Monday, July 20, 2015

Juice Generation gets a remand on PEACE LOVE AND JUICE mark

From the decision:

Juice Generation applied to the Patent and Trade-
mark Office to register a mark consisting of
and a design for use with its juice bar services.
GS Enterprises opposed the application on the ground
that Juice Generation’s mark was likely to
cause confusion with its own family of marks, all of which
contain the phrase “PEACE & LOVE”
and are registered for use with restaurant services. The Trademark Trial
and Appeal Board sustained the opposition and refused to
register Juice Generation’s mark.
We conclude that the Board did not adequately assess the weakness of GS’s
marks and did not properly
consider the three-word
combination of
Juice Generation’s mark as a whole in
comparing it to the two-word
combination in GS’s marks.
We therefore remand for further proceedings

Of relevance here was the weakness of the earlier mark:

The weaker an oppos-
er’s mark, the closer an applicant’s mark can come with-
out causing a likelihood of confusion and thereby invading
what amounts to its comparatively narrower range of
protection. Id. (“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
In re Coors Brewing Co., 343 F.3d 1340,
1345 (Fed. Cir. 2003)
(third-party use can establish that
mark is not strong);
Fleetwood Co. v. Mende, 298 F.2d
797, 799 (CCPA 1962) (“Where a party uses a weak mark,
his competitors may come closer to his mark than would
be the case with a strong mark without violating his

An earlier Daktronics case was cited:

Tektronix, Inc. v. Daktronics, Inc.,
534 F.2d 915, 917 (CCPA 1976) (even if “there is no
evidence of actual use”
of “third-party registrations,” such registrations “may be
given some weight to show the meaning of a mark in the
same way that dictionaries are used”)

The CAFC noted:

In the present case, the Board overlooked this aspect
of the inquiry by insisting on specifics as to the third-
party use. It never inquired whether and to what
degree the extensive evidence of third-party use
and registrations indicates
that the phrase PEACE & LOVE carries a
suggestive or descriptive connotation in the food service
industry, and is weak for that reason.
See , e.g., Anthony’s Pizza & Pasta Int’l, Inc., 95 U.S.P.Q.2d 1271, at *8
(T.T.A.B. Nov. 10, 2009)

As to prosecution history estoppel (in trademarks):

Although estoppel based on prosecu-
tion of an application has played a more limited role for
trademarks than for patents, see Anthony’s,
95 U.S.P.Q.2d 1271, at *12, aff’d,
415 F. App’x 222 (Fed. Cir. 2010) (not mentioning estoppel);
see also 6 McCarthy on Trademarks
and Unfair Competition §32:111 (4th ed. 2015),
we have recognized that such comments have
significance as “facts ‘illuminative of shade and tone in the total picture con-
fronting the decision maker, ’ ”
GS Enters. , 2014 WL 2997639, at *7
(quoting Interstate Brands Corp. v. Celes-
tial Seasonings, Inc., 576 F.2d 926, 929 (CCPA 1978)
); see also Stone Lion Capital Partners, L.P. v. Lion Capital
LLP, 746 F.3d 1317, 1322 (Fed. Cir. 2014).

Of the remand:

A remand is needed for the Board to undertake that
consideration, along with consideration of the evidence of
third-party use.
We cannot deem the Board’s errors harmless.
The remand analysis might well call for an
answer to the overall likelihood -of-confusion question
different from the answer the Board gave in the decision
on review.



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