The CAFC pointed out that “i]n every case turning on likelihood of confusion, it is the duty of the examiner, the board and this court to find, upon consideration of all the evidence, whether or not confusion appears likely.” DuPont, 476 F.2d at 1362 (emphasis in original). “In discharging this duty, the thirteen DuPont factors ‘must be considered’ ‘when [they] are of record.'” In re Dixie Rests., Inc., 105 F.3d 1405, 1406 (Fed. Cir. 1997) (quoting DuPont, 476 F.2d at 1361).
DuPont factor 8 requires consideration of “the length of time during and conditions under which there has been concurrent use without evidence of actual confusion.” Guild argued that it has coexisted with the Registrant for more than 40 years without any evidence of actual confusion. Its President and CEO attested that Guild has never received any communications from third-parties regarding any confusion, nor has it received any charge of infringement from the registrant.
The Board’s opinion provided no indication that it considered the 8th DuPont factor or the evidence and argument directed thereto.
In this case, although Guild did not submit declarations from the owner of the registered mark or other parties testifying as to the absence of actual confusion, Guild nonetheless presented evidence of concurrent use of the two marks for a particularly long period of time —over 40 years —in which the two businesses operated in the same geographic market—southern California—without any evidence of actual confusion. Further, the Board has found that Guild’s and Registrant’s services are similar and move in the same channels of trade, which is relevant when assessing whether the absence of actual confusion is indicative of the likelihood of confusion. The Board erred in its analysis by failing to consider this evidence and argument as to factor 8. Because this evidence weighs in favor of no likelihood of confusion, we do not deem the Board’s error harmless.
The CAFC made “no assessment as to the evidentiary weight that should be given to Guild’s CEO’s declaration.” The Board was directed to “reconsider its likelihood of confusion determination in the first instance in light of all the evidence.”
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TTABlog comment: The CAFC noted that in Majestic Distilling, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003), the court considered 16 years of concurrent use with no evidence of confusion, but still found confusion likely. In Majestic the court also observed that, under DuPont factor 7 (“the nature and extent of any actual confusion’), the lack of evidence of actual confusion, by itself, has “little evidentiary value” in the ex parte context. Factor 8 requires a separate consideration.
Text Copyright John L. Welch 2019.