Focus Your Vision on the DuPont Factors

FocusVision Worldwide v. Information Builders Inc. (Fed. Cir. 2021)

The Federal Circuit has affirmed the TTAB’s decision refusing to register FocusVision’s eponymous mark FOCUSVISION after being opposed by IBI based upon its FOCUS marks.  The appeal focused in part on the similarity of goods, trade channels, and sales.

IBI is a software company known for its FOCUS database programming language. FocusVision does market research and was attempting to register its mark in three different classes:

• Class 42 – in particular for online software for market research, including data analysis for marketing, market research, and focus groups.
• Class 35 – in particular for market research.
• Class 38 – in particular for streaming or broadcast of market research interviews.

IBI opposed only the Class 42 request and the tribunals all found the complaint valid.  IBI’s mark registration generally covers computer software for database management and decision support systems. Although FocusVision’s Class 42 submission is limited to market research, the court still found substantial overlap.  “Even if FocusVision’s services are not identical to IBI’s goods, they are still closely enough related to support a finding of likelihood of confusion.” See In re Detroit Athletic Co., 903 F.3d 1297 (Fed. Cir. 2018) (“while the goods and services are not identical, they substantially overlap, which weighs in favor of finding a likelihood of confusion”).

IBI’s lowest cost service is $30,000 for its “WebFocus” tool.  A full “Focus” is significantly more expensive.  FocusVision argued that the high price, major commitment associated with the purchase, and sophistication of the buyers all suggested against confusion.  On appeal, the Federal Circuit noted that “even sophisticated purchasers may be confused by marks that are sufficiently similar.”  Slip Op. (finding substantial evidence supporting the conclusion that this factor is “neutral” in the DuPont analysis).

Finally, although there was no proof of any actual confusion, the court also found this “neutral” because the products had only been overlapping on the market for four years. “Here, the relevant period during which actual confusion could have occurred was relatively short—from June 2014 to January 2018.”