Juice Generation, Inc. v. Gs Enterprises LLC , 794 F.3d 1334 ( 2015 )

United States Court of Appeals
for the Federal Circuit
______________________
JUICE GENERATION, INC.,
Appellant
v.
GS ENTERPRISES LLC,
Appellee
______________________
2014-1853
______________________
Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board in No.
91206450.
______________________
Decided: July 20, 2015
______________________
NIGAMNARAYAN ACHARYA, Seyfarth Shaw LLP, Atlan-
ta, GA, argued for appellant. Also represented by
MICHAEL H. BANIAK, Chicago, IL.
JUSTEN S. BARKS, Craft Chu PLLC, Houston, TX, ar-
gued for appellee. Also represented by LOREN JEREMY
CRAFT.
_______________________
Before NEWMAN, REYNA, and TARANTO, Circuit Judges.
2 JUICE GENERATION, INC. v. GS ENTERPRISES LLC
TARANTO, Circuit Judge.
Juice Generation applied to the Patent and Trade-
mark Office to register a mark consisting of “PEACE
LOVE AND JUICE” and a design for use with its juice
bar services. GS Enterprises opposed the application on
the ground that Juice Generation’s mark was likely to
cause confusion with its own family of marks, all of which
contain the phrase “PEACE & LOVE” and are registered
for use with restaurant services. The Trademark Trial
and Appeal Board sustained the opposition and refused to
register Juice Generation’s mark. We conclude that the
Board did not adequately assess the weakness of GS’s
marks and did not properly consider the three-word
combination of Juice Generation’s mark as a whole in
comparing it to the two-word combination in GS’s marks.
We therefore remand for further proceedings.
BACKGROUND
Juice Generation operates a chain of juice bars in the
New York City area. Under 15 U.S.C. § 1051(b), it ap-
plied to the PTO in 2012 to register the following mark on
the principal register in connection with “[j]uice bar
services”:
JUICE GENERATION, INC. v. GS ENTERPRISES LLC 3
U.S. Trademark Application Serial No. 85549820 (filed
Feb. 22, 2012). The application disclaimed the word
“juice.” Id.
GS owns four related registrations, each incorporating
the phrase “PEACE & LOVE,” all on the principal regis-
ter, and all in connection with “[r]estaurant services”:
“P & L PEACE & LOVE,” Registration No. 3291917; “ALL
YOU NEED IS PEACE & LOVE,” Registration No.
3291918; “PEACE & LOVE,” Registration No. 3713785;
“P & L PEACE & LOVE NEW YORK,” Registration No.
3885867 (disclaiming “New York”). Two of the marks also
include designs:
GS opposed Juice Generation’s application under 15
U.S.C. § 1052(d), arguing that Juice Generation’s “PEACE
LOVE AND JUICE” mark created a likelihood of confu-
sion with GS’s family of marks.
The Trademark Trial and Appeal Board evaluated the
existence of a likelihood of confusion by following our
predecessor court’s non-exhaustive listing of thirteen
considerations in In re E. I. DuPont DeNemours & Co.,
476 F.2d 1357, 1361 (CCPA 1973). The Board determined
that the similarity of the marks, the similarity of the
services, the similarity of the trade channels, and the
similarity of the buyers and purchasing conditions all
pointed to a likelihood of confusion, whereas the number
4 JUICE GENERATION, INC. v. GS ENTERPRISES LLC
of similar marks in use was neutral or at most pointed
slightly against a likelihood of confusion. The Board also
considered that Juice Generation had been using its
“PEACE LOVE AND JUICE” mark for several years and
yet the record contained no evidence of actual confusion,
but the Board found that, on the facts, “[t]he lack of
evidence of actual confusion carries little weight” on the
question of likely confusion, because there was no evi-
dence “to establish that the parties’ use of their respective
marks has been at such a level that there have been
meaningful opportunities for actual confusion to have
occurred among purchasers.” GS Enters. LLC v. Juice
Generation, Inc., No. 91206450, 2014 WL 2997639, at *8
(T.T.A.B. June 18, 2014).
When comparing Juice Generation’s mark to GS’s
marks, the Board first identified the words of the mark,
rather than its design, as the dominant feature, and then
further zeroed in on “PEACE LOVE” as “[t]he dominant
portion of [Juice Generation’s] mark.” Id. at *5. It con-
cluded that “[t]he dominant portion of [Juice Genera-
tion’s] mark, PEACE LOVE, and the entirety of [GS’s]
mark PEACE & LOVE are virtually identical in appear-
ance and sound.” Id. Then, recognizing that it “must
consider [Juice Generation’s] mark in its entirety, not
merely the dominant portion,” the Board declared that
“the additional disclaimed word ‘JUICE’ and non-
distinctive design features do not serve to sufficiently
distinguish [Juice Generation’s] mark from [GS’s] stand-
ard character mark PEACE & LOVE.” Id. at *6. The
Board observed that GS’s standard character mark was
not limited by font, size, or color or to horizontal or verti-
cal display, but it did not elaborate on its consideration of
the three-word combination “PEACE LOVE AND JUICE”
in its entirety. Id. at *5–6.
The Board also considered the testimony of Juice
Generation’s founder regarding third-party uses of similar
marks—“Peace Love and Pizza,” “Peace Love and Pop-
JUICE GENERATION, INC. v. GS ENTERPRISES LLC 5
corn,” and more in a similar vein. 1 Id. at *6. But the
Board determined that this evidence did not enable it “to
find that customers have become conditioned to recognize
that other entities use PEACE AND LOVE marks for
similar services,” which would have cut against a likeli-
hood of confusion. Id. at *7.
Finally, the Board reviewed statements made by GS
during the prosecution of its own marks, which might
have demonstrated GS’s own belief that the words “peace”
and “love” lack distinctiveness. Id. But the Board gave
those statements little weight. Id.
On balance, the Board decided, the DuPont factors
favored the conclusion that “consumers familiar with
[GS’s] ‘restaurant services’ rendered under the mark
PEACE & LOVE would be likely to mistakenly believe,
1 Examples of registered or unregistered marks in
the record include the following: “PEACE LOVE
NOODLES HE AI MIAN,” “PEACE LOVE AND PIZZA,”
“PEACE LOVE YOGURT,” “PEACE, LOVE & ICE
CREAM,” “PEACE, LOVE AND LITTLE DONUTS,”
“PEACE.LOVE.DÖNER,” “PEACE, LOVE & BEER,”
“PEACE, LOVE, AND CHOCOLATE,” “PEACE LOVE &
OATS,” “PEACE. LOVE. & GOOD FOOD.,” “PEACE,
LOVE AND FRENCH FRIES,” “PEACE, LOVE &
CUPCAKES,” “PEACE LOVE BURRITOS,” “PEACE,
LOVE, AND BURGERS,” “PEACE · LOVE ·
PANCAKES,” “PEACE LOVE & BARBECUE,” “PEACE,
LOVE & CRUNCH,” “PEACE LOVE GRANOLA,”
“PEACE, LOVE AND PINOT,” “PEACE. LOVE.
TREATS.,” “PEACE, LOVE, AND CHOPS,” “PEACE,
LOVE, AND HOT DOGS,” “PEACE. LOVE. PASTA.,”
“PEECE LUV CHIKIN,” “PEACE, LOVE &
CHEESECAKE,” “PEACE LOVE AND APPLE PIE.”
Eight of those marks were particularly featured in testi-
mony by Juice Generation’s founder.
6 JUICE GENERATION, INC. v. GS ENTERPRISES LLC
upon encountering [Juice Generation’s] mark PEACE
LOVE AND JUICE and design for ‘juice bar services,’ that
the services originated from or are associated with or
sponsored by the same entity.” Id. at *9. The Board
therefore sustained the opposition and refused to register
Juice Generation’s mark.
Juice Generation appeals that decision. We have ju-
risdiction under 28 U.S.C. § 1295(a)(4)(B).
DISCUSSION
The Board’s ultimate conclusion regarding a likeli-
hood of confusion—which is a ground for Board refusal to
register a mark, 15 U.S.C. § 1052(d)—is a question of law
that we review de novo. StonCor Grp., Inc. v. Specialty
Coatings, Inc., 759 F.3d 1327, 1331 (Fed. Cir. 2014). This
legal conclusion is based on underlying factual findings,
which we review for substantial evidence. Id. “Substan-
tial evidence is more than a mere scintilla. It means such
relevant evidence as a reasonable mind might accept as
adequate to support a conclusion.” Consol. Edison Co. v.
N.L.R.B., 305 U.S. 197, 229 (1938).
Likelihood of confusion must be analyzed on a case-
by-case basis, considering all evidence actually relevant to
that inquiry, as stated by DuPont’s final, catch-all item in
its list of potentially relevant considerations. 476 F.2d at
1361; see also Coach Servs., Inc. v. Triumph Learning
LLC, 668 F.3d 1356, 1366 (Fed. Cir. 2012) (DuPont’s
specific items are not exhaustive of inquiry); M2 Software,
Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382 (Fed. Cir.
2006) (even within DuPont list, only factors that are
“relevant and of record” need be considered). In this case,
we agree with Juice Generation that the Board inade-
quately assessed and weighed the strength or weakness of
GS’s marks—a consideration that is connected to “the
number and nature of similar marks in use on similar
goods,” identified in DuPont, 476 F.2d at 1361, and is in
any event probative of the likelihood of confusion—and
JUICE GENERATION, INC. v. GS ENTERPRISES LLC 7
gave inadequate consideration to Juice Generation’s
three-word combination in its “entiret[y],” id., as distinct
from GS’s two-word combination. Both errors are signifi-
cant given the evidence in this case, which includes a
substantial number of third-party marks incorporating
the phrase “peace and love” in connection with restaurant
services or food products, the bulk of which are three-
word phrases much like Juice Generation’s mark.
A
As the Board understood, sufficient evidence of third-
party use of similar marks can “show that customers . . .
‘have been educated to distinguish between different . . .
marks on the basis of minute distinctions.’ ” 2 McCarthy
on Trademarks and Unfair Competition § 11:88 (4th ed.
2015) (quoting Standard Brands, Inc. v. RJR Foods, Inc.,
192 U.S.P.Q. 383 (T.T.A.B. 1976)). More broadly, evi-
dence of third-party use bears on the strength or weak-
ness of an opposer’s mark. See Palm Bay Imps., Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
F.3d 1369, 1373 (Fed. Cir. 2005). The weaker an oppos-
er’s mark, the closer an applicant’s mark can come with-
out causing a likelihood of confusion and thereby invading
what amounts to its comparatively narrower range of
protection. Id. (“Evidence of third-party use of similar
marks on similar goods is relevant to show that a mark is
relatively weak and entitled to only a narrow scope of
protection.”); In re Coors Brewing Co., 343 F.3d 1340,
1345 (Fed. Cir. 2003) (third-party use can establish that
mark is not strong); Fleetwood Co. v. Mende, 298 F.2d
797, 799 (CCPA 1962) (“Where a party uses a weak mark,
his competitors may come closer to his mark than would
be the case with a strong mark without violating his
rights.”).
Although Juice Generation introduced evidence of a
fair number of third-party uses of marks containing
“peace” and “love” followed by a third, product-identifying
8 JUICE GENERATION, INC. v. GS ENTERPRISES LLC
term, see note 1, supra, the Board discounted the evidence
because there were no “specifics regarding the extent of
sales or promotional efforts surrounding the third-party
marks and, thus, what impact, if any, these uses have
made in the minds of the purchasing public.” GS Enters.,
2014 WL 2997639, at *7. Accordingly, the Board deter-
mined it could not “find that customers have become
conditioned to recognize that other entities use PEACE
AND LOVE marks for similar services.” Id. The Board’s
treatment of the evidence of third-party marks, we con-
clude, does not adequately account for the apparent force
of that evidence.
The “specifics” as to the extent and impact of use of
the third parties’ marks may not have been proven, but in
the circumstances here, Juice Generation’s evidence is
nonetheless powerful on its face. The fact that a consid-
erable number of third parties use similar marks was
shown in uncontradicted testimony. In addition, “[a] real
evidentiary value of third party registrations per se is to
show the sense in which . . . a mark is used in ordinary
parlance.” 2 McCarthy on Trademarks and Unfair Com-
petition § 11:90 (4th ed. 2015) (emphasis added). “Third
party registrations are relevant to prove that some seg-
ment of the composite marks which both contesting
parties use has a normally understood and well-
recognized descriptive or suggestive meaning, leading to
the conclusion that that segment is relatively weak.” Id.;
see Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 917
(CCPA 1976) (even if “there is no evidence of actual use”
of “third-party registrations,” such registrations “may be
given some weight to show the meaning of a mark in the
same way that dictionaries are used”). Marks that are
descriptive or highly suggestive are entitled to a narrower
scope of protection, i.e., are less likely to generate confu-
sion over source identification, than their more fanciful
counterparts. See, e.g., Nat’l Data Corp. v. Computer Sys.
Eng’g, Inc., 940 F.2d 676, at *2 (Fed. Cir. 1991) (un-
JUICE GENERATION, INC. v. GS ENTERPRISES LLC 9
published); Drackett Co. v. H. Kohnstamm & Co., 404 F.2d
1399, 1400 (CCPA 1969) (“The scope of protection afforded
such highly suggestive marks is necessarily narrow and
confusion is not likely to result from the use of two marks
carrying the same suggestion as to the use of closely
similar goods.”).
In the present case, the Board overlooked this aspect
of the inquiry by insisting on specifics as to the third-
party use. It never inquired whether and to what degree
the extensive evidence of third-party use and registrations
indicates that the phrase PEACE & LOVE carries a
suggestive or descriptive connotation in the food service
industry, and is weak for that reason. See, e.g., Anthony’s
Pizza & Pasta Int’l, Inc., 95 U.S.P.Q.2d 1271, at *8
(T.T.A.B. Nov. 10, 2009) (“The testimony, third-party
registrations, and telephone listings are sufficient to show
that the name ‘Anthony’s’ has been extensively adopted,
registered and used as a trademark for restaurant ser-
vices, in particular for Italian restaurants and pizzerias,
and therefore that ‘Anthony’s’ has a significance in this
industry. Thus, the evidence corroborates the testimony
that ‘Anthony’s’ suggests an Italian restaurant or even a
New York style Italian restaurant. As a result, a mark
comprising, in whole or in part, the name ‘Anthony’s’ in
connection with restaurant services should be given a
restricted scope of protection.”). A proper likelihood-of-
confusion inquiry requires such consideration—which is
not barred by the fact that GS’s marks are registered. See
Petro Stopping Ctrs., L.P. v. James River Petroleum, Inc.,
130 F.3d 88, 92 (4th Cir. 1997).
Such consideration was particularly important in this
case because of statements GS made to the PTO in suc-
cessfully applying for registration of one of its marks. An
examiner initially denied registration of GS’s “PEACE &
LOVE” mark due to a likelihood of confusion with the
mark “PEECE LUV CHIKIN.” See J.A. 3012–13. GS
responded that its mark conveyed a “different overall
10 JUICE GENERATION, INC. v. GS ENTERPRISES LLC
impression” because its “mark, as applied to restaurant
services, elicits in the consumer an overall commercial
impression of a restaurant that has a theme and atmos-
phere of the counterculture prevalent in the 1960’s and
1970’s.” J.A. 3013. Although estoppel based on prosecu-
tion of an application has played a more limited role for
trademarks than for patents, see Anthony’s, 95 U.S.P.Q.2d
1271, at *12, aff’d, 415 F. App’x 222 (Fed. Cir. 2010) (not
mentioning estoppel); see also 6 McCarthy on Trademarks
and Unfair Competition § 32:111 (4th ed. 2015), we have
recognized that such comments have significance as “facts
‘illuminative of shade and tone in the total picture con-
fronting the decision maker,’ ” GS Enters., 2014 WL
2997639, at *7 (quoting Interstate Brands Corp. v. Celes-
tial Seasonings, Inc., 576 F.2d 926, 929 (CCPA 1978)); see
also Stone Lion Capital Partners, L.P. v. Lion Capital
LLP, 746 F.3d 1317, 1322 (Fed. Cir. 2014). Other courts
have afforded even greater weight to such statements.
E.g., Freedom Card, Inc. v. JPMorgan Chase & Co., 432
F.3d 463, 476 (3d Cir. 2005). GS’s comments therefore
support Juice Generation’s argument that “PEACE &
LOVE” is suggestive or descriptive.
For the foregoing reasons, we conclude that the Board
gave inadequate consideration to the strength or weak-
ness of GS’s marks. See Elec. Design & Sales, Inc. v. Elec.
Data Sys. Corp., 954 F.2d 713, 718 (Fed. Cir. 1992) (not-
ing the Board’s duty to consider all evidence when evalu-
ating the likelihood of confusion between marks). “[T]he
strength of a mark is not a binary factor.” In re Coors,
343 F.3d at 1345. It “varies along a spectrum from very
strong to very weak.” Id. The Board here did not conduct
an analysis of all evidence relevant to where on that
spectrum GS’s marks fall and the resulting effect on the
overall likelihood-of-confusion determination. We remand
for the Board to undertake this inquiry in the first in-
stance. In re Nett Designs, Inc., 236 F.3d 1339, 1341 (Fed.
Cir. 2001) (“Placement of a term on the fanciful-
JUICE GENERATION, INC. v. GS ENTERPRISES LLC 11
suggestive-descriptive-generic continuum is a question of
fact.”).
B
Marks are compared along the axes of their “appear-
ance, sound, connotation and commercial impression.”
Dupont, 476 F.2d at 1361. “The commercial impression of
a trade-mark is derived from it as a whole, not from its
elements separated and considered in detail.” Estate of
P.D. Beckwith, Inc., v. Comm’r of Patents, 252 U.S. 538,
545–46 (1920). Our predecessor court explained that “a
mark should not be dissected and considered piecemeal;
rather, it must be considered as a whole in determining
likelihood of confusion.” Franklin Mint Corp. v. Master
Mfg. Co., 667 F.2d 1005, 1007 (CCPA 1981). That does
not preclude consideration of components of a mark; it
merely requires heeding the common-sense fact that the
message of a whole phrase may well not be adequately
captured by a dissection and recombination. See FCC v.
AT&T Inc., 562 U.S. 397, 406 (2011) (making similar
point about “personal privacy”). It is the mark in its
“entiret[y]” that must be assessed. DuPont, 476 F.2d at
1361.
The Board paid insufficient heed to that important
principle in analyzing the three-word combination
“PEACE LOVE AND JUICE.” The Board declared that
“PEACE LOVE” is the “dominant” portion of that combi-
nation, compared that portion to GS’s “PEACE & LOVE”
phrase, found that they are “virtually identical,” and then
simply added that “the additional disclaimed word
‘JUICE’ . . . do[es] not serve to sufficiently distinguish”
Juice Generation’s mark from GS’s marks. GS Enters.,
2014 WL 2997639, at *5–6. That analysis is inadequate.
It does not display any consideration of how the three-
word phrase in Juice Generation’s mark may convey a
distinct meaning—including by having different connota-
tions in consumers’ minds—from the two-word phrase
12 JUICE GENERATION, INC. v. GS ENTERPRISES LLC
used by GS. Cf. Packard Press, Inc. v. Hewlett-Packard
Co., 227 F.3d 1352, 1357 (Fed. Cir. 2000) (“To be sure, the
Board stated that it had considered the marks in their
entireties. But this statement, absent further explanation
of the agency’s reasoning, is simply insufficient for proper
review of PTO factfinding.” (citation omitted)).
While the Board may properly afford more or less
weight to particular components of a mark for appropriate
reasons, it must still view the mark as a whole. In re
Nat’l Data Corp., 753 F.2d 1056, 1058 (Fed. Cir. 1985)
(“[T]here is nothing improper in stating that, for rational
reasons, more or less weight has been given to a particu-
lar feature of a mark, provided the ultimate conclusion
rests on consideration of the marks in their entireties.”).
The Board did not err in giving less emphasis to the word
JUICE when it noted that the term is generic. GS En-
ters., 2014 WL 2997639, at *5. But the Board did not set
forth an analysis showing that it avoided the error of
giving no significance to the term, which is impermissible
notwithstanding that the term is generic and disclaimed.
See Opryland USA Inc. v. Great Am. Music Show, Inc.,
970 F.2d 847, 851 (Fed. Cir. 1992) (Board erred by giving
no weight to generic term); see also Shen Mfg. Co. v. Ritz
Hotel, Ltd., 393 F.3d 1238, 1243 (Fed. Cir. 2004) (“The
disclaimed elements of a mark, however, are relevant to
the assessment of similarity. This is so because confusion
is evaluated from the perspective of the purchasing pub-
lic, which is not aware that certain words or phrases have
been disclaimed.” (citation omitted)); Nat’l Data Corp.,
753 F.2d at 1059 (“The technicality of a disclaimer in
National’s application to register its mark has no legal
effect on the issue of likelihood of confusion. The public is
unaware of what words have been disclaimed during
prosecution of the trademark application at the PTO.”
(footnote omitted)). More generally, we see no analysis
sufficient to demonstrate consideration of the mark as a
whole.
JUICE GENERATION, INC. v. GS ENTERPRISES LLC 13
A remand is needed for the Board to undertake that
consideration, along with consideration of the evidence of
third-party use. We cannot deem the Board’s errors
harmless. The remand analysis might well call for an
answer to the overall likelihood-of-confusion question
different from the answer the Board gave in the decision
on review.
CONCLUSION
For the foregoing reasons, we vacate the Board’s deci-
sion that there is a likelihood of confusion between GS’s
and Juice Generation’s marks, and we remand for further
proceedings consistent with this opinion.
Costs awarded to appellant.
VACATED AND REMANDED