Thursday, April 02, 2020

Precedential No. 14: On Remand from CAFC, TTAB Considers 8th DuPont Factor, Affirms Section 2(d) Refusal of GUILD MORTGAGE COMPANY

On remand from the U.S. Court of Appeals for the Federal Circuit, the Board again affirmed a Section 2(d) refusal to register the mark GUILD MORTGAGE COMPANY & Design for "mortgage banking services, namely, origination, acquisition, servicing, securitization and brokerage of mortgage loans" [MORTGAGE COMPANY disclaimed] in view of the registered mark GUILD INVESTMENT MANAGEMENT for "Investment advisory services" [INVESTMENT MANAGEMENT disclaimed]. In January 2019, the CAFC vacated the Board's earlier decision (here) because the Board had "failed to consider pertinent evidence and argument under DuPont factor 8," which requires consideration of "the length of time during and conditions under which there has been concurrent use without evidence of actual confusion." [CAFC decision TTABlogged here]. In re Guild Mortgage Company, 2020 USPQ2d 10279 (TTAB 2020) [precedential] (Opinion by Judge Lorelei Ritchie).

The Board found that the similarities between the marks in connotation and overall commercial impression outweighed the difference in sight and sound, and so the first du Pont factor favored a finding a likelihood of confusion. It deemed insufficient Applicant's evidence that the cited mark is conceptually weak because of some "specific significance" to consumers with regard to registrant's services.

As to the involved services, third-party registrations covering both mortgage banking and investment advisory services convinced the Board that they are related. Furthermore, the same consumers may seek mortgage banking and investment advisory services, and therefore the channels of trade and classes of consumers overlap.

As to the degree of purchaser care, the Board must make its determination based on the least sophisticated consumer. Stone Lion Capital, 110 USPQ2d at 1163. Nonetheless, it found that "consumers may exercise a certain degree of care in investing money, if not perhaps in seeking a mortgage loan for which they simply wish to get funded." Therefore, consumer sophistication weighed slightly against a finding of likely confusion.

Turning to the eighth du Pont factor, the CAFC concluded that the Board "erred by failing to address Guild’s argument and evidence," stating that:

Guild . . . presented evidence of concurrent use of the two marks for a particularly long period of time – over 40 years – in which the two businesses operated in the same geographic market – southern California – without any evidence of actual confusion. Further, the Board has found that Guild’s and Registrant’s services are similar and move in the same channels of trade, which is relevant when assessing whether the absence of actual confusion is indicative of the likelihood of confusion. 

The Board first noted that, as to the second, third, and fourth du Pont factors, the analysis must be based on the recitations of services as set forth in the application and the cited registration, and it may not consider evidence of how Applicant and Registrant are actually rendering their services in the marketplace.  The eight du Pont factor, however, requires consideration of the actual market conditions. [wording emphasized by the Board].

In this regard, the Board considered the affidavit of Applicant's president and CEO, who asserted that Applicant has used its mark since 1960, beginning in San Diego, California, and has since "expanded its mortgage lending business nationwide."  Applicant claimed to be currently licensed in 46 states and the District of Columbia, with more than 250 offices and satellites. However, it did not provide specifics as to use of its mark in any particular geographic area. Applicant also submitted some evidence regarding the registrant and its use of the cited mark.

In summary, the evidence demonstrates that Applicant has been doing business in San Diego, California for over forty years, and from a more recent (unspecified) date, nationwide. The evidence further indicates that Registrant has been conducting business from its principal location in Los Angeles, California for much of that time. While both Applicant and Registrant apparently conduct business in various states, the evidence does not indicate any specific geographical areas of overlap between the consumer markets for the business conducted by Applicant and the business conducted by Registrant.

The Board took judicial notice that the addresses of Applicant and Registrant are 126.3 miles apart, and that San Diego has a population of 1,426,976 and Los Angeles a population of 3,990,456. The Board therefore found Applicant and Registrant "are separated both by a noticeable driving distance, and by a separate consumer base." It observed that, although these cities may be generally be generally characterized as being located in "Southern California, there was "no evidence of record that there is any actual, meaningful overlap in the markets for the services offered by Applicant and those offered by Registrant in these two distinct, non-adjacent cities."

Finally, the Board noted that in an ex parte context, there is no opportunity to hear from the Registrant as to whether it is aware of any reported instances of confusion. "We therefore are getting only half the story." See, e.g., In re Opus One, Inc., 60 USPQ2d 1812, 1817 (TTAB 2001). Therefore, the Board must give limited probative value to evidence bearing on the eighth du Pont factor in an ex parte appeal, unlike in an inter partes proceeding in which the adverse party has an opportunity to present argument and evidence.

Thus, while we note again the evidence that both Applicant and Registrant conduct their business in California and possibly in some of the same other states nationwide, there is a lack of evidence that in the actual marketplace, the same consumers have been exposed to both marks for the respective services, such that we could make a finding as to the “length of time during and conditions under which there has been concurrent use without evidence of actual confusion.” Upon full consideration, we find the eighth du Pont factor to be neutral. [Emphasis by the Board].

Conclusion: Balancing the relevant du Pont factors, the Board found confusion likely and it affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: Compare this result to the Board's recent concurrent use decision regarding the HANSCOMB CONSULTING mark (TTABlogged here), in which the Board accepted testimony that was unspecific and unsupported by documentation in concluding that the excepted user had demonstrated prior and continuous use of its HANSCOMB mark in many locations throughout the country.

Text Copyright John L. Welch 2020.


At 8:42 AM, Anonymous Anonymous said...

WYA this case to CAFC (again)?

At 10:48 AM, Anonymous Anonymous said...

Good to see the TTAB being reminded that there are not just two DuPont factors, even if the ultimate result was the same in this particular case.

At 10:52 AM, Blogger TMAttorneyHeller said...

Yes since the long time usage is an important point that the Board should consider. If the Registrant has objection to the registration then it can oppose the application when it is published. Why should one have to ask for consent when the parties have implied consent after a significant number of years of co-existence. Once I asked for consent and the other side said it would not oppose the application but would not give consent even though the parties had co-existed in the market place for over 50 years.


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