Single factor preempts likelihood of trademark confusion claim

December 29, 2016
Patterson Thuente IP

When a trademark or potential trademark is challenged, courts and the Trademark Trial and Appeal Board (TTAB) generally turn to the so-called DuPont factors to determine whether a likelihood of confusion exists between two marks. Courts don’t necessarily consider all 13 factors and, in fact, a single factor can settle the matter. This was the case in Oakville Hills Cellar, Inc. v. Georgallis Holdings, decided by the Federal Circuit Court of Appeals.

Registration filing uncorks opposition

Georgallis Holdings, LLC, filed to register the mark MAYARI for use on wine. Oakville Hills Cellar, Inc., opposed the registration, claiming that the mark would likely cause confusion with its previously registered and used mark MAYA, also for wine.

When the TTAB evaluated 10 DuPont factors and concluded that confusion wasn’t likely, it dismissed the opposition. Oakville Hills appealed.

wineRuling stems from single factor

On review, the appellate court found that the TTAB didn’t err by balancing 10 relevant DuPont factors and determining that a single factor — similarity of the marks — would settle the issue of likelihood of confusion. The court explained that a single factor may be conclusive when that factor is the dissimilarity of marks.

Oakville disputed the TTAB’s finding of insufficient similarity between the marks. Among other things, it argued that MAYA dominates both marks and that the suffix “RI” in MAYARI was of “minor import” as a distinguishing element. It further argued that the board shouldn’t have found that MAYARI has no meaning and that a consumer wouldn’t view MAYARI as MAYA plus “RI.”

The court disagreed. It pointed out that, in determining similarity or dissimilarity, marks must be compared in their entireties, which include appearance, sound, meaning and commercial impression. There was no reason to think that, even if consumers dissected MAYARI into separate components, the dissection would be “MAYA-RI,” not “MAY-ARI” or “MA-YARI.” The court also found no evidence that the marks would be pronounced alike or that MAYARI has recognized meaning to U.S. consumers. It therefore upheld the TTAB’s dismissal of Oakville’s opposition.

Tip to remember

While a single DuPont factor might settle a likelihood of confusion question, it’s important to remember that the factor itself might take into account multiple factors. As Oakville shows, when “similarity of the marks” has been singled out, a court or the TTAB will consider appearance, sound, meaning and commercial impression.

Oakville Hills Cellar, Inc. v. Georgallis Holdings, LLC, No. 2016-1103, June 24, 2016 (Fed. Cir.)