797 F.3d 1363 (Fed. Cir. 2015), 2014-1789, Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGaA v. New Millennium Sports, S.L.U.

Docket Nº:2014-1789
Citation:797 F.3d 1363, 116 U.S.P.Q.2d 1129
Opinion Judge:Chen, Circuit Judge.
Party Name:JACK WOLFSKIN AUSRUSTUNG FUR DRAUSSEN GMBH & COMPANY KGAA, Appellant v. NEW MILLENNIUM SPORTS, S.L.U., Appellee
Attorney:RICHARD LEHV, Fross, Zelnick, Lehrman & Zissu, P.C., New York, NY, argued for appellant. Also represented by ROBERT A. BECKER. PHILIP BAUTISTA, Taft, Stettinius & Hollister, LLP, Cleveland, OH, argued for appellee.
Judge Panel:Before LOURIE, BRYSON, and CHEN, Circuit Judges.
Case Date:August 19, 2015
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit
 
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Page 1363

797 F.3d 1363 (Fed. Cir. 2015)

116 U.S.P.Q.2d 1129

JACK WOLFSKIN AUSRUSTUNG FUR DRAUSSEN GMBH & COMPANY KGAA, Appellant

v.

NEW MILLENNIUM SPORTS, S.L.U., Appellee

2014-1789

United States Court of Appeals, Federal Circuit

August 19, 2015

Page 1364

[Copyrighted Material Omitted]

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Appeal from the United States Patent and Trademark Office, Trademark Trial and Appeal Board in No. 91195604.

RICHARD LEHV, Fross, Zelnick, Lehrman & Zissu, P.C., New York, NY, argued for appellant. Also represented by ROBERT A. BECKER.

PHILIP BAUTISTA, Taft, Stettinius & Hollister, LLP, Cleveland, OH, argued for appellee.

Before LOURIE, BRYSON, and CHEN, Circuit Judges.

OPINION

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Chen, Circuit Judge.

Appellant Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA (Jack Wolfskin) applied to the Patent and Trademark Office to register a design mark consisting of an angled paw print for use with its clothing, footwear, and accessory products. Appellee New Millennium Sports, S.L.U. (New Millennium) opposed the registration on the ground that Jack Wolfskin's mark would likely create confusion with its own registered mark. In response, Jack Wolfskin filed a counterclaim for cancellation alleging that New Millennium had abandoned its registered mark. The Trademark Trial and Appeal Board (Board) rejected Jack Wolfskin's cancellation counterclaim and sustained the opposition, thus refusing to register Jack Wolfskin's mark. We agree with the Board that New Millennium did not abandon its registered mark. We conclude, however, that the Board incorrectly found a likelihood of confusion between the two marks because the Board failed to properly compare New Millennium's mark as a whole to Jack Wolfskin's mark and also failed to recognize, in light of the significant evidence of paw prints appearing in third-party registrations and usage for clothing, the relatively narrow scope of protection afforded to marks involving paw prints. We therefore affirm-in-part, reverse-in-part, and remand for further proceedings consistent with this opinion.

I. Background

New Millennium owns Trademark Registration No. 1,856,808 (KELME mark).

New Millennium registered the KELME mark for use in association with goods in International Class 25, which encompasses a variety of clothing products. The KELME mark was registered on October 4, 1994.

On September 10, 2009, Jack Wolfskin filed U.S. Trademark Application Serial No. 77/823,794 with the Patent and Trademark Office, in which it sought to register a mark consisting of " a nonhuman paw print." Joint Appendix (J.A.) 28.

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In its application, Jack Wolfskin sought this trademark for a variety of products classified in International Classes 9, 18, 22, and 25.

New Millennium filed an opposition asserting that Jack Wolfskin's mark would likely cause confusion with New Millennium's KELME mark. See 15 U.S.C. § 1052(d). New Millennium limited its opposition to goods in International Class 25. In response, Jack Wolfskin denied that its mark would cause confusion and counterclaimed to cancel New Millennium's KELME mark on the basis of abandonment.

The Board rejected Jack Wolfskin's abandonment counterclaim finding that New Millennium had continuously used the registered mark or a version that was not a " material alteration" of the registered mark. The Board then evaluated New Millennium's likelihood-of-confusion claim according to the factors announced by our predecessor court in In re E. I. Du Pont de Nemours & Co., 476 F.2d 1357, 1361 (CCPA 1973) ( DuPont factors), and concluded that Jack Wolfskin's mark would likely cause confusion. The Board therefore sustained New Millennium's opposition and refused to register Jack Wolfskin's mark.

Jack Wolfskin appeals both parts of the decision. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(B). Although we agree with the Board that New Millennium did not abandon its registered mark, we disagree that Jack Wolfskin's mark is confusingly similar to New Millennium's mark.

II. ABANDONMENT COUNTERCLAIM

Jack Wolfskin's cancellation counterclaim relies on the fact that New Millennium ceased using the registered version of its mark and instead began using a modified or modernized version of that mark. Because of this change, Jack Wolfskin contends that New Millennium abandoned its registered mark and that it should therefore be cancelled. New Millennium does not dispute that it no longer uses the exact mark that appears in its registration and admits that it has not used that version since 2004. New Millennium argues, however, that it has not abandoned its mark because the differences between the modernized mark and the registered mark are minor.

A. Legal Standard

A trademark owner abandons its mark if use of the mark has been " discontinued with intent not to resume." 15 U.S.C. § 1127. If a registered mark has been abandoned, a party may file a petition to cancel the registration at any time. 15 U.S.C. § 1064(3). Abandonment may also be alleged in a counterclaim to an opposition filed by the owner of the purportedly abandoned mark.

Trademark owners sometimes cease using their literal registered marks in favor of modified or modernized versions. As McCarthy explains,

[s]uch changes in the form of marks have been legally attacked on two grounds: (1) that the change resulted in abandonment of rights in the old form; (2) that the change prevents the user from tracing priority of use back to a date of first use of the old form of the mark.

J. Thomas McCarthy, 3 McCarthy on Trademarks and Unfair Competition § 17:25 (4th ed. 2015) [hereinafter McCarthy]. This ability to rely on an earlier form of a mark, when now using a modified version of that mark, is often called " tacking." Courts have referenced tacking in both abandonment and priority contexts. See Hana Fin., Inc. v. Hana Bank,

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135 S.Ct. 907, 909, 190 L.Ed.2d 800 (2015) (recognizing that " tacking" encompasses situations where an entity makes modifications to its marks over time, but is still able to " clothe [that] new mark with the priority position of an older mark" ); Sunstar, Inc. v. Alberto-Culver Co., 586 F.3d 487, 496 (7th Cir. 2009) (explaining that the rule of " tacking on" " makes the use by a trademark's owner of a variant of his original trademark a defense to a claim that replacing the original with the variant constituted the abandonment . . . of the trademark" ). McCarthy also recognizes that " [i]mproper tacking [by using a modified mark that materially alters the earlier mark] can result in 'abandonment' of the old form of the mark" if the elements of abandonment--nonuse with intent not to resume use--are satisfied. McCarthy § 17:26.

In the context of a priority dispute, we previously held that if the old form and the new form of the mark are " legal equivalents," such legal attacks will fail. Van Dyne-Crotty, Inc. v. Wear-Guard Corp., 926 F.2d 1156, 1159 (Fed. Cir. 1991), abrogated on other grounds by Hana Fin., 135 S.Ct. at 910. Two marks are legally equivalent if they " create the same, continuing commercial impression" and where the modified version of the mark does not "...

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