Professor McCarthy: "Trademark Strength and Fame: The Federal Circuit Corrects the Trademark Trial And Appeal Board"

In the latest issue of The Trademark Reporter, Professor J. Thomas McCarthy discusses (here) the CAFC's ruling in the INSIGNIA case, Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 122 USPQ2d 1733 (Fed. Cir. 2017) [precedential], wherein the appellate court vacated the Board's decision due to improper consideration of the fifth du Pont factor, and remanded the case to the Board. [TTABlogged here].

As you will recall, the CAFC overturned the Board's decision of July 6, 2015 (here) dismissing a petition for cancellation of a registration for the mark ALEC BRADLEY STAR INSIGNIA for "cigars, tobacco, cigar boxes, cigar cutters and cigar tubes." The Board had found that respondent's mark was not likely to cause confusion with petitioner's registered mark INSIGNIA for wines. Concluding that the Board had applied an "incorrect standard for fame," the CAFC remanded the case to the TTAB for determination utilizing the correct standard.

The CAFC pointed out that, unlike for dilution, fame for likelihood of confusion purposes is not an "all-or-nothing" proposition. Consequently, the Board "did not properly apply the 'totality of the circumstances' standard, which requires considering all the relevant factors on a scale appropriate to their merits."

According to Professor McCarthy's commentary:

[U]nlike all other courts in the nation, the Federal Circuit and the TTAB usually use the word “fame” instead of “strength.” This has led the TTAB to ask if the senior user’s mark is or is not in a category of “famous” marks, rather than asking if the mark is strong enough that the junior user’s mark is likely to cause confusion. The federal anti-dilution law mandates that a mark must be so widely known to everyone across the United States as to be in the category of “famous” marks. But for traditional trademark infringement, the “strength” of a mark is measured on a graduated scale and not by two categories of “strong” and “weak.”

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The list of factors used by the Court of Appeals for the Federal Ciircuit is known as the Du Pont test. This thirteen-point test is used to evaluate likelihood of confusion in TTAB ex parte rejections of applications to register based on prior rights, as well as in inter partes oppositions and cancellations. This test differs from those used by all the other circuits in that it uses the word “fame” rather than “strength.” This eccentric usage can be traced back to the original 1973 Du Pont precedent. There, the court listed as the fifth factor the “fame” of the mark, not the “strength” of the mark.

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For a senior user’s mark that is only moderately strong in the marketplace, change brought about by the Joseph Phelps decision could strengthen the claim that a challenged application or registration is
likely to cause confusion.

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TTABlog comment: IMHO, I consider the TTAB's approach in its INSIGNIA decision to more an exception than the rule. In my view, even before INSIGNIA, the Board usually looked at the degree of strength of the mark and considered whether the mark was famous for Section 2(d) purposes, but not just apply a yes-no test. It found some marks not famous but relatively strong, some marks weak, etc. So I don't see the CAFC's INSIGNIA decision as all that significant, other than to correct the Board's error in a wayward case and to keep the Board on the right track.

Again I thank The Trademark Reporter for granting leave to provide a link to this article, which is Copyright © 2018 the International Trademark Association and reprinted with the permission of The Trademark Reporter®, 108 TMR 904 (May - June 2018).