Dot or Not: Federal Circuit Agrees a Dot Can Prevent Confusion

It may be rare when a mere dot is considered to be enough to distinguish two trademarks used for similar goods. But that was the ruling of the Federal Circuit in Fuente Marketing, Ltd. v. Vaporous Technologies, LLC, when comparing the letter X to the figure below (“dot-X”):  

At the Trademark Trial and Appeal Board (TTAB), the parties stipulated that the dot-X trademark “consists of an abstract stick figure consisting of two diagonal intersecting lines in the shape of a wide stylized letter X and a shaded circle above the letter X.” On appeal, Fuente argued that the TTAB should not have relied on such a stipulation as conclusive evidence that consumers would view the mark as a stick figure.

The Federal Circuit noted that, at most, the stipulation was merely how the parties intended the mark to be perceived and could not conclusively establish how consumers actually perceive the mark. As the court stated, a trademark’s meaning “is based on the impression actually created by the mark in the minds of consumers, not on the impression that the applicant states the mark is intended to convey.” However, any reliance by the TTAB on the stipulation was deemed harmless error, as the TTAB concluded that the marks were dissimilar without reference to the stipulation. The TTAB found that the “circle or head” of the stick figure was not a “minor or unnoticeable” feature of the mark and that consumers would not perceive the dot-X trademark as the letter X.

Fuente also argued that the TTAB should have considered the marketing context of the challenged mark, including the use of other X-formative trademarks by Vaporous. The court, however, declined to consider Vaporous’ use of the mark with other trademarks, as the issue was the registrability of the mark as applied for. The court found that the TTAB properly ignored other “real world” evidence of any alleged differences in the parties’ channels of trade, purchaser classes, or scope of goods that were not reflected in the parties’ trademark filings.

Finally, while the TTAB found that Fuente’s X trademark was conceptually strong for cigars, the court agreed with the TTAB that there was insufficient evidence (a “handful of examples”) to show that the X trademark alone was commercially strong. Likewise, there was insufficient evidence (a “single third-party mark”) to show that there was a crowded field of X trademarks.

Takeaways

The Federal Circuit’s holding that the description of a trademark in an application is not evidence of the meaning of the mark might be useful to applicants facing an initial refusal by examiners who rely on such descriptions to support the argument that trademarks are similar. In inter partes proceedings, parties should marshal actual evidence of consumer perception of a trademark, just as they should make the effort to demonstrate with substantial evidence the commercial strength of a trademark or a crowded field of similar marks.