The U. S. Court of Appeals for the Federal Circuit has settled the U. S. Patent and Trademark Office (USPTO) Trademark Trial and Appeal Board (TTAB) Right againstNaterra International Inc ( "Naterra" ) vSamah Bensalem ( "Bensalem" ) In the case of revocation of trademarks made mistakes in the likelihood of confusion analysis. The appeal court reversedTTABDecision and remanded for a new trial, considerTTABThe mistake lies in not paying sufficient attention to the first factor of the DuPont test——Similarity of trademarks, Nor was the third element of the test taken into account——Relevant evidence of similarity of established trade channels.

Background of the case

2020years, NaterraAn application was submitted, requestUSPTOcancelBensalemthe "BABIES'MAGICTEA" Trademark registration, The registration is for "Baby herbal tea to treat colic and gas and help babies get a good night's sleep" . The application is based onNaterraIn baby toiletries (Like body lotions and baby shampoos) Multiple aspects "BABY MAGIC" The possibility of confusion in trademark registration is raised.

TTABrejectedNaterraRevocation of, Found that the company had failed to prove that there was a likelihood of confusion. The committee held that, Although the first DuPont factor (Similarity of trademarks) rightNaterraadvantageous, But the second and third factors (The similarity of commodities and the similarity of established trade channels) thenNaterraunfavourable. In addition, "BABY MAGIC" Trademarks in relation to the fifth factor (The visibility of the prior trademark) In the evaluation "Somewhere in the middle" .

Other factors regarding DuPont testing, TTABconsider, The fourth factor (Terms of purchase) , The sixth factor (The number and nature of similar trademarks used on similar goods) , The eighth factor (The length of time and conditions of concurrent use without actual evidence of confusion) , Tenth factor (The market division between the applicant and the prior trademark owner) And the twelfth factor (There is a degree of potential confusion) Be neutral. NaterraThe decision was appealed.

appeal

Naterraconsider, "Considerable evidence does not support the committee's conclusions, commodity (Dupont factor II) And trade channels (Dupont factor 3) The similarity and nature of the study do not support the conclusion of likelihood of confusion" , And the commission did not properly balance the first factor with the fifth.

Similarity of trademarks

On appeal, Naterraassert, The commission was supposed to weigh its case on trademarks "There are more similarities than dissimilarities" The conclusion of, To support the possibility of confusion. The Court of Appeals for the Federal Circuit agreed, And cited its previous inDetroit AthleticThe decision in the case, It is considered when the major parts of the trademark are similar and the remaining parts do not have the function of source identification, Similarity of trademarks "It plays an important role in the analysis of confusion probability" .

Commodity correlation

The committee rejected itNaterraExpert testimony, Other baby brands also offer baby skin care and ingestible products, Consider the testimony "There's no underlying evidence to support it" . however, The Court of Appeals for the Federal Circuit disagreed, According to "The testimony of the third-party company selling these two goods is related to the relevance of the goods" . In spite of this, The appeals court could not determine whether the committee had dismissed the expert testimony for other reasons, So the court sent the case back for a new trial, For further consideration and explanationTTABAnalysis at this point.

The similarity of trade channels

The committee held that, The third factor is not conducive to drawing conclusions about the likelihood of confusion, And pointed out its lack "The conclusion that trade channels are the same" required "Persuasive evidence" . however, The Court of Appeals for the Federal Circuit held, TTABFailed to address the issue of relevant evidence——namelyBensalemAcknowledge that goods from both sides are sold through similar trade channels. The appeals court also noted, The committee "No evidence was found in its decision to suggest a lack of similarity in trade channels" .

The visibility of the prior trademark

NaterraNot rightTTABthereabout "BABY MAGIC" The conclusion of trademark popularity is contested. On the contrary, Naterraconsider, The Commission was wrong not to give sufficient weight to the trademark awareness factor in its analysis. The Court of Appeals for the Federal Circuit disagreed, And point outTTABNot identified "BABY MAGIC" Have a reputation. On the contrary, It describes the trademark as "It's a little weak in concept" , Instead of "It's strong in business, Not to mention famous" . therefore, The court held that, TTABThere is nothing wrong with not giving more weight to this factor.

Important revelation

The Court of Appeals for the Federal Circuit ruled that, Before weighing the weight of the factors in the likelihood of confusion test, All the evidence should be considered in its entirety. A more rigorous approach would reduce the likelihood that decisions would be reversed, And simplify the case process for using DuPont factor tests or similar tests. (Be compiled fromwww. worldtrademarkreview. com)

TRANSLATORS: Wang Dan　proofread: Liu Peng



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