Peace, Love, and TrademarksJuly 28, 2015

Federal Trademark registration allows the owner of a mark to enforce their rights throughout the U.S. Once a trademark registration is filed, however, those rights can be challenged either through litigation or though opposition proceedings instituted at the USPTO. In particular, a registered trademark can be challenged on the basis that it is likely to cause confusion with other, existing marks.  Although there is some variation among jurisdictions, a number of factors are generally considered when examining such “likelihood of confusion,” including the similarity or dissimilarity of the marks in their entireties; the similarity or dissimilarity and nature of the goods; the similarity or dissimilarity of trade channels; the sophistication of consumers; the nature and extent of any actual confusion; and use of the mark or confusingly similar marks by third parties.  With respect to third party usage, evidence of numerous similar marks being used can demonstrate that relatively small differences in the challenged mark may be sufficient to avoid confusion.  

The Federal Circuit recently issued a decision on in the matter of Juice Generation v. GS Enterprises, holding that consideration of evidence of third party use may be especially important for assessing the strength of an existing mark, and thereby determining the likelihood of confusion with a challenged mark.  Juice Generation applied for a mark consisting of “PEACE LOVE AND JUICE”for juice bar services. GS Enterprises opposed the mark on the ground that such a mark would cause confusion with their family of marks which all contain “PEACE & LOVE.‚¬

The Trademark Trial and Appeal Board sustained the opposition and refused to register Juice Generation’s mark, following an analysis of the thirteen consideration enumerated in In re E.I. DuPont DeNemours & Co. The Board concluded that based on the dominant portions of the marks, there was a likelihood of confusion and evidence of third party use would not be considered as there were no specifics provided regarding the extent of sales or promotional efforts in relation to the third party marks.

On appeal, the Federal Circuit concluded that the Board’s decision did not give adequate weight to the number of third party uses of marks containing “peace”and “love,”as this was shown through uncontradicted testimony. The court cited that there is “[a] real evidentiary value of third party registrations per se . . . to show the sense in which . . . a mark is used in ordinary parlance.”As the Board never inquired whether and to what degree the evidence of third party use and registration indicates a suggestive or descriptive connotation in the food service industry, their analysis was weak on this point. The court also noted statements made by GS during the prosecution of their trademarks, indicating that the phrase “peace and love”elicits a commercial impression relating to the culture prevalent in the 1960’s and 1970’s.

Furthermore, the court noted that the commercial impression of a mark must be derived from its whole, not from its separate elements. As the Board only considered what they deemed to be the dominant portions of the mark and did not pay sufficient mind to the three-word combination versus the two would combination, the Court concluded this point need further consideration and remanded the case for further review.

The full opinion can be read here.