Before O’Malley, Reyna, and Hughes.  Appeal from the Trademark Trial and Appeal Board.

Summary: Courts should not give too much weight to evidence purporting to show a lack of actual confusion in an ex parte proceeding. 

The examiner refused registration of the mark DETROIT ATHLETIC CO. for being confusingly similar to DETROIT ATHLETIC CLUB.  The Board affirmed, concluding that consumers are likely to be confused because the marks are similar, the goods and services are related, and the channels of trade and consumers overlap.  The Board also rejected an affidavit purporting to show a lack of actual confusion. 

The Federal Circuit considered the DuPont factors for likelihood of confusion and affirmed.  The Federal Circuit held that the TTAB correctly gave less weight to the terminal terms, “Co.” and “Club,” because they were non-source identifying and had both been disclaimed in their respective applications.  The terminal terms are merely descriptive of business forms, and such terms will usually not avoid likelihood of confusion to an otherwise confusingly similar mark.  The Federal Circuit also affirmed the TTAB’s determination that the nature of the goods and services, and channels of trade, were substantially similar because both the applicants’ services involved selling clothing.  The Federal Circuit also rejected the evidence purporting to show a lack of actual confusion because the standard is likelihood of confusion, not actual confusion.  The court also criticized the affidavit as being conclusive and noted that courts should not give too much weight to such evidence in an ex parte proceeding.  Thus, the Federal Circuit affirmed.