Federal Circuit IP
In re: Charger Ventures, LLC
Case No. 22-1094, Decided April 13, 2023
Prost, Reyna, Stark
Overview: TTAB findings on likelihood of confusion under DuPont factors analysis are supported by substantial evidence where the Board’s pathway may be reasonably discerned, even if weight accorded to each factor is not explicit.
Facts/Background:
- Charger Ventures filed intent-to-use TM application to register “SPARK LIVING” on the Principal Register for leasing of real estate, real estate listing, real estate and property management services. Registration refused based on likelihood of confusion with prior filed TM “SPARK” for real estate services, rental brokerage, leasing and managing commercial property, offices and office space.
- Charger appealed to TTAB. TTAB denied registration and found likelihood of confusion based on five of the thirteen DuPont
- Charger Ventures LLC appeals the TTAB decision arguing (i) the Board erred in its analysis of the DuPont factors, and (ii) the analysis lacks substantial evidence as Board failed to indicate the weight accorded to each of the factors.
Issues: (i) Whether the Board had substantial evidence to support its findings under each factor. (ii) Whether the Board erred in failing to indicate weight accorded to each factor in making it decision.
Standard of Review: Likelihood of confusion and weighing of DuPont factors are reviewed de novo. Board’s findings on each DuPont factor are reviewed for substantial evidence (a reasonable mind might accept as adequate to support a conclusion).
Analysis of Dupont Factors for Determining Likelihood of Confusion: The Board is required to consider each DuPont factor for which it has evidence but can focus its analysis on dispositive factors, and weight given to each factor depends on the circumstances of the case.
CAFC Decision and Analysis: Affirmed Board’s finding of likelihood of confusion.
Issue (i): Was there sufficient evidence to support the Board’s findings on each factor? – YES
- Rationale: Analysis of the Board’s finding shows
- (1) similarity of the nature of the services – supported by website evidence that commercial real estate and residential real estate are types of services that may emanate from a single source under a single mark;
- (2) similarity of trade channels – overlapping trade channels shown in evidence where commercial and residential real estate are marketed on the same website;
- (3) class of purchasers – acknowledged purchasers may use elevated care due to nature and cost of transaction (however even careful or sophisticated purchasers are not immune from source confusion) and purchasers overlap as people who seek commercial real estate also seek residential real estate;
- (4) presumed validity of the mark – use-based evidence of SPARK in connection with other real estate services is probative of commercial weakness, however, even weak marks are afforded protection for identical or similar services and all marks on Principal Register are presumed valid; and
- (5) similarities of the marks – (a) SPARK is dominant term (most likely be remembered by consumers) and LIVING is subordinate as it is descriptive and second word in the mark, therefore marks are similar in sound, appearance, meaning and commercial impression, (b) when compared in entireties, SPARK is wholly incorporated into SPARK LIVING.
- Holding: Factual findings of the Board for each DuPont factor is supported by substantial evidence.
Issue (ii): Is there substantial evidence to support the Board’s conclusion? – YES
- Rationale: In order for the Appellate Court to exercise its duty of review, the Board must provide a reasonable explanation for its findings, explaining the weight it assigned to the relevant factors. However, where the Board’s path may be reasonably discerned based on the record as a whole, the Board’s findings on likelihood of confusion will be upheld.**
**TTAB Conclusion: While we have found that purchasers may exercise care given the nature of the real estate services, there is insufficient evidence in the record regarding the degree of purchaser care or sophistication to overcome the close similarity of the marks and the relatedness of the services. Given those similarities, as well as the overlapping channels of trade, we find that confusion is likely. We make this conclusion despite our finding of some commercial weakness of the term SPARK in connection with real estate services because “even weak marks are entitled to protection against registration of similar marks” for similar services.
- Holding: The Board’s path is reasonably discernable and therefore there is substantial evidence to support its conclusion.
Takeaways:
- Low chances of success on Appeal of TTAB decision finding likelihood of confusion where there is reasonably adequate evidence to support the Board’s conclusion on each DuPont factor and relative weights of the factors are discernable.
- Do a thorough TM search before investing in a brand name!