In re Mighty Leaf Tea

• Decision Date: 13 April 2010
• Docket Number: No. 2009-1497.,2009-1497.
• Citation: 601 F.3d 1342
• Parties: In re MIGHTY LEAF TEA.
• Court: U.S. Court of Appeals — Federal Circuit

601 F.3d 1342

In re MIGHTY LEAF TEA.

No. 2009-1497.

United States Court of Appeals, Federal Circuit.

April 13, 2010.

COPYRIGHT MATERIAL OMITTED

Charles C. Valauskas, Valauskas & Pine LLC, of Chicago, IL, for appellant. With him on the brief was Allison M. Corder.

Raymond T. Chen, Solicitor, United States Patent and Trademark Office, of Arlington, Virginia, for the Director of the United States Patent and Trademark Office. With him on the brief were Thomas V. Shaw and Janet A. Gongola, Associate Solicitors.

Before NEWMAN, CLEVENGER, and LINN, Circuit Judges.

NEWMAN, Circuit Judge.

Mighty Leaf Tea appeals the decision of the Trademark Trial and Appeal Board affirming the refusal to register the mark ML, in standard character form, for use with certain personal care and skin care products. In re Mighty Leaf Tea, No. 76678969, 2009 WL 1692502 (TTAB May 8, 2009). We affirm the Board's decision.

BACKGROUND

On July 2, 2007 Mighty Leaf Tea filed an application to register the mark ML on the Principal Register in Class 003, for "personal care products and skin care preparations, namely, skin soap, body wash, foam bath, body lotion, body scrub, bath salts and massage oil; potpourri; incense." The applicant asserted first use in commerce on November 1, 2004. The Examining Attorney rejected the application under Section 2(d) of the Lanham Act, 15 U.S.C. ß 1052(d),¹ finding likelihood of confusion with the mark ML MARK LEES shown below, registered in Class 003 on January 27, 1998, for "skin care products, namely, skin cleanser, skin toner, skin cream, skin lotion, skin mask gel, make-up foundation, powder and blush":

In response to the rejection, Mighty Leaf Tea stated that it sought to register the mark ML in standard character form,² as distinguished from the stylized form shown, and also stated that the Examining Attorney erred by failing to determine whether and to what extent similar marks were in use on similar goods. Mighty Leaf Tea argued that the existence of many similar marks showed the weakness of the registered marks, such that consumers would look to fine distinctions to distinguish the sources of goods. Mighty Leaf Tea submitted evidence of several third-party registrations and pending applications that included the letters "ML" along with other letters. The cited registered marks are MLE, MLUXE, M'LIS, JML, and AMLAVI, and the cited pending applications are for MLAB, TMLA, FEMLOGIC, and SIMLINE; all are for personal care or skin care products and thus within the relevant market as defined by the Examining Attorney. The Examining Attorney maintained the refusal to register, and the Board affirmed.

The Board discussed the DuPont factors, relevant to determination of likelihood of confusion, as set forth in In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (CCPA 1973). The Board found that the goods defined in the subject application and the cited registration are in part identical, and that neither the trade channels nor the conditions of sale serve to distinguish them. The Board found that each mark includes the letters "ML," and that the stylized form of the cited registration does not distinguish it because Mighty Leaf Tea seeks to register ML in standard character form, which is not limited to any particular style. The Examining Attorney had observed that "applicant's specimen of record shows applicant's use of its mark in a stylized ML presented in a highly cursive, abstract fashion which is similar to the stylized ML presented in a highly cursive, abstract fashion shown as a component of the registered mark."

The Board found that the presence of the name MARK LEES in the registered mark does not diminish the likelihood of confusion, because consumers familiar with the registered mark are likely to assume that applicant's ML is merely a variation or shortened version of the registered mark. The Board took note of Mighty Leaf Tea's evidence of third-party marks that include the letters "ML," but observed that inclusion of the letters "ML" in other words or aggregates does not render these marks so similar and weak that the public would be alert to small differences. The Board concluded that ML used with the designated goods was likely to cause confusion with ML MARK LEES for the same goods.

DISCUSSION

Likelihood of confusion under Section 2(d) of the Lanham Act is a legal determination based on factual underpinnings. In re Chatam Int'l Inc., 380 F.3d 1340, 1342 (Fed.Cir.2004). The Board's legal conclusion receives plenary review, while the factors relevant to likelihood of confusion are reviewed for support by substantial evidence, in accordance with the criteria of the Administrative Procedure Act. Bose Corp. v. QSC Audio Prods., Inc., 293 F.3d 1367, 1370 (Fed.Cir.2002). Evidence is deemed substantial if a reasonable person could find that the evidence is adequate to support the agency's finding. On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085 (Fed.Cir.2000).

Not all of the DuPont factors are relevant to every case, and only factors of significance to the particular mark need be considered. In re Dixie Restaurants, Inc., 105 F.3d 1405, 1406-07 (Fed.Cir.1997). No mechanical rule determines likelihood of confusion, and each case requires weighing of the facts and circumstances of the particular mark. In re Shell Oil Co., 992 F.2d 1204, 1206 (Fed.Cir.1993). As applied to trademark registration, reasonable doubt as to the likelihood of confusion is resolved against the newcomer, "for the newcomer has the opportunity of avoiding confusion, and is charged with the obligation to do so." Id. at 1209; see also Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265 (Fed.Cir.2002).

Mighty Leaf Tea argues that the Board erred in its analysis of the DuPont factors, and focuses primarily on the sixth factor: "The number and nature of similar marks in use on similar goods." 476 F.2d at 1361; see Trademark Manual of Examining Procedure ß 1207.01 (the sixth DuPont factor is among those "most relevant" in an ex parte case). Mighty Leaf Tea states that the Board did not have a correct understanding of the relevant marketplace because it focused on only one similar registered mark, without considering other similar marks in use on similar goods. Mighty Leaf Tea contends that its evidence of third-party registrations and pending applications that incorporate the letters "ML" shows that ML is a weak mark, and that consumers are already conditioned to look to minor distinctions in marks that include the letters "ML," citing Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison FondÈe en 1772, 396 F.3d 1369, 1373 (Fed.Cir.2005) ("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."). Mighty Leaf Tea argues that its evidence of third-party use was given inadequate weight by the Board, and that when properly considered, this evidence confirms that confusion is unlikely to occur between its mark and the cited registered mark.

The Patent and Trademark Office ("PTO") responds that the Board afforded appropriate weight to all of the relevant DuPont factors, and that substantial evidence supports the Board's findings underlying its conclusion of likelihood of confusion. As to the sixth DuPont factor, the PTO states that the mere presence of similar third-party registrations, without more, is of only limited value for showing whether additional entrants would lead to confusion in use. See Palm Bay Imports, 396 F.3d at 1373 ("The probative value of third-party trademarks depends entirely upon their usage."); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 916 (CCPA 1976) ("Although third-party registrations are entitled to little weight on the question of likelihood of confusion where there is no evidence of actual use, they may be given some weight to show the meaning of a mark in the same way that dictionaries are used."); see also 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition ß 11:89 (4th ed. 2009) ("The mere citation of third party registrations is not proof of third party uses for the purpose of showing a crowded field and relative weakness."). Mighty Leaf Tea provided no evidence of the actual use of these third-party marks, but contends that the cited registrations themselves establish use, because use in commerce is a prerequisite to registration. However, the issue is likelihood of confusion, and on the facts herein more is required than a showing of the existence of various marks. No additional evidence, or proffer, was presented to contravene the Board's finding that the third-party marks were not similar enough to the mark ML to establish that there is a crowded field for the letters "ML." The Board stated:

Applicant has merely submitted a group of registrations that have the letters "ML" as part of a longer letter string (i.e., MLUXE, M'LIS, JML and AMLAVI). The indiscriminate citation of third-party registrations without regard to the similarity of the marks involved is not indicative that the letters ML have a suggestive or descriptive connotation.

The only mark that is arguably close to applicant's mark and

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