DuPont factor 1 concerns the similarity or dissimilarity of the marks in their entirety as to appearance, sound,connotation, and commercial impression. DuPont, 476F.2d at 1361.
Since the mark applied for was BEAST MODE SOCCER, the applicant should have just abandoned its application before appealing it to the TTAB. Nonetheless, the applicant appealed it all the way to the CAFC. The specimen doesn’t even match the applied for mark.
“[T]he ‘similarity or dissimilarity of the marks in their entireties’ is a predominant inquiry” in the likelihood of confusion analysis. Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165 (Fed. Cir. 2002).The Board in this case found that the marks are similar because Copeland-Smith’s mark incorporates the entirety of Lynch’s BEAST MODE mark and adds only the disclaimed word SOCCER. J.A. 9–10. “When one incorporates the entire arbitrary mark of another into a composite mark, . . . inclusion of a merely suggestive or descriptive element, of course, is of much less significance in avoiding a likelihood of confusion.” Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022 (CCPA 1977); see also Am. Sec.Bank v. Am. Sec. & Tr. Co., 571 F.2d 564, 567 (CCPA 1978)(“While AMERICAN SECURITY BANK is a distinguishable, three-word mark, the word ‘bank’ is purely descriptive and adds nothing to the origin-indicating significance of AMERICAN SECURITY.”).
The USPTO examiners assess “whether the marks are sufficiently similar in terms of their commercial impression such that persons who encounter the marks would be likely to assume a connection between the parties.” Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368 (Fed.Cir. 2012)
IN RE: COPELAND-SMITH, the TTAB found:
Substantial evidence supports the Board’s findings that, looking at the mark as a whole, the generic word SOCCER is the only thing that distinguishes Copeland-Smith’s mark from Lynch’s, and that generic word is dwarfed by the term BEAST MODE. Thus, having considered Copeland-Smith’s arguments with respect to DuPont factor 1, we conclude that substantial evidence supports the Board’s finding that the marks are sufficiently similar to cause a likelihood of confusion.
The attorney who represented the applicant before the TTAB and the CAFC was
|Correspondence:||JILL M PIETRINI|
SHEPPARD MULLIN RICHTER & HAMPTON LLP
1901 AVENUE OF THE STARS SUITE 1600
LOS ANGELES, CA 90067-6017
The appellant was also represented by PAUL BOST.
United States Court of Appeals for the Federal Circuit
IN RE: DAVID COPELAND-SMITH, Appellant
Appeal from the United States Patent and Trademark Office, Trademark Trial and Appeal Board in No. 85498107.
Trademark Law: An Open-Source Casebook (Version 6.0): Volume 1 of 2
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