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Trademark Law Alert – TTAB Must Give Trademark Fame Due Weight When Analyzing Likelihood of Confusion


By Eric J. Shimanoff

On May 24, 2017, the United States Court of Appeals for the Federal Circuit held that the Trademark Trial and Appeal Board of the United States Patent and Trademark Office (“TTAB”) must give all appropriate weight to the fame of the senior user’s mark when analyzing likelihood of confusion. See Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, No. 16-1089 (per curiam). At trial, the TTAB had erroneously considered fame as an “all or nothing” proposition.

Under Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d), the TTAB may deny or cancel federal registration of a mark that is likely to cause confusion as to source, sponsorship or affiliation in light of a senior user’s mark. In analyzing likely confusion, the TTAB examines several factors that were originally set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (CCPA 1973), including the similarity of the parties’ marks, the similarity of the parties’ goods and trade channels, the sophistication of the relevant consumers, the scope of third-party use of similar marks and any instances of actual confusion. An additional factor examines the fame of the senior user’s mark. Famous marks are entitled to a broader scope of protection against third party use of similar marks.

In Joseph Phelps Vineyards, the petitioner submitted evidence in the form of third party reviews, accolades and other articles, as well as proof of millions of dollars of sales annually, to show that its INSIGNIA mark for wine is renowned among consumers of fine wine. The TTAB found “while it appears that Petitioner’s INSIGNIA branded wine has met with success in the marketplace, we are not persuaded on this record that Petitioner’s mark is a famous mark.” Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, Cancellation No. 92057240 (TTAB July 6, 2015).  Balancing all the relevant factors, including the lack of fame, the TTAB ultimately found confusion was not likely between the parties’ marks.

The Federal Circuit vacated and remanded, holding that the TTAB used an incorrect standard by affording no weight to the petitioner’s evidence of fame:

We are perplexed at the Board’s finding that INSIGNIA wine has no ‘fame,’ giving no discernible weight to this factor. The TTAB applied an incorrect standard, for ‘fame’ is determined from the viewpoint of consumers of like products.  The record shows appreciation by consumers and the wine market of Vineyards’ INSIGNIA brand. It was error to refuse to accord any ‘fame’ to Vineyards’ INSIGNIA mark. The factor of ‘fame’ warrants reasonable weight, among the totality of the circumstances.

This decision will bring the TTAB’s analysis in line with that conducted by nearly all federal courts, which examine the “strength” of the senior user’s mark on a sliding scale, not as a yes/no proposition. It is unclear whether this clarification of the fame standard will have any practical effect on the TTAB’s ultimate determination of likely confusion in future decision, or in Joseph Phelps Vineyards itself, where the TTAB also found the parties’ marks (INSIGNIA vs. ALEC BRADLEY STAR INSIGNIA) and goods (wine vs. cigars) were dissimilar.

This decision will not affect the TTAB’s analysis of trademark dilution under Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c). A mark still must be famous among the general consuming public in order to be protected against dilution.

For more information, please contact Eric J. Shimanoff or your CLL attorney.


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