Likelihood of Confusion - Nature and Extent of Any Actual Confusion/Concurrent Use Without Actual Confusion



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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  • The seventh DuPont factor requires one to consider evidence pertaining to the nature and extent of any actual confusion.
    • In re Association of the United States Army, Serial No. 76578579, (TTAB 2007).
      • The next du Pont factors at issue in this case are the seventh and eighth factors, which pertain to the issue of actual confusion. The seventh factor requires us to consider evidence pertaining to "the nature and extent of any actual confusion." The eighth factor requires us to consider evidence pertaining to "the length of time during and conditions under which there has been concurrent use without evidence of actual confusion."
  • The eighth DuPont factor requires one to consider evidence pertaining to the length of time during and conditions under which there has been concurrent use without evidence of actual confusion.
    • In re Association of the United States Army, Serial No. 76578579, (TTAB 2007).
      • The next du Pont factors at issue in this case are the seventh and eighth factors, which pertain to the issue of actual confusion. The seventh factor requires us to consider evidence pertaining to "the nature and extent of any actual confusion." The eighth factor requires us to consider evidence pertaining to "the length of time during and conditions under which there has been concurrent use without evidence of actual confusion."
  • The seventh and eighth du Pont factors are interrelated; the absence of evidence of actual confusion, under the seventh du Pont factor, by itself is entitled to little weight in a likelihood of confusion analysis unless there also is evidence, under the eighth du Pont factor, that there has been a significant opportunity for actual confusion to have occurred.
    • In re Association of the United States Army, Serial No. 76578579, (TTAB 2007).
      • However, the seventh and eighth du Pont factors are interrelated; the absence of evidence of actual confusion, under the seventh du Pont factor, by itself is entitled to little weight in our likelihood of confusion analysis unless there also is evidence, under the eighth du Pont factor, that there has been a significant opportunity for actual confusion to have occurred. See In re Continental Graphics Corp., 52 USPQ2d 1374 (TTAB 1999); Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768 (TTAB 1992).
  • A showing of actual confusion would of course be highly probative, if not conclusive, of a high likelihood of confusion. The opposite is not true, however. The lack of evidence of actual confusion carries little weight, especially in an ex parte context.
    • In re Association of the United States Army, Serial No. 76578579, (TTAB 2007).
      • This is especially so in an ex parte case. "A showing of actual confusion would of course be highly probative, if not conclusive, of a high likelihood of confusion. The opposite is not true, however. The lack of evidence of actual confusion carries little weight, especially in an ex parte context." In re Majestic Distilling Co., Inc., 315 F.3d 1311, 1317, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003)(internal citation omitted). See also In re Opus One Inc., supra, 60 USPQ2d at 1817 (TTAB 2001); In re Jeep Corp., 222 USPQ 333 (TTAB 1984); and In re Barbizon International, Inc., 217 USPQ 735 (TTAB 1983).
  • The Trademark Act does not prevent registration of a mark on the mere possibility of consumer confusion, but requires that confusion be likely.
    • In re Paper Doll Promotions, Inc., Serial No. 76451078, (TTAB 2007)
      • The Trademark Act does not prevent registration of a mark on the mere possibility of consumer confusion, but requires that confusion be likely. See Bongrain International (American) Corporation v. Delice de France Inc., 811 F.2d 1479, 1 USPQ2d 1775, 1779 (Fed. Cir. 1987); In re The Ridge Tahoe, 221 USPQ 839, 840 (TTAB 1983).
  • Evidence of long-time concurrent use of the marks in the same geographic area suffices to establish, under the eighth du Pont factor, that the absence of evidence under the seventh du Pont factor is legally significant and entitled to some weight in our likelihood of confusion analysis in this ex parte case.
    • In re Association of the United States Army, Serial No. 76578579, (TTAB 2007).
      • We find that this evidence of long-time concurrent use of the marks in the same geographic area suffices to establish, under the eighth du Pont factor, that the absence of evidence under the seventh du Pont factor is legally significant and entitled to some weight in our likelihood of confusion analysis in this ex parte case.
  • Evidence of actual confusion is notoriously difficult to come by and, in any event, such evidence is not required in order to establish likelihood of confusion.
    • Time Warner Entertainment Company L.P. v. Karen L. Jones, Opposition No. 112,409, (TTAB 2002).
      • There is no evidence of actual confusion between opposer's and applicant's marks, under the seventh du Pont factor. However, evidence of actual confusion is notoriously difficult to come by and, in any event, such evidence is not required in order to establish likelihood of confusion. See Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992); Block Drug v. Den-Mat Inc., 17 USPQ2d 1315, 1318 (TTAB 1989); and Guardian Products Co. Inc. v. Scott Paper Co., 200 USPQ 738, 743 (TTAB 1978).
    • Centraz Industries, Inc. v. Spartan Chemical Company, Inc., Opposition No. 91159335, (TTAB 2006).
      • The absence of actual confusion does not compel a different result in the likelihood of confusion analysis. Although each party is unaware of any actual confusion over a two-year period of contemporaneous use of the marks, evidence of actual confusion is not essential to proving a case of likelihood of confusion. Giant Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983).
  • In the absence of a significant opportunity for actual confusion to have occurred, the absence of actual confusion is of little probative value in a case.
    • Barbara's Bakery, Inc. v. Barbara Landesman, Opposition No. 91157982, (TTAB 2007)
      • Under the seventh and eighth du Pont factors, we find that there is no evidence of actual confusion, but we also find that such absence of evidence is clearly due to the minimal scope of applicant's actual use of her mark in the marketplace. In the absence of a significant opportunity for actual confusion to have occurred, the absence of actual confusion is of little probative value in this case. See Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768 (TTAB 1992).
  • Although the absence of evidence of actual confusion generally carries little weight in an ex parte case, the TTAB has recognized that there may be an exception to this general rule where there is shown to be a "confluence of facts" which together strongly suggest that the absence of evidence of actual confusion is meaningful and should be given probative weight in an ex parte case.
    • In re Association of the United States Army, Serial No. 76578579, (TTAB 2007).
      • Although the absence of evidence of actual confusion generally carries little weight in an ex parte case, see In re Majestic Distilling Co., Inc., supra, the Board has recognized that there may be an exception to this general rule where there is shown to be a "confluence of facts" which together strongly suggest, under the eighth du Pont factor, that the absence of evidence of actual confusion is meaningful and should be given probative weight in an ex parte case. See In re Opus One Inc., supra; In re General Motors Corp., 23 USPQ2d 1465 (TTAB 1992).
  • A three-year period of contemporaneous use without confusion is not per se significant to a finding of likelihood of confusion.
    • Nike, Inc. v. WNBA Enterprises, LLC, Opposition No. 91160755, 91160763, (TTAB 2007)
      • Applicant argues that the parties' marks have coexisted in the marketplace for nearly three years without confusion and that the absence of actual confusion is a critical factor weighing against a finding of likelihood of confusion. Applicant points to a number of cases, including Oreck Corporation v. U.S. Floor Systems, Inc., 803 F.2d 166, 231 USPQ 634 (5th Cir. 1986) and Keebler Company v. Rovira Biscuit Corporation, 624 F.2d 366, 207 USPQ 465 (1st Cir. 1980), finding no likelihood of confusion where the evidence of actual confusion was lacking and where the time period of concurrent use was even shorter than three years. Suffice it to say that the facts in the cases cited by applicant differ substantially from the facts herein and do not compel a finding in this case or in any given case that a three-year period of contemporaneous use without confusion is per se significant.
  • The lack of actual confusion is only one of a number of factors to be considered in determining likelihood of confusion and in certain cases it is outweighed by all the other factors in a party's favor.
    • Nike, Inc. v. WNBA Enterprises, LLC, Opposition No. 91160755, 91160763, (TTAB 2007)
      • The lack of actual confusion is only one of a number of factors to be considered in determining likelihood of confusion and in this case we find that it is outweighed by all the other factors in opposer's favor.
    • Nike, Inc. v. WNBA Enterprises, LLC, Opposition No. 91160755, 91160763, (TTAB 2007)
      • We find, in view of the similarity of the marks, and because the marks are used in connection with identical and/or closely related goods that are sold in the same channels of trade to the same ultimate consumers, that confusion is likely.
  • Where the goods travel in the same trade channels to the same classes of purchasers, it may be found that the absence of known actual confusion is a factor weighing in respondent's favor.
    • Teledyne Technologies, Inc. v. Western Skyways, Inc., Cancellation No. 92041265, (TTAB 2006).
      • Given that the goods travel in the same trade channels to the same classes of purchasers, we find that the absence of known actual confusion is a factor weighing in respondent's favor. See Olde Tyme Foods, Inc. v. Roundy's, Inc., supra at 1546 [the length of time and conditions under which there has been concurrent use without evidence of actual confusion is relevant evidence of the lack of a likelihood of confusion].
  • Actual confusion is not necessary to show a likelihood of confusion.
    • Teledyne Technologies, Inc. v. Western Skyways, Inc., Cancellation No. 92041265, (TTAB 2006).
      • So as to be clear, however, we recognize that actual confusion is not necessary to show a likelihood of confusion. See, e.g., Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002).
  • Evidence: Consumer surveys regarding potential confusion are not required in Board proceedings which determine the right to register only.
    • Fort James Operating Company v. Royal Paper Converting, Inc., Opposition No. 91122964, (TTAB 2007)
      • Consumer surveys regarding potential confusion are not required in Board proceedings which determine the right to register only.
    • Fort James Operating Company v. Royal Paper Converting, Inc., Opposition No. 91122964, (TTAB 2007)
      • Second, applicant's contention that opposer had ample opportunity to conduct consumer surveys regarding potential confusion is unpersuasive. Surveys in this regard are not required in Board proceedings which determine the right to register only. See Hilson Research, Inc. v. Society for Human Resources Management, 27 USPQ 1423 (TTAB 1993).
  • To determine whether the absence of actual confusion is relevant, we must consider the length of time and conditions under which the parties have concurrently used their marks without any reported instances of confusion.
    • The Christian Broadcasting Network, Inc. v. ABS-CBN International, Cancellation No. 92044366, (TTAB 2007)
      • To determine whether the absence of actual confusion is relevant, we must consider the length of time and conditions under which the parties have concurrently used their marks without any reported instances of confusion.
  • Where there has been considerable activity by the parties under their respective marks over a long period of time without any reported instances of confusion, one may infer that simultaneous use of the marks is not likely to cause confusion.
    • The Christian Broadcasting Network, Inc. v. ABS-CBN International, Cancellation No. 92044366, (TTAB 2007)
      • Where, as here, there has been considerable activity by the parties under their respective marks over a long period of time (i.e., since 1994) without any reported instances of confusion, one may infer that simultaneous use of the marks is not likely to cause confusion. Haveg Industries, Incorporated v. Shell Oil Company, 199 USPQ 618, 626 (TTAB 1978).
  • An absence of actual confusion tends to reinforce the lack of likelihood of confusion.
    • The Christian Broadcasting Network, Inc. v. ABS-CBN International, Cancellation No. 92044366, (TTAB 2007)
      • Although petitioner argues that proof of actual confusion is not necessary to show that there is a likelihood of confusion, its absence in this case tends to reinforce the lack of a likelihood of confusion. In view of the foregoing, the lack of actual confusion is a factor that weighs against finding likelihood of confusion.
  • Absence of actual confusion has no bearing on a case involving an intent-to-use application.
    • Schering-Plough HealthCare Products, Inc. v. Ing-Jing Huang, Opposition No. 91117558, (TTAB 2007)
      • Secondly, applicant relies on the absence of evidence of any instances of actual confusion between the marks. The absence of actual confusion is of no moment in this case, given that applicant's application is based on an intention to use the mark, and there is no evidence to suggest that applicant has commenced use. Thus, to state the obvious, there has not been any opportunity for actual confusion in the marketplace. In any event, the test here is likelihood of confusion, not actual confusion. Weiss Associates Inc. v. HRL Associates Inc., 902 F.2d 1546, 14 USPQ2d 1840, 1842 (Fed. Cir. 1990).
  • The test is likelihood of confusion, not actual confusion.
    • Schering-Plough HealthCare Products, Inc. v. Ing-Jing Huang, Opposition No. 91117558, (TTAB 2007)
      • Secondly, applicant relies on the absence of evidence of any instances of actual confusion between the marks. The absence of actual confusion is of no moment in this case, given that applicant's application is based on an intention to use the mark, and there is no evidence to suggest that applicant has commenced use. Thus, to state the obvious, there has not been any opportunity for actual confusion in the marketplace. In any event, the test here is likelihood of confusion, not actual confusion. Weiss Associates Inc. v. HRL Associates Inc., 902 F.2d 1546, 14 USPQ2d 1840, 1842 (Fed. Cir. 1990).
  • Case Finding: A record of no actual confusion could be explained by the fact the two entities are not located in the same geographical area.
    • Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (TTAB 2007)
      • In finding a likelihood of confusion, we recognize that the record reflects the absence of any actual confusion despite a decade of contemporaneous use of the marks. This may be explained by the fact that, while the parties operate in contiguous states, the parties' restaurants are not located in the same geographical area. Thus, it may be that the same consumers have not been exposed to both restaurants. See Carl Karcher Enterprises Inc. v. Star Restaurants Corp., 35 USPQ2d at 1133.
  • The test for our purposes under Section 2(d) is likelihood of confusion, not actual confusion.
    • Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (TTAB 2007)
      • In any event, the test for our purposes under Section 2(d) is likelihood of confusion, not actual confusion. Giant Food, Inc. v. Nation's Foodservice, Inc., 218 USPQ at 396.
  • Case Finding: The TTAB cannot determine on this record that there has been any meaningful opportunity for actual confusion to have occurred in the marketplace, and accordingly the TTAB cannot conclude that the alleged absence of actual confusion is entitled to significant weight in our likelihood of confusion analysis in this case.
    • In re Continental Graphics Corporation, Serial No. 75/033,628, (TTAB 1999).
      • We cannot determine on this record that there has been any meaningful opportunity for actual confusion to have occurred in the marketplace, and accordingly we cannot conclude that the alleged absence of actual confusion is entitled to significant weight in our likelihood of confusion analysis in this case. See Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768 (TTAB 1992).
  • Evidence of actual confusion between opposer's and applicant's design marks is extremely difficult to acquire and, in any event, such evidence is not required in order to establish likelihood of confusion.
    • Fort James Operating Company v. Royal Paper Converting, Inc., Opposition No. 91122964, (TTAB 2007)
      • There is no evidence of actual confusion between opposer's and applicant's design marks. However, that kind of evidence is extremely difficult to acquire and, in any event, such evidence is not required in order to establish likelihood of confusion. See Weiss Associates Inc. v. HRL Associates Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990; Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768 (TTAB 1992); and Guardian Products Co. Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978).
  • Evidence of actual confusion is not required in order to establish likelihood of confusion.
    • The Wet Seal, Inc. v. FD Management, Inc., Opposition No. 91157022, (TTAB 2007)
      • FOOTNOTE 23: Although applicant does not argue this point, we note that there is no evidence of actual confusion between opposer's and applicant's marks. However, we consider this factor to be neutral. As noted earlier, applicant's mark has been in use for a relatively short period of time and we have insufficient evidence of the nature and extent of applicant's use during the period of contemporaneous use. In any event, evidence of actual confusion is not required in order to establish likelihood of confusion. See Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768 (TTAB 1992).
    • Alfacell Corporation v. Anticancer, Inc., Cancellation No. 92032202, (TTAB 2004).
      • In any event, the test here is likelihood of confusion, and actual confusion need not be found in order to conclude that there is a likelihood of confusion between the marks. Weiss Associates Inc. v. HRL Associates Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990).
  • Given the relatively short period of time in which applicant has used its mark, there may be insufficient evidence of actual confusion between marks.
    • The Wet Seal, Inc. v. FD Management, Inc., Opposition No. 91157022, (TTAB 2007)
      • FOOTNOTE 23: Although applicant does not argue this point, we note that there is no evidence of actual confusion between opposer's and applicant's marks. However, we consider this factor to be neutral. As noted earlier, applicant's mark has been in use for a relatively short period of time and we have insufficient evidence of the nature and extent of applicant's use during the period of contemporaneous use. In any event, evidence of actual confusion is not required in order to establish likelihood of confusion. See Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768 (TTAB 1992).
  • Actual confusion was not found, or at most de minimus, where some people inquired about the relationship between the two marks, but there was no evidence that the relevant public undertook any action under a mistaken belief that the marks were related.
    • Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, Opposition No. 91160856, (TTAB 2007)
      • The next duPont factor we consider is that of actual confusion. Plaintiff points to several incidents of what it contends is actual confusion. James West, plaintiff's executive director, testified that he was approached at jewelry industry trade shows on several occasions where individuals asked him if plaintiff and defendant were one and the same. Additionally, Mr. West testified that he received an email from a former member who asked whether plaintiff and defendant were different. Although we agree with plaintiff that, ordinarily, the occurrence of actual confusion is an indication that confusion is likely, the incidents related by Mr. West show, at most, that inquiries were made as to the relationship, if any, between plaintiff and defendant. It is not clear, however, that the persons were, in fact, confused. In other words, there is no evidence that a jewelry retailer mistakenly joined or attempted to join defendant when it intended to join plaintiff. In short, it is not clear that actual confusion has occurred. Moreover, even if some actual confusion could be inferred from plaintiff's evidence on this point, any such confusion would be de minimis. This duPont factor also is neutral.
  • The absence of evidence of actual confusion in the record is not necessarily entitled to any significant weight in a likelihood of confusion analysis.
    • In re Thomas H. Wilson, Serial No. 75/285,881, (TTAB 2001).
      • In sum, although there is no evidence of actual confusion in the record, we cannot conclude that such absence is entitled to any significant weight in our likelihood of confusion analysis in this case. See In re Kangaroos U.S.A., 223 USPQ 1025 (TTAB 1984).
  • Proof of actual confusion is not a prerequisite to a finding of likelihood of confusion.
    • INTERLEGO AG and LEGO SYSTEMS, INC. and KIRKBI AG v. ABRAMS/GENTILE ENTERTAINMENT, INC. and MJJ MULTIMEDIA LLC, Opposition No. 103,612, (TTAB 2002).
      • First, proof of actual confusion is not a prerequisite to a finding of likelihood of confusion. Second, given the fact that this unrelated company ceased use of the mark MEGO approximately two decades ago, it is highly unlikely that opposers would have retained documentation of instances of actual confusion had they existed. As for applicants' argument that there still exist old MEGO toys in the market today, applicants acknowledge that this market is "fueled by collectors and toy aficionados." (Applicants' brief page 12). In other words, what few old MEGO toys exist today are not being marketed to children, the normal consumers of toys, but rather are being collected by toy aficionados. Even if we assume purely for the sake of argument that toy aficionados could distinguish between MEGO toys and LEGO toys, these toy aficionados are but a tiny fraction of the consumers of toys, namely, children and their parents, grandparents and friends.
  • Case Finding: De minimus potential confusion between The Sports Authority's and The PC Authority's marks.
    • The Sports Authority Michigan, Inc. v. The PC Authority, Inc., Opposition No. 113,785, (TTAB 2001).
      • Opposer argues that the risk of potential confusion is great. Yet the parties' respective marks convey different specific commercial impressions, the parties have operated their retail establishments within miles of each other for approximately five years, the parties provide their respective consumers with very different goods and services, and there have been no known instances of actual confusion. While opposer's witness Lisi testified about possible expansion into marketing of more hand-held type electronic devices with embedded computer chips, we find the testimony vague and insufficient to evidence any genuine intent of opposer to bridge the gap between the parties. We conclude the extent of potential confusion is de minimis.
  • Case Finding: A table listing enforcement actions against others, and no chart of marks which have not been challenged or not consider to potentially conflict, does not allow the TTAB to accurate assess the percentage of potential conflicts opposer has risen to challenge.
    • The Sports Authority Michigan, Inc. v. The PC Authority, Inc., Opposition No. 113,785, (TTAB 2001).
      • (13) Any other established fact probative of the effect of use. Opposer notes that it has been quite aggressive in investigating and, often, challenging other uses of "Authority" marks. Despite applicant's request that we disregard the table of enforcement actions presented in opposer's brief, even without resort to that table, the record clearly supports the conclusion that opposer has regularly ridden into battle against other "Authority" marks. While opposer has had many successes, these do not appear to have diminished the attractiveness of such marks to others. Further, TSAM witness Lisi admitted that it does not maintain a chart of uses of "Authority" marks that it does not find objectionable and has not challenged. Thus, the record does not allow us to accurately assess the percentage of potential conflicts opposer has risen to challenge. This factor favors neither party.
  • In order for lack of actual confusion to be a meaningful factor, there must be evidence showing that there has been an opportunity for incidents of actual confusion to occur.
    • Alfacell Corporation v. Anticancer, Inc., Cancellation No. 92032202, (TTAB 2004).
      • The absence of evidence of actual confusion does not compel a different result. The tight controls over drugs during clinical testing may have prevented any meaningful opportunity for confusion to occur between the marks. Further, respondent has shipped only seven vials of the drug in connection with pre-clinical testing in this country, and it would appear that any opportunity for confusion has been virtually nonexistent. Cunningham v. Laser Golf Corp., supra at 1847 [In order for lack of actual confusion to be a meaningful factor, there must be evidence showing that there has been an opportunity for incidents of actual confusion to occur.]
  • Prior decisions state that, where the marks are used on pharmaceuticals and confusion as to source can lead to serious consequences, it is extremely important to avoid that which will cause confusion.
    • Alfacell Corporation v. Anticancer, Inc., Cancellation No. 92032202, (TTAB 2004).
      • As a final point, prior decisions state that, where the marks are used on pharmaceuticals and confusion as to source can lead to serious consequences, it is extremely important to avoid that which will cause confusion. This further supports our conclusion herein. See: Glenwood Laboratories, Inc. v. American Home Products Corp., 455 F.2d 1384, 173 USPQ 19 (CCPA 1972); Blansett Pharmacal Co. Inc. v. Carmrick Laboratories Inc., 25 USPQ2d 1473 (TTAB 1992); Schering Corp. v. Alza Corp., 207 USPQ 504 (TTAB 1980); and American Home Products Corp. v. USV Pharmaceutical Corp., 190 USPQ 357 (TTAB 1976). See also: KOS Pharmaceuticals Inc. v. Andrx Corp., supra. See generally: McCarthy on Trademarks and Unfair Competition, supra, §23:32.
  • There is no presumption which can be made from a consent agreement with one third party that another's use of the mark is not likely to cause confusion.
    • DC Comics v. Pan American Grain Mfg. Co. Inc., Opposition No. 91125404, (TTAB 2005).
      • We do not agree with applicant's general statement that essentially a consent agreement with one third party is an admission that another's use of the mark is not likely to cause confusion. No such presumption can be made from that type of agreement.
  • Bad faith intent is strong evidence that confusion is likely as such an inference is drawn from the imitator's own expectation of confusion.
    • DC Comics v. Pan American Grain Mfg. Co. Inc., Opposition No. 91125404, (TTAB 2005).
      • From this cumulative evidence, particularly, applicant's acknowledgement that it applied for the mark KRIPTONITA knowing it was Spanish for KRYPTONITE, the name of the substance in the Superman stories; and that its proposed label clearly depicts a green "kryptonite" crystal, we find that applicant's adoption of the mark KRIPTONITA was in bad faith, with the intention to trade off of opposer's KRYPTONITE mark. Such bad faith intent is strong evidence that confusion is likely as such an inference is drawn from the imitator's own expectation of confusion. See Broadway Catering Corp. v. Carla Inc., 215 USPQ 462 (TTAB 1982). See also, DC Comics, Inc. v. Powers, et al., 465 F.Supp. 843, 201 USPQ 99 (SDNY 1978).
  • A showing of actual confusion would of course be highly probative, if not conclusive, of a high likelihood of confusion.
    • National Rural Electric Cooperative Association v. Suzlon Wind Energy Corporation, Cancellation No. 92043377, (TTAB 2006).
      • Petitioner also alleges that there has been actual confusion between petitioner's and respondent's marks. "A showing of actual confusion would of course be highly probative, if not conclusive, of a high likelihood of confusion." Majestic Distilling Co., 65 USPQ2d at 1205.
  • Evidence: The TTAB can consider testimony concerning employee's statements about actual confusion as an exception to the hearsay rule.
    • National Rural Electric Cooperative Association v. Suzlon Wind Energy Corporation, Cancellation No. 92043377, (TTAB 2006).
      • Respondent (Brief at 7) argues that this "testimony did not involve a consumer in the marketplace, but rather the general counsel of one of Petitioner's cooperatives."4

        FOOTNOTE 4 "Respondent also refers to the statement as hearsay, but we can consider testimony concerning employee's statements about actual confusion as an exception to the hearsay rule. CCBN.com Inc. v. c-call.com Inc., 53 USPQ2d 1132, 1137 (D. Mass. 1999) ("[S]tatements of customer confusion in the trademark context fall under the ‘state of mind exception' to the hearsay rule. See Fed. R. Evid. 803(3)"). In addition, letters (or their electronic equivalent, email) from customers are also recognized as an exception to the hearsay rule. International Kennel Club of Chicago v. Mighty Star Inc., 846 F.2d 1079, 6 USPQ2d 1977, 1985 (7th Cir. 1988) (The "weight of authority allows the admission of letters directed to the plaintiff where the evidence contains factual data (beyond a mere legal conclusion) that is material to the issue of the likelihood of confusion"). See also Freddie Fuddruckers, Inc. v. Ridgeline, Inc., 589 F. Supp. 72, 223 USPQ 1139, 1141 (N.D. Tex. 1984) ("Hearsay letters and statements of customers are admissible in evidence under Fed. R. Evid. Rule 803(3) where they reveal the then existing state of mind of the writers and speakers and their state of mind is relevant to the case"), aff'd mem., 783 F.2d 1062 (5th Cir. 1986)."

  • Case Finding: A singe instance of alleged actual confusion was not significant where the consumer at first mistaken believed a connection between the marks, until he viewed the ad in its entirety.
    • National Rural Electric Cooperative Association v. Suzlon Wind Energy Corporation, Cancellation No. 92043377, (TTAB 2006).
      • We are not persuaded that this single instance of alleged actual confusion is significant. Mr. Fuglesten's email seems to indicate that he mistakenly believed that the mark was petitioner's without considering the goods and services. Indeed, when the ad was viewed in its entirety, Mr. Fuglesten arrived at the conclusion that the marks as used on the respective goods and services did originate from different sources. Therefore, we find this equivocal email does not require us to conclude that there is a likelihood of confusion.
  • Without evidence of the nature and extent of both applicant's and registrant's use of their respective marks, the TTAB cannot determine whether a meaningful opportunity for actual confusion ever existed.
    • In re Mark Thomas, Serial No. 78334625, (TTAB 2006).
      • Further, applicant's unsupported allegation of long, contemporaneous use is of little persuasive value. Without evidence of the nature and extent of both applicant's and registrant's use of their respective marks, we cannot determine whether a meaningful opportunity for actual confusion ever existed. See Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768 (TTAB 1992). Cf. In re General Motors Corp., 23 USPQ2d 1465 (TTAB 1992).
  • Without evidence of the nature and geographic extent of both applicant's and registrant's use of their respective marks, one cannot determine whether a meaningful opportunity for actual confusion has ever existed.
    • In re Homeland Vinyl Products, Inc., Serial No. 76361399, (TTAB 2006).
      • FOOTNOTE 8 "In making this determination, we have given little probative weight to applicant's evidence and arguments concerning the lack of actual confusion. Without evidence of the nature and geographic extent of both applicant's and registrant's use of their respective marks, we cannot determine whether a meaningful opportunity for actual confusion has ever existed. See Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768 (TTAB 1992). Cf. In re General Motors Corp., 23 USPQ2d 1465 (TTAB 1992)."
  • Where there is nothing in the record regarding the extent of use of either applicant's or registrant's marks, one is unable to determine if there has been any meaningful opportunity for confusion to occur in the marketplace. The test is likelihood of confusion, not actual confusion, and, as often stated, it is unnecessary to show actual confusion in establishing likelihood of confusion.
    • In re Big Pig, Inc., Serial No. 78249582, (TTAB 2006).
      • Insofar as the absence of actual confusion is concerned, there is nothing in the record regarding the extent of use of either applicant's or registrant's marks. Thus, we are unable to determine if there has been any meaningful opportunity for confusion to occur in the marketplace. In any event, the test is likelihood of confusion, not actual confusion, and, as often stated, it is unnecessary to show actual confusion in establishing likelihood of confusion. See e.g., Weiss Associates Inc. v. HRL Associates Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990).
  • The two du Pont factors, evidence of actual confusion or length of time without evidence of confusion, are related.
    • The Black & Decker Corporation v. Emerson Electric Co., Opposition No. 91158891, (TTAB 2007)
      • The next two du Pont factors, evidence of actual confusion or length of time without evidence of confusion, are related.
  • No evidence of instances of actual confusion is not significant where applicant has not used the mark at all, or very little.
    • The Black & Decker Corporation v. Emerson Electric Co., Opposition No. 91158891, (TTAB 2007)
      • There is no evidence of instances of actual confusion. However, we do not consider this to be significant given that applicant has not used the mark WATER HAWG at all, and its sales of product under the mark DIRT HAWG have been very limited, with no sales in the United States at the present time. Accordingly, we treat both of these factors as neutral.
  • There is insufficient evidence to conclude actual confusion where there is no evidence of the extent of the use of the applied mark or no use has yet been made of an intent to use mark. It is not necessary to show actual confusion in order to establish likelihood of confusion.
    • Motion Picture Association of America, Inc. v. Respect Sportswear, Inc., Opposition No. 91153141, (TTAB 2007)
      • The final du Pont factor discussed by the parties is the lack of instances of actual confusion. Applicant asserts that the absence of actual confusion suggests no likelihood of confusion. However, applicant has not introduced any evidence of the extent of its use of the applied-for mark. Furthermore, evidence submitted by opposer suggests that applicant, who applied for its involved mark on the basis of its bona fide intent to use the mark in commerce under Trademark Act Section 1(b), has not yet made use of the mark on most of the goods identified in its application (Kriplani discovery dep. at 11-13). Accordingly, there is insufficient evidence for us to conclude that there has been an opportunity for confusion to occur if confusion were likely. Furthermore, it is not necessary to show actual confusion in order to establish likelihood of confusion. See Weiss Associates Inc. v. HRL Associates Inc. 902 F.2d 1546, 223 USPQ 1025 (Fed. Cir. 1990). See also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002).
  • Without evidence of the nature and geographic extent of both applicant's and registrant's use of their respective marks, we cannot determine whether a meaningful opportunity for actual confusion has ever existed.
    • In re Ginc UK Limited, Serial No. 78618843, (TTAB 2007)
      • As for the du Pont factor of lack of evidence of actual confusion, the fact that these registrations coexisted on the register does not prove that the marks coexisted in the marketplace without confusion. Further, applicant's unsupported assertion that there has been no actual confusion during the marks' asserted coexistence is entitled to little probative weight.11 Without evidence of the nature and geographic extent of both applicant's and registrant's use of their respective marks, we cannot determine whether a meaningful opportunity for actual confusion has ever existed. See Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768 (TTAB 1992). Cf. In re General Motors Corp., 23 USPQ2d 1465 (TTAB 1992). See also Trek Bicycle Corp.
  • The fact that registrations coexisted on the register does not prove that the marks coexisted in the marketplace without confusion.
    • In re Ginc UK Limited, Serial No. 78618843, (TTAB 2007)
      • As for the du Pont factor of lack of evidence of actual confusion, the fact that these registrations coexisted on the register does not prove that the marks coexisted in the marketplace without confusion. Further, applicant's unsupported assertion that there has been no actual confusion during the marks' asserted coexistence is entitled to little probative weight.11 Without evidence of the nature and geographic extent of both applicant's and registrant's use of their respective marks, we cannot determine whether a meaningful opportunity for actual confusion has ever existed. See Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768 (TTAB 1992). Cf. In re General Motors Corp., 23 USPQ2d 1465 (TTAB 1992). See also Trek Bicycle Corp.
  • Evidence: Vague hearsay accounts of alleged instances of actual confusion are of no probative weight.
    • Standard Knitting, Ltd. v. Toyota Jidosha Kabushiki Kaisha, Opposition No. 91116242, (TTAB 2006).
      • Opposer's vague hearsay accounts of alleged instances of actual confusion are of no probative weight. Further, opposer has not explained how the records of telephone calls to applicant's company show any manner of actual confusion, and we find that they do not.
  • Evidence: Mere records of telephone calls to applicant's company do not show any manner of actual confusion.
    • Standard Knitting, Ltd. v. Toyota Jidosha Kabushiki Kaisha, Opposition No. 91116242, (TTAB 2006).
      • Opposer's vague hearsay accounts of alleged instances of actual confusion are of no probative weight. Further, opposer has not explained how the records of telephone calls to applicant's company show any manner of actual confusion, and we find that they do not.
  • Evidence: While the TTAB recognizes that no survey is perfect, a survey finding that 57% of the respondents were confused is strongly probative of a likelihood of confusion. (Another case supported a likelihood of confusion where 30% of the respondents were confused.)
    • Ava Enterprises, Inc. v. Audio Boss USA, Inc., Opposition No. 91125266, (TTAB 2006).
      • Applicant has raised no objections to the survey procedures, and while we recognize that no survey is perfect, we find that the 57% result here is strongly probative of a likelihood of confusion. See J & J Snack Foods Corp. v. McDonald's Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991) [A consumer survey in which 30% of the respondents were confused supports a finding of likely confusion]. See also 3 J. T. McCarthy, Trademarks and Unfair Competition §32.54 (4th ed. 205), listing decisions where percentages much lower than 57% supported a finding of likelihood of confusion.
  • Evidence: Ever-Ready Survey Format.
    • Starbucks U.S. Brands, LLC and Starbucks Corporation d.b.a. Starbucks Coffee Company v. Marshall S. Ruben, Opposition No. 91156879, (TTAB 2006).
      • This Board has had occasion to review the so-called Ever-Ready30 survey format. See Carl Karcher Enterprises Inc. v. Stars Restaurants Corp., 35 USPQ2d 1125, 1132 (TTAB 1995); and Miles Laboratories, Inc. v. Naturally Vitamin Supplements, Inc., 1 USPQ2d 1445 (TTAB 1986). We agree with opposers that Questions 1a and 1b of Starbucks' survey31 parallel the precise formats approved in Ever-Ready and Carl Karcher.

        FOOTNOTE 30 "In Union Carbide Corp. v. Ever-Ready. Inc., 531 F.2d 366, 188 USPQ 623 (7th Cir. 1976), cert. denied, 191 USPQ 416 (1976), the plaintiff conducted a survey to determine whether there was a likelihood of confusion between defendant's EVER-READY lamps and plaintiff Union Carbide's EVEREADY batteries, flashlights and bulbs. The survey asked: "Who do you think puts out the lamp shown here" [showing a picture of defendant's EVER-READY lamp and mark]," and "What makes you think so"" Id. at 640. 31 (Question 1a): "This is the name of a retail establishment that serves coffee, tea, and other beverages. Just from knowing this, have you formed an opinion about the name of a company that owns this retail establishment"" [Respondents answering Question 1a "yes" were then asked:] (Question 1b): "What is the name of the company"""

    • Starbucks U.S. Brands, LLC and Starbucks Corporation d.b.a. Starbucks Coffee Company v. Marshall S. Ruben, Opposition No. 91156879, (TTAB 2006).
      • Next, we note that consistent with Ever-Ready, Starbucks' Question 2a32 and Question 3a33 were designed to elicit responses concerning sponsorship, affiliation, permission and approval. While these types of questions were not expressly addressed in Ever-Ready, a leading commentator34 suggests, and court opinions35 have found, that affiliation and connection queries are appropriate in light of the specific language of the Lanham Act. FOOTNOTE 32 "(Question 2a): "Do you think the company that owns this retail establishment is connected or affiliated with any other company"" [Respondents answering Question 2a "yes" were then asked:] (Question 2b): "What other company""" FOOTNOTE 33 "(Question 3a): "Do you think the company that owns this retail establishment has authorization, permission or approval from another company to use this name"" [Respondents answering Question 3a "yes" were then asked:] (Question 3b): "From what other company"" FOOTENOTE 34 "See e.g., 5 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, § 32:175 (4th ed. 2004)." FOOTNOTE 35 "See e.g., McDonald's Corp. v. McBagel's, Inc., 649 F.Supp. 1268, 1 USPQ2d 1761 (S.D.NY 1986); James Burrough Limited v. Sign of the Beefeater, Inc., 540 F.2d 266, 192 USPQ 555, 564 (7th Cir. 1976); National Football League Properties, Inc. v. Wichita Falls Sportswear, Inc., 532 F.Supp. 651, 215 USPQ 175, 181-83 (W.D.Wash. 1982); Pebble Beach Co. v. Tour 18 I. Ltd., 155 F.3d 526, 48 USPQ2d 1065, 1076-77 (5th Cir. 1998); Indianapolis Colts, Inc. v. Metropolitan Baltimore Football Club Ltd. Partnership, 34 F.3d 410, 31 USPQ2d 1811, 1816 (7th Cir. 1994); and Anheuser- Busch. Inc. v. Balducci Publications, 28 F.3d 769, 31 USPQ2d 1296 (8th Cir. 1994)."
    • Starbucks U.S. Brands, LLC and Starbucks Corporation d.b.a. Starbucks Coffee Company v. Marshall S. Ruben, Opposition No. 91156879, (TTAB 2006).
      • Additionally, all these survey questions contain the follow-up question: "What makes you think so"" The answers given to these follow-up questions persuade us that the respondents were not merely guessing.
    • Starbucks U.S. Brands, LLC and Starbucks Corporation d.b.a. Starbucks Coffee Company v. Marshall S. Ruben, Opposition No. 91156879, (TTAB 2006).
      • Turning to the results of the survey, almost half of the ordinary consumer participants who encountered the term LESSBUCKS COFFEE believed that the products offered under the LESSBUCKS designation were in some way connected to STARBUCKS. When the interviewer asked what made them believe that there was a connection or association between LESSBUCKS COFFEE and STARBUCKS, substantially all of the respondents referred to the similarity of the marks.
  • Patents are not evidence of actual use, but design patents, similar to applicant's design, could be used as evidence that consumers would not find the design unique or unusual.
    • In re Homeland Vinyl Products, Inc., Serial No. 76361399, (TTAB 2006).
      • FOOTNOTE 7 "We recognize that patents are not evidence of actual use. See, e.g., McCarthy § 6:11 (2006) ("...the owner of a design patent need not have commercialized or sold the patented design."). However, we also note that, at least in the context of determining functionality, the Federal Circuit, in In re Pacer Technology, 338 F.3d 1348, 67 USPQ2d 1629, 1632 (Fed. Cir. 2003), held that design patents similar to that of the applicant's design were sufficient evidence that consumers would not find applicant's design unique or unusual even without evidence of actual use of the patented designs."
  • Given the many years of contemporaneous use of the marks on the goods, the marks are not likely to cause confusion as to the source or sponsorship of such goods and services.
    • Genesco Inc. and Genesco Brands Inc. v. Gregory Martz, Opposition No. 121,296, (TTAB 2003).
      • The contemporaneous use of these marks, as has occurred since 1983, in connection with the respective goods and services, is not likely to cause confusion as to the source or sponsorship of such goods and services. See Burns Philip Food Inc. v. Modern Products Inc., 24 USPQ2d 1157 (TTAB 1992), aff'd, unpub'd, but appearing at 1 F.3d 1252, 28 USPQ2d 1687 (Fed. Cir. 1993).
  • Case Finding: The test is not whether purchasers would confuse the origin of a part to have the same origin as the overall object, but rather whether purchasers would be confused as to the source of these goods.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • In Hasbro Inc. v. Clue Computing Inc., 66 F. Supp.2d 117, 122, 52 USPQ2d 1402, 1406 (D. Mass. 1999), aff'd, 232 F.3d 1, 56 USPQ2d 1766 (1st Cir. 2000), the court held that it would be "an extraordinary stretch to assert that Hasbro's technical support to game users is similar in any meaningful way to the ‘computer consulting services' provided by Clue Computing." It would likewise be an extraordinary leap to find that applicant's thin film heads sold to original equipment manufacturers are related to opposer's computerized irrigation systems or other products or services in the context of our legal analysis. Indeed, the CCPA has held in another case involving the mark TORO that: "Toro cannot prevail merely on the ground that ‘rubber element shaft couplings' may be contained in some of Toro's machines." Falk Corp. v. Toro Manufacturing Corp., 493 F.2d 1372, 1378, 181 USPQ 462, 467 (CCPA 1974).
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • For opposer's other products, original equipment manufacturers of high performance computer hard drives are not likely to believe that thin film heads for hard drives are somehow associated with opposer. It is difficult even to see any overlap between purchasers of applicant's thin film heads and opposer's lawn mowers, irrigation systems, blower vacuums, string trimmers, and other similar products and services. See Electronic Design & Sales, 954 F.2d at 719, 21 USPQ2d at 1392-93 ("[O]pposer urges that persons who use opposer's data processing and telecommunications services at work and who buy batteries at retail stores would be confused as to source .... [T]he potential for confusion appears a mere possibility not a probability").
    • Teledyne Technologies, Inc. v. Western Skyways, Inc., Cancellation No. 92041265, (TTAB 2006).
      • Further, contrary to the gist of respondent's remarks, the probative value of this evidence is greatly diminished by the fact that the goods covered in the third-party registrations are not specifically identified for use for aircraft (as are the goods herein), and are, in any event, distinctly different from aircraft engines and ignition harnesses for aircraft engines.
    • Teledyne Technologies, Inc. v. Western Skyways, Inc., Cancellation No. 92041265, (TTAB 2006).
      • Again, the test is not whether purchasers would confuse an ignition harness, a part for an aircraft engine, with the engine itself, but rather whether purchasers would be confused as to the source of these goods. See In re Jeep Corp., 222 USPQ 333 (TTAB 1984).
  • 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."
  • Purchaser perception must involve more than an insubstantial number of potential customers. It is the actual number of potential customers reached, not the strength of the linkage for some reasonable potential customer, that is the focal point of the analogous use inquiry.
    • Westrex Corporation v. New Sensor Corporation, Opposition Nos. 91168152, 91170940, (TTAB 2007)
      • By illustration, the Federal Circuit emphasized this requirement for analogous use in T.A.B. Systems v. PacTel Teletrac, supra: "Nor can there be any doubt that purchaser perception must involve more than an insubstantial number of potential customers. For example, if the potential market for a given service were 10,000 persons, then advertising shown to have reached only 20 or 30 people as a matter of law could not suffice. However close the linkage between the mark and the future service, analogous use could not be shown on such facts because the actual number of potential customers reached, not the strength of the linkage for some "reasonable potential customer," is the focal point of the analogous use inquiry." Id. at 1883.
    • Westrex Corporation v. New Sensor Corporation, Opposition Nos. 91168152, 91170940, (TTAB 2007)
      • Opposer has failed to submit any evidence to create a genuine issue of material fact that more than a negligible segment of the marketplace was impacted by its online pre-sale activities. See id.
    • Westrex Corporation v. New Sensor Corporation, Opposition Nos. 91168152, 91170940, (TTAB 2007)
      • Furthermore, the $50,000-60,000 in advertising expenditures over an eleven-year time period are insufficient to establish that the necessary association or public identification was indeed created among more than "an insubstantial number of potential customers." This is especially true given the absence of any indication as to the response, if any, received to any advertising (i.e. print ads, trade shows) unrelated to opposer's web site. Thus, the Board is unable to draw the critical inference that the public identified the term GOLD LION as a source indicator for opposer's goods by virtue of opposer's presale activities.
  • Case Finding: The evidence of actual confusion was de minimis and did not conclusively establish actual confusion.
    • Texas Department of Transportation v. Richard Tucker, Cancellation No. 92030882 and Opposition No. 91165417 (TTAB 2010)
      • Tucker argues that the evidence of actual confusion is de minimis. We agree that the evidence may not conclusively establish actual confusion. Cf. Lloyd's Food Products Inc. v. Eli's Inc., 987 F.2d 766, 25 USPQ2d 2027, 2030 (Fed. Cir. 1993) ("In this case, the Flachs were not actually confused; they only ‘wondered' at a possible relationship.").
  • Even careful purchasers are not immune from source confusion.
    • In re RSI Systems, LLC, Serial No. 78848532 (TTAB 2008)
      • While ink jet printers are not necessarily only purchased by sophisticated purchasers, it nonetheless appears to be the case that purchasers of printing machines and applicant's commercial ink jet printers are likely to be sophisticated. However, "even careful purchasers are not immune from source confusion." In re Total Quality Group Inc., 51 USPQ2d 1474, 1477 (TTAB 1999). See also In re Hester Industries, Inc., 231 USPQ 881, 883 (TTAB 1986) ("While we do not doubt that these institutional purchasing agents are for the most part sophisticated buyers, even sophisticated purchasers are not immune from confusion as to source where, as here, substantially identical marks are applied to related products").
  • The "lack of evidence of actual confusion carries little weight.
    • In re RSI Systems, LLC, Serial No. 78848532 (TTAB 2008)
      • Furthermore, the "lack of evidence of actual confusion carries little weight." Majestic Distilling, 65 USPQ2d at 1205.
  • Another du Pont factor discussed by the parties is the lack of instances of actual confusion.
    • Eveready Battery Company, Inc. v. Green Planet, Inc., Opposition No. 91180015 (TTAB 2009)
      • Another du Pont factor discussed by the parties is the lack of instances of actual confusion.
  • Case Finding: Applicant's evidence shows that it only sold approximately 15 thousand razors under its SLICK ULTRA PLUS mark during a six-month period in 2007, and ceased such sales after commencement of this opposition. Thus, on the record before us there appears to have been little opportunity for confusion to occur.
    • Eveready Battery Company, Inc. v. Green Planet, Inc., Opposition No. 91180015 (TTAB 2009)
      • Moreover, applicant's evidence shows that it only sold approximately 15 thousand razors under its SLICK ULTRA PLUS mark during a six-month period in 2007, and ceased such sales after commencement of this opposition. Thus, on the record before us there appears to have been little opportunity for confusion to occur. This du Pont factor is neutral.
  • Case Finding: Even though we find under the seventh du Pont factor that there apparently has been no actual confusion, there is no basis on this record for finding, under the related eighth du Pont factor, that there has been a significant opportunity for actual confusion to have occurred.
    • In re Davey Products Pty Ltd., Serial No. 77029776 (TTAB 2009)
      • In any event, even though we find under the seventh du Pont factor that there apparently has been no actual confusion, there is no basis on this record for finding, under the related eighth du Pont factor, that there has been a significant opportunity for actual confusion to have occurred. That is, there is no evidence that the nature and extent of applicant's and registrant's actual use of their marks in the marketplace, including the extent of geographical overlap, has been so substantial as to render the apparent absence of actual confusion legally significant. See In re Thomas, 79 USPQ2d at 1028; In re Continental Graphics Corp., 52 USPQ2d 1377 (TTAB 1999); Gillette Canada, Inc. v. Ranir, 23 USPQ2d 1768 (TTAB 1992).
  • Case Finding: In short, the fact (under the seventh du Pont factor) that there apparently has been no actual confusion must be considered together with the fact (under the eighth du Pont factor) that there apparently has been no significant opportunity for actual confusion to have occurred. In these circumstances, we find that the seventh and eighth du Pont factors pertaining to the issue of actual confusion are essentially neutral in this case.
    • In re Davey Products Pty Ltd., Serial No. 77029776 (TTAB 2009)
      • In short, the fact (under the seventh du Pont factor) that there apparently has been no actual confusion must be considered together with the fact (under the eighth du Pont factor) that there apparently has been no significant opportunity for actual confusion to have occurred. In these circumstances, we find that the seventh and eighth du Pont factors pertaining to the issue of actual confusion are essentially neutral in this case.
  • Competent evidence of actual confusion is difficult to come by where both applicant and registrant may be performing their respective activities in a commendable or exemplary fashion.
    • In re Davey Products Pty Ltd., Serial No. 77029776 (TTAB 2009)
      • Moreover, "[i]t should also be noted that competent evidence of actual confusion is difficult to come by where as here both applicant and registrant may be performing their respective activities in a commendable or exemplary fashion." In re Opus One, 60 USPQ2d at 1818, quoting from In re Richard Bertram & Co., 203 USPQ 286, 291 (TTAB 1979).
  • It is not necessary to show actual confusion in order to establish likelihood of confusion.
    • Eveready Battery Company, Inc. v. Green Planet, Inc., Opposition No. 91180015 (TTAB 2009)
      • Applicant asserts that the absence of actual confusion suggests no likelihood of confusion. However, it is not necessary to show actual confusion in order to establish likelihood of confusion. See Weiss Associates Inc. v. HRL Associates Inc. 902 F.2d 1546, 223 USPQ 1025 (Fed. Cir. 1990).
  • The fact that an applicant in an ex parte case is unaware of any instances of actual confusion is generally entitled to little probative weight in the likelihood of confusion analysis, inasmuch as the TTAB in such cases generally has no way to know whether the registrant likewise is unaware of any instances of actual confusion.
    • In re Davey Products Pty Ltd., Serial No. 77029776 (TTAB 2009)
      • Applicant contends that it is unaware of any actual confusion during ten years of applicant's and registrant's contemporaneous use. However, "[t]he fact that an applicant in an ex parte case is unaware of any instances of actual confusion is generally entitled to little probative weight in the likelihood of confusion analysis, inasmuch as the Board in such cases generally has no way to know whether the registrant likewise is unaware of any instances of actual confusion..." In re Opus One Inc., 60 USPQ2d at 1817.
  • The mere co-existence of the marks on the Register does not establish that there has been no actual confusion in the marketplace.
    • In re Davey Products Pty Ltd., Serial No. 77029776 (TTAB 2009)
      • Finally, we acknowledge, as discussed more fully below in connection with the thirteenth du Pont factor, that applicant owned a prior registration of the same mark for the same goods, which coexisted on the Register with the cited registration for six years. However, the mere co-existence of the marks on the Register does not establish that there has been no actual confusion in the marketplace. See In re Thomas, 79 USPQ2d at 1028.
  • We consider next the seventh du Pont factor (nature and extent of any actual confusion) and the related eighth du Pont factor (extent of the opportunity for actual confusion).
    • In re Davey Products Pty Ltd., Serial No. 77029776 (TTAB 2009)
      • We consider next the seventh du Pont factor (nature and extent of any actual confusion) and the related eighth du Pont factor (extent of the opportunity for actual confusion).
Eveready Battery Company, Inc. v. Green Planet, Inc., Opposition No. 91180015 (TTAB 2009) In re Davey Products Pty Ltd., Serial No. 77029776 (TTAB 2009) 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 Association of the United States Army, Serial No. 76578579, (TTAB 2007) In re Ginc UK Limited, Serial No. 78618843, (TTAB 2007) In re Paper Doll Promotions, Inc., Serial No. 76451078, (TTAB 2007) Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (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) Schering-Plough HealthCare Products, Inc. v. Ing-Jing Huang, Opposition No. 91117558, (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) Westrex Corporation v. New Sensor Corporation, Opposition Nos. 91168152, 91170940, (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 Homeland Vinyl Products, Inc., Serial No. 76361399, (TTAB 2006) In re Mark Thomas, Serial No. 78334625, (TTAB 2006) National Rural Electric Cooperative Association v. Suzlon Wind Energy Corporation, Cancellation No. 92043377, (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) Teledyne Technologies, Inc. v. Western Skyways, Inc., Cancellation No. 92041265, (TTAB 2006) DC Comics v. Pan American Grain Mfg. Co. Inc., Opposition No. 91125404, (TTAB 2005) Alfacell Corporation v. Anticancer, Inc., Cancellation No. 92032202, (TTAB 2004) Genesco Inc. and Genesco Brands Inc. v. Gregory Martz, Opposition No. 121,296, (TTAB 2003) Time Warner Entertainment Company L.P. v. Karen L. Jones, Opposition No. 112,409, (TTAB 2002) In re Thomas H. Wilson, Serial No. 75/285,881, (TTAB 2001) The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001) In re Continental Graphics Corporation, Serial No. 75/033,628, (TTAB 1999) Grand Total
In re Thomas, 79 USPQ2d 1021 (TTAB 2006) 1
In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003) 1
In re Pacer Technology, 338 F.3d 1348, 67 USPQ2d 1629 (Fed. Cir. 2003) 1
Hewlett- Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002) 2
In re Opus One Inc., 60 USPQ2d 1812 (TTAB 2001) 2
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000) 1
Hasbro Inc. v. Clue Computing Inc., 66 F. Supp.2d 117, 52 USPQ2d 1402 (D. Mass. 1999), aff'd, 232 F.3d 1, 56 USPQ2d 1766 (1st Cir. 2000) 1
Trek Bicycle Corp. v. Fier, 56 USPQ2d 1527 (TTAB 2000) 1
CCBN.com Inc. v. c-call.com Inc., 53 USPQ2d 1132 (D. Mass. 1999) 1
In re Continental Graphics Corp., 52 USPQ2d 1374 (TTAB 1999) 2
Pebble Beach Co. v. Tour 18 I. Ltd., 155 F.3d 526, 48 USPQ2d 1065 (5th Cir. 1998) 1
Carl Karcher Enterprises Inc. v. Stars Restaurants Corp., 35 USPQ2d 1125 (TTAB 1995) 2
Indianapolis Colts Inc. v. Metropolitan Baltimore Football Club Ltd. Partnership, 34 F.3d 410, 31 USPQ2d 1811 (7th Cir. 1994) 1
Pactel Teletrac v. T.A.B. Systems, 32 USPQ2d 1668 (TTAB 1994) 1
Anheuser-Busch. Inc. v. Balducci Publications, 28 F.3d 769, 31 USPQ2d 1296 (8th Cir. 1994) 1
Hilson Research Inc. v. Society for Human Resource Management, 27 USPQ2d 1423 (TTAB 1993) 2
Burns Philip Food Inc. v. Modern Products Inc., 24 USPQ2d 1157 (TTAB 1992), aff'd unpub op. 1 F.3d 1252, 28 USPQ2d 1687 (Fed. Cir. 1993) 1
Blansett Pharmacal Co. Inc. v. Carmrick Laboratories Inc., 25 USPQ2d 1473 (TTAB 1992) 1
Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768 (TTAB 1992) 10
In re General Motors Corp., 23 USPQ2d 1465 (TTAB 1992) 4
J & J Snack Foods Corp. v. McDonald's Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991) 1
Charles Jacquin et Cie Inc. v. Destileria Serralles Inc., 921 F.2d 467, 17 USPQ2d 1104 (3d Cir. 1990) 1
Weiss Associates Inc. v. HRL Associates Inc. 902 F.2d 1546, 14 USPQ 1840 (Fed. Cir. 1990) 6
Block Drug v. Den-Mat Inc., 17 USPQ2d 1315 (TTAB 1989) 1
International Kennel Club of Chicago v. Mighty Star Inc., 846 F.2d 1079, 6 USPQ2d 1977 (7th Cir. 1988) 1
Bongrain International (American) Corporation v. Delice de France Inc., 811 F.2d 1479, 1 USPQ2d 1775 (Fed. Cir. 1987) 1
Freddie Fuddruckers Inc. v. Ridgeline Inc., 589 F.Supp. 72 (N.D. Tex. 1984); aff'd w/out op, 783 F.2d 1062 (5th Cir. 1986) 1
McDonald's Corp. v. McBagel's Inc., 649 F.Supp. 1268, 1 USPQ2d 1761 (S.D.NY 1986) 1
Miles Laboratories Inc. v. Naturally Vitamin Supplements Inc., 1 USPQ2d 1445 (TTAB 1986) 2
Oreck Corporation v. U.S. Floor Systems Inc., 803 F.2d 166, 231 USPQ 634 (5th Cir. 1986) 1
Freddie Fuddruckers Inc. v. Ridgeline Inc., 589 F. Supp. 72, 223 USPQ 1139 (N.D. Tex. 1984) 1
In re Jeep Corp., 222 USPQ 333 (TTAB 1984) 2
In re Kangaroos U.S.A., 223 USPQ 1025 (TTAB 1984) 1
Giant Food Inc. v. Nation's Foodservice Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983) 2 3
In re Barbizon International Inc., 217 USPQ 735 (TTAB 1983) 1
In re The Ridge Tahoe, 221 USPQ 839 (TTAB 1983) 1
Broadway Catering Corp. v. Carla Inc., 215 USPQ 462 (TTAB 1982) 1
National Football League Properties Inc. v. Wichita Falls Sportswear Inc., 532 F.Supp. 651, 215 USPQ 175 (W.D.Wash. 1982) 1
Schering Corp. v. Alza Corp., 207 USPQ 504 (TTAB 1980) 1
Keebler Company v. Rovira Biscuit Corporation, 624 F.2d 366, 207 USPQ 465 (1st Cir. 1980) 1
In re Richard Bertram & Co., 203 USPQ 286 (TTAB 1979) 1
DC Comics Inc. v. Powers, et al., 465 F.Supp. 843, 201 USPQ 99 (SDNY 1978) 1
Guardian Products Co. Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978) 2
Haveg Industries, Incorporated v. Shell Oil Company, 199 USPQ 618 (TTAB 1978) 1
American Home Products Corp. v. USV Pharmaceutical Corp., 190 USPQ 357 (TTAB 1976) 1
James Burrough Limited v. Sign of the Beefeater Inc., 540 F.2d 266, 192 USPQ 555 (7th Cir. 1976) 1
Union Carbide Corp. v. Ever-Ready. Inc., 531 F.2d 366, 188 USPQ 623 (7th Cir. 1976) 1
Falk Corp. v. Toro Manufacturing Corp., 493 F.2d 1372, 181 USPQ 462 (CCPA 1974) 1
Glenwood Laboratories Inc. v. American Home Products Corp., 455 F.2d 1384, 173 USPQ 19 (CCPA 1972) 1
Grand Total 1 5 1 4 7 3 2 2 2 2 4 1 1 1 1 2 1 3 2 4 9 2 2 6 1 3 1 2 1 76
No Statutes Listed

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