Prior Registrations and Coexistence Fail to Outweigh Mark and Goods Similarities

Overview

This decision provides an in-depth analysis of the thirteenth DuPont factor, specifically regarding the coexistence of an applicant's prior registrations with cited marks. The Board clarified the application of the Strategic Partners and Allegiance Staffing precedents, emphasizing that prior registrations do not create an agency estoppel, but rather provide circumstantial evidence of how marketplace confusion might be perceived. Furthermore, it details when each of the two frameworks applies in an analysis.

Background

The Applicant filed an application seeking to register the mark REAL in standard characters for nut-based snack foods, potato-based snack foods, pulse-based snack foods, and seed-based snack foods in International Class 29. The application also sought registration for cereal-based snack foods, grain-based snack foods, multigrain-based snack foods, and rice-based snack foods in International Class 30, as well as carbonated beverages, fruit juices, fruit nectars, and fruit-flavored beverages in International Class 32.

The Examining Attorney refused registration on two distinct grounds. First, the mark was deemed merely descriptive of the goods under Section 2(e)(1). Second, the mark was found likely to cause confusion under Section 2(d) in view of four registered marks owned by different entities.

• Registration No. 6775796: REAL for seltzer water in International Class 32;

• Registration No. 6218117: for fruit juice beverages and coconut water in International Class 32;
• Registration No. 7210384: for nut-based food bars International Class 29;
• Registration No. 7151325: for for cookies in International Class 30;

After a final refusal, the Applicant appealed to the Trademark Trial and Appeal Board.

How the Board Analyzed the DuPont Factors

DuPont #1: Similarity of the Marks

In assessing the similarity of the marks, the Board compared the Applicant's mark to four cited registrations and found each of them to be identical or highly similar.

The '796 Registration

This mark is also REAL in standard characters, making it identical to the Applicant's mark.

The '117 Registration

This mark depicts the word "Real" in a cursive typeface. Because the Applicant applied for a standard-character mark, which grants exclusive rights to use the word in any typeface, the Board considered this mark to be legally identical to the Applicant's mark.

The '325 Registration

This mark features the word "REAL" in a large, blocky typeface accompanied by several small design elements, including a man in a kayak, trees, mountains, a bear, a moon, and stars. The Board found that the literal element "REAL" completely dominates the overall commercial impression of the mark, and the design elements do little to hide the word or alter its meaning. Therefore, this mark was deemed highly similar to the Applicant's mark.

The '384 Registration

This mark displays the word "REAL" in a bold, plain typeface, but replaces the letter "A" with a stylized mountain peak. The Board concluded that the mountain design does nothing to detract from the dominance of the term "REAL", making the overall impression of the mark highly similar to the Applicant's mark.

For each of the four cited registrations, the Board determined that the similarities in the marks weighed in favor of a conclusion that consumer confusion is likely.

DuPont #2: Similarity of the Goods

In evaluating the second likelihood-of-confusion factor, the Board compared the goods listed in the Applicant's application to those in the four cited registrations and found them to be either identical or closely related.

The '796 Registration

This registration lists "seltzer water" in International Class 32. The Applicant's Class 32 goods include the broader category of "Carbonated beverages, non-alcoholic." Taking judicial notice that seltzer is a type of carbonated water, the Board concluded that seltzer water is encompassed by the Applicant's wording, making the goods legally identical in part.

The '117 Registration

This registration lists "fruit beverages" in Class 32, a product that is also explicitly listed in the Applicant's application for Class 32. Because both list the exact same product, the Board found the goods to be identical in part.

The '384 Registration

This registration lists "Nut-based food bars" in Class 29, which do not directly overlap with or match any goods listed in the application. However, identity of goods is not required. The Examining Attorney provided over a dozen third-party use-based registrations covering both the Applicant's goods and the goods in the '384 Registration, demonstrating that consumers are accustomed to seeing these types of foods sold under a single mark. Based on this evidence, the Board found the foods to be closely related.

The '325 Registration

This registration lists "Cookies" in Class 30. Similar to the '384 Registration, there are no overlapping or identical goods in the application. Relying on another set of over a dozen third-party registrations covering both the Applicant's goods and the Registrant's cookies, the Board determined that these foods are also closely related.

For each of the four cited registrations, the Board concluded that the identical nature or close relatedness of the goods weighed in favor of a conclusion that consumer confusion is likely.

DuPont #3: Similarity of the Trade Channels and Classes of Customers

Because the goods in Class 32 were found to be identical to those in two of the cited registrations, and because neither the application nor the registrations contained restrictions on trade channels, the Board applied a legal presumption. This presumption holds that identical goods travel in the same trade channels to the same classes of customers. The Board noted that the Applicant failed to provide any evidence to rebut this presumption.

For the non-identical goods in Classes 29 and 30, the Board found this factor to be neutral, as the Examining Attorney did not provide specific evidence showing an overlap in the normal trade channels for those distinct snack products.

DuPont #13: The Effect of Applicant's Prior Registrations

The Applicant argued that the thirteenth DuPont factor favored registration based on its ownership of two prior registrations: Registration No. 5816380

and Registration No. 6830046 (REAL in standard characters). The Applicant relied on the Strategic Partners and Allegiance Staffing decisions to argue that the coexistence of these marks with the cited registrations proved that confusion was unlikely.

The Board conducted a detailed analysis of these precedents. It clarified that Strategic Partners does not create an estoppel against the USPTO but rather serves as circumstantial evidence. If a registrant allows an Applicant's similar mark to coexist for over five years without challenge, it suggests the registrant does not believe confusion is likely. However, the Board identified four criteria for this inference:

• The closeness of the mark in the prior registration to the current application.
• Whether the current mark is closer to the cited mark than the prior mark was.
• The closeness of the goods/services in the prior registration to the current ones.
• The duration of the coexistence.

While the Strategic Partners framework focuses on inferences drawn from the inaction of a cited registration's owner, the Allegiance Staffing line of cases focuses on the collective views and actions of multiple USPTO examining attorneys. This framework only applies to a narrow and specific set of circumstances where:

• The applicant previously owned a registration for the identical mark covering the exact same goods or services.
• While the applicant's prior registration was active, several different examining attorneys reviewed and allowed the cited registrations (and potentially other similar marks) to issue without refusing them based on a likelihood of confusion with the applicant's mark.
• The applicant inadvertently allowed its prior registration to lapse, but promptly attempted to correct the error by filing a new application (e.g., within two weeks of the expiration).

The Board disregarded the '380 Registration as having any probative value because the mark "REAL TASTE OF HOMELAND" with design elements was significantly different from the current "REAL" mark. Most importantly, the Applicant had disclaimed the word "REAL" in the '380 Registration, which the Board characterized as an admission that the term was not source-identifying at the time.

The Board quickly determined that the Allegiance Staffing precedent does not apply to the Applicant’s prior '046 Registration. Unlike the specific circumstances in Allegiance Staffing, the '046 Registration is still active and existing, the identified goods in the '046 Registration are not identical to those in the current application, and only two of the four cited registrations were issued by examiners after the '046 Registration was issued. Therefore, this case lacks a pattern of multiple examining attorneys finding no likelihood of confusion under identical circumstances.

The Board also analyzed the '046 Registration against each of the four cited marks under the Strategic Partners framework.

The '117 Registration

The '046 Registration and the '117 Registration have co-existed for just shy of four years. Because the '046 Registration is in standard characters, the marks are essentially identical, and they cover legally identical goods (water beverages and coconut water, respectively). However, the Board noted a countervailing reason for the cited registrant's inaction: the applicant's '046 Registration claims an earlier date of first use (2012) than the '117 Registration (2016), meaning the cited registrant may simply be avoiding a cancellation counterclaim against its own mark. Ultimately, the Board found this factor lends some support to the applicant's position that confusion is unlikely.

The '796 Registration and the '117 Registration

Similarly, these two marks have co-existed for almost four years, feature identical standard character marks, and list legally identical goods (water beverages and seltzer water). For the same reason as above—the applicant’s earlier date of first use might be deterring the registrant from initiating a dispute—the Board concluded this factor lends some support to a conclusion that confusion is unlikely.

The '384 Registration

The prior registration and the cited mark have coexisted for fewer than three years, which is significantly less than the five-year period highlighted in Strategic Partners. While the marks are similar, they are not identical because of the mountain design in the cited mark. Furthermore, there is nothing equivalent to the cited "nut-based food bars" in the '046 Registration. Again, the Applicant has an earlier priority date. Consequently, the Board found this only counts a bit in the Applicant's favor, carrying less weight than it did for the '117 and '796 Registrations.

The '325 Registration

Like the '384 mark, this registration coexisted with the '046 Registration for fewer than three years. The marks are similar but not identical due to the small decorative designs in the '325 mark, and the '046 Registration lacks any goods equivalent to the "cookies" in the cited registration. Taking the Applicant's earlier first use date into account as well, the Board ruled that this coexistence counts a bit in the Applicant's favor, but again, less so than the first two marks.

Board’s Decision

The Board affirmed the refusal to register the mark REAL in all three International Classes under Section 2(d) of the Trademark Act. The Board concluded that the first two DuPont factors, similarity of the marks and relatedness of the goods, weighed heavily in favor of a likelihood of confusion. The Board found the marks to be identical or highly similar across all citations. Because the Section 2(d) refusal was dispositive for all classes, there was no need to reach or analyze the alternative refusal under Section 2(e)(1) regarding whether the mark was merely descriptive.

Although this case is designated as non-precedential, it felt like a masterclass on the thirteenth DuPont factor anyway. Not only did the Board analyze the cited registrations one by one against the Applicant's prior registration, but more importantly, it clarified and laid out the two lines of cases that have emerged relating to the treatment of prior registrations, including a footnote distinguishing a prior registration that had issued under Section 44(e).