Tuesday, August 08, 2017


Symbolic lost its appeal to the CAFC from an adverse decision
from the TTAB. Its arguments:

Symbolic argues that the Board erred in its likelihood
of confusion analysis by: (1) holding that the will.i.am
restriction is “precatory” and “meaningless” and therefore
not considering it in analyzing certain DuPont factors;
(2) ignoring third-party use and the peaceful coexistence
on the primary and supplemental registers and in the
marketplace of other I AM marks; and (3) finding a likelihood
of reverse confusion. We will address each argument
in turn.

Likelihood of confusion is a question of law based on
underlying findings of fact. In re Chatam Int’l Inc., 380
F.3d 1340, 1342 (Fed. Cir. 2004). We assess a likelihood
of confusion based on the factors set forth in DuPont. 476
F.2d at 1361. “The likelihood of confusion analysis considers
all DuPont factors for which there is record evidence
but ‘may focus . . . on dispositive factors, such as
similarity of the marks and relatedness of the goods.’”
Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156,
1164–65 (Fed. Cir. 2002) (quoting Han Beauty, Inc. v.
Alberto–Culver Co., 236 F.3d 1333, 1336 (Fed. Cir. 2001)
(alteration in original)). While evidence of actual confusion
may be considered in the DuPont analysis, “a showing
of actual confusion is not necessary to establish a
likelihood of confusion.” Id. (citing Giant Food, Inc. v.
Nation’s Foodservice, Inc., 710 F.2d 1565, 1571 (Fed. Cir.
1983)). In the likelihood of confusion analysis “doubts are
to be resolved against the newcomer and in favor of the
prior user.” San Fernando Elec. Mfg. Co. v. JFD Elecs.
Components Corp., 565 F.2d 683, 684 (CCPA 1977).

The Coach case arose:

Furthermore, Symbolic’s reliance on Coach is misplaced.
Although it is true that word marks identical in
sound and appearance may have different meanings and
commercial impressions, 668 F.3d at 1369, the Board’s
finding that this is not such a case is supported by substantial
evidence. Unlike in Coach, Symbolic did not
establish that the words “I AM,” which comprise the
totality of the mark, by themselves “ha[ve] many different
definitions in different contexts,” or that I AM when
applied to Symbolic’s goods “brings to mind” something
different from I AM when applied to registrants’ marks.

Of reverse confusion:

“The term ‘reverse confusion’ has been used to describe
the situation where a significantly larger or prominent
newcomer ‘saturates the market’ with a trademark
that is confusingly similar to that of a smaller, senior
registrant for related goods or services.” In re Shell Oil
Co., 992 F.2d 1204, 1208 (Fed. Cir. 1993) (quoting Sands,
Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947, 957
& n.12 (7th Cir. 1992)). In that situation, “[t]he junior
user does not seek to benefit from the goodwill of the
senior user; however, the senior user may experience
diminution or even loss of its mark’s identity and goodwill
due to extensive use of a confusingly similar mark by the
junior user.” Id. Trademark law “protects the registrant
and senior user from adverse commercial impact due to
use of a similar mark by a newcomer.” Id.; see also Wallpaper
Mfrs., Ltd. v. Crown Wallcovering Corp., 680 F.2d
755, 762 (CCPA 1982) (explaining “even where there is
reverse confusion . . . another source with superior de jure
rights may prevail regardless of what source or sources
the public identifies with the mark”).

Symbolic argues that the Board found a likelihood of
reverse confusion and that that finding is not supported
by substantial evidence. The PTO responds that the
Board did not find a likelihood of reverse confusion and
that its finding that the fame of the marks, the fifth
DuPont factor, is neutral is supported by substantial
We agree with the PTO that the Board did not find a
likelihood of reverse confusion. The Board treated the
fifth DuPont factor as “neutral” and explained that the
“purported lack of fame” of registrants’ marks was of
“little consequence.” Symbolic I, 116 U.S.P.Q.2d at 1412;
Symbolic II, 2015 WL 6746544, at *8; Symbolic III, 2015
WL 6746545, at *8. That determination is consistent with
our precedent holding that the purported lack of fame of a
registrant’s mark has “little probative value” in the likelihood
of confusion analysis. Majestic Distilling, 315 F.3d
at 1317.
Symbolic points to a footnote in the Board’s opinions
in support of its contention that the Board found a likelihood
of reverse confusion.


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