The Trademark Trial & Appeal Board (“Board”) decides adversarial proceedings between two parties—oppositions (where a party opposes an application to register a mark) and cancellations (where a party seeks to cancel an existing registration)—as well as appeals of final refusals by Trademark Office Examining Attorneys during prosecution of trademark applications. In a recent case, the U.S. Court of Appeals for the Federal Circuit vacated a Board decision, concluding that the Board had applied an “incorrect standard” for evaluating the “fame” of a trademark—one of the factors the Board and courts must consider in determining whether there is a likelihood of confusion between two marks. The case illustrates the important distinction between dilution analysis with respect to “famous” marks and likelihood of confusion analysis which impacts all marks. 

In the underlying case, Joseph Phelps Vineyards, LLC (“Vineyards”) Vineyards petitioned for cancellation of a 2012 registration granted to Fairmont Holdings, LLC for the mark ALEC BRADLEY STAR INSIGNIA for cigars and cigar products. Vineyards submitted evidence that it had produced and sold wines bearing the trademark INSIGNIA since 1978, and that “INSIGNIA wine is renowned in the wine market and among consumers of fine wine.” The Board dismissed the petition, finding that “while it appears that [Vineyard’s] INSIGNIA branded wine has met with success in the marketplace, we are not persuaded on this record that [Vineyard’s] mark is a famous mark.” 

In vacating the Board opinion, the Federal Circuit stated that the Board “erred in its legal analysis, in analyzing the ‘fame’ of INSIGNIA wine as an all-or-nothing factor, and discounting it entirely in reaching the conclusion of no likelihood of confusion[.]” The court’s decision is important because it clarifies the test for likelihood of confusion as used in the Federal Circuit and, by extension, the Trademark Office. 

Each of the 13 U.S. Circuit Courts of Appeal has established a test, based on factors set forth in the 1973 DuPont case, to evaluate whether there is a likelihood of confusion between two marks. Each of the 12 other circuits uses “strength” of the senior user’s mark; only the Federal Circuit has articulated the factor as “fame” of the mark. In this decision, the Federal Circuit made clear that “[w]hile [for purposes of a dilution claim,] fame is an either/or proposition—fame either does or does not exist—[for purposes of a likelihood of confusion claim] fame ‘varies along a spectrum from very strong to very weak.’” Thus, this decision may provide helpful guidance to clients deciding whether to bring an opposition or cancellation proceeding or defending such a proceeding.  

Whether you are a trademark holder concerned about protecting your registered or unregistered trademark rights or are wish to ensure that you are taking steps to properly acquire enforceable trademark rights, our IP partners can discuss the potential ramifications of this case for your particular situation. 

BREAKING NEWS: As this newsletter went “to press,” the U.S. Supreme Court issued a decision finding that the section of the Trademark Act that prohibited registration of “disparaging” marks is facially unconstitutional because it violates the Free Speech clause of the First Amendment. We will discuss the case and its impact on trademark holders in the next IP newsletter.