The Federal Circuit Vacates TTAB Ruling Because the Board Failed to Properly Consider Evidence of Third-Party Use

On July 20, 2015, the Federal Circuit vacated a TTAB decision finding the mark PEACE LOVE AND JUICE & Design to be confusingly similar to a family of PEACE & LOVE marks on the ground the Board did not adequately consider the extensive third-party use of PEACE LOVE formatives when weighing the strength of the opposer’s marks. 

Juice Generation applied to register the following mark for juice bar services:


(Source: court opinion)

GS Enterprises owned a family of PEACE & LOVE marks for restaurant services, two of which included designs:

2015.08.06_PeaceLove3           2015.08.06_PeaceLove2

(Source: court opinion)

GS opposed Juice Generation’s application on grounds of likelihood of confusion.

To establish the weakness of GS’s marks, Juice Generation offered evidence of at least twenty-six third-party PEACE LOVE-formative marks (both registered and unregistered).  The Board acknowledged that sufficient evidence of third-party use of similar marks can show that customers “have been educated to distinguish between different marks on the basis of minute distinctions.”  However, in the Board’s view, Juice Generation’s evidence was insufficient because there were no “specifics surrounding the extent of sales or promotional efforts surrounding the third-party marks” and thus no evidence regarding what impact the third-party marks had made in the minds of the purchasing public.   Balancing all the DuPont factors, the Board ultimately found a likelihood of confusion.

The Federal Circuit faulted the Board for “insisting on specifics as to the third-party use.”  Though there were no details regarding the extent and impact of the third-party use, the Federal Circuit nonetheless found Juice Generation’s third-party evidence “powerful on its face.”  That evidence consisted of (1) the uncontradicted testimony of Juice Generation’s founder regarding the use of eight third-party marks, and (2) various third-party registrations.  With respect to the third-party registrations, the Federal Circuit quoted the McCarthy’s treatise which states:

A real evidentiary value of third party registrations per se is to show the sense in which … a mark is used in ordinary parlance.  …Third party registrations are relevant to prove that some segment of the composite marks which both contesting parties use has a normally understood and well-recognized descriptive or suggestive meaning, leading to the conclusion that that segment is relatively weak.

(emphasis is Federal Circuit’s).

The Federal Circuit’s decision appears to be a significant departure from longstanding Board precedent holding that third-party registrations by themselves have little probative value and are insufficient to establish that a term is weak.  In remanding the case, the Federal Circuit instructed the Board to consider “whether and to what degree the extensive evidence of third-party use and registrations indicates that the phrase PEACE & LOVE carries a suggestive or descriptive connotation in the food service industry, and is weak for that reason.” (emphasis is Federal Circuit’s).  According to the Federal Circuit, “[t]he remand analysis might well call for an answer to the overall likelihood-of-confusion question different from the answer the Board gave in the decision on review.”

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