TTAB decision in Guild Mortgage vacated

The outcome:

Guild Mortgage Co. (“Guild”) appeals a decision of the
Trademark Trial and Appeal Board affirming the examiner’s
refusal to register the mark “GUILD MORTGAGE
COMPANY” and design shown below based on a likelihood of confusion
with the registered mark “GUILD
INVESTMENT MANAGEMENT.” Because the Board
failed to consider relevant evidence and argument
directed to DuPont factor 8, we vacate and remand.




The prior analysis


The examiner concluded there was a likelihood of
confusion based on her findings that the marks, nature of
the services, and trade channels were similar. The Board
affirmed those findings, concluding that, on balance, those
factors outweighed the Board’s finding that consumers
“may exercise a certain degree of care in investing money,
if not perhaps in seeking a mortgage loan.” J.A. 10–11.
Guild appeals.



DuPont factor 8:


(8) The length of time during and conditions under which
there has been concurrent use without
evidence of actual confusion

(...)

“In 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).
This is true even though “not all of the DuPont factors are
relevant or of similar weight in every case.” Id. at 1406;
see also Hewlett-Packard Co. v. Packard Press, Inc., 281
F.3d 1261, 1265 (Fed. Cir. 2002) (noting the likelihood of
confusion analysis “considers all DuPont factors for which
there is evidence of record” but may focus on dispositive
factors).
The Board erred by failing to address Guild’s argument and evidence
related to DuPont factor 8, which
examines the “length of time during and conditions under
which there has been concurrent use without evidence of
actual confusion.” DuPont, 476 F.2d at 1361.


(...)

In its decision, the Board stated that it “consider[ed]
the DuPont factors for which there were arguments and
evidence” and considered the others to be neutral. J.A. 3.
The Board’s opinion, however, provides no indication that
it considered DuPont factor 8, for which there was argument and evidence.
The Board’s opinion does not mention
factor 8, let alone address Guild’s argument and evidence
directed to that factor. The Board erred in failing to
consider Guild’s arguments and evidence. Cf. Juice
Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 1340
(Fed. Cir. 2015) (vacating and remanding where the
Board did not properly assess all relevant evidence);

(...)


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. We make no assessment as to the
evidentiary weight that should be given to Guild’s CEO’s
declaration and simply hold that it was error to not consider it.
We leave it to the Board to reconsider its likelihood of confusion
determination in the first instance in
light of all the evidence.



Separately, blawgsearch ranking on January 14, 2019:

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