Docket No. 2017-2620
MOORE, REYNA, CHEN
January 14, 2019
Brief summary: Board decision affirming the examiner’s refusal to register Guild’s proposed mark due to a likelihood of confusion vacated and remaned because the Board failed to address evidence regarding the eighth DuPont factor (“[t]he length of time and conditions under which there has been concurrent use without evidence of actual confusion”).
Summary: Guild appealed TTAB decision affirming the examiner’s refusal to register the mark “GUILD MORTGAGE COMPANY” [the GMC mark] and design (e.g., “with three lines shooting out above the letters I and L”) “based on a likelihood of confusion with the registered mark “GUILD INVESTMENT MANAGEMENT’” (the GIM mark). The FC panel opinion explains that “Guild is in the business of making mortgage loans and has used the GMC mark since 1960 in over 40 states and applied for the mark in Int. Class (IC) 36 “mortgage banking services…” without claiming color. The GIM mark is registered in IC 36 for “investment advisory services”. The GMC mark was rejected on the examiner’s conclusion that “there was a likelihood of confusion based on her findings that the marks, nature of the services, and trade channels were similar”, and the Board affirmed the conclusion because “on balance, those factors outweighed [its] finding that consumers ‘may exercise a certain degree of care in investing money, if not perhaps in seeking a mortgage loan.’” The FC panel explains that “[w]hether a likelihood of confusion exists is determined using the  factors set out in” DuPont (CCPA 1973), the eighth of which being “[t]he length of time and conditions under which there has been concurrent use without evidence of actual confusion”, and that all of the evidence must be considered (Hewlett-Packard, FC 2002). Guild argued the Board’s findings regarding the first three factors “are not supported by substantial evidence” and that it failed to address the eighth factor (““[t]he length of time…”). On the eighth factor, Guild argued to the examiner “that it and Registrant have coexisted in business for over 40 years without any evidence of actual confusion” and supported its point with a declaration by its President and CEO. The PTO argued “that the Board properly need not credit” the declaration “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’”. The FC panel acknowledged that “Guild did not submit declarations from the owner of the registered mark or other parties testifying as to the absence of actual confusion”, but explained that it did present “evidence of concurrent use of the two marks for a particularly long period of time”, and concluded that the Board should have considered that evidence (Juice Generation, FC 2015). The FC panel therefore vacated and remanded the decision without reaching Guild’s other arguments.