Paw Print Marks Not Similar, Fed. Cir. Rules

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By Blake Brittain

Aug. 19 — The Trademark Trial and Appeal Board wrongly determined that there was a likelihood of confusion between two clothing marks featuring paw prints, the U.S. Court of Appeals for the Federal Circuit ruled Aug. 19.

The Federal Circuit said the board failed to consider the marks as a whole—ignoring that one mark included a company name next to the paw print, whereas the other paw print mark did not have a similar verbal element—and didn't give sufficient weight to the many other paw print marks currently used in commerce.

In an issue of first impression for the court, the Federal Circuit also ruled that when a trademark owner uses a modified version of its original registered mark, it avoids abandonment of the original if the modified version makes the “same, continuous commercial impression.”

Hungry Like the Wolf

Jack Wolfskin Ausrustung Fur Draussen GmBH & Co. filed to register a design mark of an angled paw print for use with clothing, footwear, and accessories.

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New Millennium Sports SLU opposed the registration, alleging a likelihood of confusion with its registered mark for clothing, consisting of the word “KELME” in capital letters next to a paw print.

The TTAB sustained the opposition and refused to register the Wolfskin mark. Wolfskin appealed, arguing that New Millennium had abandoned the mark by changing its design after registration, and that the board's conclusions on two likelihood of confusion factors—the similarity of the marks and the number of similar marks in use—were improper.

The Federal Circuit rejected Wolfskin's abandonment argument, but agreed that the TTAB had erred in analyzing the two likelihood of confusion factors.

New Abandonment Standard

The Federal Circuit said it had “not spoken directly on what standard to use” to determine whether changes to a registered mark resulted in abandonment.

The court noted the TTAB standard that a changed mark with the “same, continuing commercial impression” will not be abandoned, and the Federal Circuit's similar standard in priority disputes that a modified mark maintains priority “if the old and the new form of the mark are ‘legal equivalents.' ”

“In both contexts—priority and abandonment—the fundamental inquiry is the same: has the original mark been so substantially altered such that third parties would not expect that presently used mark to be used under and protected by the registration,” Judge Raymond T. Chen said.

“We hold that the same legal standard applies in both contexts,” the court said. “Accordingly, when a trademark owner uses a modified version of its registered trademark, it may avoid abandonment of the original mark only if the modified version ‘create[s] the same, continuous commercial impression.' ”

Based on this standard, the court affirmed the TTAB's dismissal of the abandonment claim, and ruled that the minor alterations to New Millennium's mark—a change in the font of the “KELME” lettering and the removal of small claws from the paw print—did not change it enough to result in abandonment.

Confusion Unlikely

The Federal Circuit agreed with Wolfskin's argument that the TTAB had incorrectly found a likelihood of confusion.

The court said that the board failed to consider the two marks in their entireties because it did not take the verbal component of New Millennium's mark into account.

“Contrary to the guideposts in our case law, the Board essentially disregarded the verbal portion of New Millennium's mark and found that the two paw print designs were substantially similar,” the court said. “This analysis did not consider the marks as a whole.”

The board had only reviewed the paw print elements of the marks because “companies that use marks consisting of a word plus a logo often display their logos alone, unaccompanied by the literal portions of their trademarks.” The Federal Circuit said that this rationale was not supported by the evidence.

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“This is not to say that the Board cannot, in appropriate circumstances, give greater weight to a design component of a composite mark,” the court said. “But, when the Board places such heavy emphasis on an oft-used design element, as it did in this case, it must provide a rational reason for doing so.”

The Federal Circuit also said that the board had wrongly discounted Wolfskin's “voluminous evidence” of paw print marks used on clothing.

The board said it had minimized this evidence because it consisted of secondary source indicators, like paw prints on clothing identifying college and high school sports teams instead of the apparel or sporting goods companies that made the clothing.

The Federal Circuit said that the board should have taken this evidence more seriously because “such extensive evidence of third-party use and registrations is ‘powerful on its face,' even where the specific extent and impact of the usage has not been established.”

The court said the volume of Wolfskin's evidence also indicated that “consumers are conditioned to look for differences between paw designs and additional indicia of origin to determine the source of a given product,” further supporting the conclusion that confusion was not likely.

The Federal Circuit therefore ruled that there was no likelihood of confusion between the two marks and remanded the case to the TTAB.

Judges Alan D. Lourie and William C. Bryson joined the opinion.

Wolfskin was represented by Richard Lehv of Fross Zelnick Lehrman & Zissu PC, New York. New Millennium was represented by Philip Bautista of Taft Stettinus & Hollister LLP, Cleveland.

To contact the reporter on this story: Blake Brittain in Washington at bbrittain@bna.com

To contact the editor responsible for this story: Anandashankar Mazumdar at amazumdar@bna.com

Text at http://pub.bna.com/ptcj/wolfskin.pdf.