Likelihood of Confusion for Two Businesses In Operation for 40 Years

In re Guild Mortgage Company (Fed. Cir. 2019)

Guild Mortgage’s above-pictured mark was refused registration was refused based upon a Trademark Trial & Appeal Board (TTAB) conclusion of a likelihood of confusion with the registered mark “GUILD INVESTMENT MANAGEMENT.”

On appeal, the Federal Circuit has vacated that decision — holding that the TTAB “failed to consider relevant argument and evidence directed to DuPont factor 8.”

Under Lanham Act § 2(d), the USPTO refuses to register marks that are likely to cause confusion or mistake based upon a resemblance to a prior used or registered mark.

No trademark … shall be refused registration on the principal register on account of its nature unless it—(d) Consists of or comprises a mark which so resembles a mark registered in the [USPTO], or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive.

15 U.S.C. § 1052(d). The Federal Circuit’s predecessor court – the CCPA – set out a series of factors in a case captioned In re E.I. DuPont DeNemours & Co., 476 F.2d 1357 (C.C.P.A. 1973) (defining the DuPont Factors).

Those factors are:

(1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.

(2) The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use.

(3) The similarity or dissimilarity of established, likely-to-continue trade channels.

(4) The conditions under which and buyers to whom sales are made, i.e. “impulse” vs. careful, sophisticated purchasing.

(5) The fame of the prior mark (sales, advertising, length of use).

(6) The number and nature of similar marks in use on similar goods.

(7) The nature and extent of any actual confusion.

(8) The length of time during and conditions under which there has been concurrent use without evidence of actual confusion.

(9) The variety of goods on which a mark is or is not used (house mark, “family” mark, product mark).

(10) The market interface between applicant and the owner of a prior mark . . . .

(11) The extent to which applicant has a right to exclude others from use of its mark on its goods.

(12) The extent of potential confusion, i.e., whether de minimis or substantial.

(13) Any other established fact probative of the effect of use.

Stone Lion Capital Partners, LP v. Lion Capital LLP, 746
F.3d 1317, 1321 (Fed. Cir. 2014).

In this case – the particular factor being debated is Number 8 – longstanding “concurrent use without evidence of actual confusion.” Here, Guild Mortgage and Guild Investment have been using their marks concurrently in Southern California for more than 40 years without any evidence of confusion.  Guild Mortgage presented testimony from its CEO to the following :

Guild [Mortgage] has never received any communication from Guild Investment Management, Inc., or from any third party contending that Guild’s use of its mark has infringed upon Guild Investment Management Inc’s mark, or has caused confusion with regard to any other business which uses or incorporates the word “Guild” in its mark, in any way. Guild has no knowledge of ever receiving any inquiries from consumers regarding investment management services of any kind. Guild has never received any communication from consumers or any third party inquiring as to whether Guild was in any way affiliated with Guild Investment Management, Inc.

However, in its consideration of the DuPont factors, the TTAB did not address Factor 8 or the 40-year concurrent use. “The Board’s opinion does not mention factor 8, let alone address Guild’s argument and evidence directed to that factor. The Board erred in failing to consider Guild’s arguments and evidence.”

One factor here is whether the uncorroborated statement from Guild Mortgage’s CEO should be given any weight. Here, the Federal Circuit held that it should be given weight.

In this case, although Guild did not submit declarations from the owner of the registered mark or other parties testifying as to the absence of actual confusion, Guild nonetheless presented evidence of concurrent use of the two marks for a particularly long period of time—over 40 years—in which the two businesses operated in the same geographic market—southern California—without any evidence of actual confusion.

On remand, the TTAB will add-in its analysis of the 8th factor and then see whether its likelihood-of-confusion analysis sticks.

= = = = =

Similar issue in my hometown of Pittsburg Kansas with 70+ years of next-door competition between Chicken Annie’s and Chicken Mary’s. Fried Chicken War.

 

18 thoughts on “Likelihood of Confusion for Two Businesses In Operation for 40 Years

  1. 3

    Similar issue in my hometown of Pittsburg Kansas with 70+ years of next-door competition between Chicken Annie’s and Chicken Mary’s. Fried Chicken War.

    I can’t wait to try both. Which do you prefer?

    1. 3.1

      Magic Boy tell us about the magic.

      Magic boy tell us how new functions are possible without new structure.

    2. 3.2

      MM you can’t go around telling l ies and than run.

      Tell us magic boy how these magical functions are performed with no new structure.

      Come on boy.

      1. 3.2.1

        MM you can’t go around telling l ies and than run.

        Why not? This has been his MO for what? 13 full years? February is his anniversary, and the blight remains (largely**) unchecked.

        **Notwithstanding that Malcolm has had more posts expunged than anyone else (more than everyone else – combined), his “swagger,” as the late Ned Heller called it, remains the epitome of the Internet style shout down of post a position and then ignore any and all counters to that position.

        He is just not interested in being inte11ectually honest (and that for rather obvious reasons), nor is he interested in engaging in any meaningful dialogue on the merits.

        What’s more, it is well beyond obvious that he never has been. Shall we recall the “let’s have a nice ecosystem” attempt at DISQUS, in which it was possible to see a poster’s aggregated content? That is, except at the highest “security” setting, of which Malcolm only too eagerly availed himself of that feature when it was pointed out how easy it was to see the collection of his bile (and entire lack of meaningful contribution). For the “internet tough guy,” choosing to engage in this highest level of security was never explained, as clearly that level was unnecessary for anything except for hiding his tracks and attempting to avoid that which all of us regulars already know.

        1. 3.2.1.1

          Try breathing into a paper bag for a while, Billy.

          1. 3.2.1.1.1

            Maybe you should take your own advice…

            1. 3.2.1.1.1.1

              I’m not the one having a frothy bubble bath with Night Wiper over some (LOL) “l i e” that Night Wiper imagines he can put inside my mouth. I mean, you two can tongue each other left and right and upside down while you make up stories about all the fantastical things you imagine that I’ve written. But don’t forget to get your pets involved too! It’s just a little strange that you’d choose to do this in public. Strange and … kinky.

              Everybody can see for themselves what I’ve actually said. Both of you know this. The fact that that you can’t tell the difference between absurdly broad and ineligible patent claims, on one hand, and objects that might fall within the scope of those claims (on the other hand), is also widely known.

              [shrugs]

              Okay, resume j rking each other off, boys! We’re all very very impressed.

              1. 3.2.1.1.1.1.1

                Your reply is so far out into the weeds that I doubt that you would ever recognize the path to be on.

                That you then delve into the “kinky” is PURELY a reflection of your own mind – and yes, everyone CAN see for themselves what you have actually said**

                …and here is a hint for you: it does NOT bode well for you – that’s kind of the point that I give when I remind you of the DISQUS days and ALL of what you “actually say” was co-located to make it really easy to see “what you actually said” – and you then went to the highest level of “security” to block that feature.

                **presuming of course that this does not become added to your MOST EXPUNGED items long list of things that have been removed because you cannot control your feelings.

  2. 2

    Guild has no knowledge of ever receiving any inquiries from consumers regarding investment management services of any kind. Guild has never received any communication from consumers or any third party inquiring as to whether Guild was in any way affiliated with Guild Investment Management, Inc.

    Have fun with this one, folks.

    1. 2.1

      New Years resolution for Malcolm:

      For every post of empty snark, post one comment with some on point (directly IP related) substantive content.

    2. 2.2

      Magic boy, please tell us how the magic is performed.

      Come on magic boy. We all want to know how to build machines with new functions that have no new structure.

      1. 2.2.1

        Note how he chooses to denigrate the thought experiment set up to show the very point that you are making here.

        He throws mindless ad hominem of “Monte Hall” and will not actually engage the Grand Hall experiment.

        He blandly claims that the thought experiment has no tie to the issue, when the thought experiment clearly is directly on point.

        He then attempts to hide behind his obfuscation of law in wanting some optional claim format to be a NON-optional requirement, and denigrates entire areas of innovation that happen to NOT be in his own “desired” bucket. Anyone not in his bucket MUST be in one other bucket (the “bad” people).

        1. 2.2.1.1

          He throws mindless ad hominem of “Monte Hall” and will not actually engage the Grand Hall experiment.

          Slurp it up, Billy. Yum. You are so very very serious. All of our knees are sore from so much bowing down before you.

          1. 2.2.1.1.1

            Brush away the mindless ad hominem, and once again – a Malcolm post with nothing of note.

            by the by, your se xu al content meter has gone off the charts.

            Again.

            You should have that checked.

  3. 1

    This is exemplary of the lack of a willingness of examiners to apply the DuPont factors in general. These examiners treat DuPont factors like patent examiners treat secondary considerations even though they are an essential part of TM examination.

    1. 1.1

      Bluto,

      Perhaps it would be worthy to note that examiners of trademarks (as distinguishable from examiners of patents) are attorneys (who should know better).

      1. 1.1.1

        I would agree, but most seem bound by overly rigid supervisors who allow little to no flexibility. It’s safer for them to reject a registration when the marks are close. Seems as if when a determination is made under 2(d), rarely will arguments for the DuPont factors overcome that burden, especially those that revolve around differences in consumer differentiation and channels of trade difference, especially if the prior registration has an overly broad goods/services definition.

        One way to fix all of this is to have registrants explain each of the DuPont factors and how they relate to applied-for mark and its goods. This would make the scope of the registration more definite and prevent omnibus-type registrations. For example, if you are targeting a specific market demographic with your mark that mark should not be used to reject registrations for similar marks that are targeted towards completely different consumers.

    2. 1.2

      Yeah, but from the outside looking in (I’m a patent attorney), it seems courts are also unwilling to apply the DuPont factors, or at least the majority of the factors. Most cases I’ve read only address one or two.

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