United States Court of Appeals
for the Federal Circuit
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IN RE: GUILD MORTGAGE COMPANY,
Appellant
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2017-2620
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Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board in No.
86709944.
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Decided: January 14, 2019
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GEORGE EHRICH LENZ, Incorvaia & Associates, APC,
Carlsbad, CA, argued for appellant. Also represented by
JOEL L. INCORVAIA.
THOMAS L. CASAGRANDE, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA,
argued for appellee Andrei Iancu. Also represented by
THOMAS W. KRAUSE, CHRISTINA J. HIEBER, MARY BETH
WALKER.
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Before MOORE, REYNA, and CHEN, Circuit Judges.
2 IN RE: GUILD MORTGAGE COMPANY
MOORE, Circuit Judge.
Guild Mortgage Co. (“Guild”) appeals a decision of the
Trademark Trial and Appeal Board affirming the examin-
er’s refusal to register the mark “GUILD MORTGAGE
COMPANY” and design shown below based on a likeli-
hood of confusion with the registered mark “GUILD
INVESTMENT MANAGEMENT.” Because the Board
failed to consider relevant evidence and argument di-
rected to DuPont factor 8, we vacate and remand.
BACKGROUND
Guild is in the business of making mortgage loans and
has used the mark “GUILD MORTGAGE COMPANY”
since 1960. Guild was founded in San Diego, California,
and has expanded to over 40 other states. It applied to
register the mark “GUILD MORTGAGE COMPANY,” and
design, in International Class 36 for “mortgage banking
services, namely, origination, acquisition, servicing,
securitization and brokerage of mortgage loans.” J.A. 1–
2; J.A. 32. The application states that color is not claimed
as a feature of the mark and that the “mark consists of
the name Guild Mortgage Company with three lines
shooting out above the letters I and L”: J.A. 2; J.A. 31.
IN RE: GUILD MORTGAGE COMPANY 3
Registration was refused due to a likelihood of confu-
sion between Guild’s mark and the mark “GUILD
INVESTMENT MANAGEMENT” registered in Interna-
tional Class 36 for “investment advisory services,” which
is owned by Guild Investment Management, Inc. (“Regis-
trant”), an investment company in Los Angeles, Califor-
nia. The examiner concluded there was a likelihood of
confusion based on her findings that the marks, nature of
the services, and trade channels were similar. The Board
affirmed those findings, concluding that, on balance, those
factors outweighed the Board’s finding that consumers
“may exercise a certain degree of care in investing money,
if not perhaps in seeking a mortgage loan.” J.A. 10–11.
Guild appeals. We have jurisdiction under 28 U.S.C.
§ 1295(a)(4)(B).
DISCUSSION
Section 2(d) of the Lanham Act provides that the Pa-
tent and Trademark Office may refuse to register a
trademark if it so resembles a prior used or registered
mark “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). Whether a
likelihood of confusion exists is determined using the
factors set out in In re E.I. DuPont DeNemours & Co.,
476
F.2d 1357, 1361 (C.C.P.A. 1973). Likelihood of confusion
is a question of law based on underlying factual findings
made pursuant to the DuPont factors, which on appeal
from the Board are reviewed for substantial evidence.
Stone Lion Capital Partners, LP v. Lion Capital LLP,
746
F.3d 1317, 1321 (Fed. Cir. 2014). Those factors are:
(1) The similarity or dissimilarity of the marks in
their entireties as to appearance, sound, connota-
tion and commercial impression.
(2) The similarity or dissimilarity and nature of
the goods or services as described in an applica-
4 IN RE: GUILD MORTGAGE COMPANY
tion 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 un-
der 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., wheth-
er de minimis or substantial.
(13) Any other established fact probative of the ef-
fect of use.
Id. at 1319–20 (citing
DuPont, 476 F.2d at 1361).
On appeal, Guild argues the Board’s findings with re-
spect to DuPont factors 1 through 3 are not supported by
substantial evidence. It also argues the Board failed to
address its argument and evidence directed to DuPont
IN RE: GUILD MORTGAGE COMPANY 5
factor 8. Because we agree that the Board failed to con-
sider relevant argument and evidence directed to DuPont
factor 8, we vacate and remand and do not reach Guild’s
arguments regarding the other factors.
“In every case turning on likelihood of confusion, it is
the duty of the examiner, the board and this court to find,
upon consideration of all the evidence, whether or not
confusion appears likely.”
DuPont, 476 F.2d at 1362
(emphasis in original). “In discharging this duty, the
thirteen DuPont factors ‘must be considered’ ‘when [they]
are of record.’” In re Dixie Rests., Inc.,
105 F.3d 1405,
1406 (Fed. Cir. 1997) (quoting
DuPont, 476 F.2d at 1361).
This is true even though “not all of the DuPont factors are
relevant or of similar weight in every case.”
Id. at 1406;
see also Hewlett-Packard Co. v. Packard Press, Inc.,
281
F.3d 1261, 1265 (Fed. Cir. 2002) (noting the likelihood of
confusion analysis “considers all DuPont factors for which
there is evidence of record” but may focus on dispositive
factors).
The Board erred by failing to address Guild’s argu-
ment and evidence related to DuPont factor 8, which
examines the “length of time during and conditions under
which there has been concurrent use without evidence of
actual confusion.”
DuPont, 476 F.2d at 1361. In response
to the examiner’s refusal to register Guild’s mark on the
basis of likelihood of confusion, Guild argued that it and
Registrant have coexisted in business for over 40 years
without any evidence of actual confusion. Guild attached
the declaration of Mary Ann McGarry, its President and
CEO, who stated that
Guild is not aware of any instances of actual con-
fusion, or of any evidence to indicate that actual
confusion has ever existed between Guild’s use of
the mark “GUILD MORTGAGE COMPANY” and
the mark “GUILD INVESTMENT
MANAGEMENT,” or any other mark incorporat-
6 IN RE: GUILD MORTGAGE COMPANY
ing the term “Guild.” Guild has never received
any communication from Guild Investment Man-
agement, 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 Manage-
ment, Inc.
J.A. 139 ¶ 5; see also J.A. 130. The examiner rejected this
argument in a final office action refusing registration of
Guild’s mark. On appeal to the Board, Guild argued that
as to DuPont factor 8, the examiner failed to consider that
“the fact that there has been over 40 years of concurrent
use of [both marks] with no evidence of actual confusion
demonstrates that there is no possibility of confusion in
the minds of consumers between [both marks].” J.A. 439
(emphasis in original) (citing J.A. 139 ¶ 5); see also J.A.
438–40, 420, 474.
In its decision, the Board stated that it “consider[ed]
the DuPont factors for which there were arguments and
evidence” and considered the others to be neutral. J.A. 3.
The Board’s opinion, however, provides no indication that
it considered DuPont factor 8, for which there was argu-
ment and evidence. 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. Cf. Juice
Generation, Inc. v. GS Enters. LLC,
794 F.3d 1334, 1340
(Fed. Cir. 2015) (vacating and remanding where the
Board did not properly assess all relevant evidence);
IN RE: GUILD MORTGAGE COMPANY 7
Hewlett-Packard, 281 F.3d at 1267 (“Because it must
consider each DuPont factor for which it has evidence of
record, the Board erred when it declined to compare the
services described in Packard Press’s application with the
goods and services described in HP’s registrations.” (cita-
tion omitted));
DuPont, 476 F.2d at 1362 (“We find no
warrant, in the statute or elsewhere, for discarding any
evidence bearing on the question of likelihood of confu-
sion.” (emphasis in original)).
The PTO responds that the Board properly need not
credit this argument because in ex parte registration
proceedings, the “uncorroborated statements of no known
instances of actual confusion” of the only party involved in
the case are “of little evidentiary value.” Appellee’s Br. 42
(quoting In re Majestic Distilling Co.,
315 F.3d 1311, 1317
(Fed. Cir. 2003)). And during oral argument, the PTO
argued that evidence related to DuPont factor 8 was
“irrelevant.” Oral Arg. at 24:06–25:12, 26:36–27:40. But
these proclamations to dismiss Guild’s evidence out of
hand sweep too broadly. DuPont factor 7 considers the
“nature and extent of any actual confusion.” DuPont
factor 8 considers the “length of time during and condi-
tions under which there has been concurrent use without
evidence of actual confusion.” In Majestic Distilling, this
court held, “[w]ith regard to the seventh DuPont factor,
we agree with the Board that Majestic’s uncorroborated
statements of no known instances of actual confusion are
of little evidentiary
value.” 315 F.3d at 1317. The Majes-
tic Distilling court did not extend this holding to the
eighth factor, which it termed one of Majestic’s “principal
challenge[s].”
Id. The court considered evidence that the
marks were used concurrently for 16 years without creat-
ing confusion.
Id. Such evidence weighs against a likeli-
hood of confusion, but must then be balanced against the
other evidence of record. The Majestic Distilling court
held that while “Majestic’s principal arguments are not
8 IN RE: GUILD MORTGAGE COMPANY
without merit, . . . we find the balance in this case tilts
towards a likelihood of confusion.”
Id. at 1319.
In this case, although Guild did not submit declara-
tions 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. Further, the Board has
found that Guild’s and Registrant’s services are similar
and move in the same channels of trade, which is relevant
when assessing whether the absence of actual confusion is
indicative of the likelihood of confusion. The Board erred
in its analysis by failing to consider this evidence and
argument as to factor 8. Because this evidence weighs in
favor of no likelihood of confusion, we do not deem the
Board’s error harmless. We make no assessment as to the
evidentiary weight that should be given to Guild’s CEO’s
declaration and simply hold that it was error to not con-
sider it. We leave it to the Board to reconsider its likeli-
hood of confusion determination in the first instance in
light of all the evidence.
CONCLUSION
For the foregoing reasons, we vacate the Board’s deci-
sion that there is a likelihood of confusion between the
marks, and we remand for further proceedings consistent
with this opinion.
VACATED AND REMANDED
COSTS
Costs to Appellant.
