In a unanimous decision early this week, the Federal Circuit vacated and remanded the Trademark Trial and Appeal Board’s denial of registration of the trademark

for juice bars based on an opposer’s prior registered marks for PEACE & LOVE for restaurants. 

Two of the prior registered marks were in standard character format.  The other two claimed color and design:

In reaching this decision, the Court found that the Board “did not adequately assess the weakness of the prior registered marks and did not properly consider the three-word combination of the applied-for mark.”

This case arose from GS Enterprises, LLC’s (“GS”) opposition to the registration of Juice Generation, Inc.’s (“Juice Generation”) trademark.  In finding a likelihood of confusion with GS’s marks, the Board below reasoned that the term “PEACE LOVE” was the dominant portion of Juice Generation’s mark.  The addition of the (descriptive and disclaimed) word “JUICE” was discounted as insufficient to distinguish the applied-for mark from GS’s PEACE AND LOVE marks.  While the Board considered evidence of third party uses of similar marks using the terms PEACE and LOVE, it found that evidence insufficient to establish that “customers have become conditioned to recognize that other entities use PEACE AND LOVE marks for similar services.”  Finally, the Board gave little weight to statements made by GS, during the prosecution of its own marks, that the words “peace” and “love” lacked distinctiveness.

On appeal, the Court reiterated the well-established principle that likelihood of confusion must be analyzed on a case-by-case basis, considering all evidence actually relevant to that inquiry, as stated by the final, catch-all factor in the controlling case In re E. I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (CCPA 1973).  As Juice Generation argued, and as the Court agreed, the Board erred in failing to consider the key DuPont factor of “the number and nature of similar marks in use on similar goods,” which was highly probative of the strength of the mark, its scope of protection, and any likelihood of confusion that may ensue from registration of its mark.

The uncontradicted testimony in this case showed that a considerable number of third parties used marks that incorporate the phrase “peace and love” in connection with restaurant services or food products.  Indeed, many of those were three-word phrases much like Juice Generation’s mark (e.g., PEACE, LOVE AND POPCORN; PEACE, LOVE AND PIZZA).  While the Board declined to give evidence of third party use great weight because the evidence lacked “specifics regarding the extent of sales or promotional efforts surrounding the third-party marks and, thus, what impact, if any, these uses have made in the minds of the purchasing public,” the Court rejected this treatment of the evidence.  The Court observed that the Board did not sufficiently appreciate its force.

In addition to evidence of use, the record contained evidence of third party registrations for PEACE/LOVE combinations.  The Court ruled that the existence of the registrations was itself relevant to show that some segment of the marks have a “normally understood and well-recognized descriptive or suggestive meaning, leading to the conclusion that the segment is relatively weak.”

This third-party evidence was “particularly important” in this case in view of the statements made by GS in its own trademarks’ prosecution history.  GS’s trademark applications were preliminarily denied registration based on a prior registration for “PEECE LUV CHICKEN.”   GS argued that its use of its PEACE & LOVE mark was highly suggestive of its restaurants’ atmosphere.  These statements by GS – functioning as a sort of “prosecution estoppel” – had significance in supporting Juice Generation’s argument that “PEACE & LOVE” is suggestive or descriptive.  The Court thus held that the Board gave inadequate consideration to the strength or weakness of the prior registered marks, and remanded the case for further inquiry.

The Court also concluded that the Board failed properly to consider the commercial impression made by Juice Generation’s mark as a whole.  Citing the principle that “a mark should not be dissected and considered piecemeal; rather, it must be considered as a whole in determining likelihood of confusion,” and that the mark in its “entirety is what must be assessed,” the Court erred in this case by placing too great an emphasis on only the PEACE & LOVE portion of Juice Generation’s mark.  The Board did not consider “how the three-word phrase in Juice Generation’s mark may convey a distinct meaning – including by having different connotations in consumers’ minds – from the two-word phrase used by GS.”  The Court reasoned that, while it may be proper to assign more or less weight to a given component of a mark, the Board still must consider the mark as a whole.  In this case, the Board did not err in giving less emphasis to the word JUICE when it noted that the term was generic. But the Board did not set forth an analysis showing that it avoided the error of giving no significance to the term, which is impermissible notwithstanding that the term is generic and disclaimed.

On remand, the Board was ordered to undertake a consideration of the strength of the prior registered marks, and the commercial impression conveyed by the applied-for mark viewed as a whole.

This case is of particular interest to trademark practitioners who have long understood PTO practice to favor evidence of third party use, and minimize the importance of third party registrations.  Third party registrations have commonly been considered to be akin to dictionary definitions: the registrations can illustrate how the public understands the definitions of the words, and by extension, whether the words are descriptive.  But the PTO has also long limited the probative value of third party registrations by noting that the fact of registration says little about public recognition of the mark, because a mark can be registered but not widely used or seen by the public.  Therefore, evidence of actual third party use in the marketplace has always been key.  While the Court does not contradict that understanding in this case, it reinforces the evidentiary value of third party registrations.