CAFC Reverses and Remands TTAB 2(d) Decision Due to Inadequate Appreciation of PEACE & LOVE
In a precedential decision, the U.S. Court of Appeals for the Federal Circuit vacated and remanded the TTAB's decision in GS Enterprises LLC v. Juice Generation, Inc.., Opposition No. 91206450 (June 18, 2014). The Board had found the mark PEACE LOVE JUICE & Design, shown immediately below, for "juice bar services" [JUICE disclaimed] likely to cause confusion with the registered mark PEACE & LOVE for "restaurant services." The CAFC ruled that the Board "did not adequately assess the weakness of GS's mark and did not properly consider the the three-word combination of Juice Generation's mark as a whole." Juice Generation, Inc. v. GS Enterprises LLC, 115 USPQ2d 1671 (Fed. Cir. 2015) [precedential].
In comparing the marks, the Board deemed "PEACE LOVE" to be the dominant part of applicant's mark, and it found that the additional word "JUICE" and the non-distinctive design features did not serve to sufficiently distinguish the marks at issue. The Board observed that GS's mark PEACE & LOVE was registered in standard character form and thus was not limited to any particular display, but, the CAFC noted, it "did not elaborate on its consideration of the three-word combination 'PEACE LOVE & JUICE' in its entirety."
The Board also considered the testimony of applicant's founder regarding third party uses of similar marks - "Peace Love and Pizza," "Peace Love and Popcorn," and others - but this evidence did not enable the Board to find that "customers have become conditioned to recognize that other entities use PEACE AND LOVE marks for similar services."
Finally, the Board gave little weight to statements made by GS, during the prosecution of its own marks, that the words "peace" and "love" lack distinctiveness.
The CAFC concluded that the Board's treatment of the evidence of use of third-party marks did not sufficiently appreciate the force of that evidence. Even though specific evidence as to extent and impact of use was not submitted, the evidence was "nonetheless powerful on its face." The uncontradicted testimony showed that a considerable number of third parties use similar marks. Third party registrations, the court observed, are relevant to show that some segment of a mark has a "normally understood and well-recognized descriptive or suggestive meaning, leading to the conclusion that the segment is relatively weak." Of course, weak marks merit less protection on the Section 2(d) battlefield.
The Board, however, never inquired as to whether PEACE & LOVE has a suggestive or descriptive connotation. See, e.g., Anthony's Pizza & Pasta Int'l, Inc., 95 USPQ2d 1271 (TTAB 2009) (Evidence of third-party use of "Anthony's" in connection with restaurants indicated that the word suggests an Italian restaurant, or even a New York style Italian restaurant).
This third-party evidence was "particularly important" here in view of the statements made by GS in prosecuting its own applications, when distinguishing its marks from "PEECE LUV CHICKEN" by suggesting that its mark creates "the impression of a restaurant that has a theme and atmosphere of the countercultures prevalent in the 1960's and 1970's." Comments made during prosecution, the CAFC has ruled, are "illuminative of shade and tone in the total picture confronting the decision maker."
The CAFC concluded that the Board gave inadequate consideration to the strength or weakness of the cited mark, and it instructed the Board to undertake that inquiry upon remand.
The court also concluded that the Board had not paid sufficient heed to the commercial impression of applicant's mark as a whole. The Board did not consider "how the three-word phrase in Juice Generation's mark may convey a distinct meaning - including by having different connotations in consumers' minds - from the two-word phrase used by GS." Although the Board may properly assign more or less weight to a given component of a mark, it still must consider the mark as a whole.
The Board did not err in giving less emphasis to the word JUICE when it noted that the term is generic. *** But the Board did not set forth an analysis showing that it avoided the error of giving no significance to the term, which is impermissible notwithstanding that the term is generic and disclaimed.
The court therefore vacated the decision and remanded the case to the Board. On remand, the Board must undertake a consideration of the applied-for mark as a whole.
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TTABlog comment: What is descriptive or suggestive about the phrase PEACE & LOVE in the restaurant/juice bar context? Hippie food?
Text Copyright John L. Welch 2015.