The U.S. Court of Appeals for the Federal Circuit affirmed the TTAB’s decision (TTABlogged here), dismissing an opposition to registration of the mark shown first below, for “Processed, ready to eat foods, namely, sandwiches, wrap sandwiches, pizza and pastries” and for “restaurant services.” The Board ruled that Opposer QuikTrip West failed to prove a likelihood of confusion with its registered mark shown next below, for “Garden, vegetable, meat, cheese and fruit salads” and “Processed, ready to eat foods, namely, sandwiches, wraps, pastries and pasta salads,” finding that Weigel’s mark “is so dissimilar to Opposer’s pleaded mark, and the common element between them is so weak that no likelihood of confusion exists.” QuikTrip West, Inc. v. Weigel Stores, Inc., Appeal No. 2020-1304 (Fed. Cir. January 7, 2021) [precedential].

Likelihood of confusion is a legal determination based on underlying findings of fact relating to the DuPont factors. The CAFC reviews the Board’s factual findings for substantial evidence but it weighs the factors de novo. On this appeal, QuikTrip challenged the TTAB’s analysis regarding the similarity of the marks (factor one) and Weigel’s bad faith (factor 13), and it also challenged the Board’s weighing of the factors.

Similarity of the Marks: The CAFC agreed with Appellee Weigel that the Board properly analyzed the marks. The Board accorded less weight to the shared term KITCHEN(S) because, as established by the evidence, “kitchen” is a “highly suggestive, if not descriptive, word.” It also gave more weight to the dominant portions of the marks – Weigel’s encircled W next to the surname WEIGEL, and QuikTrip’s QT in a square below a chef’s hat – in view of their prominent placement, unique design, and color. See In re Electrolyte Labs., Inc., 929 F.2d 645, 647 (Fed. Cir. 1990) (“More dominant features will, of course, weigh heavier in the overall impression of a mark.”).

The Board properly compared the marks in their entireties and observed the differences in lettering and geometric shapes, and the inclusion of a tilted chef’s hat in QuikTrip’s mark. It noted that the marks are not similar in sound because the “letters do not rhyme or otherwise sound close to one another, and the component WEIGEL’S adds an entirely different sound.” As to connotation, the Board determined that Weigel’s mark connotes a kitchen run by a person named Weigel whereas QuikTrip’s mark connotes “a string of kitchens with chefs, run by QT.”

The court concluded that substantial evidence supported the Board’s factual finding that the marks, in their entireties, differ in appearance, sound, connotation, and commercial impression.

Bad Faith: A party’s bad faith in adopting a mark is relevant under the thirteenth duPont factor. DuPont, 476 F.2d at 1361; see also Estrada v. Telefonos De Mex., S.A.B. de C.V., 447 F. App’x 197, 204 (Fed. Cir. 2011) (nonprecedential) (“An applicant’s bad faith is potentially relevant in the likelihood-of-confusion analysis.”). However, something more is required that mere knowledge of a prior mark: an intent to confuse must be proven. Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97, 117 (2d Cir. 2009) (“[T]he ‘only relevant intent is intent to confuse. There is a considerable difference between an intent to copy and an intent to deceive.’” (quoting 4 J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 23.113)).

QuikTrip argued that the Board had failed to consider evidence that Weigel intentionally copied elements of its mark and surreptitiously photographed its stores. Moreover, the Board failed to consider that the marks are more confusingly similar when presented “in comparable trade dress contexts.” Weigel, on the other hand, asserted that its willingness to alter its mark on several occasions, in response to QuikTrip’s cease-and-desist letters, negates any inference of bad faith.

The CAFC sided with Weigel: the willingness to change its mark evidences Weigel’s lack of bad faith. As to QuikTrip’s trade dress argument, the fact that the Board did not address it does not mean that it did not consider it. “We have held ‘on multiple occasions that failure to explicitly discuss every issue or every piece of evidence does not alone establish that the tribunal did not consider it.'” Novartis AG v. Torrent Pharms. Ltd., 853 F.3d 1316, 1328 (Fed. Cir. 2017).

 

The court concluded that substantial evidence supported the Board’s finding that Weigel did not act in bad faith.

Weighing the Factors: The CAFC rejected QuikTrip’s claim that the Board gave undue weight to the first DuPont factor, noting that “one DuPont factor ‘may be dispositive in a likelihood of confusion analysis, especially when that single factor is the dissimilarity of the marks.'” Champagne Louis Roederer, S.A. v. Delicato Vineyards, 148 F.3d 1373, 1375 (Fed. Cir. 1998). The court saw no legal error in the Board’s determination that the differences between the marks was dispositive in the likelihood of confusion analysis.

 

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Text Copyright John L. Welch 2021.