Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U. , 797 F.3d 1363 ( 2015 )

United States Court of Appeals
for the Federal Circuit
______________________
JACK WOLFSKIN AUSRUSTUNG FUR DRAUSSEN
GMBH & COMPANY KGAA,
Appellant
v.
NEW MILLENNIUM SPORTS, S.L.U.,
Appellee
______________________
2014-1789
______________________
Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board in No.
91195604.
______________________
Decided: August 19, 2015
______________________
RICHARD LEHV, Fross, Zelnick, Lehrman & Zissu,
P.C., New York, NY, argued for appellant. Also represent-
ed by ROBERT A. BECKER.
PHILIP BAUTISTA, Taft, Stettinius & Hollister, LLP,
Cleveland, OH, argued for appellee.
______________________
Before LOURIE, BRYSON, and CHEN, Circuit Judges.
2 JACK WOLFSKIN AUSRUSTUNG v. NEW MILLENNIUM SPORTS,
S.L.U.
CHEN, Circuit Judge.
Appellant Jack Wolfskin Ausrustung Fur Draussen
GmbH & Co. KGAA (Jack Wolfskin) applied to the Patent
and Trademark Office to register a design mark consist-
ing of an angled paw print for use with its clothing, foot-
wear, and accessory products. Appellee New Millennium
Sports, S.L.U. (New Millennium) opposed the registration
on the ground that Jack Wolfskin’s mark would likely
create confusion with its own registered mark. In re-
sponse, Jack Wolfskin filed a counterclaim for cancella-
tion alleging that New Millennium had abandoned its
registered mark. The Trademark Trial and Appeal Board
(Board) rejected Jack Wolfskin’s cancellation counterclaim
and sustained the opposition, thus refusing to register
Jack Wolfskin’s mark. We agree with the Board that New
Millennium did not abandon its registered mark. We
conclude, however, that the Board incorrectly found a
likelihood of confusion between the two marks because
the Board failed to properly compare New Millennium’s
mark as a whole to Jack Wolfskin’s mark and also failed
to recognize, in light of the significant evidence of paw
prints appearing in third-party registrations and usage
for clothing, the relatively narrow scope of protection
afforded to marks involving paw prints. We therefore
affirm-in-part, reverse-in-part, and remand for further
proceedings consistent with this opinion.
I. BACKGROUND
New Millennium owns Trademark Registration No.
1,856,808 (KELME mark).
New Millennium registered the KELME mark for use in
association with goods in International Class 25, which
JACK WOLFSKIN AUSRUSTUNG v. NEW MILLENNIUM SPORTS, 3
S.L.U.
encompasses a variety of clothing products. The KELME
mark was registered on October 4, 1994.
On September 10, 2009, Jack Wolfskin filed U.S.
Trademark Application Serial No. 77/823,794 with the
Patent and Trademark Office, in which it sought to regis-
ter a mark consisting of “a nonhuman paw print.” Joint
Appendix (J.A.) 28.
In its application, Jack Wolfskin sought this trademark
for a variety of products classified in International Clas-
ses 9, 18, 22, and 25.
New Millennium filed an opposition asserting that
Jack Wolfskin’s mark would likely cause confusion with
New Millennium’s KELME mark. See 15 U.S.C.
§ 1052(d). New Millennium limited its opposition to goods
in International Class 25. In response, Jack Wolfskin
denied that its mark would cause confusion and counter-
claimed to cancel New Millennium’s KELME mark on the
basis of abandonment.
The Board rejected Jack Wolfskin’s abandonment
counterclaim finding that New Millennium had continu-
ously used the registered mark or a version that was not a
“material alteration” of the registered mark. The Board
then evaluated New Millennium’s likelihood-of-confusion
claim according to the factors announced by our predeces-
sor court in In re E. I. DuPont DeNemours & Co., 476 F.2d
1357, 1361 (CCPA 1973) (DuPont factors), and concluded
that Jack Wolfskin’s mark would likely cause confusion.
The Board therefore sustained New Millennium’s opposi-
tion and refused to register Jack Wolfskin’s mark.
4 JACK WOLFSKIN AUSRUSTUNG v. NEW MILLENNIUM SPORTS,
S.L.U.
Jack Wolfskin appeals both parts of the decision. We
have jurisdiction under 28 U.S.C. § 1295(a)(4)(B). Alt-
hough we agree with the Board that New Millennium did
not abandon its registered mark, we disagree that Jack
Wolfskin’s mark is confusingly similar to New Millenni-
um’s mark.
II. ABANDONMENT COUNTERCLAIM
Jack Wolfskin’s cancellation counterclaim relies on
the fact that New Millennium ceased using the registered
version of its mark and instead began using a modified or
modernized version of that mark. Because of this change,
Jack Wolfskin contends that New Millennium abandoned
its registered mark and that it should therefore be can-
celled. New Millennium does not dispute that it no longer
uses the exact mark that appears in its registration and
admits that it has not used that version since 2004. New
Millennium argues, however, that it has not abandoned
its mark because the differences between the modernized
mark and the registered mark are minor.
A. Legal Standard
A trademark owner abandons its mark if use of the
mark has been “discontinued with intent not to resume.”
15 U.S.C. § 1127. If a registered mark has been aban-
doned, a party may file a petition to cancel the registra-
tion at any time. 15 U.S.C. § 1064(3). Abandonment may
also be alleged in a counterclaim to an opposition filed by
the owner of the purportedly abandoned mark.
Trademark owners sometimes cease using their literal
registered marks in favor of modified or modernized
versions. As McCarthy explains,
[s]uch changes in the form of marks have been le-
gally attacked on two grounds: (1) that the change
resulted in abandonment of rights in the old form;
(2) that the change prevents the user from tracing
JACK WOLFSKIN AUSRUSTUNG v. NEW MILLENNIUM SPORTS, 5
S.L.U.
priority of use back to a date of first use of the old
form of the mark.
J. Thomas McCarthy, 3 McCarthy on Trademarks and
Unfair Competition § 17:25 (4th ed. 2015) [hereinafter
McCarthy]. This ability to rely on an earlier form of a
mark, when now using a modified version of that mark, is
often called “tacking.” Courts have referenced tacking in
both abandonment and priority contexts. See Hana Fin.,
Inc. v. Hana Bank, 135 S. Ct. 907, 909 (2015) (recognizing
that “tacking” encompasses situations where an entity
makes modifications to its marks over time, but is still
able to “clothe [that] new mark with the priority position
of an older mark”); Sunstar, Inc. v. Alberto-Culver Co.,
586 F.3d 487, 496 (7th Cir. 2009) (explaining that the rule
of “tacking on” “makes the use by a trademark’s owner of
a variant of his original trademark a defense to a claim
that replacing the original with the variant constituted
the abandonment . . . of the trademark”). McCarthy also
recognizes that “[i]mproper tacking [by using a modified
mark that materially alters the earlier mark] can result
in ‘abandonment’ of the old form of the mark” if the ele-
ments of abandonment—nonuse with intent not to resume
use—are satisfied. McCarthy § 17:26.
In the context of a priority dispute, we previously held
that if the old form and the new form of the mark are
“legal equivalents,” such legal attacks will fail. Van Dyne-
Crotty, Inc. v. Wear-Guard Corp., 926 F.2d 1156, 1159
(Fed. Cir. 1991), abrogated on other grounds by Hana
Fin., 135 S. Ct. at 910. Two marks are legally equivalent
if they “create the same, continuing commercial impres-
sion” and where the modified version of the mark does not
“materially differ from or alter the character” of the
original mark. 1 Id. (citation and internal quotation marks
1 Jack Wolfskin contends that this “material altera-
tion” standard originates from the statute governing
6 JACK WOLFSKIN AUSRUSTUNG v. NEW MILLENNIUM SPORTS,
S.L.U.
omitted); see also Ilco Corp. v. Ideal Sec. Hardware Corp.,
527 F.2d 1221, 1224 (CCPA 1976) (“The law permits a
user who changes the form of its mark to retain the
benefit of its use of the earlier form, without abandon-
ment, if the new and old forms create the same, continu-
ing commercial impression.”).
trademark amendments. 15 U.S.C. § 1057(e) (permitting
amendment to a registered mark so long as that amend-
ment “does not alter materially the character of the
mark”). The Trademark Manual of Examining Procedure
(TMEP) explains that an amendment to a mark is mate-
rial if “the change would require republication in order to
present the mark fairly for purposes of opposition.”
TMEP § 1609.02(a); see also 37 C.F.R. § 2.72(a)(2)
(amending a mark is permissible if “[t]he proposed
amendment does not materially alter the mark.”). As far
as we can tell, this “republication” standard has been
used only in the context of determining the propriety of a
proposed amendment. See, e.g., In re Thrifty, 274 F.3d
1349, 1352–53 (Fed. Cir. 2001) (applying the material
alteration standard in affirming the Board’s rejection of
an amendment to a rejected trademark application).
Furthermore, the TMEP also explains that “[i]n determin-
ing whether an amendment is a material alteration, the
controlling question is always whether the new and old
forms of the mark create essentially the same commercial
impression.” TMEP § 1215.08 (emphasis added); see also
TMEP § 807.14. Thus, even if we were to embrace the
TMEP provisions relating to amendment, our analysis for
abandonment would not change. See In re Thrifty, 274
F.3d at 1352–53 (“To avoid material alteration, the new
form must create the impression of being essentially the
same mark.” (internal quotation marks omitted)).
JACK WOLFSKIN AUSRUSTUNG v. NEW MILLENNIUM SPORTS, 7
S.L.U.
We have not spoken directly on what standard to use
in the abandonment context. The Board, however, em-
ploys the “same, continuing commercial impression”
standard when evaluating whether changes to a mark
result in abandonment of an earlier registered mark. See,
e.g., Paris Glove of Can., Ltd. v. SBC/Sporto Corp., 84
U.S.P.Q.2d 1856, 1861 (T.T.A.B. 2007) (citing McCarthy
§ 17:26) (“[A] change in the form of a mark does not
constitute abandonment or a break in continuous use if
the change neither creates a new mark nor changes the
commercial impression of the old mark.”). In addition,
other circuits have also adopted this standard in the
abandonment context. See, e.g., George & Co. LLC v.
Imagination Entm’t Ltd., 575 F.3d 383, 402 (4th Cir.
2009) (concluding that the trademark owner had aban-
doned its registered mark where it could not “tack” its
prior use of the mark to its current, modernized version of
that mark because its new mark did not create the same
continuing commercial impression); Sands, Taylor &
Wood Co. v. Quaker Oats Co., 978 F.2d 947, 955 (7th Cir.
1992) (examining whether the differences between the
registered and the modified marks alter the “basic, overall
commercial impression created on buyers” and stating
that “[s]o long as the owner continues use of the ‘key
element’ of the registered mark, courts generally will not
find abandonment”).
In both contexts—priority and abandonment—the
fundamental inquiry is the same: has the original mark
been so substantially altered such that third parties
would not expect that presently used mark to be used
under and protected by the registration.. Our case law
recognizes that it would be wrong to allow a trademark
owner to claim priority to a mark that creates a different
commercial impression from the mark currently in use.
This same inequity exists when a trademark owner seeks
to avoid abandonment of the originally registered mark
even though the current mark is a materially different
8 JACK WOLFSKIN AUSRUSTUNG v. NEW MILLENNIUM SPORTS,
S.L.U.
version. We hold that the same legal standard applies in
both contexts. Accordingly, when a trademark owner uses
a modified version of its registered trademark, it may
avoid abandonment of the original mark only if the modi-
fied version “create[s] the same, continuous commercial
impression.”
B. Standard of Review
The Supreme Court recently held, in the context of a
priority dispute, that the “same continuing commercial
impression” inquiry is a question of fact, thus abrogating
our practice of viewing this inquiry as a question of law
subject to de novo review. Hana Fin., 135 S. Ct. at 910–
11 (citing Van Dyne-Crotty, 926 F.2d at 1159). In Hana
Financial, the Supreme Court explained that
“[a]pplication of a test that relies upon an ordinary con-
sumer’s understanding of the impression that a mark
conveys falls comfortably within the ken of a jury.” Id. at
911. Given our understanding that the same legal analy-
sis applies in both priority and abandonment cases, there
is no reason that the standard of review should differ. We
therefore must review the Board’s factual determination
for substantial evidence. In doing so, we must ask wheth-
er a reasonable fact-finder might find that the evidentiary
record supports the Board’s conclusion. See Consol.
Edison Co. of N.Y. v. N.L.R.B., 305 U.S. 197, 229 (1938).
C. Discussion
New Millennium’s registered mark is a composite
mark consisting of the word KELME on the left and an
image of a paw print on the right.
Registration No. 1,856,808. As noted above, New Millen-
nium admits that it no longer uses the exact mark that
JACK WOLFSKIN AUSRUSTUNG v. NEW MILLENNIUM SPORTS, 9
S.L.U.
appears in its registration. Since 2004, New Millennium
has instead used a modified version of its mark. The
presence of the KELME and paw print elements, as well
as the orientation of these elements, did not change. New
Millennium altered only the font of the KELME element
and the style of the paw print element.
The Board found the changes to the mark to be minor
stylistic alterations. In evaluating the KELME element
of the mark, the Board noted that “the style shown in the
registration is relatively non-distinctive, and the style in
which the letters are now presented is highly convention-
al.” New Millennium Sports, S.L.U. v. Jack Wolfskin
Ausrustung Fur Draussen GmbH & Co. KGAA, No.
91195604, 2014 WL 2997637, at *5 (T.T.A.B. June 10,
2014). The Board further recognized that KELME, the
word element of the mark, was “far more distinctive than
the lettering in which it is presented” and therefore the
change in the style of the lettering did not materially
affect the impression created by the word. Id. With
respect to the paw print design component of the mark,
the Board rejected Jack Wolfskin’s arguments that the
registered mark could be interpreted as something other
than a paw. Id. (“If the design resembles in any way a
mountain, a volcano, or a setting sun, it does so only in a
very vague way.”). The Board was also not persuaded
that the addition of claws to the paw prints materially
altered the mark because the claws are “a very small
component” and because “it is common knowledge that an
animal’s paws are accompanied by claws.” Id.
We agree. Despite the stylistic modifications, the
mark that New Millennium currently uses still consists of
the literal KELME element and the paw print design
element. The KELME portion still appears in all capital,
10 JACK WOLFSKIN AUSRUSTUNG v. NEW MILLENNIUM SPORTS,
S.L.U.
block style lettering. The minor adjustment to the font is
not sufficient to warrant a finding that consumers would
view these as different marks. Likewise, Jack Wolfskin
presents no persuasive reason why the alterations to the
design element change the commercial impression that
the mark creates. As the Board stated, “[i]t appeared to
be a paw before, and now it still appears to be a paw.” Id.
For these reasons, we conclude that the Board’s finding
that New Millennium did not abandon its registered mark
by migrating to a modernized version of its mark is sup-
ported by substantial evidence. A reasonable fact-finder
could conclude that the new version creates the same
continuing commercial impression as the registered mark.
We therefore affirm the Board’s dismissal of Jack
Wolfskin’s cancellation counterclaim.
III. LIKELIHOOD OF CONFUSION
Whether there is likelihood of confusion between a
registered mark and a mark for which an application has
been filed presents an issue of law based on underlying
facts, namely findings under the DuPont factors. M2
Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1381
(Fed. Cir. 2006). We review the Board’s legal conclusions
de novo and its factual findings for substantial evidence.
In re Pacer Tech., 338 F.3d 1348, 1349 (Fed. Cir. 2003).
The Board found evidence in the record relevant to
seven DuPont factors. Specifically, the Board found that
the similarity of the goods, the similarity of the trade
channels, and the similarity of the marks pointed to a
likelihood of confusion, whereas the similarity of the
buyers and purchasing conditions were either neutral or
slightly favored finding a likelihood of confusion. In
addition, the Board decided that the number and nature
of similar marks in use, the fame of New Millennium’s
mark, and the absence of actual confusion were neutral
factors. The Board then balanced these factors and
concluded that Jack Wolfskin’s mark, “as used in connec-
JACK WOLFSKIN AUSRUSTUNG v. NEW MILLENNIUM SPORTS, 11
S.L.U.
tion with the identified goods, so closely resembles oppos-
er’s registered mark as to be likely to cause confusion,
mistake or deception as to the source of applicant’s
goods.” New Millennium, 2014 WL 2997637, at *14.
Neither party asserts that the Board erred by failing
to consider any of the remaining factors. See M2 Soft-
ware, 450 F.3d at 1382 (“Neither we nor the board, how-
ever, are required to consider every DuPont factor.
Rather we need to consider only the factors that are
relevant and of record.” (citation omitted)). On appeal,
Jack Wolfskin asserts that the Board’s likelihood of
confusion conclusion is erroneous because of a lack of
substantial evidence supporting two critical factors:
(1) the similarity of the marks; and (2) the number and
nature of similar marks in use. We agree.
A. Similarity of the Marks
Our predecessor court instructed that the similarity
or dissimilarity of marks should be compared “in their
entireties as to appearance, sound, connotation and
commercial impression.” DuPont, 476 F.2d at 1361.
“[M]arks must be viewed ‘in their entireties,’ and it is
improper to dissect a mark when engaging in this analy-
sis, including when a mark contains both words and a
design.” In re Viterra Inc., 671 F.3d 1358, 1362 (Fed. Cir.
2012). We have also explained that when a mark consists
of both words and a design, “the verbal portion of the
mark is the one most likely to indicate the origin of the
goods to which it is affixed.” CBS Inc. v. Morrow, 708
F.2d 1579, 1581–82 (Fed. Cir. 1983). These principles do
not, however, trump our duty to consider marks on a case-
by-case basis. Viterra, 671 F.3d at 1362–63. Finally, the
Board may “state that, for rational reasons, more or less
weight has been given to a particular feature of the
mark.” Packard Press, Inc. v. Hewlett-Packard Co., 227
F.3d 1352, 1357 (Fed. Cir. 2000). Even so, the touchstone
of this factor is consideration of the marks in total. Id.;
12 JACK WOLFSKIN AUSRUSTUNG v. NEW MILLENNIUM SPORTS,
S.L.U.
see also Juice Generation, Inc. v. GS Enters. LLC, No. 14-
1853, 2015 WL 4400033, at *5 (Fed. Cir. July 20, 2015)
(explaining that this factor “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”).
New Millennium’s registered mark consists of two el-
ements: the KELME component and the paw print de-
sign. On appeal, Jack Wolfskin argues that the Board
improperly dissected New Millennium’s mark by overem-
phasizing the paw print element and minimizing the
importance of the KELME component. In response, New
Millennium urges us to accept the Board’s discussion of
the KELME component as sufficient.
The Board’s opinion did acknowledge the obligation to
consider the marks in their entireties and even recognized
that “the KELME component of [New Millennium]’s mark
creates a visual and phonetic impression that is absent
from applicant’s mark.” New Millennium, 2014 WL
2997637, at *9. But in evaluating the “appearance,
sound, connotation” of the two marks, the Board discussed
only the appearance, sound, and connotation of the paw
print element in each mark, and did not discuss the
impact of the KELME portion of New Millennium’s mark.
This is clear from the Board’s statement that “[w]ith
respect to sound, it is obvious that neither design has any
phonetic element.” Id. at *10. The Board then explained
that, given the substantial similarities between the paw
print elements of the two marks, the KELME component
of the New Millennium mark did not distinguish the
commercial impression of that mark from the commercial
impression of Jack Wolfskin’s mark. To support this
statement, the Board broadly declared that “[c]ompanies
that use marks consisting of a word plus a logo often
display their logos alone, unaccompanied by the literal
portions of their trademarks.” Id. For this reason, the
Board concluded that consumers could interpret Jack
JACK WOLFSKIN AUSRUSTUNG v. NEW MILLENNIUM SPORTS, 13
S.L.U.
Wolfskin’s mark “as a display of [New Millennium]’s
design apart from [New Millennium]’s word element” and
accordingly this factor pointed towards a likelihood of
confusion. Id.
We agree with Jack Wolfskin that the Board failed to
adequately account for the presence of the literal, KELME
component of the New Millennium mark. Contrary to the
guideposts in our case law, the Board essentially disre-
garded the verbal portion of New Millennium’s mark and
found that the two paw print designs were substantially
similar. This analysis did not consider the marks as a
whole.
The Board justified its decision to focus on the paw
print elements by stating that companies often use the
design portion of a composite mark as shorthand for their
brand. We do not opine as to whether such a commercial
practice of truncating the registered mark could, under
the right circumstances, support finding a likelihood of
confusion based on that truncated version. Even so, this
concept certainly cannot be invoked without supporting
evidence. The Board’s broad statement alone, which does
not amount to substantial evidence, cannot warrant
disregarding the verbal portion of a composite mark. See
Viterra, 671 F.3d at 1366 (recognizing that emphasis on
the literal portion of a mark “makes sense given that the
literal component of brand names likely will appear alone
when used in text and will be spoken when requested by
consumers.”).
New Millennium argues that it provided numerous
examples in which it displayed the paw print element of
its mark without the KELME brand name. None of the
examples in the record, however, conclusively establishes
that the paw print alone was used for source identifica-
tion. For example, New Millennium points to its shoe
boxes where the paw print appears on the top of the shoe
box without the KELME brand name, but ignores the fact
14 JACK WOLFSKIN AUSRUSTUNG v. NEW MILLENNIUM SPORTS,
S.L.U.
that the KELME brand name appears on each side of the
same shoe box. Similarly, New Millennium notes that the
paw print appears on the sides of several of its soccer
shoes, but again ignores the KELME brand name on the
tongue and/or bottom of the same shoes. At bottom,
neither the Board nor New Millennium has pointed to
anything in the record that indicates that consumers
recognize solely the paw print portion of New Millenni-
um’s registered mark as being associated with New
Millennium’s products. The Board’s finding lacked sub-
stantial evidence for minimizing the relevance of the word
element of New Millennium’s registered trademark.
Indeed, the Board’s conclusion is even more untenable in
light of the numerous examples of paw prints as source
identifiers, discussed below.
This is not to say that the Board cannot, in appropri-
ate circumstances, give greater weight to a design compo-
nent of a composite mark. But, when the Board places
such heavy emphasis on an oft-used design element, as it
did in this case, it must provide a rational reason for
doing so. See In re Comput. Commc’ns, Inc., 484 F.2d
1392, 1393–94 (CCPA 1973) (holding that the Board did
not err in focusing on the design portion because the
Board found the large design portion to be the mark’s
“most visually prominent feature”). In this respect the
Board failed and, as a result, its conclusion that this
factor supports finding a likelihood of confusion is not
supported by substantial evidence.
B. Other Marks in Use
“[E]vidence of third-party use bears on the strength or
weakness of an opposer’s mark.” Juice Generation, 2015
WL 4400033, at *3. “The weaker an opposer’s mark, the
closer an applicant’s mark can come without causing a
likelihood of confusion and thereby invading what
amounts to its comparatively narrower range of protec-
tion.” Id.; see also Palm Bay Imps., Inc. v. Veuve Clicquot
JACK WOLFSKIN AUSRUSTUNG v. NEW MILLENNIUM SPORTS, 15
S.L.U.
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1373
(Fed. Cir. 2005) (“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.”).
Before the Board, Jack Wolfskin presented volumi-
nous evidence of paw print design elements that have
been registered and used in connection with clothing, but
the Board largely discounted these examples. The Board
gave “little weight” to the third-party registrations “be-
cause they are not evidence that the marks are in use.”
New Millennium, 2014 WL 2997637, at *11. To the
extent the Board found any of the third-party registra-
tions supported by evidence of use, the Board largely
minimized this evidence because it consisted of secondary
source indicators. In many of the examples that Jack
Wolfskin provided, the paw-print design was being used
to identify colleges or high schools and their sports teams,
rather than identifying an apparel or a sporting goods
company. As such, the Board concluded that these marks
“perform the function of secondary source indicators
rather than conventional marks of apparel companies,”
and therefore “their impact on the distinctiveness of
opposer’s apparel trademark is somewhat reduced.” Id. at
*12. In addition, the Board rejected the relevance of
another subset of the third-party usage evidence because
the marks related to “secondary source indicators for
businesses offering pet-related goods and services.” Id.
As to the remaining paw-print trademarks, the Board
focused on the differences between those designs and the
designs at issue. See New Millennium, 2014 WL 2997637,
at *11 (finding that these marks are “quite different, in
that four of them have five digits and all of them have
very prominent claws”). In light of these conclusions, the
Board found that this factor was neutral.
We agree with Jack Wolfskin that the Board erred in
its consideration of this evidence. Jack Wolfskin present-
16 JACK WOLFSKIN AUSRUSTUNG v. NEW MILLENNIUM SPORTS,
S.L.U.
ed extensive evidence of third-party registrations depict-
ing paw prints and evidence of these marks being used in
internet commerce for clothing. 2 The Board too quickly
dismissed the significance of this evidence. As we recent-
ly explained in Juice Generation, such extensive evidence
of third-party use and registrations is “powerful on its
face,” even where the specific extent and impact of the
usage has not been established. 2015 WL 4400033, at *4
(detailing the extensive use of marks used in connection
with the food service industry that incorporate the words
“Peace” and “Love” ). For example, evidence of third-
party registrations is relevant to “show the sense in which
a mark is used in ordinary parlance,” id. at *4; that is,
some segment that is common to both parties’ marks may
have “a normally understood and well-recognized descrip-
tive or suggestive meaning, leading to the conclusion that
that segment is relatively weak,” id. In addition, evidence
of third-party use of similar marks on similar goods “can
show that customers have been educated to distinguish
between different marks on the basis of minute distinc-
tions.” Id. at *3 (internal quotation marks omitted). In
this case, Jack Wolfskin’s evidence demonstrates the
ubiquitous use of paw prints on clothing as source identi-
fiers. Given the volume of evidence in the record, con-
2 Some of the notable examples of third-party regis-
tration and use in commerce include the Clemson Univer-
sity paw print; the Ohio University paw print; the
University of New Mexico paw print; the Penn State paw
print; the University of Montana paw print; the Loyola
University of Chicago paw print; the University of New
Hampshire paw print; the Wayne State College paw print;
the Bearpaw brand paw print; the Wolverine brand paw
print; the Alaskan Hardgear brand paw print; Boyds
Collection brand paw print; the Chester Cheetah mark for
Cheetos snack foods, which incorporates a paw print; the
Garanimals brand mark, which incorporates a paw print.
JACK WOLFSKIN AUSRUSTUNG v. NEW MILLENNIUM SPORTS, 17
S.L.U.
sumers are conditioned to look for differences between
paw designs and additional indicia of origin to determine
the source of a given product. Jack Wolfskin’s extensive
evidence of third-party uses and registrations of paw
prints indicates that consumers are not as likely confused
by different, albeit similar looking, paw prints. The
Board’s conclusion that this factor was neutral is not
supported by substantial evidence.
*****
New Millennium cannot escape the fact that the
KELME element of its registered mark is the dominant
portion of the mark. By narrowly focusing on the paw
print element of the registered mark, the Board failed to
appreciate that the KELME element is unlike anything
that appears in Jack Wolfskin’s applied-for mark. The
dissimilarity of the marks is further confirmed by the
considerable evidence of third-party registration and
usage of marks in commerce that depict paw prints on
clothing. This evidence indicates that the paw print
portion of New Millennium’s mark is relatively weak.
Balancing the factors, the Board’s determination that
Jack Wolfskin’s mark would likely cause consumer confu-
sion cannot be sustained.
CONCLUSION
Although we affirm the Board’s rejection of Jack
Wolfskin’s cancellation counterclaim, we conclude that
the dissimilarity of the marks and the many third-party
marks incorporating paw prints require us to find that
there is no likelihood of confusion between the two marks.
We therefore reverse the Board’s decision sustaining New
Millennium’s opposition and remand to the Board for
further consideration in light of this opinion.
COSTS
No costs.
18 JACK WOLFSKIN AUSRUSTUNG v. NEW MILLENNIUM SPORTS,
S.L.U.
AFFIRMED-IN-PART, REVERSED-IN-PART, and
REMANDED