Juice Generation, Inc. v. GS Enters. LLC

• Decision Date: 20 July 2015
• Docket Number: No. 2014–1853.,2014–1853.
• Citation: 794 F.3d 1334,115 U.S.P.Q.2d 1671
• Parties: JUICE GENERATION, INC., Appellant v. GS ENTERPRISES LLC, Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

794 F.3d 1334

115 U.S.P.Q.2d 1671

JUICE GENERATION, INC., Appellant

v.GS ENTERPRISES LLC, Appellee.

No. 2014–1853.

United States Court of Appeals, Federal Circuit.

July 20, 2015.

Nigamnarayan Acharya, Seyfarth Shaw LLP, Atlanta, GA, argued for appellant. Also represented by Michael H. Baniak, Chicago, IL.

Justen S. Barks, Craft Chu PLLC, Houston, TX, argued for appellee. Also represented by Loren Jeremy Craft.

Before NEWMAN, REYNA, and TARANTO, Circuit Judges.

Opinion

TARANTO, Circuit Judge.

Juice Generation applied to the Patent and Trademark Office to register a mark consisting of “PEACE LOVE AND JUICE” and a design for use with its juice bar services. GS Enterprises opposed the application on the ground that Juice Generation's mark was likely to cause confusion with its own family of marks, all of which contain the phrase “PEACE & LOVE” and are registered for use with restaurant services. The Trademark Trial and Appeal Board sustained the opposition and refused to register Juice Generation's mark. We conclude that the Board did not adequately assess the weakness of GS's marks and did not properly consider the three-word combination of Juice Generation's mark as a whole in comparing it to the two-word combination in GS's marks. We therefore remand for further proceedings.

Background

Juice Generation operates a chain of juice bars in the New York City area. Under 15 U.S.C. § 1051(b), it applied to the PTO in 2012 to register the following mark on the principal register in connection with “[j]uice bar services”:

U.S. Trademark Application Serial No. 85549820 (filed Feb. 22, 2012). The application disclaimed the word “juice.” Id.

GS owns four related registrations, each incorporating the phrase “PEACE & LOVE,” all on the principal register, and all in connection with “[r]estaurant services”: “P & L PEACE & LOVE,” Registration No. 3291917; “ALL YOU NEED IS PEACE & LOVE,” Registration No. 3291918; “PEACE & LOVE,” Registration No. 3713785; “P & L PEACE & LOVE NEW YORK,” Registration No. 3885867 (disclaiming “New York”). Two of the marks also include designs:

GS opposed Juice Generation's application under 15 U.S.C. § 1052(d), arguing that Juice Generation's “PEACE LOVE AND JUICE” mark created a likelihood of confusion with GS's family of marks.

The Trademark Trial and Appeal Board evaluated the existence of a likelihood of confusion by following our predecessor court's non-exhaustive listing of thirteen considerations in In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (CCPA 1973). The Board determined that the similarity of the marks, the similarity of the services, the similarity of the trade channels, and the similarity of the buyers and purchasing conditions all pointed to a likelihood of confusion, whereas the number of similar marks in use was neutral or at most pointed slightly against a likelihood of confusion. The Board also considered that Juice Generation had been using its “PEACE LOVE AND JUICE” mark for several years and yet the record contained no evidence of actual confusion, but the Board found that, on the facts, “[t]he lack of evidence of actual confusion carries little weight” on the question of likely confusion, because there was no evidence “to establish that the parties' use of their respective marks has been at such a level that there have been meaningful opportunities for actual confusion to have occurred among purchasers.” GS Enters. LLC v. Juice Generation, Inc., No. 91206450, 2014 WL 2997639, at *8 (T.T.A.B. June 18, 2014).

When comparing Juice Generation's mark to GS's marks, the Board first identified the words of the mark, rather than its design, as the dominant feature, and then further zeroed in on “PEACE LOVE” as “[t]he dominant portion of [Juice Generation's] mark.” Id. at *5. It concluded that “[t]he dominant portion of [Juice Generation's] mark, PEACE LOVE, and the entirety of [GS's] mark PEACE & LOVE are virtually identical in appearance and sound.” Id. Then, recognizing that it “must consider [Juice Generation's] mark in its entirety, not merely the dominant portion,” the Board declared that “the additional disclaimed word ‘JUICE’ and non-distinctive design features do not serve to sufficiently distinguish [Juice Generation's] mark from [GS's] standard character mark PEACE & LOVE.” Id. at *6. The Board observed that GS's standard character mark was not limited by font, size, or color or to horizontal or vertical display, but it did not elaborate on its consideration of the three-word combination “PEACE LOVE AND JUICE” in its entirety. Id. at *5–6.

The Board also considered the testimony of Juice Generation's founder regarding third-party uses of similar marks—“Peace Love and Pizza,” “Peace Love and Pop-corn,” and more in a similar vein.¹ Id. at *6. But the Board determined that this evidence did not enable it “to find that customers have become conditioned to recognize that other entities use PEACE AND LOVE marks for similar services,” which would have cut against a likelihood of confusion. Id. at *7.

Finally, the Board reviewed statements made by GS during the prosecution of its own marks, which might have demonstrated GS's own belief that the words “peace” and “love” lack distinctiveness. Id. But the Board gave those statements little weight. Id.

On balance, the Board decided, the DuPont factors favored the conclusion that “consumers familiar with [GS's] ‘restaurant services' rendered under the mark PEACE & LOVE would be likely to mistakenly believe, upon encountering [Juice Generation's] mark PEACE LOVE AND JUICE and design for ‘juice bar services,’ that the services originated from or are associated with or sponsored by the same entity.” Id. at *9. The Board therefore sustained the opposition and refused to register Juice Generation's mark.

Juice Generation appeals that decision. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(B).

Discussion

The Board's ultimate conclusion regarding a likelihood of confusion—which is a ground for Board refusal to register a mark, 15 U.S.C. § 1052(d) —is a question of law that we review de novo. StonCor Grp., Inc. v. Specialty Coatings, Inc., 759 F.3d 1327, 1331 (Fed.Cir.2014). This legal conclusion is based on underlying factual findings, which we review for substantial evidence. Id. “Substantial evidence is more than a mere scintilla. It means such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.”Consol. Edison Co. v. N.L.R.B., 305 U.S. 197, 229, 59 S.Ct. 206, 83 L.Ed. 126 (1938).

Likelihood of confusion must be analyzed on a case-by-case basis, considering all evidence actually relevant to that inquiry, as stated by DuPont's final, catch-all item in its list of potentially relevant considerations. 476 F.2d at 1361 ; see also Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1366 (Fed.Cir.2012) (DuPont's specific items are not exhaustive of inquiry); M2 Software, Inc. v. M2 Commc'ns, Inc., 450 F.3d 1378, 1382 (Fed.Cir.2006) (even within DuPont list, only factors that are “relevant and of record” need be considered). In this case, we agree with Juice Generation that the Board inadequately assessed and weighed the strength or weakness of GS's marks—a consideration that is connected to “the number and nature of similar marks in use on similar goods,” identified in DuPont, 476 F.2d at 1361, and is in any event probative of the likelihood of confusion—and gave inadequate consideration to Juice Generation's three-word combination in its “entiret[y],” id., as distinct from GS's two-word combination. Both errors are significant given the evidence in this case, which includes a substantial number of third-party marks incorporating the phrase “peace and love” in connection with restaurant services or food products, the bulk of which are three-word phrases much like Juice Generation's mark.

A

As the Board understood, sufficient evidence of third-party use of similar marks can “show that customers ... ‘have been educated to distinguish between different ... marks on the basis of minute distinctions.’ ” 2 McCarthy on Trademarks and Unfair Competition § 11:88 (4th ed.2015) (quoting Standard Brands, Inc. v. RJR Foods, Inc., 192 U.S.P.Q. 383 (T.T.A.B.1976) ). More broadly, evidence of third-party use bears on the strength or weakness of an opposer's mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1373 (Fed.Cir.2005). The weaker an opposer's mark, the closer an applicant's mark can come without causing a likelihood of confusion and thereby invading what amounts to its comparatively narrower range of protection. Id. (“Evidence of third-party use of similar marks on similar goods is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection.”); In re Coors Brewing Co., 343 F.3d 1340, 1345 (Fed.Cir.2003) (third-party use can establish that mark is not strong); Fleetwood Co. v. Mende, 49 C.C.P.A. 907, 298 F.2d 797, 799 (1962) (“Where a party uses a weak mark, his competitors may come closer to his mark than would be the case with a strong mark without violating his rights.”).

Although Juice Generation introduced evidence of a fair number of third-party uses of marks containing “peace” and “love” followed by a third, product-identifying term, see note 1, supra, the Board discounted the evidence because there were no “specifics regarding the extent of sales or promotional efforts surrounding the third-party marks and, thus, what impact, if any, these uses have made in the minds of the purchasing public.” GS Enters., 2014 WL 2997639, at *7. Accordingly, the Board determined it could not “find that customers have become conditioned to recognize that other entities use PEACE AND LOVE marks for similar services.” Id. The Board's treatment of the evidence of third-party marks, we conclude, does not adequately account for the apparent force of that evidence.

The “specifics” as to the extent and impact of use of the third parties' marks may...