TTABlog Test: Are these Two Design Marks Confusable (for Rice)?

Global Commodities petitioned for cancellation of a registration for the mark shown below left, claiming likely confusion with its registered mark shown below right, both for "rice." Since the goods are identical, a lesser degree of similarity between the marks is needed to support the Section 2(d) claim, but are the marks close enough to cause source confusion? Global Commodities, Inc. v. Capital Distributors, LLC and Capital Imports, LLC., Cancellation No. 92078857 (November 29, 2023) [not precedential] (Opinion by Judge Mark A. Thurmon).

The Board found petitioner's "fawn" design mark to be inherently distinctive. Three third-party registrations submitted by respondents, without any evidence of actual use, were "insufficient in number to be probative of any conceptual weakness of Petitioner’s fawn mark for rice."

As to commercial strength, there was no brand awareness evidence in the record and nothing to place the petitioner's sales figures in context. Evidence of third-party use of "deer" design marks, albeit without sales data, was "sufficient to show that a deer design has been adopted and used as a trademark for rice to a nontrivial extent." There was also evidence of four other rice products on the market that feature deer in their packaging. The Board concluded that petitioner’s fawn mark is commercially weak in the market for rice, reducing the scope of protection to be accorded.

Turning to a comparison of the marks, The Board found them to be "not similar in appearance:"

Petitioner’s fawn mark shows an animal with visible spots on its side and curved antlers. The mark creates a sense of motion or action, as the fawn is leaping or running. The entire mark is the fawn in motion. Respondents’ impala mark shows an animal standing and most of the red outline of a heart above the animal. There are no spots on this animal and it is not in motion. The animal appears alert, but is not leaping or running. This animal has no antlers or horns.

The Board acknowledged that the marks feature "somewhat similar animals." Petitioner argued that respondents’ mark is a deer, not an impala, and asserted that "[m]ost people cannot tell the difference between an Impala and a deer, because both of these animals are so similar. Anyone seeing Capital’s mark will think that it is a deer." [FWIW: I agree. I think of an Impala as a Chevrolet - ed.]. The Board was unmoved.

We find few similarities in these two marks, regardless of what kind of animal consumers believe is shown in Respondents’ mark. Even if consumers think both animals are deer, they are not similar. One mark shows a juvenile animal—the spots on the side are consistent with Petitioner’s animal being a young deer—while the other mark shows what appears to be a mature animal.

The marks also differ visually in terms of the motion or lack of motion perceptible from the appearance of the marks. Petitioner’s young deer is in motion, either running or leaping. Its body is elongated and its legs extended in front and behind the animal. None of these features are found in Respondents’ mark, which features a stationary animal, with an alert look. One mark is in motion, while the other is not. Consumers are likely to recall such a striking difference.

Finally, the red heart outline featured prominently above the animal in Respondents’ mark is absent from Petitioner’s fawn mark. Respondents’ claim color, so the red color is part of their mark. The addition of a visually significant feature is also something consumers are likely to recall.

The Board found the remaining DuPont factors to be neutral. It concluded that the first DuPont factor outweighed the facts that the goods and channels of trade factor are identical. Adding the weakness of petitioner's mark made the result "clear." And so, the Board denied the petition for cancellation.

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Text Copyright John L. Welch 2023.