Jose Felgueroso
Abogado | Attorney
A Prior Registration of the Applicant is the Deciding Factor in a Likelihood-of-Confusion Analysis
info@josefelgueroso.com
2021-11-03
In a case involving a likelihood of confusion between two trademarks for clothing products, the Trademark Trial and Appeal Board of the US Patent and Trademark Office held that a prior registered trademark of one of the parties was the deciding factor in the analysis.
Background
1872 LLC (the "Applicant") applied to register the mark AXION (the "Applicant's Applied-For Mark") in class 25 for headwear, shirts, shoes, and other clothing items. The trademark examiner refused the registration, citing a likelihood of confusion with the registered mark AXEON LABS (the "Cited Registration") in class 25 for hats, shirts, shoes, and other clothing items. The applicant appealed to the Board.
Analysis
The Board had to decide whether the Applicant's Applied-For Mark created a likelihood of confusion with the Cited Registration. Courts have developed lists of factors to guide the analysis of likelihood-of-confusion cases. The most important factors are often the similarity of the marks, the similarity of the goods, and the similarity of the trade channels. A final factor, however, allows the parties to introduce any additional probative facts to assess the likelihood of confusion.
Similarity of the Goods, Trade Channels, and Classes of Purchasers
This factor takes into account the similarity of the goods, trade channels, and classes of purchasers associated with the marks.
The Board held that the parties' goods are similar, because they both sell headwear, shirts, footwear, and other closely related items. Based on the similarity of the parties' goods, the Board presumed that they were sold in the same trade channels and to the same classes of purchasers.
In sum, this factor favors a finding of likelihood of confusion.
Similarity of the Marks
Under this factor, the marks are evaluated to determine whether they are similar in appearance, sound, connotation, and commercial impression. A similarity in any one of those elements may be sufficient to create a likelihood of confusion. In addition, the more similar the goods are, the less similar the marks need to be to create a likelihood of confusion.
In this case, AXION and AXEON are both coined terms and their sound is similar. The Board determined that the presence of LABS in AXEON LABS is not significant, because it comes after AXEON and is merely an entity designation. The Board concluded that the marks are also similar in appearance, because both are word marks that could be displayed in any style, including one that minimizes the presence of LABS.
In sum, this factor favors a finding of likelihood of confusion between the two marks.
Additional Evidence
The final factor involves any evidence that provides flexibility to evaluate each set of facts. This factor may outweigh any other factors. Under one of the Board's precedents, an applicant's prior registration for a similar mark for similar goods could outweigh other factors in the analysis, given that the prior registration had coexisted with a potentially conflicting trademark for over five years. Under this precedent, the Board evaluates (1) the similarity of the applicant's marks, (2) the similarity of the applicant's goods, and (3) the length of time that the prior registration coexisted with the potentially conflicting trademark.
The Applicant's Prior Registration consists of the term AXION with a triangular figure and is registered for similar goods as the Applicant's Applied-For Mark. Therefore, the Board held that the literal portions of the Applicant's Prior Registration and the Applicant's Applied-For Mark are similar and that they involve similar goods. The Applicant's Prior Registration coexisted with the Cited Registration for only 18 months, but the Board concluded that this shorter period of time was sufficient to show that the two marks had coexisted.
The Board concluded that confusion between the Applicant's Applied-For Mark and the Cited Registration was unlikely, because the trademark examiner who examined the Cited Registration had not refused to register it based on the Applicant's Prior Registration.
In sum, the Board held that the coexistence of the Applicant's Prior Registration and the Cited Registration led it to conclude that confusion between the Cited Registration and the Applicant's Applied-For Mark was unlikely.
Conclusion
Although the Applicant's Applied-For Mark and the Cited Registration were similar marks for similar goods, the Board concluded that confusion was unlikely because the trademark examiner who examined the Cited Registration did not refuse registration based on the Applicant's Prior Registration. The Board stressed that it is not bound by the decisions of trademark examiners, and that under the facts of this case the existence of the Applicant's Prior Registration outweighs the similarity of the parties' marks and goods.
Sources
In re 1872 LLC (Trademark Trial and Appeal Board)