I was pleased to receive the following comment from Professor J. Thomas McCarthy's on the CAFC's ruling last week in the INSIGNIA case, wherein the court vacated and remanded the Board's decision due to improper consideration of the fifth du Pont factor.
I applaud the CAFC’s May 25 decision in Joseph Phelps Vineyards v. Fairmont Holdings, 2017 WL 2259634 The decision reversed and chided the Trademark Board for improperly applying the "fame" factor as a yes-no decision rather than on a sliding scale. I agree with the court because I've noted with dismay how the Board has treated the concept of "fame" in recent years. In the March 2017 update to my Trademark treatise, I rewrote Section 11:74 to discuss this issue. I think that the source of this problem may lie in the past - the court’s 1973 DuPont factors, which for decades have consistently provided the framework for analyzing likelihood of confusion in the USPTO. There, the court listed as the fifth factor, the "fame of the mark," not the "strength" of the mark - the word "strength" is the usage of all of the other twelve circuits. Each of the 13 circuits has developed a multi-factor test to evaluate the key issue of whether there is a likelihood of confusion. All of those lists except for the list used by the Federal Circuit include an evaluation of the "strength" (not "fame") of the senior user's mark. While the CAFC often treats the terms "famous and "strong" as synonyms, on occasion the court itself has lapsed into a yes-no analysis of "fame." I think it is the word "fame" that lends itself to an erroneous "yes it is or no it isn’t" thinking. But the word "strength" naturally leads to viewing it as a scale, not a category. The CAFC’s eccentric use of the term "fame" has led the Trademark Board into framing the issue as whether the senior user's mark is or is not in the category of "famous" marks. Thus, regardless of the fact that for traditional likelihood of confusion analysis, "fame" is a range of strength, and not two discrete categories, the T.T.A.B. has continued to categorize marks as either "famous" or "not famous." What I think the Board should be doing is to ask if the senior user's mark is a relatively stronger or weaker mark in the context of this case. This is because the issue is whether the senior user's mark has a sufficient degree of strength to support a finding of a likelihood of confusion. But will the court’s decision in Joseph Phelps Vineyards be sufficient to change the Board’s thinking?