Federal Circuit Summary

Before Moore, Reyna, and Chen. Appeal from the Trademark Trial and Appeal Board.

Summary: The TTAB must consider Applicant’s evidence and argument as to an absence of actual confusion during the period of concurrent use of allegedly confusing marks.

Guild Mortgage Co. (“Guild”) applied to the PTO to register the mark “GUILD MORTGAGE COMPANY.” The Examiner refused the registration, citing a likelihood of confusion with the registered mark “GUILD INVESTMENT MANAGEMENT.” Guild responded by arguing that “it and Registrant have coexisted in business [in Southern California] for over 40 years without any evidence of actual confusion” (DuPont factor 8) and submitted a declaration of its President and CEO in support of this argument. The Examiner rejected this argument in a final office action. The TTAB affirmed the Examiner’s refusal to register Guild’s mark. In its opinion, the Board did not mention DuPont factor 8 and failed to address Guild’s argument and evidence directed to this factor.

The Federal Circuit vacated and remanded the decision. The Federal Circuit clarified that its previous holding in Majestic Distilling with respect to “the seventh DuPont factor” that “uncorroborated statements of no known instances of actual confusion are of little evidentiary value” does not extend to the eighth DuPont factor. The Federal Circuit noted that Guild “presented evidence of concurrent use of the two marks for a particularly long period of time … in which the two businesses operated in the same geographic market … without any evidence of actual confusion.” The Federal Circuit held that the Board, in determining the likelihood of confusion, must consider Guild’s “absence of actual confusion” evidence and argument and balance the evidence against other DuPont factors.