Wednesday, March 07, 2012

CAFC Upholds TTAB's Affirmance of Section 2(d) Refusal of XCEED Over X-SEED & Design for Agricultural Seed

In a precedential ruling, the CAFC upheld the TTAB's affirmance (here) of a Section 2(d) refusal to register the mark XCEED for agricultural seed, on the ground of likely confusion with the registered mark X-SEED & Design (shown below) [SEED disclaimed] for agricultural seeds. The court held that the Board's factual findings were supported by substantial evidence, and it agreed with the Board's legal conclusion that confusion is likely. In re Viterra Inc., 101 U.S.P.Q.2d 1905 (Fed. Cir. 2012) [precedential].

The Board gave "heavy weight" to the identity between the goods, and presumed that the goods travel in the same channels of trade to the same classes of customers (there being no limitations in the identifications of goods). It found that the literal portion of the cited mark was the dominant portion, that the literal portions of the two marks are at least virtually identical in sound, and that both marks play on the laudatory word "exceed." As to appearance, the Board applied the (now-jettisoned) "reasonable manners" standard, finding that one reasonable variation of XCEED could include a large capital X followed by small letters.

Applicant Viterra's appeal focused on the first DuPont factor, the similarity of the marks. Viterra argued that its standard character mark should not be construed so broadly as to cover the distinctive form of the cited mark, that the marks are phonetically different, and that the marks have different connotations.

Vittera urged the court to explain how standard character marks should be compared to design marks, and specifically argued that the court should "readdress and clarify" its ruling in Citigroup, Inc. v. Capital City Bank Group, Inc., 98 USPQ2d 1253 (Fed. Cir. 2011). There, the CAFC rejected the Board's approach of considering the "reasonable manners" in which the standard character might be displayed, and it declared that the TTAB "should not first determine whether certain depictions are 'reasonable' and then apply the DuPont analysis to only a subset of variations of a standard character mark." [This still makes little sense to me. Is the Board supposed to consider "unreasonable" manners of display as well? - ed.].

Rather, “[t]he T.T.A.B. should simply use the DuPont factors to determine the likelihood of confusion between depictions of standard character marks that vary in font, style, size and color and the other mark.” [quoting Citigroup]. We noted, as we had in prior cases, that "illustrations of the mark as actually used may assist the T.T.A.B. in visualizing other forms in which the mark might appear." Accordingly, our decision in Citigroup discarded the Board’s "reasonable manners" standard in favor of a standard that allows a broader range of marks to be considered in the DuPont analysis when a standard character mark is at issue.

Although the Board here applied the "reasonable manners" approach later discarded in Citigroup, that decision did not change the outcome here. Citigroup broadened the range of variations that could be considered (i.e., not just "reasonable" ones), and therefore the Board's approach was more favorable to Viterra.

Viterra contended that Citigroup should apply only in inter partes proceedings, but the court saw no reason to make that distinction. Indeed there is no doubt that the DuPont factors apply in both ex parte and inter partes matters.

Viterra next argued that the dominant portion of its mark is the letter "X," but the court found that substantial evidence supported the Board's position that the literal element "X-seed" is the dominant portion. The fact that SEED was disclaimed in the cited mark does not affect its inclusion in the dominant portion of the mark.

As to pronunciation, the court once again proclaimed that there is no correct pronunciation of a mark. [What about BLACK CAT, APPLE, or TTABLOG? Well, forget the third one, but what about the first two? - ed.]. Any minor differences in the sound of the marks may go undetected by consumers, as the Board pointed out.

Finally, as to connotation the court again refused to disturb the Board's factual finding that it is "reasonable" that purchasers may give the same laudatory meaning to both marks.

And so the court concluded that any minor differences in the marks are insufficient to outweigh the remaining DuPont factors, and so it affirmed the Board's ruling.

TTABlog comment: Another well-written trademark decision by Judge O'Malley. I just wish the court would explain more clearly this new way of considering standard character marks.

Text Copyright John L. Welch 2012.

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