Docket No. 2014-1853
NEWMAN, REYNA, TARANTO
July 20, 2015
Brief Summary: Board decision regarding a likelihood of confusion between PEACE LOVE AND JUICE and PEACE & LOVE remanded as third-party use and registrations were not properly considered and an analysis of the mark “as a whole” was not provided.
Summary: Juice Generation (JG, an operator of juice bars in NYC) appealed TTAB refusal to register JG’s mark “PEACE LOVE AND JUICE” (Ser. No. 85549820) based on GS Enterprises’ opposition thereto under § 1052(d) as likely to be confused with its family of marks containing the phrase “PEACE & LOVE” registered for “restaurant services”. The TTAB considered the existence of a likelihood of confusion following the FC’s “predecessor court’s non-exhaustive listing of thirteen considerations in In re E.I. Dupont DeNemours & Co.” (CCPA 1973) It concluded that the similarity of the marks, services, trade channels, buyers and purchasing conditions all pointed to a likelihood of confusion, “the number of similar marks in use was neutral or at most pointed slightly against a likelihood of confusion”, and that although “the record contained no evidence of actual confusion” that lack of evidence “carries little weight” because the use of the marks “has [not] been at such a level that there have been meaningful opportunities for actual confusion to have occurred among purchasers.” These Board decisions are reviewed de novo by the FC (StonCor, FC 2014). The FC panel concluded the Board erroneously did not consider “the apparent force” of evidence of a “fair number of third-party uses of marks containing ‘peace’ and ‘love’ followed by a third, product-identifying term”. The opinion explains that the Board did not inquire as to “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” (Anthony’s Pizza, TTAB 2009; Petro Stopping Ctrs., 4th Cir. 1997). It also explained that GS’s comments during prosecution “support Juice Generations’s argument that ‘PEACE & LOVE’ is suggestive or descriptive”, noting that even though “estoppel based on prosecution of an application has played a more limited role for trademarks than for patents”, “such comments have significance as ‘facts ‘illuminative of shade and tone in the total picture confronting the decision maker’’” (Freedom Card, 3rd Cir. 2005). The FC panel also found error with the Board’s comparison because “a mark should not be dissected and considered piecemeal; rather, it must be considered as a whole in determining likelihood of confusion” (Franklin Mint, CCPA 1981, In re Nat’l Data, FC 1985) because “the message of a whole phrase may well not be adequately captured by dissection and recombination” (FCC, US 2011). Even though the Board noted JUICE is generic and disclaimed, it erred by failing to “set forth an analysis showing that it avoided the error of giving no significance to the term, which is impermissible”. Thus, the decision was remanded.