Wednesday, July 22, 2015

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.

Read comments and post your comment here

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.


At 8:31 AM, Anonymous Robert M. O'Connell, Jr. said...

What's so funny 'bout peace, love and understanding?
Seriously, I think this case will come in handy in responding to 2(d) refusals in the future.

At 9:01 AM, Blogger John L. Welch said...

I was thinking of adding an Elvis Costello video, but ran out of time. Oh well, my aim was true.

At 11:32 AM, Anonymous Daniel Mills said...

This will help me with an appeal coming up. John - thank you so much for watching the detectives. Someone needs to be on the other end of the telescope of the TTAB. I'm hoping this case will cause the TTAB to wave a white flag in my case. I had a good case before, but this will surely pump it up, although it is still too soon to know, the view from my little blue window is much better now.
OK I'm done!

At 11:25 PM, Anonymous Anonymous said...

The Board already said in its decision that the respective marks convey the similar meaning of peace and love, perhaps suggesting the "hippie culture." Certainly, the Court overreaches if it is saying that the third-party uses/registrations show that the there is a descriptive meaning of the words "Peace and Love" in connection with restaurant services. That's certainly not the case. At best, all the marks might be suggestive of the 60's or 70's and/or a hippie culture--perhaps the restaurant having decor (or maybe serving food) that somehow might bring to mind that era. But all the marks suggest the same thing, not different things.

I know that we often accept the platitude that third-party uses (not registrations) may show that consumers have become educated to distinguish them. But those are just nice assumptions we like to make. The truth probably lies closer to the belief that consumers are wondering if the goods/services are related because of the similarities of the marks. For example, if they are aware of the Peace and Love restaurant and then encounter Peace and Love Pizza or Peace and Love Burgers or Peace and Love Juice for restaurant and juice bar services, won't they assume that they are all somehow related or associated (by license, sponsorship, appoval or otherwise) with the same source. It's nice to believe in assumptions that all these third-party uses "educate" consumers and make confusion somehow go away but wouldn't it be nice to have some real research done on this question, perhaps independent of any real case. My money would be on the research showing that consumers are more confused than not, esp. if the asserted plaintiff's mark lacks descriptiveness and if the marks all suggest the same thing, as they do here.

At 5:50 AM, Anonymous Gene Bolmarcich said...

Did the CAFC really say that third party registrations alone can show a term is descriptive or suggestive even when common sense says it isn't (as John points out)? This was a case where it had to be shown that Peace & Love was commercially weak but I suppose there is no longer a distinction. It sure is going to be easy to argue that a mark is weak now! the other odd thing about this case is that the evidence went to the Applicant's Mark being weak, not the prior mark although that was completely lost on the CAFC. I sure wish these decisions showed some more analytical rigor. I like the result but hate the analysis. The real reason the marks are different is that the Applicant's falls into a well recognized "category" of marks (as demonstrated by the third party regs.) that consumers can differentiate from the simple mark "Peace & Love". Why couldn't the CAFC say that? I'm no genius..just sayin'

At 12:36 PM, Anonymous Gene Bolmarcich said...

One last point. The CAFC actually stated that a registered mark can be classified as "suggestive or DESCRIPTIVE" without violating the rule against collateral attack (and even cited a case for this). A MOST bizarre (but very citable) decision!

At 1:10 PM, Anonymous Anonymous said...

The nuances of this case are vast, and it is indeed once of the worst examples of CAFC ignorance of basic trademark principles. The CAFC attacked the cited registration for being weak, ignoring the application? As an attorney that is generally in the defensive position I love this many cites to choose from against all but the most arbitrary of marks!

At 11:11 AM, Anonymous Anonymous said...

One observation is that this opinion renders the application useless even if it succeeds in the opposition proceeding. Hurt nose meet angry face. One problem with this whole opposition process is now applicant -thanks to this case- is going to have its own (and the court's) arguments used against it by any future defendant. The mark is now effectively unenforceable even in district court. If applicant had simply withdrawn the mark and relied upon common law protection it would not have such prohibitions. Sometimes we need to ask ourselves whether we should even if we could. Wow, just wow.


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