In a nonprecedential opinion, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed the TTAB’s March 9, 2018 decision (here) finding a likelihood of confusion between appellant’s mark BEAST MODE SOCCER for “T-shirts” and “Sporting goods and equipment for soccer training, namely, balls” [SOCCER disclaimed], in view of the registered mark BEAST MODE, for “t-shirts” and “Men’s, women’s and children’s clothing, namely, shirts, sweatshirts; headwear, namely, hats, caps.” Appellant David Copeland-Smith challenged the Board’s findings with respect to the first and sixth du Pont factors – the similarity of the marks and the strength of the cited mark – but the court found that substantial evidence supported the Board’s factual findings and it concluded that the Board had properly affirmed the Section 2(d) refusal to register. In re David Copeland-Smith, Appeal No. 2018-1968 (November 12, 2019) [not precedential].

First du Pont Factor: Copeland-Smith argued that the Board failed to consider the mark BEAT MODE SOCCER as a whole. He claimed that the word SOCCER distinguishes his mark from the cited mark and that the Board arbitrarily diminished the impact of the word SOCCER.

The court, however, determined that the Board properly accorded less weight to the descriptive or generic term “soccer,” properly considered the mark as a whole, and properly found that the term BEAST MODE is dominant and makes the marks similar in sound, appearance, meaning, and commercial impression.

Copeland-Smith contended that commercial impression of the cited mark is associated with its owner, former NFL player Marshawn Lynch, and that his own mark “contains absolutely no association with soccer, because [Lynch] is not associated with soccer, only football.” The Board considered those arguments and found them unpersuasive, since BEAST MODE has many meanings not associated with Lynch, and since the cited registration has no restriction to football-themed clothing and no limitations on channels of trade.

Substantial evidence supports the Board’s findings that, looking at the mark as a whole, the generic word SOCCER is the only thing that distinguishes Copeland-Smith’s mark from Lynch’s,and that generic word is dwarfed by the term BEAST MODE. Thus, having considered Copeland-Smith’s arguments with respect to DuPont factor 1, we conclude that substantial evidence supports the Board’s finding that the marks are sufficiently similar to cause a likelihood of confusion

Sixth du Pont Factor: This factor considers the number and nature of similar marks on similar goods, which bears on the strength or weakness of the cited mark. Copeland-Smith pointed to a definition of “beast mode” from the Urban Dictionary (a slang term for a high level of effort or energy in exercise or sport), 31 third-party uses, three third-party registrations, and 14 third party applications for marks that include the term “Beast Mode.”

The court noted that the Board closely considered this evidence and found that much of it had limited probative value. The third-party applications had no probative value for determining actual third-party use. None of the registrations identified articles of clothing. Likewise, the third-party usage evidence concerned goods and services other than clothing. Ten of the third-party websites did have some relevance, but this volume of evidence “‘does not appear to approach the quantum of evidence of use’ in prior case in which marks were found to be weak.”

The Board parsed this evidence carefully, and the its finding was supported by substantial evidence.

Weighing of the Factors: The Board found that du Pont factors 1, 2, 3, 4, 6, 7, and 8 weighed in favor of a finding of likelihood of confusion. The court upheld the Board’s conclusion.

We have considered Copeland-Smith’s challenges regarding DuPont factors 1 and 6, and we conclude that the Board’s findings were supported by substantial evidence. We also credit the Board’s factual findings regarding the other five DuPont factors, which Copeland-Smith has not challenged in this appeal. Like the Board, we conclude based on the DuPont factors that Copeland-Smith’s mark is likely to cause confusion with Lynch’s mark.

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TTABlog comment:  Some unsophisticated consumers may think that the “football” Lynch played was soccer.

Text Copyright John L. Welch 2019.