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IP LitigationFederal Circuit

PTO Errs by Discounting Evidence a Trademark Was Merely Suggestive and Failing to Consider the Opposing Mark as a Whole

July 21, 2015

IP LitigationFederal Circuit

PTO Errs by Discounting Evidence a Trademark Was Merely Suggestive and Failing to Consider the Opposing Mark as a Whole

July 21, 2015

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Juice Generation, Inc. v. GS Enterprises, LLC, __ F.3d __ (Fed. Cir. July 20, 2015) (Newman, Reyna, TARANTO) (T.T.A.B.) (1 of 5 stars)

Federal Circuit vacates a PTO decision sustaining an opposition to the mark “PEACE LOVE AND JUICE” for juice bar services in view of four registrations for restaurant services incorporating the phrase “PEACE & LOVE.”  The PTO erred in two respects when finding there was a likelihood of confusion between the marks.

First, the PTO inadequately assessed and weighed the strength or weakness of the “PEACE & LOVE” mark.  “The weaker an opposer’s mark, the closer an applicant’s mark can come without causing a likelihood of confusion and thereby invading what amounts to its comparatively narrower range of protection.”  Slip op. at 7.  Here, the applicant presented powerful evidence that many third parties had used and registered similar marks with “PEACE & LOVE,” which suggested the phrase was descriptive or suggestive and thus less likely to cause confusion than a more fanciful mark.  Moreover, the opposer’s statements when prosecuting its mark, which distinguished “PEECE LUV CHIKIN” because it was less suggestive of 1960s counterculture, further indicated it was suggestive or descriptive.  The PTO thus had to consider all this evidence on remand and place the opposer’s mark on the spectrum from very strong to very weak.

Second, the PTO did not adequately consider the three-word “PEACE LOVE AND JUICE” mark in its entirety, as distinct from the two-word opposing mark.  The PTO had deemed the words “PEACE LOVE” as the “dominant” part of the registrant’s mark, yet its opinion did “not display any consideration” of whether the entire three-word phrase “may convey a distinct meaning” or have a “different connotation” in consumers’ minds.  Slip op. at 11.  “While the Board may properly afford more or less weight to particular components of a mark for appropriate reasons, it must still view the mark as a whole.”  Id. at 12.  Here, its opinion lacked any analysis to show that it had avoided the error of giving the word “JUICE” zero weight.​

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Craig Countryman | Principal

Craig Countryman is a Principal in the Southern California office of Fish & Richardson and was named a 2016 Rising Star by Law360, and was named to the "Top 40 Under 40" lists in both the Daily Journal and the San Diego Daily Transcript.  His practice...

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