Trademark Trial & Appeal Board Gets a DuPont 101 Lesson | McDermott Will & Emery
Addressing errors in the Trademark Trial & Appeal Board’s likelihood of confusion analysis in a cancellation action, the US Court of Appeals for the Federal Circuit vacated and remanded, holding that the Board erred by failing to give sufficient weight to the first DuPont factor (similarity of the marks) and failing to consider the relevant evidence for the third (similarity of established trade channels). Naterra International, Inc. v. Samah Bensalem, Case No. 22-1872 (Fed. Cir. Feb. 15, 2024) (Moore, Stoll, Cunningham, JJ.)
In 2020, Naterra International filed a petition to cancel Samah Bensalem’s registration for BABIES’ MAGIC TEA for use in connection with “medicated tea for babies that treats colic and gas and helps babies sleep better” based on a likelihood of confusion with Naterra’s multiple registrations for BABY MAGIC for use in connection with infant toiletry products such as lotion and baby shampoo. The Board denied Naterra’s petition, finding that Naterra failed to prove a likelihood of confusion. The Board found that while the first DuPont likelihood of confusion factor (similarity of the marks) weighed in favor of a likelihood of confusion, factors two (similarity of the goods) and three (similarity of established trade channels) did not, and Naterra’s BABY MAGIC mark “fell somewhere in the middle” for factor five (fame of the prior mark). The Board found that factors four (conditions of purchasing), six (number and nature of similar marks in use on similar goods), eight (length of time and conditions of concurrent use without evidence of actual confusion), 10 (market interface between applicant and owner of a prior mark) and 12 (extent of potential confusion) were neutral. Naterra appealed.
Naterra argued “that substantial evidence does not support the Board’s finding that the similarity and nature of the goods (DuPont factor two) and trade channels (DuPont factor three) disfavor a likelihood of confusion,” and that the Board did not properly weigh the first (similarity of the marks) and fifth (fame of the prior mark) DuPont factors.
DuPont Factor Two – Relatedness of the Goods
The Board rejected Naterra’s expert testimony that other so-called “umbrella” baby brands offered both infant skincare products and ingestible products, calling it “unsupported by underlying evidence.” The Federal Circuit disagreed, stating that “testimony that third-party companies sell both types of goods is pertinent to the relatedness of the goods.” Nonetheless, because the Court could not determine whether the Board rejected the expert testimony for other reasons, it remanded the case for further consideration and explanation of its analysis on this point.
DuPont Factor Three – Similarity of Trade Channels
The Board found that the third factor weighed against a likelihood of confusion, stating that it lacked the “persuasive evidence” necessary to “conclude that the trade channels are the same.” The Federal Circuit found that the Board erred by not addressing relevant evidence, namely Bensalem’s admission that the parties’ goods were sold in similar trade channels. The Court also noted that the Board “did not identify in its decision any evidence showing a lack of similarity in trade channels.”
DuPont Factor One – Similarity of the Marks
Naterra argued on appeal that the Board should have weighed its finding that the marks were “more similar than dissimilar” heavily in favor of a likelihood of confusion. The Federal Circuit agreed, citing its prior holding in Detroit Athletic. There, the Court held that similarity of the marks “weighs heavily in the confusion analysis” when, as here, the dominant portion of the marks is similar, and the remaining portions do not have any source-identifying function.
DuPont Factor Five – Fame of the Prior Mark
Naterra did not contest the Board’s findings with respect to the fame of its BABY MAGIC mark. Instead, as in its challenge with respect to the first factor, Naterra argued that the Board erred by failing to give fame sufficient weight in its analysis. On this factor, the Federal Circuit disagreed, noting that the Board did not find BABY MAGIC to be famous, instead calling the mark “somewhat conceptually weak” and not “commercially strong, let alone famous.” Accordingly, the Court held that the Board did not err in failing to give this factor more weight in its analysis.
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