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Confusion within the INDUSTRY

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Pure & Simple Concepts v. 1 H W Management (Finchley Group) (Fed. Cir. 2021)

Pure & Simple holds a set of INDUSTRY trademark registrations to be used on attire. P&S licenses these to the Manhattan Group who sells clothes with the logos.

IN 2015, Finchley utilized to register the phrase mark BLUE INDUSTRY for its attire. P&S opposed registration — arguing each confusion and dilution. Opposition proceedings are initially determined by a panel of Trademark Trial & Appeal Board (TTAB) judges.  In this case, the judges sided with Finchley and located no probability of confusion and no potential for dilution. On appeal, the Federal Circuit has affirmed.

The Trademark Act (Lanham Act) prohibits registration of a mark that “so resembles” one other registered/used mark “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.” 15 U.S.C. § 1052(d).  The TTAB’s approach is to  make factual conclusions relating to the DuPont Factors earlier than figuring out the existence of a probability of confusion.  Here, the Board didn’t expressly think about all the elements.  That was no drawback although since proof/argument had not been introduced for all the elements.

The file earlier than us exhibits that P&S solely introduced arguments and proof based mostly on DuPont elements 1 (similarity or dissimilarity of the marks), 2 (similarity of the products and providers), and three (similarity of established, likely-to-continue commerce channels). Finchley introduced counterarguments as to elements 1, 2, and three, and moreover introduced arguments and proof as to issue 6 (quantity and nature of comparable marks in use on comparable items). Neither social gathering briefed the opposite elements.

Thus, on appeal, the Federal Circuit refused to listen to new arguments relating to the opposite elements.  The court docket additionally affirmed that the BLUE a part of BLUE INDUSTRY was a “lead term” that might make an even bigger impression than INDUSTRY.  Also, the phrase “INDUSTRY” is pretty ubiquitous within the … trade.

[T]he Board discovered that given the “sheer volume of third-party registrations and examples of third-party use, consumers are conditioned to look for differences between INDUSTRY formative marks to determine the source of a given product and are therefore less likely to be confused.”

We conclude that the variety of registered “industry” marks, mixed with the particular examples of marketed use that have been thought of by the Board, are substantial proof indicating that the sixth DuPont issue weighs in favor of Finchley.

The opposition additionally argued that the mark would trigger dilution.  However, a mark (or household unit of marks) should be “famous” earlier than they are often diluted.  “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.” Slip Op.  Here, the TTAB concluded that P&S had not confirmed that its marks have been well-known or that its marks even fashioned a “family.”  On appeal, the Federal Circuit affirmed — discovering the Board’s conclusion supported by substantial proof.

Affirmed, BLUE INDUSTRY will be registered (or a minimum of isn’t barred by P&S’s marks).  After Finchley argued so convincingly that BLUE is the important thing characteristic of the mark, the PTO would possibly must rethink whether or not there are different related BLUE marks on the market in use.

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The opinion refers back to the Lanham Act 4 occasions, and the Trademark Act twice.  I consider these are all directed to the identical set of legal guidelines. What do you assume?

 

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