When an Examining Attorney or the Trademark Trial and Appeal Board (the "Board" or the "TTAB") make a likelihood of confusion determination, the du Pont factors are considered. See the firm web page, entitled Likelihood Of Confusion Refusals, 2(d) Refusals, where all thirteen of the du Pont factors are set forth. This page will focus on the sixth du Pont factor, the number and nature of similar marks in use on similar goods. When determining the strength of a trademark, the conceptual strength is considered (where a mark falls within the spectrum, fanciful, arbitrary, suggestive or descriptive) along with its commercial or marketplace strength (assuming there is evidence present in the record). See Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1476 (TTAB 2014).
The Federal Circuit has stated that evidence of extensive registration and use by third parties can be powerful evidence of commercial weakness. Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015); Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015). If it is shown that the purchasing public has been exposed to wide spread third-party use of similar marks on similar or related goods, then one can deduce that the trademark is weak and entitled only to a narrow scope of protection. Palm Bay Imps., v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). Moreover, third party registrations for similar marks based on use in commerce covering the same goods and services suggest that the goods and services originate from the same source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993).
See In re De Beers Intangibles Limited, Serial No. 79198047 (November 28, 2018) [not precedential], where the applicant seeks to register the mark DE BEERS TRUE BRILLANT, for jewelry and retail and wholesale store services featuring jewelry. The Examining Attorney refused registration and cited the registrant's mark for TRU BRILLANCE for jewelry. The applicant appealed after the Examiner denied reconsideration. On appeal, applicant's evidence consisted of a significant number of use-based registrations containing the terms BRILLANCE, BRILLANT, or TRUE and only one third-party use. The applicant did not submit sufficient evidence to demonstrate commercial weakness due to the fact that he only introduced one third-party use. Therefore, the Board was not able to deduce that consumers were accustom to distinguishing among marks that included the terms, BRILLANCE, BRILLANT, and TRU(E).
However, applicant's evidence of third-party registrations did show conceptual weakness in the terms TRU(E) and BRILLANT for the jewelry industry. The Board found that BRILLANT has a descriptive meaning and TRU(E) a suggestive meaning in the jewelry industry as individual marks. However, when considering the two terms together as a combination mark, there was no evidence of conceptual weakness. In fact, the cited registration was the only mark using the two terms together for jewelry. In the end, the Board concluded that there was some conceptual weakness. However, the cited registration, was entitled to an appropriate amount of protection against confusingly similar marks.
The applicant argued that the inclusion of "De Beers" distinguished the marks. The Examining Attorney and the Board did not agree. It is well settled law that adding a house mark to a trademark that would cause confusion with another mark, does not obviate confusion. Even adding a famous house mark cannot distinguish marks in conflict. See In re Christian Dior, S.A., 225 USPQ 533, 534 (TTAB 1985). The purpose of the Lanham Act is to protect the registrant and senior user from negative commercial impacts from a junior users with similar marks. If perhaps the applicant introduced use evidence of third-parties in the jewelry industry using both the terms TRU(E) and BRILLANCE together, the Board may have made a different determination based on commercial weakness. However, based on the evidence of record, the Board affirmed the refusal to register DE BEERS TRUE BRILLANT, for jewelry and retail and wholesale store services featuring jewelry. If you have questions regarding conceptual or commercial weakness pertaining to your mark or another trademark, please contact the firm for a courtesy consultation.