In re Detroit Athletic Co.
Decision Date | 10 September 2018 |
Docket Number | 2017-2361 |
Citation | 903 F.3d 1297 |
Parties | IN RE: DETROIT ATHLETIC CO., Appellant |
Court | U.S. Court of Appeals — Federal Circuit |
Kathryn R. Spray, Wright Beamer, Farmington Hills, MI, argued for appellant.
Thomas L. Casagrande, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, argued for appellee Andrei Iancu. Also represented by Christina J. Hieber, Thomas W. Krause, Joseph Matal.
Before O’Malley, Reyna, and Hughes, Circuit Judges.
Detroit Athletic Co. ("DACo") appeals from a decision of the Trademark Trial and Appeal Board affirming the Patent and Trademark Office’s refusal to register DETROIT ATHLETIC CO. for sports apparel retail services. In that decision, the Board concluded that DACo’s mark is likely to be confused with the third-party mark DETROIT ATHLETIC CLUB, registered for clothing goods. See In re Detroit Athletic Co. , No. 86625093, 2017 WL 2876815 (T.T.A.B. June 2, 2017). Because the Board’s conclusion is predicated on factual findings supported by substantial evidence, we affirm.
DACo is a "sports specialty shop" that sells souvenirs and apparel associated with Detroit professional sports teams. J.A. 85. Since at least 2004, DACo has been using the DETROIT ATHLETIC CO. mark in connection with its retail services.
In May 2015, DACo filed an application to register the standard character mark DETROIT ATHLETIC CO. on the Principal Register for "[o]n-line retail consignment stores featuring sports team related clothing and apparel; [r]etail apparel stores; [r]etail shops featuring sports team related clothing and apparel; [r]etail sports team related clothing and apparel stores."
Detroit Athletic , 2017 WL 2876815, at *1 & n.1. In response to a non-final refusal, however, DACo disclaimed ATHLETIC CO. and amended the application to seek registration on the Supplemental Register.
Thereafter, the examining attorney refused registration of the mark under Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d), finding that DETROIT ATHLETIC CO. is likely to be confused with DETROIT ATHLETIC CLUB, which is registered on the Principal Register for "[c]lothing, namely athletic uniforms, coats, golf shirts, gym suits, hats, jackets, sweat pants, sweat shirts, polo shirts, and T-shirts."1 Id. at *1. The latter mark is owned by the Detroit Athletic Club, a private social club in Detroit originally "organized in 1887 as a place for men to congregate and enjoy watching or participating in numerous sporting events." J.A. 66.
The Board affirmed, concluding that, "because the marks are similar, the goods and services are related, and the channels of trade and consumers overlap," consumers are likely to be confused by the marks. Detroit Athletic Club , 2017 WL 2876815, at *6. DACo appealed to this court, and we have jurisdiction under 28 U.S.C. § 1295(a)(4)(B).
Under Section 2(d) of the Lanham Act, a mark may be refused registration if it "so resembles a mark registered in the Patent and Trademark Office[ ] ... as to be likely, when used on or in connection with the goods of the applicant, to cause confusion[.]" 15 U.S.C. § 1052(d). Likelihood of confusion is a legal determination based on underlying findings of fact. In re Viterra Inc. , 671 F.3d 1358, 1361 (Fed. Cir. 2012). We review the Board’s legal determination without deference and its factual findings for substantial evidence. Id. Substantial evidence is "such relevant evidence as a reasonable mind would accept as adequate to support a conclusion." Id. (internal quotation marks omitted).
In the Patent and Trademark Office—and in appeals therefrom—likelihood of confusion is determined by assessing the relevant factors set forth in In re E. I. DuPont DeNemours & Co. , 476 F.2d 1357 (CCPA 1973).2 See Juice Generation, Inc. v. GS Enters. LLC , 794 F.3d 1334, 1338 (Fed. Cir. 2015). The DuPont factors deemed relevant by the Board in this case are: the (A) similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression (factor 1); (B) similarity or dissimilarity and nature of the goods or services as described in an application or registration (factor 2); (C) similarity or dissimilarity of established, likely-to-continue trade channels (factor 3); and (D) the length of time during and conditions under which there has been concurrent use without evidence of actual confusion (factor 8).
We address the Board’s ruling with respect to each of these factors below.
The first DuPont factor considers "[t]he similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression." DuPont , 476 F.2d at 1361. Here, the Board found that the DETROIT ATHLETIC CO. and DETROIT ATHLETIC CLUB marks "are nearly identical in terms of sound, appearance and commercial impression." Detroit Athletic , 2017 WL 2876815, at *2. That finding is supported by substantial evidence.
As the Board noted, both marks consist of three words beginning with the identical phrase "Detroit Athletic" and ending with one-syllable "C" words (i.e., "Co." and "Club"). Id. Both marks, moreover, conjure an image of sporting goods or services having a connection to Detroit. When viewed in their entireties, the marks reveal an identical structure and a similar appearance, sound, connotation, and commercial impression. These similarities go a long way toward causing confusion among consumers. See In re Nat’l Data Corp. , 753 F.2d 1056, 1060 (Fed. Cir. 1985) ( ); Van Pelt & Brown, Inc. v. John Wyeth & Bro., Inc. , 161 F.2d 244, 246 (CCPA 1947) ( ).
The identity of the marks’ initial two words is particularly significant because consumers typically notice those words first. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772 , 396 F.3d 1369, 1372 (Fed. Cir. 2005) ( ); Century 21 Real Estate Corp. v. Century Life of Am. , 970 F.2d 874, 876 (Fed. Cir. 1992) ( ). Indeed, in view of the marks’ structural similarity, the lead words are their dominant portion and are likely to make the greatest impression on consumers. See id. ; see also 4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 23:42, at 23-245 (5th ed. 2018) (). This likeness weighs heavily in the confusion analysis, and the Board did not err in so finding.3
DACo nevertheless argues that the Board failed to consider the marks in their entireties and instead emphasized the similarity between the marks’ first two words while downplaying the differences between their terminal words. According to DACo, the differences engendered by the words "Co." and "Club" would allow consumers to distinguish between the marks. We disagree on both counts. First, the Board reiterated that it was assessing the marks "in their entireties" and proceeded to do just that. Detroit Athletic , 2017 WL 2876815, at *2 ; see also id. at *3 ().
Second, while it is true that the words "Co." and "Club" technically differentiate the marks, those words do little to alleviate the confusion that is likely to ensue. Both words are descriptive insofar as they merely describe the business form of the entity that owns the marks. See Goodyear’s Rubber Mfg. Co. v. Goodyear Rubber Co. , 128 U.S. 598, 602–03, 9 S.Ct. 166, 32 L.Ed. 535 (1888) ( ); cf. McCarthy on Trademarks § 23:49, at 23-279 (). Indeed, both "Co." and "Club" were disclaimed in DACo’s application and the Detroit Athletic Club’s registration, respectively. See J.A. 33 ( ).
Those words are therefore unlikely to change the overall commercial impression engendered by the marks. See Hewlett-Packard Co. v. Packard Press, Inc. , 281 F.3d 1261, 1266 (Fed. Cir. 2002) (); Cunningham v. Laser Golf Corp. , 222 F.3d 943, 947 (Fed. Cir. 2000) ( ); cf. McCarthy on Trademarks § 23:50, at 23-283 (...
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