Court of Appeals revives denied trademark application

September 25, 2019
Patterson Thuente IP

Two companies with similar marks operated in the same region for more than 40 years without any actual confusion arising for consumers. Nonetheless, the Trademark Trial and Appeal Board (TTAB) found a disqualifying likelihood of confusion when one company tried to register its mark. Read on to learn why it can prove worthwhile to not just accept the board’s rulings.

Dueling Guilds

Guild Mortgage Company was founded in San Diego and expanded to more than 40 other states. It has used the mark “Guild Mortgage Company” since 1960. In 2015, the company applied to register the mark for mortgage banking services.Question marks

The trademark examiner refused registration based on a likelihood of confusion with the mark “Guild Investment Management.” That mark was owned by an investment company in Los Angeles and registered for investment advisory services. The examiner concluded that three of the so-called DuPont factors for assessing the likelihood of confusion — the similarity of the marks, the nature of the services and the trade channels — created the likelihood of confusion.

The TTAB agreed, despite finding that consumers “may exercise a certain degree of care in investing money, if not perhaps in seeking a mortgage loan.” Guild Mortgage appealed.

Overlooked evidence

Guild argued that the TTAB had erred in failing to consider its argument and evidence related to one of the DuPont factors: “the length of time during and conditions under which there has been concurrent use without evidence of actual confusion.” It contended that the more than 40 years of concurrent use of both marks, with no evidence of actual confusion, demonstrated that there was no possibility of confusion in the minds of consumers between the marks.

The TTAB’s opinion, however, gave no indication that the board had considered this factor, though argument and evidence on it were presented. As the Federal Circuit noted, all 13 DuPont factors for which evidence or argument is presented must be considered, even though all of them aren’t always relevant or of similar weight in every case.

The court therefore held that the TTAB had indeed erred by not considering the concurrent use factor. And, because the factor weighed in favor of no likelihood of confusion, the appellate court found the error wasn’t harmless.

Another bite at the apple

The court vacated the TTAB’s decision and sent the case back for further proceedings. It made no assessment, however, of the weight of the evidence regarding the concurrent use factor, instead simply holding that it should have been considered.

In re: Guild Mortgage Co., No. 17-2620, Jan. 14, 2019, Fed. Cir.

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