Prior Registration Under 13th DuPont Factor Fails to Save RAIN DANCER From Section 2(d) Refusal

The Board affirmed a refusal to register the mark RAIN DANCER for hard cider, finding confusion likely with the registered mark RAIN DANCE for wine. The marks are "very similar," the goods "closely related," and the trade channels and classes of customers overlapping. Applicant invoked the Strategic Partners decision, arguing that its ownership of a registration for RAIN DANCER for identical goods (hard cider) gave it a free pass, but the Board found that the weight to be accorded this factor was diminished because the prior registration expired almost three years ago. In re Aaron Carson, Serial No. 97763992 (June 11, 2025) [not precedential] (Opinion by Judge Thomas L. Casagrande).

In Strategic Partners [TTABlogged here], the applicant owned a registration for a nearly identical ANYWEARS mark for footwear (the same goods), and the registration had co-existed with the cited registration for more than 5 years, which meant that the applicant’s prior registration was no longer “subject to attack by the owner of the cited registration on a claim of priority and likelihood of confusion." The Board found that, under the 13th DuPont factor, “these facts tip the scale in favor of applicant and a finding of no likelihood of confusion.”

Judge Casagrande provides a helpful explanation of the theory behind the Strategic Partners decision, noting that "a Strategic Partners co-existence circumstance is factual in nature: it’s a piece of evidence that bears on likelihood of consumer confusion."

[I]t’s a bit like another circumstance where we value the view of a prior registrant on the issue of likelihood of confusion. Specifically, when a prior registrant—who is a marketplace participant—expressly and in writing agrees that registration of another’s mark is unlikely to cause confusion (and the agreement provides a factual basis for that conclusion), we generally give such an express written agreement from the owner of a cited registration great weight in determining whether confusion is likely.

However, a Strategic Partners situation does not involve the registrant’s express consent but merely an inference from the registrant’s inaction, and so that inference "may warrant less weight in the confusion calculus than the registrant’s express written agreement would have been given."

The Board noted that the five-year period after the applicant’s first registration "is a significant circumstance because, once that milestone is reached, the first registration is statutorily exempted from the possibility of being cancelled for causing a likelihood of confusion under Section 2(d). See 15 U.S.C. § 1064. When the owner of the cited registration lets that deadline come and go, that has a significance beyond the mere incremental passage of time." [Thankfully, Judge Casagrande did not refer to the prior registration as having been "incontestable" - ed.].

Here, applicant's prior registration co-existed with the cited registration for more than six years, but lapsed due to failure to file the required Section 8 declaration. The Examining Attorney argued that, because the prior registration had expired, applicant could not invoke Strategic Partners because the statutory presumption of validity of the registered mark disappears, making the registration of “no probative value.” The Board disagreed.

But the expiration of the prior registration is not irrelevant. Specifically, where an applicant’s prior registration has expired, how long ago it expired is a relevant circumstance to consider in determining the force of any inference we might draw in a Strategic Partners scenario.

Applicant’s prior registration expired a little less than three years ago. "Three years isn’t that long ago, but neither is it an insubstantial period. So while we still have confidence, absent evidence to the contrary, that the co-existence period is relevant to registrability now, we do not think it warrants as much weight—all other things being equal—as it would have if it still existed."

The fact that the period of co-existence ended nearly three years ago lessens the weight we might otherwise attribute to that factor. In the specific circumstances presented here, given how strongly we think the first four factors favor a conclusion that confusion is likely, we think those four factors collectively outweigh the thirteenth factor. On balance, we conclude that confusion is likely.

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TTABlogger comment: Had the prior registration expired only two years ago, would that have changed the outcome? one year?

Text Copyright John L. Welch 2025.