 91159335, (TTAB 2006).
      • Our determination under Section 2(d) is based on an analysis of all of the facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
    • Truescents LLC v. Ride Skin Care, L.L.C., Opposition No. 91158556, (TTAB 2006).
      • Our likelihood of confusion determination under Section 2(d) is based on an analysis of all of the facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue (the du Pont factors). See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
    • Kohler Co. v. Baldwin Hardware Corporation, Cancellation No. 92041434, (TTAB 2007).
      • Our determination under Section 2(d) is based on an analysis of all of the facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
    • Genesco Inc. and Genesco Brands Inc. v. Gregory Martz, Opposition No. 121,296, (TTAB 2003).
      • Our determination of likelihood of confusion is based on an analysis of all of the facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
    • Teledyne Technologies, Inc. v. Western Skyways, Inc., Cancellation No. 92041265, (TTAB 2006).
      • Our determination under Section 2(d) is based on an analysis of all of the facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
  • Use of a disputed term by third parties is not relevant to the issue of likelihood of confusion between opposer's and applicant's respective marks and therefore, this does not create a genuine issue of material fact.
    • Apple Computer v. TVNET.net, Inc., Opposition No. 91168875, (TTAB 2007).
      • Applicant has also argued, in an effort to raise a genuine issue, that opposer has permitted many companies to use the prefix "i" in the names of various products that are used in connection with opposer's IPOD device and therefore, applicant should not be precluded from being able to use its VTUNES.NET mark. However, we find that use of the "i" prefix by others for products used in connection with opposer's IPOD device is not relevant to the issue of likelihood of confusion between opposer's and applicant's respective marks and therefore, this does not create a genuine issue of material fact.
  • Evidence of actual confusion is not a prerequisite for finding likelihood of confusion.
    • Apple Computer v. TVNET.net, Inc., Opposition No. 91168875, (TTAB 2007).
      • Lastly, applicant's arguments regarding the lack of actual confusion and its good faith adoption of its VTUNES.NET mark do not raise genuine issues of material fact that preclude entry of summary judgment. Evidence of actual confusion is not a prerequisite for finding likelihood of confusion.
  • While evidence of bad faith adoption typically will weigh against an applicant, good faith adoption typically does not aid an applicant attempting to establish no likelihood of confusion.
    • Apple Computer v. TVNET.net, Inc., Opposition No. 91168875, (TTAB 2007).
      • Also, even accepting as fact that applicant adopted its mark in good faith, this does not mean that confusion is less likely.7

        FOOTNOTE 7 "While evidence of bad faith adoption typically will weigh against an applicant, good faith adoption typically does not aid an applicant attempting to establish no likelihood of confusion. J & J Snack Foods Corp. v. McDonald's Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1891 (Fed. Cir. 1991)."

  • Each case must be decided on its own facts and not on the fact that two arguably similar marks have been allowed for registration by the Office.
    • In re Paper Doll Promotions, Inc., Serial No. 76451078, (TTAB 2007)
      • As can be gleaned from our decision, we find the commercial impressions of the two cited marks to differ somewhat. Even if they presented the same commercial impressions, our decision on the registrability of applicant's mark must be based on the record in this case and not on the fact that two arguably similar marks have been allowed for registration by the Office. See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001).
  • Any doubts as to whether a likelihood of confusion exists must be resolved against applicant and in favor of opposer.
    • Chicago Bears Football Club, Inc. and NFL Properties LLC v. 12TH Man/Tennessee LLC, (TTAB 2007)
      • The Federal Circuit and its predecessor have held that "there is no excuse for even approaching the well-known trademark of a competitor and that all doubt as to whether confusion, mistake, or deception is likely is to be resolved against the newcomer, especially where the established mark is one which is famous." Nina Ricci S.A.R.L. v. E.T.F. Enterprises Inc., 889 F.2d 1070, 12 USPQ2d 1901, 1904 (Fed. Cir. 1989), quoting, Planter's Nut & Chocolate Co. v. Crown Nut Co., Inc., 305 F.2d 916, 134 USPQ 504, 511 (CCPA 1962) (internal punctuation marks omitted). Therefore, inasmuch as opposers' marks have achieved significant recognition and renown, this factor weighs heavily in opposers' favor.
    • Miss Universe L.P., LLLP v. Community Marketing, Inc., Opposition No. 91160627, (TTAB 2007)
      • To the extent that any doubts might exist as to the correctness of our likelihood of confusion determination, we resolve such doubts against applicant. See Ava Enterprises Inc. v. Audio Boss USA Inc., 77 USPQ2d 1783 (TTAB 2006); Baseball America Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844 (TTAB 2004).
    • In re Chica, Inc., Serial No. 76627857, (TTAB 2007).
      • Even if we had any doubts about whether there is a likelihood of confusion, we must resolve any doubts in favor of the prior registrant and against the newcomer. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988) and In re Pneumatiques, Caoutchouc Manufacture et Plastiques Kleber-Colombes, 487 F.2d 918, 179 USPQ 729, 729-30 (CCPA 1973). ).
    • In re Association of the United States Army, Serial No. 76578579, (TTAB 2007).
      • To the extent that any doubts might exist as to the correctness of this conclusion, we resolve such doubts against applicant. See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993); In re Hyper Shoppes (Ohio) Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin's Famous Pastry Shoppe, Inc., supra.
    • Barbara's Bakery, Inc. v. Barbara Landesman, Opposition No. 91157982, (TTAB 2007)
      • To the extent that any doubts might exist as to the correctness of our likelihood of confusion conclusion, we resolve such doubts against applicant. See Century 21 Real Estate Corp., supra; Ava Enterprises Inc. v. Audio Boss USA Inc., 77 USPQ2d 1783 (TTAB 2006); and Baseball America Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844 (TTAB 2004).
    • In re Fiesta Palms, LLC, Serial No. 76595049, (TTAB 2007).
      • To the extent that we have any doubts, we resolve them, as we must, in registrant's favor. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988); In re Pneumatiques, Caoutchouc Manufacture et Plastiques Kleber-Colombes, 487 F.2d 918, 179 USPQ 729, 729-30 (CCPA 1973); and Jump Designs, 80 USPQ2d at 1376.
    • Recot, Inc. v. M. C. Becton, Opposition No. 96,518, (TTAB 2000).
      • Finally, we confess that we have at least some doubt about our conclusion that confusion is likely. But, of course, where there is any doubt on the question of likelihood of confusion, it must be resolved against the newcomer as the newcomer has the opportunity of avoiding confusion, and is obligated to do so. See TBC Corp. v. Holsa Inc., 126 F.3d 1470, 44 USPQ2d 1315 (Fed. Cir. 1997); and In re Hyper Shoppes (Ohio) Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988).
    • In re Comexa Ltda., Serial No. 75/396,043, (TTAB 2001).
      • Accordingly, we agree with the Examining Attorney that the purchasing public, aware of registrant's AMAZON restaurant services, who then encounter applicant's AMAZON and parrot design chili sauce and pepper sauce in grocery and convenience stores, are likely to believe that these goods and services come from, or are sponsored or licensed by the same source. If we had any doubt on this issue, that doubt, in accordance with precedence, must be resolved in favor of the registrant and prior user. In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984).
    • Baseball America, Inc. v. Powerplay Sports, Ltd., Opposition No. 91120166, (TTAB 2004).
      • To the extent that any doubts as to this conclusion might exist (and we have none), such doubts must be resolved against applicant. See In re Hyper Shoppes (Ohio) Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984).
    • DC Comics v. Pan American Grain Mfg. Co. Inc., Opposition No. 91125404, (TTAB 2005).
      • Applicant, as the newcomer, had the obligation to select a mark which would avoid confusion, but it did not do so. Therefore, to the extent there is any doubt on the issue of likelihood of confusion, such doubt must be resolved in favor of opposer. See TBC Corp. v. Holsa Inc., 126 F.3d 1470, 44 USPQ2d 1315 (Fed. Cir. 1997); and In re Hyper Shoppes (Ohio) Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988).
    • Ava Enterprises, Inc. v. Audio Boss USA, Inc., Opposition No. 91125266, (TTAB 2006).
      • In any event, a newcomer has both the opportunity and the obligation to avoid confusion. Consequently, a party which knowingly adopts a mark similar to one used by another for the same or closely related goods does so at its own peril; all doubt on the issue of likelihood of confusion must be resolved against the newcomer. See TBC Corp. v. Holsa Inc., 126 F.3d 1470, 44 USPQ2d 1315 (Fed. Cir. 1997); and In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • We arrive at this conclusion mindful of the requirement that a long established principle of trademark law requires us to resolve doubts about confusion against the newcomer. Kenner Parker Toys, 963 F.2d at 355, 22 USPQ2d at 1458.
    • In re Jump Designs, LLC, Serial No. 76393986, (TTAB 2006).
      • Lastly, to the extent that any of the points raised by applicant raise a doubt about likelihood of confusion, that doubt is required to be resolved in favor of the prior registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984).
    • Kohler Co. v. Baldwin Hardware Corporation, Cancellation No. 92041434, (TTAB 2007).
      • To the extent that any of respondent's points raise a doubt about our conclusion, all doubt on the issue of likelihood of confusion must be resolved in favor of the prior user and against the newcomer. San Fernando Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 2 (CCPA 1977).
    • Teledyne Technologies, Inc. v. Western Skyways, Inc., Cancellation No. 92041265, (TTAB 2006).
      • Any doubt on the issue of likelihood of confusion is resolved in favor of the prior user and against the newcomer. Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768 (TTAB 1992).
    • Schering-Plough HealthCare Products, Inc. v. Ing-Jing Huang, Opposition No. 91117558, (TTAB 2007)
      • Lastly, to the extent that there may be any doubt on our finding of likelihood of confusion, we resolve that doubt, as we must, in favor of opposer as the prior user. See Giant Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 395 (Fed. Cir. 1983).
    • Nike, Inc. v. WNBA Enterprises, LLC, Opposition No. 91160755, 91160763, (TTAB 2007)
      • To the extent that there is any doubt on the issue of likelihood of confusion, it is settled that such doubt must be resolved in favor of the prior user and/or registrant. Broderick & Bascom Rope Co. v. The Goodyear Tire and Rubber Co., 531 F.2d 1068, 189 USPQ 412 (CCPA 1976); and Crown Radio Corp. v. Soundscriber Corp., 506 F.2d 1392, 184 USPQ 221 (CCPA 1974).
    • Time Warner Entertainment Company L.P. v. Karen L. Jones, Opposition No. 112,409, (TTAB 2002).
      • Any doubts as to whether a likelihood of confusion exists (we have none) must be resolved against applicant and in favor of opposer. See In re Hyper Shoppes (Ohio) Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988); In re Martin's Famous Pastry Shoppe, Inc., supra.
    • Centraz Industries, Inc. v. Spartan Chemical Company, Inc., Opposition No. 91159335, (TTAB 2006).
      • To the extent that any of applicant's points raise a doubt about our conclusion on likelihood of confusion, doubt on the issue of likelihood of confusion is resolved in favor of the prior user and against the newcomer. Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768 (TTAB 1992).
  • While the TTAB may look to other cases for guidance, these cases do not present hard and fast rules as to when confusion is likely and when it is not.
    • Parfums de Coeur, Ltd. v. Lory Lazarus, Opposition No. 91161331, (TTAB 2007)
      • However, as has been frequently stated, each trademark case must be decided on its own merits. While we may look to other cases for guidance, these cases do not present hard and fast rules as to when confusion is likely and when it is not. Thus, there is no general rule that television programs and products are related goods and services despite the fact that likelihood of confusion has been found in some cases involving marks used for a television series and for goods. It is still opposer's burden to show that its goods are related to the applicant's services.
  • The TTAB is not bound by a previous examining attorney's determination that the cited mark was entitled to register over applicant's other registrations, and to the extent the cited registration was issued in error, we will not repeat the error by permitting a confusingly similar mark to register again.
    • In re Ginc UK Limited, Serial No. 78618843, (TTAB 2007)
      • Furthermore, our determination of likelihood of confusion must be based on the facts and record before us. We are not bound by a previous examining attorney's determination that the cited mark was entitled to register over applicant's two registrations, and to the extent the cited registration was issued in error, we will not repeat the error by permitting a confusingly similar mark to register again. See In re Nett Designs, 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) ("The Board must decide each case on its own merits"); In re Cooper, 254 F.2d 611, 117 USPQ 396, 401 (CCPA 1958) ("...the decision of this case in accordance with sound law is not governed by possibly erroneous past decisions by the Patent Office"); and In re Perez, 21 USPQ2d 1075 (TTAB 1991) (Section 2(d) refusal based on prior conflicting registration affirmed, despite the fact that the conflicting registration had not been cited as bar to applicant's previous registration (now expired) of the same mark for the same goods).
    • In re Mark Thomas, Serial No. 78334625, (TTAB 2006).
      • Further, our determination of likelihood of confusion must be based on the facts and record before us. We are not bound by the previous examining attorney's determination that applicant's mark was registrable, and we will not compound the problem of the registration of a confusingly similar mark by permitting such a mark to register again. See In re Nett Designs, 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (stating that "The Board must decide each case on its own merits" and specifically noting that "Even if some prior registrations had some characteristics similar to Nett Designs' application, the PTO's allowance of such prior registrations does not bind the Board or this court."). See also In re Perez, 21 USPQ2d 1075, 1077 (TTAB 1991)("[W]e are, of course, not bound by an Examining Attorney's prior determination as to registrability"; refusal affirmed notwithstanding that the conflicting registration had not been cited against applicant's previous registration, now expired, of the same mark for the same goods.)
  • Third-party registrations are of little probative value because they do not prove the marks are in use or that the public is familiar with them.
    • Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (TTAB 2007)
      • In any event, with respect to third-party registrations, such evidence, even if properly of record, is of little probative value in deciding likelihood of confusion because they do not prove that the marks are in use or that the public is familiar with them. The Conde Naste Publications, Inc. v. Miss Quality, Inc., 507 F.2d 1404, 184 USPQ 422, 424-25 (CCPA 1975).
  • An applicant does not overcome a likelihood of confusion refusal by pointing to other registrations and arguing they are as similar to the cited registration as applicant's mark.
    • In re Chica, Inc., Serial No. 76627857, (TTAB 2007).
      • First, an applicant does not overcome a likelihood of confusion refusal by pointing to other registrations and arguing that they are as similar to the cited registration as applicant's mark. While third-party registrations may be used to demonstrate that a portion of a mark is suggestive or descriptive, they "cannot justify the registration of another confusingly similar mark." In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987), quoting Plus Products v. Star-Kist Foods, Inc., 220 USPQ 541, 544 (TTAB 1983).
  • Third-party registrations may be used to demonstrate that a portion of a mark is suggestive or descriptive, but they cannot justify the registration of another confusingly similar mark.
    • In re Chica, Inc., Serial No. 76627857, (TTAB 2007).
      • First, an applicant does not overcome a likelihood of confusion refusal by pointing to other registrations and arguing that they are as similar to the cited registration as applicant's mark. While third-party registrations may be used to demonstrate that a portion of a mark is suggestive or descriptive, they "cannot justify the registration of another confusingly similar mark." In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987), quoting Plus Products v. Star-Kist Foods, Inc., 220 USPQ 541, 544 (TTAB 1983).
  • Even weak marks are entitled to protection against registration of similar marks, especially identical ones, for related goods and services
    • In re Chica, Inc., Serial No. 76627857, (TTAB 2007).
      • "[E]ven weak marks are entitled to protection against registration of similar marks, especially identical ones, for related goods and services." In re Colonial Stores, 216 USPQ 793, 795 (TTAB 1982); In re The Clorox Co., 578 F.2d 305, 198 USPQ 337, 341 (CCPA 1978) (ERASE for a laundry soil and stain remover held confusingly similar to STAIN ERASER, registered on the Supplemental Register, for a stain remover).
  • Three elements required to establish to prevail on a Section 2(d) claim.
    • Mario Diaz v. Servicios De Franquicia Pardo's S.A.C., Opposition No. 91159871, (TTAB 2007).
      • To prevail on his asserted Section 2(d) claim, opposer must establish (1) that he has standing to maintain the proceeding; (2) that he is the prior user of his pleaded mark; and (3) that contemporaneous use of the parties' respective marks on their respective services would be likely to cause confusion, mistake or to deceive consumers. See Hornblower & Weeks, Inc. v. Hornblower & Weeks, Inc., 60 USPQ2d 1733 (TTAB 2001).
  • Burden of Proof: Petitioner must establish that there is a likelihood of confusion by a preponderance of the evidence.
    • Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (TTAB 2007)
      • Petitioner must establish that there is a likelihood of confusion by a preponderance of the evidence.
    • Teledyne Technologies, Inc. v. Western Skyways, Inc., Cancellation No. 92041265, (TTAB 2006).
      • Petitioner must establish that there is a likelihood of confusion by a preponderance of the evidence.
  • To establish priority on a likelihood of confusion claim brought under Section 2(d), a party must prove that, vis-à-vis the other party, it owns a mark or trade name previously used in the United States and not abandoned.
    • Westrex Corporation v. New Sensor Corporation, Opposition Nos. 91168152, 91170940, (TTAB 2007)
      • To establish priority on a likelihood of confusion claim brought under Trademark Act Section 2(d), a party must prove that, vis-à-vis the other party, it owns "a mark or trade name previously used in the United States ... and not abandoned...." Trademark Act Section 2, 15 U.S.C. Section 1052.
  • A party may establish its own prior proprietary rights in a mark through ownership of a prior registration, actual use or through use analogous to trademark use, such as use in advertising brochures, trade publications, catalogues, newspaper advertisements and Internet web sites which create a public awareness of the designation as a trademark identifying the party as a source.
    • Westrex Corporation v. New Sensor Corporation, Opposition Nos. 91168152, 91170940, (TTAB 2007)
      • A party may establish its own prior proprietary rights in a mark through ownership of a prior registration, actual use or through use analogous to trademark use, such as use in advertising brochures, trade publications, catalogues, newspaper advertisements and Internet web sites which create a public awareness of the designation as a trademark identifying the party as a source. See Trademark Act Sections 2(d) and 45, 15 U.S.C. Section 1052(d) and 1127; T.A.B. Systems v. PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879 (Fed. Cir. 1996), vacating Pactel Teletrac v. T.A.B. Systems, 32 USPQ2d 1668 (TTAB 1994).
  • Where opposer's pleaded registrations are of record, Section 2(d) priority is not an issue as to the marks and services recited thereby.
    • Motion Picture Association of America, Inc. v. Respect Sportswear, Inc., Opposition No. 91153141, (TTAB 2007)
      • Moreover, because opposer's pleaded registrations are of record, Section 2(d) priority is not an issue in this case as to the marks therein and services certified thereby. See King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
  • Priority can be an issue where opposer does not own an existing registration upon which it can rely under Section 2(d).
    • Westrex Corporation v. New Sensor Corporation, Opposition Nos. 91168152, 91170940, (TTAB 2007)
      • Priority is an issue in this case because opposer does not own an existing registration upon which it can rely under Section 2(d). See King Candy Co., Inc. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
  • Under the theory of analogous use, a party may rely upon pre-sale activities in order to "tack on" non-trademark usage for purposes of establishing priority under Section 2(d).
    • Westrex Corporation v. New Sensor Corporation, Opposition Nos. 91168152, 91170940, (TTAB 2007)
      • Under the theory of analogous use, a party may rely upon pre-sale activities in order to "tack on" non-trademark usage for purposes of establishing priority under Section 2(d). See 3 J. Thomas McCarthy on Trademarks and Unfair Competition, § 20:16 (4th Ed. 1996).
    • Although use analogous to trademark use is sufficient to create a proprietary right in the user for purposes of a likelihood of confusion claim, analogous use must be more than mere advertising. In T.A.B. Systems v. PacTel Teletrac, 37 USPQ2d at 1882, the Court of Appeals for the Federal Circuit summarized the test for the sufficiency of analogous use efforts:
      • Although use analogous to trademark use is sufficient to create a proprietary right in the user for purposes of a likelihood of confusion claim, analogous use must be more than mere advertising.
    • Westrex Corporation v. New Sensor Corporation, Opposition Nos. 91168152, 91170940, (TTAB 2007)
      • "[W]hether it was sufficiently clear, widespread and repetitive to create the required association in the minds of the potential purchasers between the mark as an indicator of a particular source and the [product or] service to become available later."
  • Analogous trademark use also must be shown to have a substantial impact on the purchasing public, and the user must establish an intent to appropriate the mark.
    • Westrex Corporation v. New Sensor Corporation, Opposition Nos. 91168152, 91170940, (TTAB 2007)
      • The analogous trademark use also must be shown to have a substantial impact on the purchasing public, and the user must establish an intent to appropriate the mark. Id.
  • The "tacking" theory under which use analogous to trademark use operates requires that actual technical trademark use must follow within a commercially reasonable period of time.
    • Westrex Corporation v. New Sensor Corporation, Opposition Nos. 91168152, 91170940, (TTAB 2007)
      • In addition, the "tacking" theory under which use analogous to trademark use operates requires that actual technical trademark use must follow within a commercially reasonable period of time. Dyneer Corp. v. Automotive Products plc, 37 USPQ2d 1251 (TTAB 1995); Evans Chemetics, Inc. v. Chemetics International Ltd., 207 USPQ 695 (TTAB 1980).
  • For purposes of establishing priority via analogous trademark use, the critical factor is the actual number of prospective customers reached.
    • Westrex Corporation v. New Sensor Corporation, Opposition Nos. 91168152, 91170940, (TTAB 2007)
      • For purposes of establishing priority via analogous trademark use, the critical factor is the actual number of prospective customers reached.
  • Pending applications are not evidence of anything except that the applications were filed on a certain date.
    • Nike, Inc. v. WNBA Enterprises, LLC, Opposition No. 91160755, 91160763, (TTAB 2007)
      • Moreover, pending applications are not evidence of anything except that the applications were filed on a certain date.
  • The fundamental inquiry mandated by §2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.
    • In re Thomas H. Wilson, Serial No. 75/285,881, (TTAB 2001).
      • In considering the evidence of record on these factors, we keep in mind that "[t]he fundamental inquiry mandated by §2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks." Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
    • In re The W.W. Henry Company, L.P., Serial No. 78401595, (TTAB 2007).
      • In considering the evidence of record on these factors, we keep in mind that "[t]he fundamental inquiry mandated by §2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks." Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). See also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
    • Baseball America, Inc. v. Powerplay Sports, Ltd., Opposition No. 91120166, (TTAB 2004).
      • In considering the evidence of record on these factors, we keep in mind that "[t]he fundamental inquiry mandated by §2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks." Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
    • Knight Textile Corporation v. Jones Investment Co., Inc., Opposition No. 91153852, (TTAB 2005).
      • In considering the evidence of record on these factors, we keep in mind that "[t]he fundamental inquiry mandated by §2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks." Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
  • History of the adoption of the "related goods" test.
    • In re Thomas H. Wilson, Serial No. 75/285,881, (TTAB 2001).
      • In 1933, the Trademark Act of 1905 governed the federal registration of marks. Under that statute, a prerequisite to the refusal of registration on the ground of likelihood of confusion was that the goods of the applicant and the prior registrant be "of the same descriptive properties." Trademark Act of 1905, Section 5. The Lanham Act of 1946 replaced that standard with the more flexible modern "related goods" test, which does not require that the goods themselves be the same or similar to each other, but rather requires only that they be sufficiently related that source or other confusion is likely. See, e.g., Hunt Foods and Industries, Inc. v. The Gerson Stewart Corp., 151 USPQ 350 (CCPA 1966); Hollywood Water Heater Co. v. Hollymatic Corporation, 124 USPQ 452 (CCPA 1960); Pep Boys – Manny, Moe and Jack v. The Edwin F. Guth Company, 94 USPQ 158 (CCPA 1952); The Alligator Company v. Larus & Brother Company, Inc., 93 USPQ 436 (CCPA 1952), overruled on other grounds by Popular Merchandise Co. v. "21" Club, Inc., 145 USPQ 203 (CCPA 1965); and J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §§24:4-24:6 (4th Ed. 1999).
  • Case Finding: Cases regarding call letters.
    • In re Infinity Broadcasting Corporation of Dallas, Serial No. 75/689,077, (TTAB 2001).
      • In the time since the FCC changed its rules, there have been a number of decisions involving likelihood of confusion between broadcasting call letters. See, e.g.: Infinity Broadcasting Corp. v. Greater Boston Radio II, Inc., supra; Pride Communications v. WCKG Inc., 851 F.Supp. 895, 30 USPQ2d 1185 (N.D. Ill. 1994); Virginia Tech Foundation, Inc. v. Family Group, Limited V, 666 F.Supp. 856, 2 USPQ2d 1961 (W.D. Va. 1987); Pathfinder Communications Corp. v. Midwest Communications Co., 593 F.Supp. 281, 224 USPQ 203 (N.D. Ind. 1984); USA Network v. Gannett Co., 584 F.Supp. 195, 223 USPQ 678 (D. Colo. 1984); and Draper Communications, Inc. v. Delaware Valley Broadcasters Ltd. Partnership, 229 USPQ 161 (Del. Ch. 1985).
  • Call letters are often treated the same as service marks for purposes of likelihood of confusion analysis.
    • In re Infinity Broadcasting Corporation of Dallas, Serial No. 75/689,077, (TTAB 2001).
      • These courts, in determining likelihood of confusion issues, have treated call letters in the same way as any other service mark. See: 1 J. T. McCarthy, McCarthy on Trademarks and Unfair Competition, §7:12 (4th ed. 2001).
  • Related goods typically sold at retail to general consumers, the absence of restrictions, in particular identifications, on channels of trade or classes of consumers, often leads to the conclusion that the goods can move in the same channels of trade, i.e., through the same types of stores or resellers, to the same ultimate consumers.
    • The Sports Authority Michigan, Inc. v. The PC Authority, Inc., Opposition No. 113,785, (TTAB 2001).
      • For related goods typically sold at retail to general consumers, the absence of restrictions, in particular identifications, on channels of trade or classes of consumers, often leads to the conclusion that the goods can move in the same channels of trade, i.e., through the same types of stores or resellers, to the same ultimate consumers.
  • Likelihood of confusion is decided upon the facts of each case.
    • The Sports Authority Michigan, Inc. v. The PC Authority, Inc., Opposition No. 113,785, (TTAB 2001).
      • Likelihood of confusion is decided upon the facts of each case. In re Dixie Restaurants, Inc. 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997); Shell Oil, 992 F.2d at 1206, 26 USPQ at 1688 (Fed. Cir. 1993). The various factors may play more or less weighty roles in any particular determination of likelihood of confusion. duPont, 476 F.2d at 1361, 177 USPQ at 567.
  • There is nothing in the language of Section 2(d) and otherwise no authority for treating certification marks differently from trademarks, or for affording them a lesser scope of protection.
    • Tea Board of India v. The Republic of Tea, Inc., Opposition No. 91118587, (TTAB 2006).
      • In fact the Board held "as a matter of law" that in a case involving a certification mark "the traditional du Pont likelihood of confusion analysis is applicable" and "as in any other Section 2(d) case ... includes likelihood of confusion as to source, sponsorship, affiliation, or connection." Institut, supra at 1891; and also at 1890 (pointing out that there is nothing in the language of Section 2(d) and otherwise no authority for treating certification marks differently from trademarks, or for affording them a lesser scope of protection).
  • Likelihood of confusion is decided upon the facts of each case.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • We now balance the du Pont factors and conclude that there is no likelihood of confusion in this case. Likelihood of confusion is decided upon the facts of each case. Dixie Restaurants, 105 F.3d at 1406, 41 USPQ2d at 1533; Shell Oil, 992 F.2d at 1206, 26 USPQ at 1688.
  • The various factors may play more or less weighty roles in any particular determination of likelihood of confusion.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • The various factors may play more or less weighty roles in any particular determination of likelihood of confusion. Id.; du Pont, 476 F.2d at 1361, 177 USPQ at 567.
  • Opposer is not required to specifically plead every factual component of a likelihood of confusion claim. It is sufficient to generally plead the claim.
    • The Wet Seal, Inc. v. FD Management, Inc., Opposition No. 91157022, (TTAB 2007)
      • In our analysis of this factor, we turn first to a comparison of applicant's cosmetic products, which include fragrances, and opposer's retail women's clothing store services.21

        FOOTNOTE 21: Applicant contends that because opposer did not allege in the notice of opposition that the goods and services offered under ARDEN B are similar or related to those of applicant, opposer has waived that argument. Opposer is not required to specifically plead every factual component of a likelihood of confusion claim. It is sufficient to generally plead the claim as opposer has done in this case.

  • Section 2(d) protects against likelihood of confusion as to source, affiliation, connection, and sponsorship.
    • Nike, Inc. v. WNBA Enterprises, LLC, Opposition No. 91160755, 91160763, (TTAB 2007)
      • FOOTNOTE 16 "Contrary to applicant's apparent contention, Section 2(d) of the Trademark Act protects not only against confusion as to source, but also as to affiliation, connection or sponsorship. See J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §23:8 (4th ed. 2006). See also Hilson Research Inc. v. Society for Human Resource Management, 27 USPQ2d 1423 (TTAB 1993); and American Stock Exchange, Inc. v. American Express Co., 207 USPQ 356 (TTAB 1980)."
  • Any doubt raised about likelihood of confusion will be resolved in favor of registrant.
    • In re Microsoft Corporation, Serial No. 78/013678, (TTAB 2003).
      • FOOTNOTE 8 "We do not have any doubt about whether confusion is likely to occur; however, we note that, had applicant's arguments about the significance of the "." in OFFICE.NET been persuasive, any doubt thereby raised about likelihood of confusion would have been resolved in favor of registrant. See Kenner Parker Toys v. Rose Art Industries, 963 F.2d 350, 22 USPQ2d 1453, 1458 (Fed. Cir. 1992); and In re White Swan Ltd., 8 USPQ2d 1534, 1536 (TTAB 1988)."
  • Even though a party asserts that only certain factors may be relevant, the TTAB may consider all thirteen.
    • The Sports Authority Michigan, Inc. v. The PC Authority, Inc., Opposition No. 113,785, (TTAB 2001).
      • While opposer asserts only six of these factors are relevant in this case (TSAM brief p.25), we consider all 13.
  • In any likelihood of confusion analysis, however, two key considerations are the similarities between the marks and the similarities between the goods.
    • In re Jump Designs, LLC, Serial No. 76393986, (TTAB 2006).
      • In any likelihood of confusion analysis, however, two key considerations are the similarities between the marks and the similarities between the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also: In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
  • Though the TTAB considers each factor for which they have evidence, they may focus their analysis only on the relevant du Pont factors.
    • Venture Out Properties LLC v. Wynn Resorts Holdings, LLC, Opposition No. 91167237, (TTAB 2007).
      • However, while we have considered each factor for which we have evidence, we focus our analysis herein on the relevant du Pont factors in this proceeding, namely, the appearance of the marks, the related nature of the services, and the similarity of trade channels. Han Beauty, Inc. v. Alberto-Culver Co., 57 USPQ2d 1557, 1559- 1560 (Fed. Cir. 2001).
  • Statutory basis for likelihood of confusion is Section 2(d).
    • L. & J.G. Stickley, Inc. v. Ronald C. Cosser, Cancellation No. 92040202, (TTAB 2007).
      • The next issue in this case concerns whether there is a likelihood of confusion. See Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d).
  • The focus of our analysis is whether there are any genuine issues of material fact in dispute that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co. as to opposer's claim of likelihood of confusion.
    • Apple Computer v. TVNET.net, Inc., Opposition No. 91168875, (TTAB 2007).
      • Accordingly, the focus of our analysis is whether there are any genuine issues of material fact in dispute as to opposer's claim of likelihood of confusion. Such analysis involves consideration of all of the undisputed facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). In this case, the most important factors are the fame of opposer's marks, the similarity of the marks, the similarity of the goods and services, and the similarity of the trade channels.
    • The Christian Broadcasting Network, Inc. v. ABS-CBN International, Cancellation No. 92044366, (TTAB 2007)
      • Our determination of likelihood of confusion under Section 2(d) of the Lanham Act is based on an analysis of all the facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973).
    • In re Jump Designs, LLC, Serial No. 76393986, (TTAB 2006).
      • We now turn to consider the substantive refusal of registration under Section 2(d). Our determination of the issue of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also: In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
    • Standard Knitting, Ltd. v. Toyota Jidosha Kabushiki Kaisha, Opposition No. 91116242, (TTAB 2006).
      • Our determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue, including the similarities or dissimilarities between the marks and the similarities or dissimilarities between the goods. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
  • The TTAB analyzes the issue of likelihood of confusion using a non-exclusive list of thirteen factors that were articulated by a predecessor to their primary reviewing court, the Court of Customs and Patent Appeals, in the case of In re E. I. du Pont de Nemours & Co.
    • The Sports Authority Michigan, Inc. v. The PC Authority, Inc., Opposition No. 113,785, (TTAB 2001).
      • The Court of Customs and Patent Appeals, the predecessor court of the Court of Appeals for the Federal Circuit, set out a non-exclusive list of thirteen factors to be considered when determining whether one mark is likely to cause confusion with another mark. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (CCPA 1973).
    • In re Fiesta Palms, LLC, Serial No. 76595049, (TTAB 2007).
      • When the issue is likelihood of confusion, we analyze the facts as they relate to the relevant factors set out in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003); and Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1896 (Fed. Cir. 2000).
    • National Rural Electric Cooperative Association v. Suzlon Wind Energy Corporation, Cancellation No. 92043377, (TTAB 2006).
      • In arriving at a conclusion in likelihood of confusion cases, we consider the facts as they relate to the relevant factors set out in such cases as In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973); and Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1896 (Fed. Cir. 2000).
    • Venture Out Properties LLC v. Wynn Resorts Holdings, LLC, Opposition No. 91167237, (TTAB 2007).
      • We next consider the issue of likelihood of confusion and, as with any case in which such issue arises, we analyze whether there exists a likelihood of confusion under the thirteen factors set forth in In re E.I. du Pont de Nemours & Co., 177 USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co., 65 USPQ2d 1201, 1203 (Fed. Cir. 2003); and Recot Inc. v. M.C. Becton, 54 USPQ2d 1894, 1896 (Fed. Cir. 2000).
    • L. & J.G. Stickley, Inc. v. Ronald C. Cosser, Cancellation No. 92040202, (TTAB 2007).
      • The Federal Circuit and its predecessor, the Court of Customs and Patent Appeals, has set out the factors we consider we consider in likelihood of confusion cases. In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). See also In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973); and Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1896 (Fed. Cir. 2000).
    • Tea Board of India v. The Republic of Tea, Inc., Opposition No. 91118587, (TTAB 2006).
      • Our determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue, including the similarities or dissimilarities between the marks and the similarities or dissimilarities between the goods. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
    • The NASDAQ Stock Market, Inc. v. Antartica, S.r.l., Opposition No. 91121204, (TTAB 2003).
      • We analyze the issue of likelihood of confusion using the factors that were articulated by one of the predeceesors of our primary reviewing court, the Court of Customs and Patent Appeals, in the case of In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (CCPA 1973). See also Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1896 (Fed. Cir. 2000).
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • The Court of Customs and Patent Appeals, one of the predecessor courts of the Court of Appeals for the Federal Circuit, set out a non-exclusive list of thirteen factors to be considered when determining whether one mark is likely to cause confusion with another mark. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (CCPA 1973).
    • In re Paper Doll Promotions, Inc., Serial No. 76451078, (TTAB 2007)
      • We analyze the issue of likelihood of confusion using the factors that were articulated by a predecessor of our primary reviewing court, the Court of Customs and Patent Appeals, in the case of In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co., supra.
    • Chicago Bears Football Club, Inc. and NFL Properties LLC v. 12TH Man/Tennessee LLC, (TTAB 2007)
      • In likelihood of confusion cases, we consider whether there is confusion by analyzing the facts as they relate to the thirteen factors set out in such cases as In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003) and In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973).
    • In re Chica, Inc., Serial No. 76627857, (TTAB 2007).
      • When there is an issue of likelihood of confusion, we consider the evidence in light of the relevant factors set out in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003); and Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1896 (Fed. Cir. 2000). In considering the evidence of record on these factors, we must keep in mind that "[t]he fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks." Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
  • The test for determining likelihood of confusion with respect to certification marks is the same as that applied to trademarks but based on a comparison of the mark as applied to the goods or services of the certification mark users.
    • Motion Picture Association of America, Inc. v. Respect Sportswear, Inc., Opposition No. 91153141, (TTAB 2007)
      • The test for determining likelihood of confusion with respect to certification marks is the same as that applied to trademarks, i.e., the du Pont analysis. However, because the certification mark owner does not itself use the mark, the question of whether there is a likelihood of confusion is based on a comparison of the mark as applied to the goods or services of the certification mark users. See DuPont v. Yoshida, 393 F.Supp 502, 185 USPQ 597 (E.D.N.Y. 1975) ("...proximity [of products or services] may be measured against that of the certification mark user..."). See also Jos. S. Cohen & Sons Co. v. Hearst Magazines, 220 F.2d 763, 105 USPQ 269 (CCPA 1955); and Community of Roquefort v. William Faehndrich, Inc., 198 F.Supp. 291, 131 USPQ 435 (S.D.N.Y. 1961), aff'd, 303 F.2d 494, 133 USPQ 633 (2d Cir. 1962).
  • The fundamental inquiry mandated by Section 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.
    • The B.V.D. Licensing Corporation v. Florencio Rodriguez, Opposition No. 91157529, (TTAB 2007)
      • In the analysis of likelihood of confusion presented by this case, key considerations are the similarities of the marks and the fact that the parties' respective goods are in part the same and otherwise closely related. Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) ("The fundamental inquiry mandated by Section 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks").
  • The likelihood of confusion analysis considers all DuPont factors for which there is evidence of record but may focus on dispositive factors.
    • The NASDAQ Stock Market, Inc. v. Antartica, S.r.l., Opposition No. 91121204, (TTAB 2003).
      • "The likelihood of confusion analysis considers all DuPont factors for which there is evidence of record but ‘may focus ... on dispositive factors.'" Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002) (citations omitted).
  • It is not dispositive or even relevant that applicant was able to convince the Trademark Examining Attorney during ex parte examination to pass applicant's mark to publication.
    • Miss Universe L.P., LLLP v. Community Marketing, Inc., Opposition No. 91160627, (TTAB 2007)
      • First, it is not dispositive or even relevant that applicant was able to convince the Trademark Examining Attorney during ex parte examination to pass applicant's mark to publication. See Miss Universe Inc. v. Drost, supra.
  • Good faith adoption of a mark does not establish the absence of a likelihood of confusion, nor does it negate the other evidence of record which weighs in favor of a finding of likelihood of confusion.
    • Miss Universe L.P., LLLP v. Community Marketing, Inc., Opposition No. 91160627, (TTAB 2007)
      • Second, even if we accept as true applicant's contention that it adopted its mark in good faith, such good faith adoption does not establish the absence of a likelihood of confusion, nor does it negate the other evidence of record which weighs in favor of a finding of likelihood of confusion.
  • The grounds on which a cancellation action may be brought under Section 14 are limited for a registration that has been in existence for five years; Section 2(d) is not one of these grounds.
    • Otto International, Inc. v. Otto Kern GMBH, Cancellation No. 92046167, (TTAB 2007)
      • It is well settled that the grounds on which a cancellation action may be brought under Section 14 of the Trademark Act are limited for a registration that has been in existence for five years; Section 2(d) is not one of these grounds. See Carefirst of Maryland, Inc. v. FirstHealth of the Carolinas Inc., 77 USPQ2d 1492 (TTAB 2005); TBMP § 307 (2d ed. rev. 2004). Thus, to the extent the petition presents allegations of a claim under Section 2(d), they are barred by Section 14(3), inasmuch as respondent's registration is more than five years old.
  • The TTAB does not require surveys in TTAB proceedings and the TTAB is not inclined to draw any negative inferences from a party's failure to offer survey evidence in a proceeding before the TTAB.
    • Schering-Plough HealthCare Products, Inc. v. Ing-Jing Huang, Opposition No. 91117558, (TTAB 2007)
      • Firstly, applicant points to the lack of survey evidence in support of opposer's claim of likelihood of confusion. Contrary to applicant's position, the Board does not require surveys in Board proceedings. See, e.g., Hilson Research Inc. v. Society for Human Resource Management, 27 USPQ2d 1423 (TTAB 1993); and Miles Laboratories Inc. v. Naturally Vitamin Supplements Inc., 1 USPQ2d 1445 (TTAB 1987). Accord: Charles Jacquin et Cie Inc. v. Destileria Serralles Inc., 921 F.2d 467, 17 USPQ2d 1104 (3d Cir. 1990). As the Board noted in Hilson, 27 USPQ2d at 1435-36: "We appreciate the significant financial cost of surveys. Moreover, we obviously recognize the limited jurisdictional nature of Board proceedings, wherein only rights to federal registrability, not use, are determined. With these two thoughts foremost in our minds, we are not inclined to draw any negative inferences from a party's failure to offer survey evidence in a proceeding before the Board."
  • Analysis for collective marks.
    • Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, Opposition No. 91160856, (TTAB 2007).
      • As the Board stated in Carefirst of Maryland, Inc. v. FirstHealth of the Carolinas, Inc., 77 USPQ2d 1492, 1512 (TTAB 2005): The inquiry of a collective mark under Section 2(d).
        "Although the ultimate inquiry is the same, the analysis under Section 2(d) with respect to collective membership marks is somewhat different from that with respect to trademarks or service marks. The trademark or service mark analysis typically involves a determination of likelihood of confusion among purchasers or users as to the source of goods or services. However, a collective membership mark does not involve purchasers of goods or services. The sole purpose of a collective membership mark is to indicate membership in an organization. While goods and services may be provided by members of an organization, a collective membership mark, as used or displayed by the members of an organization, serves only to identify the fact that such members belong to the collective organization and to inform relevant persons of the members' association with the organization. (citation omitted)"
        In addition, the Board indicated at 77 USPQ 1513 that:
        The term "relevant persons," for purposes of a collective membership mark, would not consist of purchasers, but rather those persons or groups of persons for whose benefit the membership mark is displayed.
  • The term "relevant persons," for purposes of a collective membership mark, would not consist of "purchasers," but rather those persons or groups of persons for whose benefit the membership mark is displayed.
    • Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, Opposition No. 91160856, (TTAB 2007)
      • "The term "relevant persons," for purposes of a collective membership mark, would not consist of "purchasers," but rather those persons or groups of persons for whose benefit the membership mark is displayed. (citation omitted)"
  • In the case of two party's collective membership marks, the question is whether relevant persons are likely to believe that there is some connection between the collective organizations, i.e., plaintiff and defendant.
    • Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, Opposition No. 91160856, (TTAB 2007)
      • Thus, in the case of plaintiff's collective membership mark and defendant's collective membership mark, the question is whether relevant persons are likely to believe that there is some connection between the collective organizations, i.e., plaintiff and defendant.
  • In the case of plaintiff's collective membership mark and defendant's service mark, the question is whether relevant persons are likely to believe that the collective organization, i.e., plaintiff, is endorsed by or in some way associated with the provider of the association services, i.e., defendant.
    • Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, Opposition No. 91160856, (TTAB 2007)
      • And, in the case of plaintiff's collective membership mark and defendant's service mark, the question is whether relevant persons are likely to believe that the collective organization, i.e., plaintiff, is endorsed by or in some way associated with the provider of the association services, i.e., defendant.
  • The grounds on which a cancellation action may be brought under Section 14 are limited for a registration that has been in existence for five years; Section 2(d) is not one of these grounds.
    • Otto International, Inc. v. Otto Kern GMBH, Cancellation No. 92046167, (TTAB 2007)
      • It is well settled that the grounds on which a cancellation action may be brought under Section 14 of the Trademark Act are limited for a registration that has been in existence for five years; Section 2(d) is not one of these grounds. See Carefirst of Maryland, Inc. v. FirstHealth of the Carolinas Inc., 77 USPQ2d 1492 (TTAB 2005); TBMP § 307 (2d ed. rev. 2004). Thus, to the extent the petition presents allegations of a claim under Section 2(d), they are barred by Section 14(3), inasmuch as respondent's registration is more than five years old.
  • It is not dispositive or even relevant that applicant was able to convince the Trademark Examining Attorney during ex parte examination to pass applicant's mark to publication.
    • Miss Universe L.P., LLLP v. Community Marketing, Inc., Opposition No. 91160627, (TTAB 2007)
      • First, it is not dispositive or even relevant that applicant was able to convince the Trademark Examining Attorney during ex parte examination to pass applicant's mark to publication. See Miss Universe Inc. v. Drost, supra.
  • Good faith adoption of a mark does not establish the absence of a likelihood of confusion, nor does it negate the other evidence of record which weighs in favor of a finding of likelihood of confusion.
    • Miss Universe L.P., LLLP v. Community Marketing, Inc., Opposition No. 91160627, (TTAB 2007)
      • Second, even if we accept as true applicant's contention that it adopted its mark in good faith, such good faith adoption does not establish the absence of a likelihood of confusion, nor does it negate the other evidence of record which weighs in favor of a finding of likelihood of confusion.
  • A cancelled registration is not entitled to any of the statutory presumptions of Section 7(b).
    • In re Ginc UK Limited, Serial No. 78618843, (TTAB 2007)
      • Nor does applicant's cancelled registration justify registration of its current application. A cancelled registration is not entitled to any of the statutory presumptions of Section 7(b) of the Trademark Act. See, e.g., In re Hunter Publishing Company, 204 USPQ 957, 963 (TTAB 1979) (cancellation "destroys the Section [7(b)] presumptions and makes the question of registrability 'a new ball game' which must be predicated on current thought."). See also Action Temporary Services Inc. v. Labor Force Inc., 870 F.2d 1563, 10 USPQ2d 1307, 1309 (Fed. Cir. 1989) ("a cancelled registration does not provide constructive notice of anything.").
  • The fact that applicant may have obtained a registration for different goods has no bearing on whether the marks and goods at issue in the case are likely to cause confusion.
    • In re Ginc UK Limited, Serial No. 78618843, (TTAB 2007)
      • The fact that applicant may have obtained a registration for different goods has no bearing on whether the marks and goods at issue in this case are likely to cause confusion.
  • Lack of intent to trade on or copy another's mark will not prevent a finding of likelihood of confusion if a likelihood of confusion otherwise exists.
    • Time Warner Entertainment Company L.P. v. Karen L. Jones, Opposition No. 112,409, (TTAB 2002).
      • By the same token, however, the fact that applicant apparently adopted her mark in good faith does not weigh in applicant's favor in our likelihood of confusion analysis. Lack of intent to trade on or copy another's mark will not prevent a finding of likelihood of confusion if a likelihood of confusion otherwise exists. See J & J Snack Foods Corp. v. McDonald's Corp., 932 F.2d 1460, 18 USPQ 1889, 1891 (Fed. Cir. 1991); Greyhound Corp. v. Both Worlds Inc., 6 USPQ2d 1635, 1640 (TTAB 1988).
  • Merely because the TTAB declines to find that applicant adopted its mark in bad faith, it does not follow, from this record, that applicant acted entirely in good faith. While the factor does not weigh in the balance against applicant, it does not weigh in its favor either.
    • Chicago Bears Football Club, Inc. and NFL Properties LLC v. 12TH Man/Tennessee LLC, (TTAB 2007)
      • While applicant may not have intended to mislead purchasers, it is not clear how the selection of numerous marks that are each based on the name of one of twenty NFL teams could have been done in good faith. Furthermore, it is not clear how the fact that "it will not seek an allegiance with any specific team," will eliminate the likelihood of confusion. However, we decline to find that the adoption was in bad faith, particularly in this case, where the adopted mark is not identical to opposers' marks and "Bears" is the name or nickname of some college football teams. NASDAQ Stock Market Inc. v. Antartica S.r.l., 69 USPQ2d 1718, 1733 (TTAB 1998) ("On the other hand, merely because we decline to find that applicant adopted its mark [NASDAQ] in bad faith, it does not follow from this record that applicant has acted entirely in good faith. While the factor does not weigh in the balance against applicant, it does not weigh in its favor either").
  • Case Finding: Applicant provided a plausible explanation as to why she adopted the mark.
    • Time Warner Entertainment Company L.P. v. Karen L. Jones, Opposition No. 112,409, (TTAB 2002).
      • Applicant has provided a plausible explanation as to why she adopted her mark, i.e., because of her ex-husband's prior "Roadrunner Produce" business and because of the aptness of the roadrunner as a mark for road maps. Opposer has presented no probative evidence which contradicts applicant's explanation or which otherwise proves that applicant adopted her mark in bad faith. Accordingly, we find that this factor does not weigh in opposer's favor in this case.
  • Applicant's mere prior knowledge of opposer's marks does not establish that applicant adopted the mark in bad faith.
    • Time Warner Entertainment Company L.P. v. Karen L. Jones, Opposition No. 112,409, (TTAB 2002).
      • Applicant's mere prior knowledge of opposer's Road Runner character does not establish that applicant adopted her mark in bad faith. See Sweats Fashions Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560, 4 USPQ2d 1793, 1798 (Fed. Cir. 1987).
  • The fundamental inquiry mandated by §2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.
    • Time Warner Entertainment Company L.P. v. Karen L. Jones, Opposition No. 112,409, (TTAB 2002).
      • In considering the evidence of record on these factors, we keep in mind that "[t]he fundamental inquiry mandated by §2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks." Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
  • Joking uses of trademarks are deserving of less protection when the object of the joke is the mark of a directly competing product.
    • Starbucks U.S. Brands, LLC and Starbucks Corporation d.b.a. Starbucks Coffee Company v. Marshall S. Ruben, Opposition No. 91156879, (TTAB 2006).
      • Second, Ruben's proposed use is for a competing "chain" of retail stores. See e.g., Deere & Co. v. MTD Products. Inc., 41 F.3d 39, 32 USPQ2d 1936, 1940 (2nd Cir. 1994) [joking uses of trademarks are deserving of less protection when the object of the joke is the mark of a directly competing product].
  • In view of a finding as to the likelihood of confusion claim, the TTAB need not reach the merits of opposers' dilution claim.
    • Starbucks U.S. Brands, LLC and Starbucks Corporation d.b.a. Starbucks Coffee Company v. Marshall S. Ruben, Opposition No. 91156879, (TTAB 2006).
      • In view of our finding as to the likelihood of confusion claim, we need not reach the merits of opposers' dilution claim. See American Paging Inc. v. American Mobilphone Inc., 13 USPQ2d 2036, 2039-2040 (TTAB 1989), aff'd without opinion, 17 USPQ2d 1726 (Fed. Cir. 1990).
    • Venture Out Properties LLC v. Wynn Resorts Holdings, LLC, Opposition No. 91167237, (TTAB 2007).
      • In view of our decision finding a likelihood of confusion, we need not reach the issue of dilution. See American Paging Inc. v. American Mobilphone Inc., 13 USPQ2d 2036, 2039-40 (TTAB 1989), aff'd without opinion, 17 USPQ2d 1726 (Fed. Cir. 1990).
  • In view of a finding as to the likelihood of confusion claim, the TTAB need not reach the merits of opposers' claims as to applicant's lack of a bona fide intention to use the mark in commerce.
    • Starbucks U.S. Brands, LLC and Starbucks Corporation d.b.a. Starbucks Coffee Company v. Marshall S. Ruben, Opposition No. 91156879, (TTAB 2006).
      • Similarly, we need not reach the merits of opposers' claims as to applicant's lack of a bona fide intention to use the mark in commerce.
  • In a particular case, any one of these means of comparison may be critical in finding marks to be similar.
    • The B.V.D. Licensing Corporation v. Florencio Rodriguez, Opposition No. 91157529, (TTAB 2007)
      • In a particular case, any one of these means of comparison may be critical in finding marks to be similar. In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1988); see also, In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988).
  • Elements to prevail on a likelihood of confusion claim based on ownership of common law rights in a mark.
    • The Wet Seal, Inc. v. FD Management, Inc., Opposition No. 91157022, (TTAB 2007)
      • We turn then to opposer's assertion of common law rights in the ARDEN B mark. In order for a plaintiff to prevail on a claim of likelihood of confusion based on its ownership of common law rights in a mark, the mark must be distinctive, inherently or otherwise, and plaintiff must show priority of use. See Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA 1981). In view of our decision in applicant's favor on the issue of priority, opposer cannot as a matter of law prevail on his claim of likelihood of confusion under Section 2(d).
    • Mario Diaz v. Servicios De Franquicia Pardo's S.A.C., Opposition No. 91159871, (TTAB 2007).
      • In view of our decision in applicant's favor on the issue of priority, opposer cannot as a matter of law prevail on his claim of likelihood of confusion under Section 2(d). See Leatherwood Scopes International, Inc. v. Leatherwood, 63 USPQ2d 1699 (TTAB 2002); see also, Aktieselskabet af 21. November 2001 v. Fame Jeans Inc, 77 USPQ2d 1861 (TTAB 2006).
  • Burden of Proof: Opposer, as plaintiff in the opposition proceeding, bears the burden of proving, by a preponderance of the evidence, its asserted grounds of (i) priority and likelihood of confusion and (ii) dilution.
    • Genesco Inc. and Genesco Brands Inc. v. Gregory Martz, Opposition No. 121,296, (TTAB 2003).
      • Opposer, as plaintiff in the opposition proceeding, bears the burden of proving, by a preponderance of the evidence, its asserted grounds of (i) priority and likelihood of confusion and (ii) dilution. See Cerveceria Centroamericana, S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1309 (Fed. Cir. 1989); and Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1848 (Fed. Cir. 2000).
  • Establishing bad faith requires a showing, by a preponderance of the evidence, that applicant intentionally sought to trade on the goodwill or reputation associated with opposer's mark.
    • Tea Board of India v. The Republic of Tea, Inc., Opposition No. 91118587, (TTAB 2006).
      • Establishing bad faith requires a showing, by a preponderance of the evidence, that applicant intentionally sought to trade on the goodwill or reputation associated with opposer's mark. See Big Blue Products Inc. v. International Business Machines Corp., 19 USPQ2d 1072 (TTAB 1991).
  • Case Finding: The fact that opposer has not shown bad faith is not a factor that weighs in applicant's favor. We instead find that this factor is neutral in our analysis. Lack of intent to trade on or copy another's mark will not prevent a finding of likelihood of confusion if a likelihood of confusion otherwise exists.
    • Tea Board of India v. The Republic of Tea, Inc., Opposition No. 91118587, (TTAB 2006).
      • FOOTNOTE 32 "However, the fact that opposer has not shown bad faith is not a factor that weighs in applicant's favor. We instead find that this factor is neutral in our analysis. Lack of intent to trade on or copy another's mark will not prevent a finding of likelihood of confusion if a likelihood of confusion otherwise exists. See J & J Snack Foods Corp. v. McDonald's Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991)."
  • In a case involving a refusal under Section 2(d), the TTAB analyzes the facts as they relate to the relevant factors set out in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973).
    • In re Toshiba Medical Systems Corporation, Serial No. 79046106 (TTAB 2009)
      • In a case involving a refusal under Section 2(d), we analyze the facts as they relate to the relevant factors set out in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003) and Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1896 (Fed. Cir. 2000).
    • In re G.B.I. Tile and Stone, Inc., Serial No. 77369073 (TTAB 2009)
      • In a case where the issue is likelihood of confusion, we analyze the facts as they relate to the relevant factors set out in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003) and Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1896 (Fed. Cir. 2000).
    • In re RSI Systems, LLC, Serial No. 78848532 (TTAB 2008)
      • Inasmuch as the issue in this case is likelihood of confusion, we look at the evidence in light of the factors set out in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003).
  • The TTAB discusses each of the du Pont factors which applicant or the examining attorney submitted argument or evidence and to the extent that any other du Pont factors may be applicable, they are treated as neutral.
    • In re Iolo Technologies, LLC, Serial No. 77399654 (TTAB 2010)
      • We discuss each of the du Pont factors as to which applicant or the examining attorney submitted argument or evidence. To the extent that any other du Pont factors may be applicable, we treat them as neutral.
    • In re Max Capital Group Ltd., Serial No. 77186166 (TTAB 2010)
      • We have confined our discussion to the du Pont factors on which applicant and the examining attorney have submitted evidence and argument. To the extent that any other factors are applicable, we treat them as neutral.
  • To the extent that any of the points raised by applicant raise a doubt about likelihood of confusion, that doubt is required to be resolved in favor of the prior registrant.
    • In re La Peregrina Limited, Serial No. 78676199 (TTAB 2008)
      • Lastly, to the extent that any of the points raised by applicant raise a doubt about likelihood of confusion, that doubt is required to be resolved in favor of the prior registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984).
    • In re G.B.I. Tile and Stone, Inc., Serial No. 77369073 (TTAB 2009)
      • One other principle we must consider is that, to the extent that we have any doubt, we must resolve this doubt in favor of the registrant. In re Chatam International Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1948 (Fed. Cir. 2004) and In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
  • Our determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion.
    • Panda Travel, Inc. v. Resort Option Enterprises, Inc., Opposition No. 91174767 and 91174768 (TTAB 2009)
      • Our determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003).
    • In re SL&E Training Stable, Inc., Serial No. 78806669 (TTAB 2008)
      • Our determination of likelihood of confusion under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003).
    • In re La Peregrina Limited, Serial No. 78676199 (TTAB 2008)
      • Our determination of the issue of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
    • In re Max Capital Group Ltd., Serial No. 77186166 (TTAB 2010)
      • Our determination of the issue of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
    • In re White Rock Distilleries, Inc.. Serial No. 77093221 (TTAB 2009)
      • Our determination of the issue of likelihood of confusion is based on analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
    • Anthony's Pizza & Pasta International, Inc. v. Anthony's Pizza Holding Company, Inc., Opposition No. 91171509 and Cancellation No. 92045956 (TTAB 2009)
      • Our determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003).
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • Our determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003).
    • The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008)
      • Our determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003).
    • Eveready Battery Company, Inc. v. Green Planet, Inc., Opposition No. 91180015 (TTAB 2009)
      • Our likelihood of confusion determination under Section 2(d) is based on an analysis of all of the facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue. See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
    • In re Davey Products Pty Ltd., Serial No. 77029776 (TTAB 2009)
      • Our likelihood of confusion determination under Section 2(d) is based on an analysis of all of the facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue (the du Pont factors). See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
  • In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods.
    • In re SL&E Training Stable, Inc., Serial No. 78806669 (TTAB 2008)
      • In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) ("The fundamental inquiry mandated by §2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks").
    • In re La Peregrina Limited, Serial No. 78676199 (TTAB 2008)
      • In any likelihood of confusion analysis, however, two key considerations are the similarities between the marks and the similarities between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
    • In re White Rock Distilleries, Inc.. Serial No. 77093221 (TTAB 2009)
      • In any likelihood of confusion analysis, however, two key considerations are the similarities between the marks and the similarities between the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
    • In re Max Capital Group Ltd., Serial No. 77186166 (TTAB 2010)
      • In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
    • In re Iolo Technologies, LLC, Serial No. 77399654 (TTAB 2010)
      • In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) ("The fundamental inquiry mandated by §2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks").
    • Panda Travel, Inc. v. Resort Option Enterprises, Inc., Opposition No. 91174767 and 91174768 (TTAB 2009)
      • In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) ("The fundamental inquiry mandated by §2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks").
    • The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008)
      • In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) ("The fundamental inquiry mandated by §2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks").
  • Cases which relate to a defendant's right to use a personal name do not support the unfettered right of a party to register a personal name as a trademark.
    • In re SL&E Training Stable, Inc., Serial No. 78806669 (TTAB 2008)
      • In this regard, we note that applicant has not cited any cases from the Court of Appeals for the Federal Circuit or Court of Customs and Patent Appeals. Also, we note that the cases relied on by applicant relate to a defendant's right to use a personal name and not the right to register a personal name as a trademark. Finally, the cases cited in applicant's brief do not, in fact, support its assertion that they show "a strong public policy to allow individuals to use their [an individual's] names" because they do not stand for a party's unfettered right to use a name as a trademark. Ptak Bros. Jewelry Inc. v. Ptak, 83 USPQ2d 1519, 1524 (S.D.N.Y. 2007) (a proper name merits protection if it has acquired distinctiveness; the evidence showed it was common to have numerous family-owned jewelry businesses with the same surname); Johnny's Fine Foods Inc. v. Johnny's Inc., 286 F.Supp.2d 876, 68 USPQ2d 1505, 1513 (M.D. Tenn. 2003) (the right to use one's personal name will be enjoined to the extent necessary to prevent confusion); Henegan Construction Co. v. Heneghan Contracting Corp., 63 USPQ2d 1984, 1988 (S.D.N.Y. 2002) (a personal name or surname is entitled to protection if it has acquired distinctiveness; defendant enjoined from using the surname "Heneghan," or anything similar, as a trade name or service mark); M. Fabrikant & Sons, Ltd. v. Fabrikant Fine Diamonds, Inc., 17 F.Supp.2d 249, 252 (S.D.N.Y. 1998) (where senior user establishes that personal name is a strong mark, it is entitled to trademark protection; evidence showed other members of the Fabrikant family have used their family name in the jewelry business, and therefore plaintiff sought only to have defendant use the Fabrikant surname with a personal name).
  • Doubts must be resolved in favor of the prior user and against the newcomer.
    • Eveready Battery Company, Inc. v. Green Planet, Inc., Opposition No. 91180015 (TTAB 2009)
      • To the extent that any of applicant's points raise a doubt about our conclusion, such doubt must be resolved in favor of the prior user and against the newcomer. See San Fernando Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 2 (CCPA 1977).
  • Even where the doctrine of foreign equivalents may equate the meaning of two marks being compared, a likelihood of confusion may still not be found.
    • Green Spot (Thailand) Ltd. v. Vitasoy International Holdings Limited, Opposition No. 91165010, (TTAB 2008)
      • In Palm Bay, supra, the doctrine of foreign equivalents was applied (directly) to a likelihood of confusion analysis. However, even a case where the doctrine of foreign equivalents may equate the meaning of two marks being compared, a likelihood of confusion may still not be found. See e.g., In re Sarkli, Ltd. 721 F.2d 353, 220 USPQ 111, 113 (Fed. Cir. 1983)("[S]uch similarity as there is in connotation [between the marks REPECHAGE and SECOND CHANCE] must be weighed against the dissimilarity in appearance, sound, and all other factors, before reaching a conclusion on likelihood of confusion as to source.") Again, we note that Morehouse requires that the marks be essentially the same rather than merely confusingly similar - a more stringent requirement than might be necessary to support a likelihood of confusion claim.
  • Except where the opposer pleads and proves its ownership of a prior registration, in order to prevail in an opposition based upon a Section 2(d) claim of likelihood of confusion, the opposer must prove that it has prior rights in the term it relies upon to demonstrate likelihood of confusion as to source.
    • The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008)
      • Except where the opposer pleads and proves its ownership of a prior registration, in order to prevail in an opposition based upon a Section 2(d) claim of likelihood of confusion, the opposer must prove that it has prior rights in the term it relies upon to demonstrate likelihood of confusion as to source. See: Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40, 43 (CCPA 1981); Antillian Cigar Corp. v. Benedit Cigar Corp., 218 USPQ 187, 188 (TTAB 1983); and Fluid Energy Processing & Equipment v. Fluid Energy, Inc., 212 USPQ 28, 35 (TTAB 1981).
  • In considering the evidence of record on these factors, one must keep in mind that the fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.
    • In re G.B.I. Tile and Stone, Inc., Serial No. 77369073 (TTAB 2009)
      • In considering the evidence of record on these factors, we must keep in mind that "[t]he fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks." Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
  • In determining whether there is a likelihood of confusion between marks, there are thirteen evidentiary factors, which, when of record, the TTAB must consider.
    • Texas Department of Transportation v. Richard Tucker, Cancellation No. 92030882 and Opposition No. 91165417 (TTAB 2010)
      • FOOTNOTE 20 "In determining whether there is a likelihood of confusion between marks, there are thirteen evidentiary factors, which, when of record, the Board must consider. See E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). The likelihood of confusion analysis considers all du Pont factors for which there is evidence of record but "may focus … on dispositive factors, such as similarity of the marks and relatedness of the goods." Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 57 USPQ2d 1557, 1559 (Fed. Cir. 2001).
  • It is settled that while evidence of bad faith adoption typically will weigh against an applicant, good faith adoption typically does not aid an applicant attempting to establish no likelihood of confusion.
    • Eveready Battery Company, Inc. v. Green Planet, Inc., Opposition No. 91180015 (TTAB 2009)
      • Applicant argues that it adopted its SLICK ULTRA PLUS mark in good faith, with no intent to trade on opposer's marks. However, it is settled that while evidence of bad faith adoption typically will weigh against an applicant, good faith adoption typically does not aid an applicant attempting to establish no likelihood of confusion. See J & J Snack Foods Corp. v. McDonald's Corp., 18 USPQ2d at 1891. Thus, this du Pont factor also is neutral.
  • Likelihood of confusion is to be avoided, as much between ‘weak' marks as between ‘strong' marks, or as between a ‘weak' and ‘strong' mark.
    • Anthony's Pizza & Pasta International, Inc. v. Anthony's Pizza Holding Company, Inc., Opposition No. 91171509 and Cancellation No. 92045956 (TTAB 2009)
      • However, "likelihood of confusion is to be avoided, as much between ‘weak' marks as between ‘strong' marks, or as between a ‘weak' and ‘strong' mark." King Candy Co. v. Eunice King's Kitchen, Inc., 182 USPQ at 109.
  • Neither the Court of Appeals for the Federal Circuit, nor its predecessor, the Court of Customs and Patent Appeals, have adopted a "strong public policy" that individuals are allowed to use their name, even if they have built a reputation in an industry.
    • In re SL&E Training Stable, Inc., Serial No. 78806669 (TTAB 2008)
      • Applicant argues that there is no likelihood of confusion because there is a "strong public policy to allow individuals to use their names." Moreover, applicant asserts that this public policy is especially applicable in this case where applicant has built a reputation in the relevant industry. Contrary to applicant's argument, however, neither our reviewing court, the Court of Appeals for the Federal Circuit, nor its predecessor, the Court of Customs and Patent Appeals, have adopted such a "strong public policy."5 See Nina Ricci S.A.R.L. V. E.T.F. Enterprises Inc., 889 F.2d 1070, 12 USPQ2d 1901 (Fed. Cir. 1989) (VITTORIO RICCI for handbags, clothing and retail store services in the field of clothing is likely to cause confusion with NINA RICCI for clothing and accessories even though Vittorio Ricci was the name of defendant's principal); Ford Motor Co. v. Ford, 462 F.2d 1405, 174 USPQ 456, 458 (CCPA 1972) ("the interest in allowing an entrepreneur to use his own surname as a trademark on his goods must give way to the more compelling public and private interests involved in avoiding a likelihood of confusion or mistake as to source where use of the surname leads to such confusion or mistake"). See also Justin Industries, Inc. v. D.B. Rosenblatt, Inc., 213 USPQ 968, 976 (TTAB 1981) ("the right to use one's name in his business may be circumscribed if it conflicts with a mark previously used by another and is likely to cause confusion as to the origin of the business or of the goods sold thereunder"); Jack Winter Inc. v. Lancer of California, Inc., 183 USPQ 445, 446 (TTAB 1974) (DAVID WINTER for clothing is likely to cause confusion with JACK WINTER for clothing); Girard-Perregaux & Cie, S.A. v. Perregaux, 122 USPQ 95, 96 (Comm'r. Pats. 1959) ("Paul Perregaux" is likely to be confused with "Girard Perregaux" and "Perregaux"). Thus, the fact that SAM EDELMAN is an individual's name does not give applicant an unfettered right to use that name if it conflicts with a previously registered mark.
  • The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods or services and differences in the marks.
    • In re RSI Systems, LLC, Serial No. 78848532 (TTAB 2008)
      • We point out that "[t]he fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks." Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
  • The USPTO should not be barred from examining the registrability of a mark when an applicant seeks to register it for additional goods, even when the additional goods are closely related to those listed in a prior registration.
    • In re SL&E Training Stable, Inc., Serial No. 78806669 (TTAB 2008)
      • However, "[t]his Office should not be barred from examining the registrability of a mark when an applicant seeks to register it for additional goods as it does here, even when the additional goods are closely related to those listed in a prior registration." In re Sunmarks Inc., 32 USPQ2d at 1472.
  • This Board has the authority and duty to decide an appeal from a final refusal to register, and this duty may not be delegated by adopting the conclusion reached by another examining attorney on a different record.
    • In re SL&E Training Stable, Inc., Serial No. 78806669 (TTAB 2008)
      • This Board has the authority and duty to decide an appeal from a final refusal to register, and this duty may not be delegated by adopting the conclusion reached by another examining attorney on a different record. In re Sunmarks Inc., 32 USPQ2d at 1472, quoting In re BankAmerica Corp., 231 USPQ 873, 876 (TTAB 1986).
  • To the extent that any doubts might exist as to the correctness of this conclusion, we resolve such doubts, as we must, in favor of registrant.
    • In re Davey Products Pty Ltd., Serial No. 77029776 (TTAB 2009)
      • To the extent that any doubts might exist as to the correctness of this conclusion, we resolve such doubts, as we must, in favor of registrant. See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993); In re Hyper Shoppes (Ohio) Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988).
  • To the extent that we have any doubt about this conclusion, we must resolve this doubt in favor of the registrant.
    • In re Toshiba Medical Systems Corporation, Serial No. 79046106 (TTAB 2009)
      • To the extent that we have any doubt about this conclusion, we must resolve this doubt in favor of the registrant. In re Chatam International Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1948 (Fed. Cir. 2004) and In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
  • We base our determination under Section 2(d) on an analysis of all of the probative evidence of record bearing on a likelihood of confusion.
    • In re Iolo Technologies, LLC, Serial No. 77399654 (TTAB 2010)
      • We base our determination under Section 2(d) on an analysis of all of the probative evidence of record bearing on a likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973); see also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003).
  • Where the Trademark Examining Attorney has cited multiple different registrations as bases for a Section 2(d) refusal, that refusal may be affirmed if confusion is found as to either of the cited registrations; confusion need not be found as to all cited registrations.
    • In re Davey Products Pty Ltd., Serial No. 77029776 (TTAB 2009)
      • The Trademark Examining Attorney has cited two different registrations as bases for her Section 2(d) refusal. We note, however, that the refusal may be affirmed if likelihood of confusion is found as to either of the cited registrations; we need not find likelihood of confusion as to both cited registrations.
  • Where the TTAB finds that applicant lacked a bona fide intention to use the mark in commerce at the time it filed the involved application, the TTAB may decline to make a determination on the merits on the ground of likelihood of confusion.
    • Research In Motion Limited v. NBOR Corporation, Opposition No. 91179284 (TTAB 2009)
      • Because we have found that applicant lacked a bona fide intention to use the mark in commerce at the time it filed the involved application, we decline to make a determination on the merits on the ground of likelihood of confusion. See American Paging Inc. v. American Mobilphone Inc., 13 USPQ2d 2036 (TTAB 1989), aff'd unpublished, 17 USPQ2d 1726 (Fed. Cir. 1990).
  • Whether applicant's mark has acquired distinctiveness is not controlling on the issue of likelihood of confusion.
    • In re SL&E Training Stable, Inc., Serial No. 78806669 (TTAB 2008)
      • FOOTNOTE 7 "Whether applicant's mark has acquired distinctiveness is not controlling on the issue of likelihood of confusion. In re Bissett-Berman Corp., 476 F.2d 640, 177 USPQ 528, 529 (CCPA 1973)."
  • While the TTAB must consider each factor for which it has evidence, the TTAB may focus its analysis on dispositive factors.
    • UMG Recordings, Inc., substituted for Universal Music Group v. Charles O'Rourke, Opposition No. 91178937 (TTAB 2009)
      • While there are many factors which are considered as part of the likelihood of confusion analysis when there is evidence of record bearing on such factors, see In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), and In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003), in the case at hand the similarities in the marks, the use of the marks for many identical items, and the overlap in channels of trade and classes of consumers are the most significant. See Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 57 USPQ2d 1557, 1559 (Fed. Cir. 2001) ("While it must consider each factor for which it has evidence, the Board may focus its analysis on dispositive factors, such as similarity of the marks and relatedness of the goods.").
  • With respect to the issue of likelihood of confusion, the TTAB considers the factors set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
    • Weatherford/Lamb, Inc. v. C&J Energy Services, Inc., Cancellation No. 92050101 (TTAB 2010)
      • With respect to the issue of likelihood of confusion, we have, in making our determination, considered those factors set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973) which are relevant and for which there is evidence of record.
  • Case Finding: On the basis of the preceding discussion of the factors favoring opposer, opposer has established its claim of likelihood of confusion.
    • DC Comics v. Pan American Grain Mfg. Co. Inc., Opposition No. 91125404, (TTAB 2005)
      • On the basis of the preceding discussion of the factors favoring opposer, we find that opposer has established its claim of likelihood of confusion. See Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650 (TTAB 2002). See also, Conan Properties, Inc. v. Conans Pizza, Inc., 752 F.2d 145, 225 USPQ 379 (5th Cir. 1985); Warner Bros., Inc. v. Gay Toys, Inc., 658 F.2d 76, 211 USPQ 1017 (2nd Cir. 1981); and American Footwear Corp. v. General Footwear Co., Ltd., 609 F.2d 655, 204 USPQ 609 (2nd Cir. 1979). Cf. Viacom International Inc. v. Komm, 46 USPQ2d 1233 (TTAB 1998).
  • Any one of the factors may control a particular case.
    • Benjamin J. Giersch v. Scripps Networks, Inc., Cancellation No. 92045576 (TTAB 2009)
      • "Indeed, any one of the factors may control a particular case." In re Dixie Restaurants Inc., 41 USPQ2d at 1533 citing du Pont, 177 USPQ at 567.
  • There is no reason why, in a particular case, a single duPont factor may not be dispositive.
    • In re HerbalScience Group, LLC, Serial No. 77519313 (TTAB 2010)
      • Because of the differences in the channels of trade and customers for applicant's and the registrant's goods, there is virtually no opportunity for confusion to arise. Accordingly, we need not consider the du Pont factor of the similarities of the marks, the only other factor discussed by applicant and the examining attorney, and presumably the only other factor that either believed to be relevant. See In re E.I. du Pont de Nemours & Co., 476 F.2d at 1362, 177 USPQ at 567 ("each [of the thirteen factors] may from case to case play a dominant role"); and Kellogg Co. v. Pack'em Enterprises Inc., 951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed. Cir. 1991) (we know of no reason why, in a particular case, a single duPont factor may not be dispositive"). We find, based on the record before us, that there is no evidence of overlap between the channels of trade for and purchasers of applicant's and registrant's products. Accordingly, the examining attorney has failed to prove that applicant's mark, if used for its identified goods, is likely to cause confusion with the cited registration.
  • In appropriate cases, a single du Pont factor may be dispositive of the likelihood of confusion analysis.
    • Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008)
      • In appropriate cases, a single du Pont factor may be dispositive of the likelihood of confusion analysis. See Champagne Louis Roederer S.A. v. Delicato Vineyards, 148 F.3d 1373, 47 USPQ2d 1459 (Fed. Cir. 1998); and Kellogg Co. v. Pack 'Em Enterprises Inc., 14 USPQ2d 1545 (TTAB 1990), aff'd, 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991).
  • Applicant's admission that the parties' marks are similar is not by itself adequate to establish likelihood of confusion.
    • Prakash Melwani v. Allegiance Corporation, Opposition No. 91190682 (TTAB 2010)
      • In particular, applicant's admission that the parties' marks are similar is not by itself adequate to establish likelihood of confusion. See In re E. I. duPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973) for the factors to be considered in a likelihood of confusion analysis.
  • Where applicant did not present argument as to this du Pont factor and on this record the TTAB considered the marks to be similar.
    • In re Wacker Neuson SE, Serial No. 79060553 (TTAB 2010)
      • However, applicant did not present argument as to this du Pont factor and on this record we consider the marks to be similar.
  • In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods.
    • In re Wacker Neuson SE, Serial No. 79060553 (TTAB 2010)
      • In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
  • The TTAB must resolve any doubt with regard to a determination under Trademark Act Section 2(d) in favor the owner of the cited, prior registration.
    • In re Cynosure, Inc., Serial No. 76653359 (TTAB 2009)
      • Lastly, we note that we must resolve any doubt with regard to a determination under Trademark Act Section 2(d) in favor the owner of the cited, prior registration. See In re The United States Shoe Corporation, 229 USPQ 707, 709 (TTAB 1985); In re Martin's Famous Pastry Shoppe, Inc., 221 USPQ 364, 367 (TTAB 1984); In re Apparel, Inc., 578 F.2d 308, 151 USPQ 353 (CCPA 1966).
  • While all the DuPont factors must be considered when they are of record, the various factors may play more or less weighty roles in any particular determination.
    • Benjamin J. Giersch v. Scripps Networks, Inc., Cancellation No. 92045576 (TTAB 2009)
      • While all the DuPont factors must be considered when they are of record, the various factors "may play more or less weighty roles in any particular determination." In re E.I. du Pont, 177 USPQ at 567.
  • The Board determines likelihood of confusion based on the factors set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (CCPA 1973).
    • Hewlett-Packard Development Company, L.P. v. Vudu, Inc., Opposition No. 91185393 (TTAB 2009)
      • The Board determines likelihood of confusion based on the factors set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (CCPA 1973).
  • The Board determines likelihood of confusion based on the factors set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (CCPA 1973).
    • In re Cynosure, Inc., Serial No. 76653359 (TTAB 2009)
      • The opinion in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1977), sets forth the factors to consider in determining likelihood of confusion.
  • In any likelihood of confusion analysis, however, two key considerations are the similarities between the marks and the similarities between the goods and/or services.
    • In re Jack B. Binion, Serial Nos. 76590702 and 76590729 (TTAB 2009)
      • In any likelihood of confusion analysis, however, two key considerations are the similarities between the marks and the similarities between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
  • The TTAB's determination is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue.
    • Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008)
      • Our determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
  • Lastly, to the extent that any of applicant's points raises a doubt about likelihood of confusion, that doubt is required to be resolved in favor of the prior registrant.
    • In re Jack B. Binion, Serial Nos. 76590702 and 76590729 (TTAB 2009)
      • Lastly, to the extent that any of applicant's points raises a doubt about likelihood of confusion, that doubt is required to be resolved in favor of the prior registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984).
  • The determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion.
    • Lacoste Alligator S.A. v. Maxoly, Inc., Opposition No. 91177866 (TTAB 2009)
      • Our determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003).
  • The likelihood of confusion analysis considers all du Pont factors for which there is evidence of record but may focus on dispositive factors, such as similarity of the marks and relatedness of the goods.
    • Hewlett-Packard Development Company, L.P. v. Vudu, Inc., Opposition No. 91185393 (TTAB 2009)
      • The likelihood of confusion analysis considers all du Pont factors for which there is evidence of record but "may focus ... on dispositive factors, such as similarity of the marks and relatedness of the goods." Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 57 USPQ2d 1557, 1559 (Fed. Cir. 2001).
  • Section 2(d) precludes registration of an applicant's mark which so resembles a mark registered in the Patent and Trademark Office as to be likely, when used on or in connection with the goods of the applicant, to cause confusion.
    • In re Cynosure, Inc., Serial No. 76653359 (TTAB 2009)
      • Section 2(d) of the Trademark Act precludes registration of an applicant's mark "which so resembles a mark registered in the Patent and Trademark Office. as to be likely, when used on or in connection with the goods of the applicant, to cause confusion." 15 U.S.C. § 1052(d).
  • Our determination of the issue of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
    • In re Jack B. Binion, Serial Nos. 76590702 and 76590729 (TTAB 2009)
      • Our determination of the issue of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
  • Our determination of the issue of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
    • In re Wacker Neuson SE, Serial No. 79060553 (TTAB 2010)
      • Our determination of the issue of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
  • Our determination of the issue of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
    • Morgan Creek Productions, Inc. v. Foria International, Inc., Opposition No. 91173806 (TTAB 2009)
      • Our determination of the issue of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
  • Petitioner specifically pleaded that it is the actual institution with which consumers will presume a false suggestion of a connection when confronted with respondent's identical PEMEX mark, and which is allegedly implicated by that false suggestion.
    • Petróleos Mexicanos v. Intermix S.A., Cancellation No. 92052292 (TTAB 2010)
      • In particular, petitioner specifically pleaded that it is the actual institution with which consumers will presume a false suggestion of a connection when confronted with respondent's identical PEMEX mark, and which is allegedly implicated by that false suggestion.2 See Aruba v. Excelsior Inc., 5 USPQ2d 1685 (TTAB 1987).
  • Our determination of likelihood of confusion under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion.
    • In re Thor Tech, Inc., Serial No. 78634024 (TTAB 2009)
      • Our determination of likelihood of confusion under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003).
  • Our determination of the issue of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
    • In re HerbalScience Group, LLC, Serial No. 77519313 (TTAB 2010)
      • Turning now to the substantive issue before us on appeal, our determination of the issue of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
  • The fundamental inquiry mandated by §2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.
    • In re Thor Tech, Inc., Serial No. 78634024 (TTAB 2009)
      • In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) ("The fundamental inquiry mandated by §2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks").
  • Discussion of First Niagara case and establishing priority of a foreign entity.
    • Petróleos Mexicanos v. Intermix S.A., Cancellation No. 92052292 (TTAB 2010)
      • Specifically, the First Niagara court found that a Canadian insurance company, operating out of Canada and having no physical presence in the United States, had connections to the United States by way of, inter alia, selling policies issued by United States-based underwriters, and selling policies to United States citizens having Canadian property, and that such connections were sufficient to establish priority.
  • The crucial factors are the similarity of the marks and the similarity of the goods in the application and the cited registration.
    • In re Cynosure, Inc., Serial No. 76653359 (TTAB 2009)
      • Here, as is often the case, the crucial factors are the similarity of the marks and the similarity of the goods in the application and the cited registration. Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) ("The fundamental inquiry mandated by Section 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.").
  • As section 2(d) merely requires a prior mark to have been used in the U.S. by another, a foreign opposer can present its opposition on the merits by showing only use of its mark in the U.S.
    • Petróleos Mexicanos v. Intermix S.A., Cancellation No. 92052292 (TTAB 2010)
      • Our primary reviewing court, in noting that the plain language of Section 2(d) merely requires a prior mark to have been "used in the United States by another," stated that "a foreign opposer can present its opposition on the merits by showing only use of its mark in the United States." See First Niagara Ins. Brokers Inc. v. First Niagara Fin. Group Inc., 476 F.3d 867, 81 USPQ2d 1375, 1378 (Fed. Cir. 2007) (emphasis in original).
  • Case Finding: The mark WAVE for recreational vehicles, namely travel trailers and fifth wheel trailers is likely to cause confusion with the mark THE WAVE for trailers, dump trailers, and truck bodies.
    • In re Thor Tech, Inc., Serial No. 78634024 (TTAB 2009)
      • In view of the facts that the marks are virtually identical, the goods are legally the same, and because we must presume that the goods move in the same channels of trade and are available to the same classes of consumers, we find that applicant's registration of the mark WAVE for "recreational vehicles, namely travel trailers and fifth wheel trailers" is likely to cause confusion with the mark THE WAVE for "trailers, dump trailers, and truck bodies."
  • Our determination under Section 2(d) is based on an analysis of all of the facts in evidence that are relevant to a likelihood of confusion.
    • Benjamin J. Giersch v. Scripps Networks, Inc., Cancellation No. 92045576 (TTAB 2009)
      • Our determination under Section 2(d) is based on an analysis of all of the facts in evidence that are relevant to a likelihood of confusion. See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
  • In determining whether there is a likelihood of confusion between marks, there are thirteen evidentiary factors, which, when of record, the Board must consider, but may focus on dispositive factors.
    • Texas Department of Transportation V. Richard Tucker, Cancellation No. 92030882 & Opposition No. 91165417 (TTAB 2010)
      • FOOTNOTE 20 "In determining whether there is a likelihood of confusion between marks, there are thirteen evidentiary factors, which, when of record, the Board must consider. See E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). The likelihood of confusion analysis considers all du Pont factors for which there is evidence of record but "may focus . on dispositive factors, such as similarity of the marks and relatedness of the goods." Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 57 USPQ2d 1557, 1559 (Fed. Cir. 2001)."
  • If the TTAB finds that there is no genuine issue that there is likelihood of confusion with respect to this mark, there is no need for the TTAB to consider opposer's other mark, and if the TTAB finds that there is no likelihood of confusion with respect to this mark, a fortiori there can be no likelihood of confusion with respect to the other mark.
    • Hewlett-Packard Development Company, L.P. v. Vudu, Inc., Opposition No. 91185393 (TTAB 2009)
      • For purposes of our likelihood of confusion analysis on the summary judgment motion, the most pertinent of opposer's marks is its VOODOO mark in standard characters (Registration No. 2988445) and therefore we will confine our discussion to this mark. That is, if we find that there is no genuine issue that there is likelihood of confusion with respect to this mark, there is no need for us to consider opposer's other mark, and if we find that there is no likelihood of confusion with respect to this mark, a fortiori there can be no likelihood of confusion with respect to the other mark.
  • While an applicant for registration of a mark under Trademark Act Section 1 must make bona fide use of its mark in commerce prior to registration, no such requirement applies to a plaintiff bringing a Section 2(d) claim in an opposition or cancellation proceeding.
    • Petróleos Mexicanos v. Intermix S.A., Cancellation No. 92052292 (TTAB 2010)
      • Petitioner alleges that it has "extensive business activities" (petition, para. 4) in the United States, although respondent argues that "'business activities' falls far short of alleging the bona fide use of the trademark in commerce in the United States on goods or services as required by 15 U.S.C. § 1127." (Mot. at 3, n.1, emphasis in original). However, while an applicant for registration of a mark under Trademark Act Section 1 must make bona fide use of its mark in commerce prior to registration, no such requirement applies to a plaintiff bringing a Section 2(d) claim in an opposition or cancellation proceeding.
  • Case Finding: The dissimilarity of the goods due to their nature, the manners in which they are sold or distributed, and the circumstances under which consumers would encounter them, is a dispositive factor in this case.
    • Morgan Creek Productions, Inc. v. Foria International, Inc., Opposition No. 91173806 (TTAB 2009)
      • In sum, we find that the parties' goods are dissimilar and not related. Moreover, the dissimilarity of the goods due to their nature, the manners in which they are sold or distributed, and the circumstances under which consumers would encounter them, is a dispositive factor in this case. See Kellogg Co. v. Pack'em Enterprises Inc., 951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed. Cir. 1991) ("We know of no reason why, in a particular case, a single duPont factor may not be dispositive"). See also, In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1362, 177 USPQ 563, 567 (CCPA 1973) ("each [of the thirteen elements] may from case to case play a dominant role.").
  • Case Finding: Having given due consideration to the fame of opposer's mark, and notwithstanding all the other factors in opposer's favor including the identity of the goods and the impulse nature of their purchase, that the marks in this case are simply too dissimilar to support a finding of likelihood of confusion.
    • Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008)
      • We find, having given due consideration to the fame of opposer's mark, and notwithstanding all the other factors in opposer's favor including the identity of the goods and the impulse nature of their purchase, that the marks in this case are simply too dissimilar to support a finding of likelihood of confusion. See, e.g., Kellogg Co., supra at 1144 (dissimilarity of the marks outweighed all other du Pont factors, "even if opposer offered evidence [that its mark has become famous]"). While the fame of opposer's RED SOX mark extends to the form of RED SOX in the particular stylized display, we cannot say, based on this record, that the fame of the mark extends to the stylization alone, apart from the words in the mark. The dissimilarity of the marks is dispositive in this case.
  • Petitioner need not assert a proprietary interest to assert a Section 2(a) claim.
    • Petróleos Mexicanos v. Intermix S.A., Cancellation No. 92052292 (TTAB 2010)
      • FOOTNOTE 2 "Respondent's reliance on Bayer Consumer Care AG v. Belmora LLC, 90 USPQ2d 1587 (TTAB 2009), is misplaced inasmuch as that case did not involve a Section 2(a) claim, and as noted above, petitioner need not assert a proprietary interest to assert a Section 2(a) claim. See Hornby v. TJX Companies Inc., 87 USPQ2d 1411 (TTAB 2008) (petitioner that had abandoned use in the United States of her personal name mark, was unable to prevail on either a likelihood of confusion or dilution claim, but was able to prevail on a claim of false suggestion of a connection with petitioner's persona, due to continuing fame and reputation of petitioner within the United States). Cf. Fiat Grp. Automobiles S.p.A. v. ISM Inc., 94 USPQ2d 1111, 1113, 1115 (TTAB 2010) ("[T]o the extent the 'well known mark' doctrine is recognized at all, pleading only use of such a mark outside the United States, without any pleading of widespread recognition of mark within the United States as signifying a particular source of goods, even if such source is anonymous, is an insufficient basis for a claim of dilution. . We must, however, at least recognize the possibility that, in an unusual case, activity outside the United States related to a mark could potentially result in the mark becoming well-known within the United States, even without any form of activity in the United States")."
  • The Bayer case clarifies that, for Section 2(d) purposes, allegations of use in the U.S.by an entity merely selling goods authorized by a petitioner, without more, do not sufficiently allege prior use of a mark by the petitioner in the U.S.
    • Petróleos Mexicanos v. Intermix S.A., Cancellation No. 92052292 (TTAB 2010)
      • Whether such activities constitute use, or use analogous to trademark use, of petitioner's mark sufficient to prove priority, is a matter for trial.3 FOOTNOTE 3 "With regard to the parties' arguments concerning the territoriality principle as discussed in Bayer, we note that, in that proceeding, the allegations going to priority were found deficient because there was a failure to plead that the goods bearing petitioner's mark, which were allegedly purchased in the United States prior to respondent's filing date, were manufactured or distributed in the United States by petitioner, or on its behalf, and because the pleading merely alleged that said goods were "authorized by" petitioner. See Bayer Consumer Care AG v. Belmora LLC, 90 USPQ2d at 1591. The Board noted that a third party's importation and resale of goods does not by itself constitute "use" without some allegation that the third party was licensed or authorized by petitioner to "use" petitioner's alleged mark on petitioner's behalf. Id. (emphasis in original). Accordingly, the Bayer case clarifies that, for Section 2(d) purposes, allegations of use in the United States by an entity merely selling goods "authorized by" a petitioner, without more, do not sufficiently allege prior use of a mark by the petitioner in the United States. Here, Bayer does not operate as a bar to petitioner's claim under Section 2(d), as petitioner clearly alleges that it is petitioner itself who uses the mark in connection with its goods and services. Moreover, in Bayer, the Board's discussion of territoriality was in the context of an independent claim that petitioner sought to bring under Article 6bis of the Paris Convention. The instant case does not involve such a claim."
In re Max Capital Group Ltd., Serial No. 77186166 (TTAB 2010) Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010) Texas Department of Transportation v. Richard Tucker, Cancellation No. 92030882 and Opposition No. 91165417 (TTAB 2010) Weatherford/Lamb, Inc. v. C&J Energy Services, Inc., Cancellation No. 92050101 (TTAB 2010) In re Iolo Technologies, LLC, Serial No. 77399654 (TTAB 2010) Prakash Melwani v. Allegiance Corporation, Opposition No. 91190682 (TTAB 2010) Texas Department of Transportation V. Richard Tucker, Cancellation No. 92030882 & Opposition No. 91165417 (TTAB 2010) Petróleos Mexicanos v. Intermix S.A., Cancellation No. 92052292 (TTAB 2010) In re HerbalScience Group, LLC, Serial No. 77519313 (TTAB 2010) In re Wacker Neuson SE, Serial No. 79060553 (TTAB 2010) Panda Travel, Inc. v. Resort Option Enterprises, Inc., Opposition No. 91174767 and 91174768 (TTAB 2009) Research In Motion Limited v. NBOR Corporation, Opposition No. 91179284 (TTAB 2009) Eveready Battery Company, Inc. v. Green Planet, Inc., Opposition No. 91180015 (TTAB 2009) Anthony's Pizza & Pasta International, Inc. v. Anthony's Pizza Holding Company, Inc., Opposition No. 91171509 and Cancellation No. 92045956 (TTAB 2009) In re Toshiba Medical Systems Corporation, Serial No. 79046106 (TTAB 2009) UMG Recordings, Inc., substituted for Universal Music Group v. Charles O'Rourke, Opposition No. 91178937 (TTAB 2009) In re G.B.I. Tile and Stone, Inc., Serial No. 77369073 (TTAB 2009) In re White Rock Distilleries, Inc.. Serial No. 77093221 (TTAB 2009) In re Davey Products Pty Ltd., Serial No. 77029776 (TTAB 2009) Benjamin J. Giersch v. Scripps Networks, Inc., Cancellation No. 92045576 (TTAB 2009) In re Jack B. Binion, Serial Nos. 76590702 and 76590729 (TTAB 2009) Morgan Creek Productions, Inc. v. Foria International, Inc., Opposition No. 91173806 (TTAB 2009) In re Thor Tech, Inc., Serial No. 78634024 (TTAB 2009) Lacoste Alligator S.A. v. Maxoly, Inc., Opposition No. 91177866 (TTAB 2009) Hewlett-Packard Development Company, L.P. v. Vudu, Inc., Opposition No. 91185393 (TTAB 2009) In re Cynosure, Inc., Serial No. 76653359 (TTAB 2009) In re RSI Systems, LLC, Serial No. 78848532 (TTAB 2008) Green Spot (Thailand) Ltd. v. Vitasoy International Holdings Limited, Opposition No. 91165010, (TTAB 2008) The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008) In re SL&E Training Stable, Inc., Serial No. 78806669 (TTAB 2008) In re La Peregrina Limited, Serial No. 78676199 (TTAB 2008) Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008) 7-Eleven, Inc. v. Lawrence I. Wechsler, Opposition No. 91117739, (TTAB 2007) Apple Computer v.  TVNET.net, Inc., Opposition No. 91168875, (TTAB 2007) Barbara's Bakery, Inc. v. Barbara Landesman, Opposition No. 91157982, (TTAB 2007) Fort James Operating Company v. Royal Paper Converting, Inc., Opposition No. 91122964, (TTAB 2007) In re 1st USA Realty Professionals, Inc., Serial No. 78553715, (TTAB 2007) In re Association of the United States Army, Serial No. 76578579, (TTAB 2007) In re Chica, Inc., Serial No. 76627857, (TTAB 2007) In re Fiesta Palms, LLC, Serial No. 76595049, (TTAB 2007) In re Ginc UK Limited, Serial No. 78618843, (TTAB 2007) In re Paper Doll Promotions, Inc., Serial No. 76451078, (TTAB 2007) In re The W.W. Henry Company, L.P., Serial No. 78401595, (TTAB 2007) Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (TTAB 2007) Kohler Co. v. Baldwin Hardware Corporation, Cancellation No. 92041434, (TTAB 2007) L. & J.G. Stickley, Inc. v. Ronald C. Cosser, Cancellation No. 92040202, (TTAB 2007) Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, Opposition No. 91160856, (TTAB 2007) Mario Diaz v. Servicios De Franquicia Pardo's S.A.C., Opposition No. 91159871, (TTAB 2007) Miss Universe L.P., LLLP v. Community Marketing, Inc., Opposition No. 91160627, (TTAB 2007) Motion Picture Association of America, Inc. v. Respect Sportswear, Inc., Opposition No. 91153141, (TTAB 2007) Nike, Inc. v. WNBA Enterprises, LLC, Opposition No. 91160755, 91160763, (TTAB 2007) Otto International, Inc. v. Otto Kern GMBH, Cancellation No. 92046167, (TTAB 2007) Parfums de Coeur, Ltd. v. Lory Lazarus, Opposition No. 91161331, (TTAB 2007) ProQuest Information and Learning Company v. Jacques R. Island, Opposition No. 91158016, (TTAB 2007) Schering-Plough HealthCare Products, Inc. v. Ing-Jing Huang, Opposition No. 91117558, (TTAB 2007) The B.V.D. Licensing Corporation v. Florencio Rodriguez, Opposition No. 91157529, (TTAB 2007) The Black & Decker Corporation v. Emerson Electric Co., Opposition No. 91158891, (TTAB 2007) The Christian Broadcasting Network, Inc. v. ABS-CBN International, Cancellation No. 92044366, (TTAB 2007) The Wet Seal, Inc. v. FD Management, Inc., Opposition No. 91157022, (TTAB 2007) Venture Out Properties LLC v. Wynn Resorts Holdings, LLC, Opposition No. 91167237, (TTAB 2007) Westrex Corporation v. New Sensor Corporation, Opposition Nos. 91168152, 91170940, (TTAB 2007) Chicago Bears Football Club, Inc. and NFL Properties LLC v. 12TH Man/Tennessee LLC, Opposition No. 91150925, (TTAB 2007) Ava Enterprises, Inc. v. Audio Boss USA, Inc., Opposition No. 91125266, (TTAB 2006) Centraz Industries, Inc. v. Spartan Chemical Company, Inc., Opposition No. 91159335, (TTAB 2006) In re Big Pig, Inc., Serial No. 78249582, (TTAB 2006) In re Box Solutions Corp., Serial No. 76267086, (TTAB 2006) In re Homeland Vinyl Products, Inc., Serial No. 76361399, (TTAB 2006) In re Jump Designs, LLC, Serial No. 76393986, (TTAB 2006) In re Mark Thomas, Serial No. 78334625, (TTAB 2006) Maids to Order of Ohio, Inc. v. Maid-to-Order, Inc., Cancellation No. 92040571, (TTAB 2006) Mattel, Inc. v. Funline Merchandise Co., Inc., Cancellation No. 92040128, (TTAB 2006) National Rural Electric Cooperative Association v. Suzlon Wind Energy Corporation, Cancellation No. 92043377, (TTAB 2006) Standard Knitting, Ltd. v. Toyota Jidosha Kabushiki Kaisha, Opposition No. 91116242, (TTAB 2006) Starbucks U.S. Brands, LLC and Starbucks Corporation d.b.a. Starbucks Coffee Company v. Marshall S. Ruben, Opposition No. 91156879, (TTAB 2006) Tea Board of India v. The Republic of Tea, Inc., Opposition No. 91118587, (TTAB 2006) Teledyne Technologies, Inc. v. Western Skyways, Inc., Cancellation No. 92041265, (TTAB 2006) Truescents LLC v. Ride Skin Care, L.L.C., Opposition No. 91158556, (TTAB 2006) Blue Man Productions, Inc. v. Erich Tarmann, Opposition No. 91154055, (TTAB 2005) DC Comics v. Pan American Grain Mfg. Co. Inc., Opposition No. 91125404, (TTAB 2005) Knight Textile Corporation v. Jones Investment Co., Inc., Opposition No. 91153852, (TTAB 2005) Alfacell Corporation v. Anticancer, Inc., Cancellation No. 92032202, (TTAB 2004) Baseball America, Inc. v. Powerplay Sports, Ltd., Opposition No. 91120166, (TTAB 2004) Genesco Inc. and Genesco Brands Inc. v. Gregory Martz, Opposition No. 121,296, (TTAB 2003) In re Microsoft Corporation, Serial No. 78/013678, (TTAB 2003) The NASDAQ Stock Market, Inc. v. Antartica, S.r.l., Opposition No. 91121204, (TTAB 2003) INTERLEGO AG and LEGO SYSTEMS, INC. and KIRKBI AG v. ABRAMS/GENTILE ENTERTAINMENT, INC. and MJJ MULTIMEDIA LLC, Opposition No. 103,612, (TTAB 2002) Time Warner Entertainment Company L.P. v. Karen L. Jones, Opposition No. 112,409, (TTAB 2002) In re Comexa Ltda., Serial No. 75/396,043, (TTAB 2001) In re Infinity Broadcasting Corporation of Dallas, Serial No. 75/689,077, (TTAB 2001) In re Thomas H. Wilson, Serial No. 75/285,881, (TTAB 2001) The Sports Authority Michigan, Inc. v. The PC Authority, Inc., Opposition No. 113,785, (TTAB 2001) The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001) Recot, Inc. v. M. C. Becton, Opposition No. 96,518, (TTAB 2000) In re Continental Graphics Corporation, Serial No. 75/033,628, (TTAB 1999) Grand Total
Fiat Group Autos. S.p.A. v. ISM Inc., 94 USPQ2d 1111 (TTAB 2010) 1
Bayer Consumer Care AG v. Belmora LLC, 90 USPQ2d 1587 (TTAB 2009) 1
Hornby v. TJX Companies Inc., 87 USPQ2d 1411 (TTAB 2008) 1
First Niagara Insurance Brokers Inc. v. First Niagara Financial Group Inc., 476 F.3d 867, 81 USPQ2d 1375 (Fed. Cir. 2007) 1
Ptak Bros. Jewelry Inc. v. Ptak, 83 USPQ2d 1519 (S.D.N.Y. 2007) 1
Aktieselskabet af 21. November 2001 v. Fame Jeans Inc, 77 USPQ2d 1861 (TTAB 2006) 1
Ava Enterprises Inc. v. Audio Boss USA Inc., 77 USPQ2d 1783 (TTAB 2006) 2
Carefirst of Maryland Inc. v. FirstHealth of the Carolinas Inc., 77 USPQ2d 1492 (TTAB 2005) 2
Palm Bay Import Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005) 9
Baseball America Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844 (TTAB 2004) 2
In re Chatam International Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004) 2
In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003) 51
Johnny's Fine Foods Inc. v. Johnny's Inc., 286 F.Supp.2d 876, 68 USPQ2d 1505 (M.D. Tenn. 2003) 1
Hewlett- Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002) 1
Leatherwood Scopes International Inc. v. Leatherwood, 63 USPQ2d 1699 (TTAB 2002) 1
Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650 (TTAB 2002) 1
Henegan Construction Co. v. Heneghan Contracting Corp., 63 USPQ2d 1984 (S.D.N.Y. 2002) 1
Hornblower & Weeks Inc. v. Hornblower & Weeks Inc., 60 USPQ2d 1733 (TTAB 2001) 1
Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 57 USPQ2d 1557 (Fed. Cir. 2001) 4
In re Nett Designs Inc., 236 F.3d 1339, 957 USPQ2d 1564 (Fed. Cir. 2001) 3
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000) 1
Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894 (Fed. Cir. 2000) 8
Champagne Louis Roederer S.A. v. Delicato Vineyards, 148 F.3d 1373, 47 USPQ2d 1459 (Fed. Cir. 1998) 1
Viacom International Inc. v. Komm, 46 USPQ2d 1233 (TTAB 1998) 1
NASDAQ Stock Market Inc. v. Antartica S.r.l., 69 USPQ2d 1718 (TTAB 1998) 1
M. Fabrikant & Sons, Ltd. v. Fabrikant Fine Diamonds, Inc., 17 F.Supp.2d 249 (S.D.N.Y. 1998) 1
In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997) 21
TBC Corp. v. Holsa Inc., 126 F.3d 1470, 44 USPQ2d 1315 (Fed. Cir. 1997) 3
T.A.B. Systems v. PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879 (Fed. Cir. 1996) 1
Dyneer Corp. v. Automotive Products plc, 37 USPQ2d 1251 (TTAB 1995) 1
Deere & Co. v. MTD Products. Inc., 41 F.3d 39, 32 USPQ2d 1936 (2nd Cir. 1994) 1
In re Sunmarks Inc., 32 USPQ2d 1470 (TTAB 1994) 1
Infinity Broadcasting Corp. v. Great Boston Radio, II Inc., 32 USPQ2d 1925 (D.C. Mass. 1994) 1
Pride Communications v. WCKG Inc., 851 F.Supp. 895, 30 USPQ2d 1185 (N.D. Ill. 1994) 1
Hilson Research Inc. v. Society for Human Resource Management, 27 USPQ2d 1423 (TTAB 1993) 2
In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993) 2
Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2 14698 (Fed. Cir. 1992) 1
Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768 (TTAB 1992) 2
Kenner Parker Toys Inc. v. Rose Art Industries Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir. 1992) 2
Big Blue Products Inc. v. International Business Machines Corp., 19 USPQ2d 1072 (TTAB 1991) 1
In re Perez, 21 USPQ2d 1075 (TTAB 1991) 2
J & J Snack Foods Corp. v. McDonald's Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991) 4
Kellogg Co. v. Pack-Em Enterprises Inc., 14 USPQ2d 1545 (TTAB 1889), aff'd, 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991) 3
American Paging Inc. v. American Mobilphone Inc., 13 USPQ2d 2036 (TTAB 1989), aff'd unpub'd, 923 F.2d 869, 17 USPQ2d 1726 (Fed. Cir. 1990) 3
Charles Jacquin et Cie Inc. v. Destileria Serralles Inc., 921 F.2d 467, 17 USPQ2d 1104 (3d Cir. 1990) 1
Action Temporary Services Inc. v. Labor Force Inc., 870 F.2d 1563, 10 USPQ2d 1307 (Fed. Cir. 1989) 1
American Paging Inc. v. American Mobilphone Inc., 13 USPQ2d 2036 (TTAB 1989), aff'd unpub'd, 923 F.2d 869, 17 USPQ2d 1726 (Fed. Cir. 1990) 1
Cerveceria Centroamericana S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d 1307 (Fed. Cir. 1989) 1
Nina Ricci S.A.R.L. v. E.T.F. Enterprises Inc., 889 F.2d 1070, 12 USPQ2d 1901 (Fed. Cir. 1989) 2
Greyhound Corp. v. Both Worlds Inc., 6 USPQ2d 1635 (TTAB 1988) 1
In re Hyper Shoppes (Ohio) Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988) 14
In re White Swan Ltd., 8 USPQ2d 1534 (TTAB 1988) 2
In re Lamson Oil Co., 6 USPQ2d 1041 (TTAB 1988) 1
In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1987) 2
Virginia Tech Foundation Inc. v. Family Group, Limited V, 666 F.Supp. 856, 2 USPQ2d 1961 (W.D. Va. 1987) 1
Aruba v. Excelsior Inc., 5 USPQ2d 1685 (TTAB 1987) 1
In re BankAmerica Corporation, 231 USPQ 873 (TTAB 1986) 1
Miles Laboratories Inc. v. Naturally Vitamin Supplements Inc., 1 USPQ2d 1445 (TTAB 1986) 1
In re Oriental Daily News, Inc., 230 USPQ 637 (TTAB 1986) 1
Conan Properties Inc. v. Conans Pizza Inc., 752 F.2d 145, 225 USPQ 379 (5th Cir. 1985) 1
Draper Communications Inc. v. Delaware Valley Broadcasters Ltd. Partnership, 229 USPQ 161 (Del. Ch. 1985) 1
In re the United States Shoe Corp., 229 USPQ 707 (TTAB 1985) 1
Hercules Inc. v. National Starch & Chemical Corp., 223 USPQ 1244 (TTAB 1984) 1
In re Martin's Famous Pastry Shoppe Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984) 8
Pathfinder Communications Corp. v. Midwest Communications Co., 593 F.Supp. 281, 224 USPQ 203 (N.D. Ind. 1984) 1
USA Network v. Gannett Co., 584 F.Supp. 195, 223 USPQ 678 (D. Colo. 1984) 1
Giant Food Inc. v. Nation's Foodservice Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983) 1
In re Sarkli, Ltd., 721 F.2d 353, 220 USPQ 111 (Fed. Cir. 1983) 1
Plus Products v. Star-Kist Foods Inc., 220 USPQ 541 (TTAB 1983) 1
Antillian Cigar Corp. v. Benedit Cigar Corp., 218 USPQ 187 (TTAB 1983) 1
In re Colonial Stores, 216 USPQ 793 (TTAB 1982) 1
Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA 1981) 2
Warner Bros. Inc. v. Gay Toys Inc., 658 F.2d 76, 211 USPQ 1017 (2nd Cir. 1981) 1
Fluid Energy Processing & Equipment v. Fluid Energy, Inc., 212 USPQ 28 (TTAB 1981) 1
Justin Industries, Inc. v. D.B. Rosenblatt, Inc., 213 USPQ 968 (TTAB 1981) 1
American Stock Exchange Inc. v. American Express Co., 207 USPQ 356 (TTAB 1980) 1
Evans Chemetics Inc. v. Chemetics International Ltd., 207 USPQ 695 (TTAB 1980) 1
American Footwear Corp. v. General Footwear Co., 609 F.2d 655, 204 USPQ 609 (2d Cir. 1979) 1
In re Hunter Publishing Co., 204 USPQ 957 (TTAB 1979) 1
In re The Clorox Co., 578 F.2d 305, 198 USPQ 337 (CCPA 1978) 1
San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPO 1 (CCPA 1977) 1
Broderick & Bascom Rope Co. v. The Goodyear Tire and Rubber Co., 531 F.2d 1068, 189 USPQ 412 (CCPA 1976) 1
Federated Foods Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976) 39
Conde Nast Publications Inc. v. Miss Quality Inc., 597 F.2d 1404, 184 USPQ 422 (CCPA 1975) 1
DuPont v. Yoshida, 393 F.Supp 502, 185 USPQ 597 (E.D.N.Y. 1975) 1
The Conde Naste Publications Inc. v. Miss Quality Inc., 507 F.2d 1404, 184 USPQ 422 (CCPA 1975) 1
Crown Radio Corp. v. Soundscriber Corp., 506 F.2d 1392, 184 USPQ 221 (CCPA 1974) 1
King Candy Co. v. Eunice King's Kitchen Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974) 3
Jack Winter Inc. v. Lancer of California, Inc., 183 USPQ 445 (TTAB 1974) 1
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973) 83
In re Pneumatiques, Caoutchouc Manufacture et Plastiques Kleber-Colombes, 487 F.2d 918, 179 USPQ 729 (CCPA 1973) 2
In re Bissett-Berman Corp., 476 F.2d 640, 177 USPQ 528 (CCPA 1973) 1
Ford Motor Co. v. Ford, 462 F.2d 1405, 174 USPQ 456 (CCPA 1972) 1
Hunt Foods & Indus. Inc. v. Gerson Stewart Corp., 367 F.2d 431, 151 USPQ 350 (CCPA 1966) 1
In re Apparel, Inc., 578 F.2d 308, 151 USPQ 353 (CCPA 1966) 1
Popular Merchandise Co. v. "21" Club Inc., 145 USPQ 203 (CCPA 1965) 1
Community of Roquefort et al. v. William Faehndrich Inc., 198 F.Supp. 291, 131 USPQ 435 (S.D.N.Y. 1961), aff'd, 303 F.2d 494, 133 USPQ 633 (2d Cir. 1962) 1
Planters Nut & Chocolate Co. v. Crown Nut Co., 305 F.2d 916, 134 USPQ 504 (CCPA 1962) 1
Roquefort v. William Faehndrich Inc., 198 F.Supp. 291, 131 USPQ 435 (S.D.N.Y. 1961), aff'd, 303 F.2d 494, 133 USPQ 633 (2d Cir. 1962) 1
Hollywood Water Heater Co. v. Hollymatic Corporation, 124 USPQ 452 (CCPA 1960) 1
Girard-Perregaux & Cie, S.A. v. Perregaux, 122 USPQ 95 (Comm'r. Pats. 1959) 1
In re Cooper, 117 USPQ 396 (CCPA 1958) 1
Jos. S. Cohen & Sons Co. v. Hearst Magazines, 220 F.2d 763, 105 USPQ 269 (CCPA 1955) 2
Pep Boys – Manny, Moe and Jack v. The Edwin F. Guth Company, 94 USPQ 158 (CCPA 1952) 1
The Alligator Company v. Larus & Brother Company Inc., 93 USPQ 436 (CCPA 1952) 1
Grand Total 4 2 2 1 3 1 2 5 3 3 3 1 6 3 5 3 6 3 6 4 5 3 3 2 2 5 3 3 6 15 5 3 2 2 7 2 2 7 11 5 7 3 4 2 1 3 3 3 6 9 6 1 4 2 4 5 2 2 3 4 4 5 6 3 4 5 2 6 3 4 4 3 1 3 4 2 4 2 9 3 2 4 3 5 3 2 6 1 8 7 3 3 2 2 361

Sec. 1051. Application for registration; verification

  1. (a) Application for use of trademark
    1. (1) The owner of a trademark used in commerce may request registration of its trademark on the principal register hereby established by paying the prescribed fee and filing in the Patent and Trademark Office an application and a verified statement, in such form as may be prescribed by the Director, and such number of specimens or facsimiles of the mark as used as may be required by the Director.
    2. (2) The application shall include specification of the applicant's domicile and citizenship, the date of the applicant's first use of the mark, the date of the applicant's first use of the mark in commerce, the goods in connection with which the mark is used, and a drawing of the mark.
    3. (3) The statement shall be verified by the applicant and specify that--
      1. (A) the person making the verification believes that he or she, or the juristic person in whose behalf he or she makes the verification, to be the owner of the mark sought to be registered;
      2. (B) to the best of the verifier's knowledge and belief, the facts recited in the application are accurate;
      3. (C) the mark is in use in commerce; and
      4. (D) to the best of the verifier's knowledge and belief, no other person has the right to use such mark in commerce either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods of such other person, to cause confusion, or to cause mistake, or to deceive, except that, in the case of every application claiming concurrent use, the applicant shall--
        1. (i) state exceptions to the claim of exclusive use; and
        2. (ii) shall \\1\\ specify, to the extent of the verifier's knowledge--
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          \\1\\ So in original. The word ``shall'' probably should not appear.
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          1. (I) any concurrent use by others;
          2. (II) the goods on or in connection with which and the areas in which each concurrent use exists;
          3. (III) the periods of each use; and
          4. (IV) the goods and area for which the applicant desires registration.
  2. (4) The applicant shall comply with such rules or regulations as may be prescribed by the Director. The Director shall promulgate rules prescribing the requirements for the application and for obtaining a filing date herein.
  3. (b) Application for bona fide intention to use trademark
    1. (1) A person who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce may request registration of its trademark on the principal register hereby established by paying the prescribed fee and filing in the Patent and Trademark Office an application and a verified statement, in such form as may be prescribed by the Director.
    2. (2) The application shall include specification of the applicant's domicile and citizenship, the goods in connection with which the applicant has a bona fide intention to use the mark, and a drawing of the mark.
    3. (3) The statement shall be verified by the applicant and specify--
      1. (A) that the person making the verification believes that he or she, or the juristic person in whose behalf he or she makes the verification, to be entitled to use the mark in commerce;
      2. (B) the applicant's bona fide intention to use the mark in commerce;
      3. (C) that, to the best of the verifier's knowledge and belief, the facts recited in the application are accurate; and
      4. (D) that, to the best of the verifier's knowledge and belief, no other person has the right to use such mark in commerce either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods of such other person, to cause confusion, or to cause mistake, or to deceive.
    Except for applications filed pursuant to section 1126 of this title, no mark shall be registered until the applicant has met the requirements of subsections (c) and (d) of this section.
    1. (4) The applicant shall comply with such rules or regulations as may be prescribed by the Director. The Director shall promulgate rules prescribing the requirements for the application and for obtaining a filing date herein.
  4. (c) Amendment of application under subsection (b) to conform to requirements of subsection (a) At any time during examination of an application filed under subsection (b) of this section, an applicant who has made use of the mark in commerce may claim the benefits of such use for purposes of this chapter, by amending his or her application to bring it into conformity with the requirements of subsection (a) of this section.
  5. (d) Verified statement that trademark is used in commerce
    1. (1) Within six months after the date on which the notice of allowance with respect to a mark is issued under section 1063(b)(2) of this title to an applicant under subsection (b) of this section, the applicant shall file in the Patent and Trademark Office, together with such number of specimens or facsimiles of the mark as used in commerce as may be required by the Director and payment of the prescribed fee, a verified statement that the mark is in use in commerce and specifying the date of the applicant's first use of the mark in commerce and those goods or services specified in the notice of allowance on or in connection with which the mark is used in commerce. Subject to examination and acceptance of the statement of use, the mark shall be registered in the Patent and Trademark Office, a certificate of registration shall be issued for those goods or services recited in the statement of use for which the mark is entitled to registration, and notice of registration shall be published in the Official Gazette of the Patent and Trademark Office. Such examination may include an examination of the factors set forth in subsections (a) through (e) of section 1052 of this title. The notice of registration shall specify the goods or services for which the mark is registered.
    2. (2) The Director shall extend, for one additional 6-month period, the time for filing the statement of use under paragraph (1), upon written request of the applicant before the expiration of the 6-month period provided in paragraph (1). In addition to an extension under the preceding sentence, the Director may, upon a showing of good cause by the applicant, further extend the time for filing the statement of use under paragraph (1) for periods aggregating not more than 24 months, pursuant to written request of the applicant made before the expiration of the last extension granted under this paragraph. Any request for an extension under this paragraph shall be accompanied by a verified statement that the applicant has a continued bona fide intention to use the mark in commerce and specifying those goods or services identified in the notice of allowance on or in connection with which the applicant has a continued bona fide intention to use the mark in commerce. Any request for an extension under this paragraph shall be accompanied by payment of the prescribed fee. The Director shall issue regulations setting forth guidelines for determining what constitutes good cause for purposes of this paragraph.
    3. (3) The Director shall notify any applicant who files a statement of use of the acceptance or refusal thereof and, if the statement of use is refused, the reasons for the refusal. An applicant may amend the statement of use.
    4. (4) The failure to timely file a verified statement of use under paragraph (1) or an extension request under paragraph (2) shall result in abandonment of the application, unless it can be shown to the satisfaction of the Director that the delay in responding was unintentional, in which case the time for filing may be extended, but for a period not to exceed the period specified in paragraphs (1) and (2) for filing a statement of use.
  6. (e) Designation of resident for service of process and notices
    If the applicant is not domiciled in the United States the applicant may designate, by a document filed in the United States Patent and Trademark Office, the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark. Such notices or process may be served upon the person so designated by leaving with that person or mailing to that person a copy thereof at the address specified in the last designation so filed. If the person so designated cannot be found at the address given in the last designation, or if the registrant does not designate by a document filed in the United States Patent and Trademark Office the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark, such notices or process may be served on the Director.

 

 

Sec. 1052. Trademarks registrable on principal register; concurrent registration

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it--
  1. (a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 3501(9) of title 19) enters into force with respect to the United States.
  2. (b) Consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof.
  3. (c) Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.
  4. (d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive: Provided, That if the Director determines that confusion, mistake, or deception is not likely to result from the continued use by more than one person of the same or similar marks under conditions and limitations as to the mode or place of use of the marks or the goods on or in connection with which such marks are used, concurrent registrations may be issued to such persons when they have become entitled to use such marks as a result of their concurrent lawful use in commerce prior to (1) the earliest of the filing dates of the applications pending or of any registration issued under this chapter; (2) July 5, 1947, in the case of registrations previously issued under the Act of March 3, 1881, or February 20, 1905, and continuing in full force and effect on that date; or (3) July 5, 1947, in the case of applications filed under the Act of February 20, 1905, and registered after July 5, 1947. Use prior to the filing date of any pending application or a registration shall not be required when the owner of such application or registration consents to the grant of a concurrent registration to the applicant. Concurrent registrations may also be issued by the Director when a court of competent jurisdiction has finally determined that more than one person is entitled to use the same or similar marks in commerce. In issuing concurrent registrations, the Director shall prescribe conditions and limitations as to the mode or place of use of the mark or the goods on or in connection with which such mark is registered to the respective persons.
  5. (e) Consists of a mark which (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them, (2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them, except as indications of regional origin may be registrable under section 1054 of this title, (3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them, (4) is primarily merely a surname, or (5) comprises any matter that, as a whole, is functional.
  6. (f) Except as expressly excluded in subsections (a), (b), (c), (d), (e)(3), and (e)(5) of this section, nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant's goods in commerce. The Director may accept as prima facie evidence that the mark has become distinctive, as used on or in connection with the applicant's goods in commerce, proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made. Nothing in this section shall prevent the registration of a mark which, when used on or in connection with the goods of the applicant, is primarily geographically deceptively misdescriptive of them, and which became distinctive of the applicant's goods in commerce before December 8, 1993.
A mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may be refused registration only pursuant to a proceeding brought under section 1063 of this title. A registration for a mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may be canceled pursuant to a proceeding brought under either section 1064 of this title or section 1092 of this title.

 

 

Sec. 1054. Collective marks and certification marks registrable

Subject to the provisions relating to the registration of trademarks, so far as they are applicable, collective and certification marks, including indications of regional origin, shall be registrable under this chapter, in the same manner and with the same effect as are trademarks, by persons, and nations, States, municipalities, and the like, exercising legitimate control over the use of the marks sought to be registered, even though not possessing an industrial or commercial establishment, and when registered they shall be entitled to the protection provided in this chapter in the case of trademarks, except in the case of certification marks when used so as to represent falsely that the owner or a user thereof makes or sells the goods or performs the services on or in connection with which such mark is used. Applications and procedure under this section shall conform as nearly as practicable to those prescribed for the registration of trademarks.

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Sec. 1057. Certificates of registration

  1. (a) Issuance and form
    Certificates of registration of marks registered upon the principal register shall be issued in the name of the United States of America, under the seal of the Patent and Trademark Office, and shall be signed by the Director or have his signature placed thereon, and a record thereof shall be kept in the Patent and Trademark Office. The registration shall reproduce the mark, and state that the mark is registered on the principal register under this chapter, the date of the first use of the mark, the date of the first use of the mark in commerce, the particular goods or services for which it is registered, the number and date of the registration, the term thereof, the date on which the application for registration was received in the Patent and Trademark Office, and any conditions and limitations that may be imposed in the registration.
  2. (b) Certificate as prima facie evidence
    A certificate of registration of a mark upon the principal register provided by this chapter shall be prima facie evidence of the validity of the registered mark and of the registration of the mark, of the registrant's ownership of the mark, and of the registrant's exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the certificate, subject to any conditions or limitations stated in the certificate.
  3. (c) Application to register mark considered constructive use
    Contingent on the registration of a mark on the principal register provided by this chapter, the filing of the application to register such mark shall constitute constructive use of the mark, conferring a right of priority, nationwide in effect, on or in connection with the goods or services specified in the registration against any other person except for a person whose mark has not been abandoned and who, prior to such filing--
    1. (1) has used the mark;
    2. (2) has filed an application to register the mark which is pending or has resulted in registration of the mark; or
    3. (3) has filed a foreign application to register the mark on the basis of which he or she has acquired a right of priority, and timely files an application under section 1126(d) of this title to register the mark which is pending or has resulted in registration of the mark.
  4. (d) Issuance to assignee
    A certificate of registration of a mark may be issued to the assignee of the applicant, but the assignment must first be recorded in the Patent and Trademark Office. In case of change of ownership the Director shall, at the request of the owner and upon a proper showing and the payment of the prescribed fee, issue to such assignee a new certificate of registration of the said mark in the name of such assignee, and for the unexpired part of the original period.
  5. (e) Surrender, cancellation, or amendment by registrant
    Upon application of the registrant the Director may permit any registration to be surrendered for cancellation, and upon cancellation appropriate entry shall be made in the records of the Patent and Trademark Office. Upon application of the registrant and payment of the prescribed fee, the Director for good cause may permit any registration to be amended or to be disclaimed in part: Provided, That the amendment or disclaimer does not alter materially the character of the mark. Appropriate entry shall be made in the records of the Patent and Trademark Office and upon the certificate of registration or, if said certificate is lost or destroyed, upon a certified copy thereof.
  6. (f) Copies of Patent and Trademark Office records as evidence
    Copies of any records, books, papers, or drawings belonging to the Patent and Trademark Office relating to marks, and copies of registrations, when authenticated by the seal of the Patent and Trademark Office and certified by the Director, or in his name by an employee of the Office duly designated by the Director, shall be evidence in all cases wherein the originals would be evidence; and any person making application therefor and paying the prescribed fee shall have such copies.
  7. (g) Correction of Patent and Trademark Office mistake
    Whenever a material mistake in a registration, incurred through the fault of the Patent and Trademark Office, is clearly disclosed by the records of the Office a certificate stating the fact and nature of such mistake, shall be issued without charge and recorded and a printed copy thereof shall be attached to each printed copy of the registration certificate and such corrected registration shall thereafter have the same effect as if the same had been originally issued in such corrected form, or in the discretion of the Director a new certificate of registration may be issued without charge. All certificates of correction heretofore issued in accordance with the rules of the Patent and Trademark Office and the registrations to which they are attached shall have the same force and effect as if such certificates and their issue had been specifically authorized by statute.
  8. (h) Correction of applicant's mistake
    Whenever a mistake has been made in a registration and a showing has been made that such mistake occurred in good faith through the fault of the applicant, the Director is authorized to issue a certificate of correction or, in his discretion, a new certificate upon the payment of the prescribed fee: Provided, That the correction does not involve such changes in the registration as to require republication of the mark.

 

 

Sec. 1063. Opposition to registration

  1. (a) Any person who believes that he would be damaged by the registration of a mark upon the principal register, including the registration of any mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may, upon payment of the prescribed fee, file an opposition in the Patent and Trademark Office, stating the grounds therefor, within thirty days after the publication under subsection (a) of section 1062 of this title of the mark sought to be registered. Upon written request prior to the expiration of the thirty-day period, the time for filing opposition shall be extended for an additional thirty days, and further extensions of time for filing opposition may be granted by the Director for good cause when requested prior to the expiration of an extension. The Director shall notify the applicant of each extension of the time for filing opposition. An opposition may be amended under such conditions as may be prescribed by the Director.
  2. (b) Unless registration is successfully opposed--
    1. (1) a mark entitled to registration on the principal register based on an application filed under section 1051(a) of this title or pursuant to section 1126 of this title shall be registered in the Patent and Trademark Office, a certificate of registration shall be issued, and notice of the registration shall be published in the Official Gazette of the Patent and Trademark Office; or
    2. (2) a notice of allowance shall be issued to the applicant if the applicant applied for registration under section 1051(b) of this title.

 

 

Sec. 1064. Cancellation of registration

A petition to cancel a registration of a mark, stating the grounds relied upon, may, upon payment of the prescribed fee, be filed as follows by any person who believes that he is or will be damaged, including as a result of a likelihood of dilution by blurring or dilution by tarnishment under section 1125(c) of this title, by the registration of a mark on the principal register established by this chapter, or under the Act of March 3, 1881, or the Act of February 20, 1905:
    1. (1) Within five years from the date of the registration of the mark under this chapter.
    2. (2) Within five years from the date of publication under section 1062(c) of this title of a mark registered under the Act of March 3, 1881, or the Act of February 20, 1905.
    3. (3) At any time if the registered mark becomes the generic name for the goods or services, or a portion thereof, for which it is registered, or is functional, or has been abandoned, or its registration was obtained fraudulently or contrary to the provisions of section 1054 of this title or of subsection (a), (b), or (c) of section 1052 of this title for a registration under this chapter, or contrary to similar prohibitory provisions of such prior Acts for a registration under such Acts, or if the registered mark is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services on or in connection with which the mark is used. If the registered mark becomes the generic name for less than all of the goods or services for which it is registered, a petition to cancel the registration for only those goods or services may be filed. A registered mark shall not be deemed to be the generic name of goods or services solely because such mark is also used as a name of or to identify a unique product or service. The primary significance of the registered mark to the relevant public rather than purchaser motivation shall be the test for determining whether the registered mark has become the generic name of goods or services on or in connection with which it has been used.
    4. (4) At any time if the mark is registered under the Act of March 3, 1881, or the Act of February 20, 1905, and has not been published under the provisions of subsection (c) of section 1062 of this title.
    5. (5) At any time in the case of a certification mark on the ground that the registrant (A) does not control, or is not able legitimately to exercise control over, the use of such mark, or (B) engages in the production or marketing of any goods or services to which the certification mark is applied, or (C) permits the use of the certification mark for purposes other than to certify, or (D) discriminately refuses to certify or to continue to certify the goods or services of any person who maintains the standards or conditions which such mark certifies:
Provided, That the Federal Trade Commission may apply to cancel on the grounds specified in paragraphs (3) and (5) of this section any mark registered on the principal register established by this chapter, and the prescribed fee shall not be required. Nothing in paragraph (5) shall be deemed to prohibit the registrant from using its certification mark in advertising or promoting recognition of the certification program or of the goods or services meeting the certification standards of the registrant. Such uses of the certification mark shall not be grounds for cancellation under paragraph (5), so long as the registrant does not itself produce, manufacture, or sell any of the certified goods or services to which its identical certification mark is applied.

 

 

Sec. 1125. False designations of origin, false descriptions, and dilution forbidden

  1. (a) Civil action
    1. (1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which--
      1. (A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or
      2. (B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities,
      shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.
    2. (2) As used in this subsection, the term ``any person'' includes any State, instrumentality of a State or employee of a State or instrumentality of a State acting in his or her official capacity. Any State, and any such instrumentality, officer, or employee, shall be subject to the provisions of this chapter in the same manner and to the same extent as any nongovernmental entity.
    3. (3) In a civil action for trade dress infringement under this chapter for trade dress not registered on the principal register, the person who asserts trade dress protection has the burden of proving that the matter sought to be protected is not functional.
  2. (b) Importation
    Any goods marked or labeled in contravention of the provisions of this section shall not be imported into the United States or admitted to entry at any customhouse of the United States. The owner, importer, or consignee of goods refused entry at any customhouse under this section may have any recourse by protest or appeal that is given under the customs revenue laws or may have the remedy given by this chapter in cases involving goods refused entry or seized.
  3. (c) Dilution by blurring; dilution by tarnishment
    1. (1) Injunctive relief
      Subject to the principles of equity, the owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an injunction against another person who, at any time after the owner's mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.
    2. (2) Definitions
      1. (A) For purposes of paragraph (1), a mark is famous if it is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark's owner. In determining whether a mark possesses the requisite degree of recognition, the court may consider all relevant factors, including the following:
        1. (i) The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties.
        2. (ii) The amount, volume, and geographic extent of sales of goods or services offered under the mark.
        3. (iii) The extent of actual recognition of the mark.
        4. (iv) Whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register.
      2. (B) For purposes of paragraph (1), ``dilution by blurring'' is association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark. In determining whether a mark or trade name is likely to cause dilution by blurring, the court may consider all relevant factors, including the following:
        1. (i) The degree of similarity between the mark or trade name and the famous mark.
        2. (ii) The degree of inherent or acquired distinctiveness of the famous mark.
        3. (iii) The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark.
        4. (iv) The degree of recognition of the famous mark.
        5. (v) Whether the user of the mark or trade name intended to create an association with the famous mark.
        6. (vi) Any actual association between the mark or trade name and the famous mark.
      3. (C) For purposes of paragraph (1), ``dilution by tarnishment'' is association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark.
    3. (3) Exclusions
      The following shall not be actionable as dilution by blurring or dilution by tarnishment under this subsection:
      1. (A) Any fair use, including a nominative or descriptive fair use, or facilitation of such fair use, of a famous mark by another person other than as a designation of source for the person's own goods or services, including use in connection with--
        1. (i) advertising or promotion that permits consumers to compare goods or services; or
        2. (ii) identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner.
      2. (B) All forms of news reporting and news commentary.
      3. (C) Any noncommercial use of a mark.
    4. (4) Burden of proof
      In a civil action for trade dress dilution under this chapter for trade dress not registered on the principal register, the person who asserts trade dress protection has the burden of proving that--
      1. (A) the claimed trade dress, taken as a whole, is not functional and is famous; and
      2. (B) if the claimed trade dress includes any mark or marks registered on the principal register, the unregistered matter, taken as a whole, is famous separate and apart from any fame of such registered marks.
    5. (5) Additional remedies
      In an action brought under this subsection, the owner of the famous mark shall be entitled to injunctive relief as set forth in section 1116 of this title. The owner of the famous mark shall also be entitled to the remedies set forth in sections 1117(a) and 1118 of this title, subject to the discretion of the court and the principles of equity if--
      1. (A) the mark or trade name that is likely to cause dilution by blurring or dilution by tarnishment was first used in commerce by the person against whom the injunction is sought after October 6, 2006; and
      2. (B) in a claim arising under this subsection--
        1. (i) by reason of dilution by blurring, the person against whom the injunction is sought willfully intended to trade on the recognition of the famous mark; or
        2. (ii) by reason of dilution by tarnishment, the person against whom the injunction is sought willfully intended to harm the reputation of the famous mark.
    6. (6) Ownership of valid registration a complete bar to action
      The ownership by a person of a valid registration under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register under this chapter shall be a complete bar to an action against that person, with respect to that mark, that--
      1. (A)
        1. (i) is brought by another person under the common law or a statute of a State; and
        2. (ii) seeks to prevent dilution by blurring or dilution by tarnishment; or
      2. (B) asserts any claim of actual or likely damage or harm to the distinctiveness or reputation of a mark, label, or form of advertisement.
    7. (7) Savings clause
      Nothing in this subsection shall be construed to impair, modify, or supersede the applicability of the patent laws of the United States.
  4. (d) Cyberpiracy prevention
    1. (1)
      1. (A) A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section, if, without regard to the goods or services of the parties, that person--
        1. (i) has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this section; and
        2. (ii) registers, traffics in, or uses a domain name that--
          1. (I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark;
          2. (II) in the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark; or
          3. (III) is a trademark, word, or name protected by reason of section 706 of title 18 or section 220506 of title 36.
        1. (B)
          1. (i) In determining whether a person has a bad faith intent described under subparagraph (A), a court may consider factors such as, but not limited to--
            1. (I) the trademark or other intellectual property rights of the person, if any, in the domain name;
            2. (II) the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person;
            3. (III) the person's prior use, if any, of the domain name in connection with the bona fide offering of any goods or services;
            4. (IV) the person's bona fide noncommercial or fair use of the mark in a site accessible under the domain name;
            5. (V) the person's intent to divert consumers from the mark owner's online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site;
            6. (VI) the person's offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the person's prior conduct indicating a pattern of such conduct;
            7. (VII) the person's provision of material and misleading false contact information when applying for the registration of the domain name, the person's intentional failure to maintain accurate contact information, or the person's prior conduct indicating a pattern of such conduct;
            8. (VIII) the person's registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of the parties; and
            9. (IX) the extent to which the mark incorporated in the person's domain name registration is or is not distinctive and famous within the meaning of subsection (c).
          2. (ii) Bad faith intent described under subparagraph (A) shall not be found in any case in which the court determines that the person believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful.
        2. (C) In any civil action involving the registration, trafficking, or use of a domain name under this paragraph, a court may order the forfeiture or cancellation of the domain name or the transfer of the domain name to the owner of the mark.
        3. (D) A person shall be liable for using a domain name under subparagraph (A) only if that person is the domain name registrant or that registrant's authorized licensee.
        4. (E) As used in this paragraph, the term ``traffics in'' refers to transactions that include, but are not limited to, sales, purchases, loans, pledges, licenses, exchanges of currency, and any other transfer for consideration or receipt in exchange for consideration.
      2. (2)
        1. (A) The owner of a mark may file an in rem civil action against a domain name in the judicial district in which the domain name registrar, domain name registry, or other domain name authority that registered or assigned the domain name is located if--
          1. (i) the domain name violates any right of the owner of a mark registered in the Patent and Trademark Office, or protected under subsection (a) or (c) of this section; and
          2. (ii) the court finds that the owner--
            1. (I) is not able to obtain in personam jurisdiction over a person who would have been a defendant in a civil action under paragraph (1); or
            2. (II) through due diligence was not able to find a person who would have been a defendant in a civil action under paragraph (1) by--
              1. (aa) sending a notice of the alleged violation and intent to proceed under this paragraph to the registrant of the domain name at the postal and e-mail address provided by the registrant to the registrar; and
              2. (bb) publishing notice of the action as the court may direct promptly after filing the action.
        2. (B) The actions under subparagraph (A)(ii) shall constitute service of process.
        3. (C) In an in rem action under this paragraph, a domain name shall be deemed to have its situs in the judicial district in which--
          1. (i) the domain name registrar, registry, or other domain name authority that registered or assigned the domain name is located; or
          2. (ii) documents sufficient to establish control and authority regarding the disposition of the registration and use of the domain name are deposited with the court.
        4. (D)
          1. (i) The remedies in an in rem action under this paragraph shall be limited to a court order for the forfeiture or cancellation of the domain name or the transfer of the domain name to the owner of the mark. Upon receipt of written notification of a filed, stamped copy of a complaint filed by the owner of a mark in a United States district court under this paragraph, the domain name registrar, domain name registry, or other domain name authority shall--
            1. (I) expeditiously deposit with the court documents sufficient to establish the court's control and authority regarding the disposition of the registration and use of the domain name to the court; and
            2. (II) not transfer, suspend, or otherwise modify the domain name during the pendency of the action, except upon order of the court.
          2. (ii) The domain name registrar or registry or other domain name authority shall not be liable for injunctive or monetary relief under this paragraph except in the case of bad faith or reckless disregard, which includes a willful failure to comply with any such court order.
      3. (3) The civil action established under paragraph (1) and the in rem action established under paragraph (2), and any remedy available under either such action, shall be in addition to any other civil action or remedy otherwise applicable.
      4. (4) The in rem jurisdiction established under paragraph (2) shall be in addition to any other jurisdiction that otherwise exists, whether in rem or in personam.

     

     

    Sec. 1127. Construction and definitions; intent of chapter

    In the construction of this chapter, unless the contrary is plainly apparent from the context--
    The United States includes and embraces all territory which is under its jurisdiction and control.
    The word ``commerce'' means all commerce which may lawfully be regulated by Congress.
    The term ``principal register'' refers to the register provided for by sections 1051 to 1072 of this title, and the term ``supplemental register'' refers to the register provided for by sections 1091 to 1096 of this title.
    The term ``person'' and any other word or term used to designate the applicant or other entitled to a benefit or privilege or rendered liable under the provisions of this chapter includes a juristic person as well as a natural person. The term ``juristic person'' includes a firm, corporation, union, association, or other organization capable of suing and being sued in a court of law.
    The term ``person'' also includes the United States, any agency or instrumentality thereof, or any individual, firm, or corporation acting for the United States and with the authorization and consent of the United States. The United States, any agency or instrumentality thereof, and any individual, firm, or corporation acting for the United States and with the authorization and consent of the United States, shall be subject to the provisions of this chapter in the same manner and to the same extent as any nongovernmental entity.
    The term ``person'' also includes any State, any instrumentality of a State, and any officer or employee of a State or instrumentality of a State acting in his or her official capacity. Any State, and any such instrumentality, officer, or employee, shall be subject to the provisions of this chapter in the same manner and to the same extent as any nongovernmental entity.
    The terms ``applicant'' and ``registrant'' embrace the legal representatives, predecessors, successors and assigns of such applicant or registrant.
    The term ``Director'' means the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.
    The term ``related company'' means any person whose use of a mark is controlled by the owner of the mark with respect to the nature and quality of the goods or services on or in connection with which the mark is used.
    The terms ``trade name'' and ``commercial name'' mean any name used by a person to identify his or her business or vocation. The term ``trademark'' includes any word, name, symbol, or device, or any combination thereof--
      1. (1) used by a person, or
      2. (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter,
    to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.
    The term ``service mark'' means any word, name, symbol, or device, or any combination thereof--
      1. (1) used by a person, or
      2. (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter,
    to identify and distinguish the services of one person, including a unique service, from the services of others and to indicate the source of the services, even if that source is unknown. Titles, character names, and other distinctive features of radio or television programs may be registered as service marks notwithstanding that they, or the programs, may advertise the goods of the sponsor.
    The term ``certification mark'' means any word, name, symbol, or device, or any combination thereof--
      1. (1) used by a person other than its owner, or
      2. (2) which its owner has a bona fide intention to permit a person other than the owner to use in commerce and files an application to register on the principal register established by this chapter,
    to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person's goods or services or that the work or labor on the goods or services was performed by members of a union or other organization.
    The term ``collective mark'' means a trademark or service mark--
      1. (1) used by the members of a cooperative, an association, or other collective group or organization, or
      2. (2) which such cooperative, association, or other collective group or organization has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter,
    and includes marks indicating membership in a union, an association, or other organization.
    The term ``mark'' includes any trademark, service mark, collective mark, or certification mark.
    The term ``use in commerce'' means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. For purposes of this chapter, a mark shall be deemed to be in use in commerce--
      1. (1) on goods when--
        1. (A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and
        2. (B) the goods are sold or transported in commerce, and
      2. (2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.
    A mark shall be deemed to be ``abandoned'' if either of the following occurs:
      1. (1) When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. ``Use'' of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.
      2. (2) When any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark. Purchaser motivation shall not be a test for determining abandonment under this paragraph.
    The term ``colorable imitation'' includes any mark which so resembles a registered mark as to be likely to cause confusion or mistake or to deceive.
    The term ``registered mark'' means a mark registered in the United States Patent and Trademark Office under this chapter or under the Act of March 3, 1881, or the Act of February 20, 1905, or the Act of March 19, 1920. The phrase ``marks registered in the Patent and Trademark Office'' means registered marks.
    The term ``Act of March 3, 1881'', ``Act of February 20, 1905'', or ``Act of March 19, 1920'', means the respective Act as amended.
    A ``counterfeit'' is a spurious mark which is identical with, or substantially indistinguishable from, a registered mark.
    The term ``domain name'' means any alphanumeric designation which is registered with or assigned by any domain name registrar, domain name registry, or other domain name registration authority as part of an electronic address on the Internet.
    The term ``Internet'' has the meaning given that term in section 230(f)(1) of title 47.
    Words used in the singular include the plural and vice versa.
    The intent of this chapter is to regulate commerce within the control of Congress by making actionable the deceptive and misleading use of marks in such commerce; to protect registered marks used in such commerce from interference by State, or territorial legislation; to protect persons engaged in such commerce against unfair competition; to prevent fraud and deception in such commerce by the use of reproductions, copies, counterfeits, or colorable imitations of registered marks; and to provide rights and remedies stipulated by treaties and conventions respecting trademarks, trade names, and unfair competition entered into between the United States and foreign nations.

     

     

    Sec. 1052. Trademarks registrable on principal register; concurrent registration

    No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it--
    1. (a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 3501(9) of title 19) enters into force with respect to the United States.
    2. (b) Consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof.
    3. (c) Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.
    4. (d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive: Provided, That if the Director determines that confusion, mistake, or deception is not likely to result from the continued use by more than one person of the same or similar marks under conditions and limitations as to the mode or place of use of the marks or the goods on or in connection with which such marks are used, concurrent registrations may be issued to such persons when they have become entitled to use such marks as a result of their concurrent lawful use in commerce prior to (1) the earliest of the filing dates of the applications pending or of any registration issued under this chapter; (2) July 5, 1947, in the case of registrations previously issued under the Act of March 3, 1881, or February 20, 1905, and continuing in full force and effect on that date; or (3) July 5, 1947, in the case of applications filed under the Act of February 20, 1905, and registered after July 5, 1947. Use prior to the filing date of any pending application or a registration shall not be required when the owner of such application or registration consents to the grant of a concurrent registration to the applicant. Concurrent registrations may also be issued by the Director when a court of competent jurisdiction has finally determined that more than one person is entitled to use the same or similar marks in commerce. In issuing concurrent registrations, the Director shall prescribe conditions and limitations as to the mode or place of use of the mark or the goods on or in connection with which such mark is registered to the respective persons.
    5. (e) Consists of a mark which (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them, (2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them, except as indications of regional origin may be registrable under section 1054 of this title, (3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them, (4) is primarily merely a surname, or (5) comprises any matter that, as a whole, is functional.
    6. (f) Except as expressly excluded in subsections (a), (b), (c), (d), (e)(3), and (e)(5) of this section, nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant's goods in commerce. The Director may accept as prima facie evidence that the mark has become distinctive, as used on or in connection with the applicant's goods in commerce, proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made. Nothing in this section shall prevent the registration of a mark which, when used on or in connection with the goods of the applicant, is primarily geographically deceptively misdescriptive of them, and which became distinctive of the applicant's goods in commerce before December 8, 1993.
    A mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may be refused registration only pursuant to a proceeding brought under section 1063 of this title. A registration for a mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may be canceled pursuant to a proceeding brought under either section 1064 of this title or section 1092 of this title.

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