Love and Peace apparently abound in the restaurant industry (at least when it comes to establishment names using the two words in combination), but the Trademark Trial and Appeal Board had neither love nor peace for Juice Generation, Inc. (“JG”) when it refused registration of its trademark, PEACE LOVE AND JUICE, in light of pre-existing registrations for PEACE AND LOVE in the same class held by GS Enterprises LLC (“GS”).  According to the Board, the marks were likely to create consumer confusion pursuant to In re E. I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (CCPA 1973).  However, on July 20, 2015, the Federal Circuit vacated and remanded TTAB’s refusal to register. 

In its decision, the Federal Circuit highlighted two errors made by the Board in reaching its conclusion: (1) The Board inadequately assessed the strength or weakness of GS’ marks because it did not give proper weight to evidence of similar third party marks; and (2) The Board failed to give adequate consideration to JG’s three-word combination in its entirety in making its confusion determination.  While there is nothing new to the tenets that similar third party uses can be seen as weakening a mark or that the mark is to be viewed in its entirety in a confusion assessment, the Federal Circuit’s recent decision highlights the strength of these arguments.   In particular, the Federal Circuit took issue with the Board’s apparent discounting of the multiple third party uses of “Peace and Love” because the “specifics” of sales and promotional activities of the third party uses were not in the record.  The Court explained that the evidence was nevertheless “powerful on its face” and that the number of marks that used the term “love and peace” demonstrate the weakness of GS’ marks as source identifiers, a factor that favors JG.  In addition, the Federal Circuit held that the Board “paid insufficient heed to that important principle in analyzing the three-word combination ‘PEACE LOVE AND JUICE,’” instead focusing on what it viewed as the “dominant” portion of the combination (“peace and love”).  The Federal Circuit explained that such an analysis is “inadequate” in that it does not give proper consideration to how the three word phrase in JG’s mark may convey a distinct meaning from the two word phrase used by GS.

Notably — and borrowing from what is mainly the patent law doctrine of prosecution history estoppel — the Federal Circuit also pointed to arguments made by GS in the prosecution of its marks, finding that certain GS statements supported JG’s argument that PEACE AND LOVE is suggestive or descriptive.

This decision highlights the importance of putting evidence of third party use and registrations into the record in TTAB cases –and civil trademark cases as well.  While previous decisions have been less than consistent on the admissibility and weight of such evidence without specific details regarding the third party use, the Federal Circuit’s decision suggests that even a relatively facial showing of instances of third party use and registration can be particularly probative.  Parties may be well served to consider how they can best aggregate and present such evidence in trademark cases.

The decision is Juice Generation Inc. v. GS Enterprises LLC, 2014-1853 (Fed. Cir. July 20, 2015).