The TTAB refused registration of South Carolina’s mark under Section 2(d) of
the Lanham Act, 15 U.S.C. § 1052(d), finding that it would create a likelihood confusion
with Southern California’s registrations. Among other things, the Board based its
conclusion on its findings that South Carolina’s mark and Southern California’s
Standard Character Mark were legally identical, that the marks would appear on the
same classes of goods in the same channels of trade and that some consumers would
exercise little care in making purchases.
The CAFC went to factors set forth in Application of E.I. DuPont DeNemours & Co., 476 F.2d
1357, 1361 (C.C.P.A. 1973) to analyze the issues.
The sophistication of the consumer factor brought interesting text from the CAFC:
the Board found that the marks were legally identical and
would appear on the same classes of goods in the same trade channels. These factors,
on their own, support a finding of likelihood of confusion. See, e.g., Cunningham v.
Laser Corp., 222 F.3d 943, 948-49 (Fed. Cir. 2000) (finding the Board’s failure to
consider consumer sophistication harmless when there was a strong similarity of marks
and identity of goods). Thus, even if the Board erred in its finding that certain
consumers were unsophisticated, this error would not require reversal of the Board’s
decision on the likelihood of confusion.
The "substantial evidence" standard arose: At this stage, we review this determination for
substantial evidence, not whether the Board made the correct inference. The lay public
does not always appreciate what goes on in a substantial evidence review. Appellate courts are
not deciding whether the lower entity made the "right" decision.
On the separate cancellation issue, South Carolina won on standing but lost anyway.
To prevail on a Section 2(a) Lanham Act claim
for cancellation based on false association, a party must show that the challenged mark
is “unmistakably associated” with another person or institution. See Univ. of Notre
Dame Du Lac v. J.C. Gourmet Food Imports Co., Inc., 703 F.2d 1372, 1376-77 (Fed.
Cir. 1983); see also 15 U.S.C. § 1052(a).
South Carolina points to evidence that the public
associates the initials “SC” with the State of South Carolina. We agree that “SC” may
refer to the State of South Carolina. But as the evidence offered by Southern California
demonstrates, “SC” refers to many entities aside from the State.
One wonders if South Carolina, a la Miracle on 34th St., might have called on the
US Post Office to give meaning to "SC."
**Update. President Obama ripped the Supreme Court decision in the "state of the
union" on 27 Jan 2010. See
Obama Criticizes Supreme Court
UPDATE on 9 August 2009-->
See University Logos and Low-Wage Manufacture: The Branding Challenge -->
In short, a company called Knights Apparel, located in the U.S. state of South Carolina, has begun manufacturing operations in the Dominican Republic for various college-logo apparael that is then sold primarily on American college campuses. Sellling such logo-bearing apparel (such as the Harvard or Yale name or logo on a T-shirt) is one of those distinctive aspects of the American university milieu; it is also a big business. Knights Apparel is described in the article as the leading supplier of such apparel to American universities.