601 F.3d 1342 (Fed. Cir. 2010), 2009-1497, In re Mighty Leaf Tea

Docket Nº:2009-1497 (Serial 76/678,969)
Citation:601 F.3d 1342, 94 U.S.P.Q.2d 1257
Opinion Judge:NEWMAN, Circuit Judge.
Party Name:IN RE MIGHTY LEAF TEA
Attorney:Charles C. Valauskas, Valauskas & Pine LLC, of Chicago, Illinois, for appellant. With him on the brief was Allison M. Corder. Raymond T. Chen, Solicitor, United States Patent and Trademark Office, of Arlington, Virginia, for the Director of the United States Patent and Trademark Office. With him ...
Judge Panel:Before NEWMAN, CLEVENGER, and LINN, Circuit Judges.
Case Date:April 13, 2010
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit
 
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Page 1342

601 F.3d 1342 (Fed. Cir. 2010)

94 U.S.P.Q.2d 1257

IN RE MIGHTY LEAF TEA

No. 2009-1497 (Serial No. 76/678,969)

United States Court of Appeals, Federal Circuit

April 13, 2010

Page 1343

         Appeal from the United States Patent and Trademark Office, Trademark Trial and Appeal Board.

         Charles C. Valauskas, Valauskas & Pine LLC, of Chicago, Illinois, for appellant. With him on the brief was Allison M. Corder.

         Raymond T. Chen, Solicitor, United States Patent and Trademark Office, of Arlington, Virginia, for the Director of the United States Patent and Trademark Office. With him on the brief were Thomas V. Shaw and Janet A. Gongola, Associate Solicitors.

         Before NEWMAN, CLEVENGER, and LINN, Circuit Judges.

          OPINION

Page 1344

          NEWMAN, Circuit Judge.

         Mighty Leaf Tea appeals the decision of the Trademark Trial and Appeal Board affirming the refusal to register the mark ML, in standard character form, for use with certain personal care and skin care products. In re Mighty Leaf Tea, No. 76678969 (TTAB May 8, 2009). We affirm the Board's decision.

         BACKGROUND

         On July 2, 2007 Mighty Leaf Tea filed an application to register the mark ML on the Principal Register in Class 003, for " personal care products and skin care preparations, namely, skin soap, body wash, foam bath, body lotion, body scrub, bath salts and massage oil; potpourri; incense." The applicant asserted first use in commerce on November 1, 2004. The Examining Attorney rejected the application

Page 1345

under Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d), 1 finding likelihood of confusion with the mark ML MARK LEES shown below, registered in Class 003 on January 27, 1998, for " skin care products, namely, skin cleanser, skin toner, skin cream, skin lotion, skin mask gel, make-up foundation, powder and blush" :

         [SEE LOGO IN ORIGINAL]

         MARK LEES

         In response to the rejection, Mighty Leaf Tea stated that it sought to register the mark ML in standard character form, 2 as distinguished from the stylized form shown, and also stated that the Examining Attorney erred by failing to determine whether and to what extent similar marks were in use on similar goods. Mighty Leaf Tea argued that the existence of many similar marks showed the weakness of the registered marks, such that consumers would look to fine distinctions to distinguish the sources of goods. Mighty Leaf Tea submitted evidence of several third-party registrations and pending applications that included the letters " ML" along with other letters. The cited registered marks are MLE, MLUXE, M'LIS, JML, and AMLAVI, and the cited pending applications are for MLAB, TMLA, FEMLOGIC, and SIMLINE; all are for personal care or skin care products and thus within the relevant market as defined by the Examining Attorney. The Examining Attorney maintained the refusal to register, and the Board affirmed.

         The Board discussed the DuPont factors, relevant to determination of likelihood of confusion, as set forth in In re E.I. DuPont De Nemours & Co., 476 F.2d 1357, 1361 (CCPA 1973). The Board found that the goods defined in the subject application and the cited registration are in part identical, and that neither the trade channels nor the conditions of sale serve to distinguish them. The Board found that each mark includes the letters " ML," and that the stylized form of the cited registration does not distinguish it because Mighty Leaf Tea seeks to register ML in standard character form, which is not limited to any particular style. The Examining Attorney had observed that " applicant's specimen of record shows applicant's use of its mark in a stylized ML presented in a highly cursive, abstract fashion which is similar to the stylized ML presented in a highly cursive, abstract fashion shown as a component of the registered mark."

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          The Board found that the presence of the name MARK LEES in the registered mark does not diminish the likelihood of confusion, because consumers familiar with the registered mark are likely to assume that applicant's ML is merely a variation or shortened version of the registered mark. The Board took note of Mighty Leaf Tea's evidence of third-party marks that include the letters " ML," but observed that inclusion of the letters " ML" in other words or aggregates does not render these marks so similar and weak that the public would be alert to small differences. The...

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