In re Detroit Athletic Co.

Decision Date10 September 2018
Docket Number2017-2361
Citation903 F.3d 1297
Parties IN RE: DETROIT ATHLETIC CO., Appellant
CourtU.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.

O’Malley, Circuit Judge.

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.

I. BACKGROUND

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).

II. DISCUSSION

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.

A. Similarity or Dissimilarity of the Marks (Factor 1)

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) (finding similarity between CASH MANAGEMENT ACCOUNT and THE CASH MANAGEMENT EXCHANGE because they "are, in large part, identical in sound and appearance and have a general similarity in cadence"); Van Pelt & Brown, Inc. v. John Wyeth & Bro., Inc. , 161 F.2d 244, 246 (CCPA 1947) (finding similarity where both marks "have the same number of syllables, the suffix of each is pronounced the same, when spoken both have the same cadence and have a very little distinguishable difference in sound").

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) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because VEUVE "remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label"); Century 21 Real Estate Corp. v. Century Life of Am. , 970 F.2d 874, 876 (Fed. Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because "consumers must first notice th[e] identical lead word"). 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) ("It is appropriate in determining the question of likelihood of confusion to give greater weight to the important or ‘dominant’ parts of a composite mark, for it is that which may make the greatest impression on the ordinary buyer."). 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 ("[V]iewed as a whole, the similarities between the marks in appearance, sound, connotation and commercial impression[ ] ... outweigh the dissimilarities.").

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) (noting that the addition of the word "Company" indicates only the business form of the entity); cf. McCarthy on Trademarks § 23:49, at 23-279 ("Tacking on a generic business entity name such as ‘company,’ or ‘Inc.’ or ‘Partners’ will not usually avoid a likelihood of confusion to an otherwise confusingly similar mark."). Indeed, both "Co." and "Club" were disclaimed in DACo’s application and the Detroit Athletic Club’s registration, respectively. See J.A. 33 (requiring DACo to disclaim ATHLETIC CO. "because such wording appears to be generic in the context of applicant’s services").

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) ("Given the descriptive nature of the disclaimed word ‘Technologies,’ the Board correctly found that the word ‘Packard’ is the dominant and distinguishing element of PACKARD TECHNOLOGIES."); Cunningham v. Laser Golf Corp. , 222 F.3d 943, 947 (Fed. Cir. 2000) (finding similarity between LASER for golf clubs and golf balls and LASERSWING for golf practice devices, and noting that "the term ‘swing’ is both common and descriptive" and therefore "may be given little weight in reaching a conclusion on likelihood of confusion" (internal quotation marks omitted) ); cf. McCarthy on Trademarks § 23:50, at 23-283 (merely adding "a generic, descriptive or highly suggestive term[ ] ... is generally not sufficient to avoid...

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