Wednesday, August 19, 2015

Jack Wolfskin prevails on likelihood of confusion issue in paw print case

In Wolfskin v. New Millennium:

Appellant Jack Wolfskin Ausrustung Fur Draussen
GmbH & Co. KGAA (Jack Wolfskin) applied to the Patent
and Trademark Office to register a design mark consisting
of an angled paw print for use with its clothing, footwear,
and accessory products. Appellee New Millennium
Sports, S.L.U. (New Millennium) opposed the registration
on the ground that Jack Wolfskin’s mark would likely
create confusion with its own registered mark. In response,
Jack Wolfskin filed a counterclaim for cancellation
alleging that New Millennium had abandoned its
registered mark. The Trademark Trial and Appeal Board
(Board) rejected Jack Wolfskin’s cancellation counterclaim
and sustained the opposition, thus refusing to register
Jack Wolfskin’s mark. We agree with the Board that New
Millennium did not abandon its registered mark. We
conclude, however, that the Board incorrectly found a
likelihood of confusion between the two marks because
the Board failed to properly compare New Millennium’s
mark as a whole to Jack Wolfskin’s mark and also failed
to recognize, in light of the significant evidence of paw
prints appearing in third-party registrations and usage
for clothing, the relatively narrow scope of protection
afforded to marks involving paw prints. We therefore
affirm-in-part, reverse-in-part, and remand for further
proceedings consistent with this opinion.

As to abandonment:

A trademark owner abandons its mark if use of the
mark has been “discontinued with intent not to resume.”
15 U.S.C. § 1127. If a registered mark has been abandoned,
a party may file a petition to cancel the registration
at any time. 15 U.S.C. § 1064(3). Abandonment may
also be alleged in a counterclaim to an opposition filed by
the owner of the purportedly abandoned mark.


In both contexts—priority and abandonment—the
fundamental inquiry is the same: has the original mark
been so substantially altered such that third parties
would not expect that presently used mark to be used
under and protected by the registration.. Our case law
recognizes that it would be wrong to allow a trademark
owner to claim priority to a mark that creates a different
commercial impression from the mark currently in use.
This same inequity exists when a trademark owner seeks
to avoid abandonment of the originally registered mark
even though the current mark is a materially different
version. We hold that the same legal standard applies in
both contexts. Accordingly, when a trademark owner uses
a modified version of its registered trademark, it may
avoid abandonment of the original mark only if the modified
version “create[s] the same, continuous commercial


The Board was also not persuaded
that the addition of claws to the paw prints materially
altered the mark because the claws are “a very small
component” and because “it is common knowledge that an
animal’s paws are accompanied by claws.” Id.
We agree. Despite the stylistic modifications, the
mark that New Millennium currently uses still consists of
the literal KELME element and the paw print design

As to the similarity of marks:

We agree with Jack Wolfskin that the Board failed to
adequately account for the presence of the literal, KELME
component of the New Millennium mark. Contrary to the
guideposts in our case law, the Board essentially disregarded
the verbal portion of New Millennium’s mark and
found that the two paw print designs were substantially
similar. This analysis did not consider the marks as a

The Board justified its decision to focus on the paw
print elements by stating that companies often use the
design portion of a composite mark as shorthand for their
brand. We do not opine as to whether such a commercial
practice of truncating the registered mark could, under
the right circumstances, support finding a likelihood of
confusion based on that truncated version. Even so, this
concept certainly cannot be invoked without supporting
evidence. The Board’s broad statement alone, which does
not amount to substantial evidence, cannot warrant
disregarding the verbal portion of a composite mark. See
Viterra, 671 F.3d at 1366 (recognizing that emphasis on
the literal portion of a mark “makes sense given that the
literal component of brand names likely will appear alone
when used in text and will be spoken when requested by

Rational reason arises:

This is not to say that the Board cannot, in appropriate
circumstances, give greater weight to a design component
of a composite mark. But, when the Board places
such heavy emphasis on an oft-used design element, as it
did in this case, it must provide a rational reason for
doing so. See In re Comput. Commc’ns, Inc., 484 F.2d
1392, 1393–94 (CCPA 1973) (holding that the Board did
not err in focusing on the design portion because the
Board found the large design portion to be the mark’s
“most visually prominent feature”). In this respect the
Board failed and, as a result, its conclusion that this
factor supports finding a likelihood of confusion is not
supported by substantial evidence.

As to third parties:

“[E]vidence of third-party use bears on the strength or
weakness of an opposer’s mark.” Juice Generation, 2015
WL 4400033, at *3. “The weaker an opposer’s mark, the
closer an applicant’s mark can come without causing a
likelihood of confusion and thereby invading what
amounts to its comparatively narrower range of protection.”
Id.; see also Palm Bay Imps., Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1373
(Fed. Cir. 2005) (“Evidence of third-party use of similar
marks on similar goods is relevant to show that a mark is
relatively weak and entitled to only a narrow scope of
Before the Board, Jack Wolfskin presented voluminous
evidence of paw print design elements that have
been registered and used in connection with clothing, but
the Board largely discounted these examples. The Board
gave “little weight” to the third-party registrations “because
they are not evidence that the marks are in use.”
New Millennium, 2014 WL 2997637, at *11. To the
extent the Board found any of the third-party registrations
supported by evidence of use, the Board largely
minimized this evidence because it consisted of secondary
source indicators. In many of the examples that Jack
Wolfskin provided, the paw-print design was being used
to identify colleges or high schools and their sports teams,
rather than identifying an apparel or a sporting goods


As we recently
explained in Juice Generation, such extensive evidence
of third-party use and registrations is “powerful on its
face,” even where the specific extent and impact of the
usage has not been established. 2015 WL 4400033, at *4
(detailing the extensive use of marks used in connection
with the food service industry that incorporate the words
“Peace” and “Love” ). For example, evidence of thirdparty
registrations is relevant to “show the sense in which
a mark is used in ordinary parlance,” id. at *4; that is,
some segment that is common to both parties’ marks may
have “a normally understood and well-recognized descriptive
or suggestive meaning, leading to the conclusion that
that segment is relatively weak,” id.



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