794 F.3d 1334 (Fed. Cir. 2015), 2014-1853, Juice Generation, Inc. v. GS Enters. LLC
|Citation:||794 F.3d 1334, 115 U.S.P.Q.2d 1671|
|Opinion Judge:||Taranto, Circuit Judge.|
|Party Name:||JUICE GENERATION, INC., Appellant v. GS ENTERPRISES LLC, Appellee|
|Attorney:||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.|
|Judge Panel:||Before NEWMAN, REYNA, and TARANTO, Circuit Judges.|
|Case Date:||July 20, 2015|
|Court:||United States Courts of Appeals, Court of Appeals for the Federal Circuit|
Appeal from the United States Patent and Trademark Office, Trademark Trial and Appeal Board in No. 91206450.
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.
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 nondistinctive 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...
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