Claws on Paws Slashes Abandonment Counterclaim and Likelihood of Confusion Defense: Federal Circuit | Practical Law

Claws on Paws Slashes Abandonment Counterclaim and Likelihood of Confusion Defense: Federal Circuit | Practical Law

In Jack Wolfskin Ausrustung Fur Draussen GMBH & Co. KGAA v. New Millenium Sports, S.L.U., the US Court of Appeals for the Federal Circuit affirmed the Trademark Trial and Appeal Board's (TTAB) dismissal of Jack Wolfskin's abandonment counterclaims and reversed the TTAB's determination that there is a likelihood of confusion between two marks containing certain paw print designs.

Claws on Paws Slashes Abandonment Counterclaim and Likelihood of Confusion Defense: Federal Circuit

by Practical Law Intellectual Property & Technology
Published on 21 Aug 2015 • USA (National/Federal)
In Jack Wolfskin Ausrustung Fur Draussen GMBH & Co. KGAA v. New Millenium Sports, S.L.U., the US Court of Appeals for the Federal Circuit affirmed the Trademark Trial and Appeal Board's (TTAB) dismissal of Jack Wolfskin's abandonment counterclaims and reversed the TTAB's determination that there is a likelihood of confusion between two marks containing certain paw print designs.
On August 19, 2015, in Jack Wolfskin Ausrustung Fur Draussen GMBH & Co. KGAA v. New Millenium Sports, S.L.U., the US Court of Appeals for the Federal Circuit affirmed the Trademark Trial and Appeal Board's (TTAB) dismissal of Jack Wolfskin's abandonment counterclaims in an opposition filed by New Millenium, holding that a modified version of New Millenium's mark created a continuing commercial impression as Millenium's registered mark (No. 2014-1789, (Fed. Cir. Aug. 19, 2015)). The Federal Circuit also determined that there is no likelihood of confusion between Jack Wolfskin's and New Millenium's marks containing paw prints, noting that the TTAB erred in its analysis:
  • By failing to compare the two marks as a whole.
  • In not giving weight to the extensive evidence of paw prints appearing in:
    • third-party registrations; and
    • usage for clothing.
On September 10, 2009, Jack Wolfskin applied to the USPTO to register a mark consisting of a paw print for various clothing products.
New Millenium filed an opposition arguing that the mark would likely cause confusion with New Millenium's registered mark. Jack Wolfskin responded that its mark would not cause confusion and added a counterclaim to cancel New Millenium's mark asserting that New Millenium had abandoned its mark because it was using a modified version of the registered mark.
(Registered Mark)
(Modified Mark)
The TTAB:
  • Rejected Jack Wolfskin's abandonment counterclaims finding that New Millenium's modified mark was not a material alteration of the registered mark, and therefore, New Millenium had continuously used the registered mark.
  • Sustained New Millenium's opposition and refused to register Jack Wolfskin's mark, holding that under the DuPont factors, Jack Wolfskin's mark would likely cause confusion (In re E.I. DuPont DeNemours & Co., 476 F.2d 1357 (CCPA 1973)).
On appeal, the Federal Circuit:
  • Affirmed the TTAB's decision rejecting Jack Wolfskin's abandonment counterclaims.
  • Reversed and remanded the TTAB's likelihood of confusion finding.
On Jack Wolfskin's cancellation counterclaim, the Federal Circuit addressed the standard for determining whether a trademark owner has abandoned its mark when it ceases using its literal registered mark in favor of a modified or modernized version. It noted that in priority disputes, a party may rely on an earlier form of a mark where the earlier and later marks:
  • Create the same, continuing commercial impression.
  • The later mark does not materially differ from or alter the character of the earlier mark.
The Federal Circuit recognized that it has not directly addressed this tacking issue in the context of abandonment but held that in both priority and abandonment contexts, the same legal standard applies. Specifically, when a trademark owner uses a modified version of its registered trademark, it may avoid abandonment of the original mark only if the modified version creates the same, continuous commercial impression. The Federal Circuit also held that the standard of review is the same in both contexts and therefore proceeded to review the TTAB's factual determinations for substantial evidence.
The Federal Circuit agreed with the TTAB's determination that:
  • The style of the KELME element is relatively non-distinctive and highly conventional.
  • The addition of claws to the paw was a minor change because the claws are a small component and it is common knowledge that an animal's paws are accompanied by claws.
It also noted that despite these modifications:
  • The modified mark still consists of the literal KELME element and the paw print design.
  • The KELME portion still appears in all capital, block style lettering.
  • The font adjustment was not sufficient to warrant a finding that consumers would view the original and modified marks as different.
  • Jack Wolfskin provided no persuasive reason why the modifications change the mark's commercial impression.
The Federal Circuit next addressed the TTAB's determination that there is a likelihood of confusion by focusing on the TTAB's conclusion concerning two of the Dupont factors that Jack Wolfskin asserted was erroneous. Specifically, the Federal Circuit determined that the TTAB:
  • Failed to consider New Millenium's mark as a whole. Instead, the TTAB focused on the paw print element, which was improper because:
    • there was no evidence conclusively establishing that New Millenium used the paw print alone for source identification;
    • the TTAB and New Millenium could not point to anything in the record to indicate that consumers recognized only the paw print portion of the mark as being associated with New Millenium's products; and
    • the TTAB provided no rational reason for focusing on the design component of New Millenium's composite mark.
  • Did not give sufficient weight to extensive evidence showing that third-parties registered and used paw print design elements in connection with clothing. This evidence shows that consumers are conditioned to look for differences between paw print designs and additional indicia of origin to determine the source of a given product and are not likely to be confused by different paw prints.
As a result, the Federal Circuit reversed and remanded the TTAB's likelihood of confusion determination.