CAFC Schools TTAB on Likelihood of Confusion Analysis

The U.S. Court docket of Appeals for the Federal Circuit (CAFC) issued a precedential decision on Thursday vacating the Trademark Trial and Attraction Board’s (TTAB’s) denial of a petition to cancel a trademark for a medicated tea product to deal with colic in infants.

Naterra Worldwide, Inc. petitioned the TTAB to cancel the mark BABIES’ MAGIC TEA primarily based on doubtless confusion available in the market with its personal registrations for the mark BABY MAGIC, which cowl “quite a few toiletry items.” The Board discovered that Naterra didn’t show confusion below the 13 DuPont Elements as a result of it didn’t show its personal mark was commercially sturdy, “not to mention well-known,” below DuPont issue 5; and that DuPont components two and three, which relate to the similarity of the products and the similarity of established commerce channels, respectively, weighed towards a chance of confusion, as Naterra had didn’t show both issue.  The TTAB did discover that issue one, the similarity of the marks, weighed in favor of chance of confusion, for the reason that marks have been “extra related than dissimilar as to look, sound, connotation and business impression,” however finally the Board “gave ‘specific weight’ to the shortage of ‘probative proof exhibiting the relatedness of the events’ respective items, . . . coupled with the considerably weak inherent nature of [Naterra’s] BABY MAGIC mark, [and] the shortage of demonstrated business power (not to mention fame) and related commerce channels.” On enchantment, Naterra stated the TTAB’s discovering that components two and three disfavored a chance of confusion discovering was not supported by substantial proof and that it erred in failing to present enough weight to the similarity of the marks or the celebrity of the BABY MAGIC mark.

The CAFC stated that the Board’s rejection of Naterra’s knowledgeable testimony concerning the idea of “umbrella branding”—right here, referring to the truth that “a number of firms promote child ingestible merchandise and child skincare merchandise below the identical mark—to conclude that the products weren’t associated indicated that the Board won’t have correctly thought-about the testimony as proof, however the court docket was finally unable to discern whether or not it did or not, and thus remanded for additional consideration and clarification. The court docket additionally rejected Samah Bensalem’s argument that this constituted, at most, innocent error, explaining that the Board relied on the rejection of the testimony to find no relatedness.

As to the third DuPont issue regarding the similarity of commerce channels, the CAFC stated the Board didn’t correctly take into account all of the proof, similar to Bensalem’s response to the request for admission, “admitting that each events ‘make the most of related channels of commerce in reference to the emblems.’” Moreover, stated the court docket, “the Board didn’t determine in its choice any proof exhibiting an absence of similarity in commerce channels.” The court docket once more rejected Bensalem’s argument that this amounted to innocent error and vacated and remanded for the court docket to contemplate all of the related proof.

On DuPont components one and 5, the CAFC was persuaded by Naterra’s argument that the Board incorrectly weighed these components. On issue one, the similarity of the marks, Naterra stated the Board’s discovering that the marks have been extra related than dissimilar “ought to—at a minimal—weigh closely in favor of discovering a chance of confusion if not be dispositive within the evaluation.” As a result of the marks’ lead phrases “look and sound nearly the identical and have the identical connotation and business impression,” and since “TEA” is generic and descriptive by itself, the Board ought to have weighed the primary issue closely in favor of a discovering of chance of confusion. As to Naterra’s argument that this discovering is dispositive, the court docket declined to handle is however stated the TTAB ought to handle it after first reconsidering the entire related DuPont components on remand.

As to the celebrity of the mark, the court docket didn’t agree with Naterra’s argument that the Board ought to have given extra weight to its discovering that Naterra’s mark fell “someplace within the center” on the celebrity spectrum as a result of the celebrity of the mark was not “unquestionably established.”

The court docket finally vacated and remanded the case, holding that the TTAB erred in weighing the primary DuPont issue, failed to handle related proof in regards to the third DuPont issue and discovering the court docket couldn’t discern whether or not the Board correctly addressed related proof in regards to the second DuPont issue.