Last week, the United States Court of Appeals for the Federal Circuit reviewed a TTAB decision that had refused outdoor apparel company Jack Wolfskin’s application to register its paw print logo. Jack Wolfskin Ausrustung fur Draussen GmBH & Co. KGaA v. New Millennium Sports SLU, 14-1789 (Fed. Cir. August 19, 2015). New Millennium Sports SLU (“New Millennium”), the company that owns sportswear label Kelme, had opposed the mark stating there was a likelihood of confusion with its registered mark that also employed a paw print. The two marks are compared side by side, below.

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Jack Wolfskin logo, left; Kelme logo, right.

The TTAB sided with New Millennium and found that there would be a likelihood of confusion based on the similarity of the paw prints, but the Federal Circuit disagreed and reversed. It held that the board failed to account for the presence of the word KELME in the registered mark and that “[t]he analysis did not consider the marks as a whole.”

New Millennium had argued that it displayed the paw print without the KELME name. But the Federal Circuit found that the evidence New Millennium presented did not establish that the paw print was used by itself as a source identifier.

While evidence that the paw print was used by itself by New Millennium was lacking, Jack Wolfskin had put forth evidence of ubiquitous third-party use of paw prints on clothing and elsewhere. The Court took note of its inclusion in team logos such as Clemson University, Penn State, University of Montana, and Ohio University as well as brands such as Wolverine, Alaskan Hardgear, Boyds Collection, and the Chester Cheetah mark for Cheetos. On account of the widespread use of paw prints as source-identifiers, consumers are likely to be more discerning when it comes to similar-looking paw prints and less likely to be confused.

The Federal Circuit cited its recent decision where it overturned the TTAB’s refusal to register Juice Generation’s logo PEACE LOVE AND JUICE due to the likelihood of confusion with a family of marks for restaurant services employing the term “PEACE & LOVE.” Juice Generation, Inc. v. GS Enterprises LLC, No. 14-1853, (Fed. Cir. July 20, 2015). There, the Federal Circuit similarly found that the TTAB’s focus was too narrow in its focus on the common elements Peace and Love and failed to review the mark as a whole. It also found that the board did not adequately assess the weakness of the “PEACE & LOVE” elements on account of the fact that many brands begin with these words.

Jack Wolfskin had counterclaimed seeking cancellation of the KELME logo stating that it had been altered and modernized since its original registration and been abandoned. Relying on the doctrine of “tacking,” the TTAB had refused to cancel the mark. The Federal Circuit affirmed the board’s decision that the above mark was not abandoned. In doing so, the Federal Circuit noted that tacking may protect an altered mark from an abandonment claim just as it can in a claim about priority date. The fundamental inquiry is the same: Has the original mark been so substantially altered such that third parties would not expect that presently used mark to be used under and protected by the registration? Here, the presence of the KELME name and paw print side by side was the same and the changes were only in minor updates to the font and the style of the paw print.

In making its determination regarding tacking, the Federal Circuit cited the U.S. Supreme Court decision in Hana Financial Inc. v. Hana Bank, 135 S.Ct. 907, 909 (2015), finding that tacking is a factual question. The Court acknowledged that the Hana Financial decision meant that the Federal Circuit’s previous review—of the board’s decision as a legal question subject to de novo review—would not apply and that the Court would review the determination to see if it were backed by substantial evidence.