Introduction

On September 10, 2018, the United States Court of Appeals for the Federal Circuit (“Federal Circuit”) made a decision in In re: Detroit Athletic Co. Detroit Athletic Co. (“DACo”) is a shop of sports apparel and souvenirs. In May 2015, DACo filed an application for the mark DETROIT ATHLETIC CO. on the Principal Register. However, the examining attorney refused registration on the basis of likelihood of confusion with registered mark DETROIT ATHLETIC CLUB, a Detroit-based social club also in the business of selling clothing, including athletic apparel. DACo appealed the examining attorney’s decision and thereafter, the Board affirmed. DACo appealed again to the Federal Circuit.

Decision

Section 2(d) of the Lanham Act states “a mark may be refused registration if it ‘so resembles a mark registered in the Patent and Trademark Office []…as to be likely, when used on or in connection with the goods of the applicant, to cause confusion[.]’” Moreover, the PTO determines likelihood of confusion by the following DuPont factors:

1)      The similarity of dissimilarity of the marks in their entireties as to appearance, sound, connotations, and commercial impression.

2)      The similarity or dissimilarity and nature of the goods or services as described in an application 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 under 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 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., whether de minimis or substantial.

13)  Any other established fact probative of the effect of use.

Per the Board’s decision, factors considered relevant to the matter were Factors 1, 2, 3, and 8.

Regarding Factor 1, DETROIT ATHLETIC CO. and DETROIT ATHLETIC CLUB are similar in appearance, sound, and impression. Both marks consist of three words, the first of the two—the dominant portion of both marks—being identical. Their terminal words are also similar in that they are both monosyllabic terms beginning with consonant ‘C’. While CO. and CLUB differ, their dissimilarity is not enough to combat confusion as they are both descriptive and refer to the entity of each business. Although the two different terms are disclaimed in DACo’s and the Detroit Athletic Club’s applications, respectively, their disclamation does not affect the public’s impression of their marks.

Regarding Factor 2, although DACo services (“[o]n-line retail and consignment stores featuring sports team related clothing and apparel; [r]etail apparel stores; [r]etail shops featuring sports team related clothing and apparel; [r]etail sports team related clothing and apparel stores.”) and the Detroit Athletic Club claims goods (“[c]lothing, namely athletic uniforms, coats, golf shirts, gym suits, hats, jackets, sweat pants, sweat shirts, polo shirts, and T-shirts.”), the nature of both overlap. This is due to the fact that Detroit Athletic Club’s goods seem to include general clothing, which would then encompass DACo’s goods. Additionally, and more apparently, both sets are relevant to sporting.

Regarding Factor 3, DACo attacks the registered mark’s validity by disclosing that the Detroit Athletic Club only sells its goods to its club members and its private gift shop. While this may diminish confusion, this statement is irrelevant in evaluating factor 3 because evaluation must be directed towards channels specified in the registration rather than real-world conditions. Moreover, although the Detroit Athletic Club’s registration contains no restriction on the channels of trade, the Federal Circuit “may not assume that the club will never sell clothing online or through third-party distributors.”

Finally, to address Factor 8, DACo submitted evidence to show lack of confusion, which included a statement from a long-time consumer and online search results. The Federal Circuit distinguishes that the test aims to evaluate likelihood of confusion, not actual confusion. “Likelihood of confusion in this context can be established even in the face of evidence suggesting that the consuming public was not actually confused” (16). Thus, evidence submitted by DACo positing that at least one consumer is highly aware of their mark and associated service was deemed dispositive. Again, as with Factor 3, Factor 8 is not concerned with actuality, but rather, it is concerned with possibility.

The Federal Circuit concluded that based on evidence above, the marks are likely to be confused and therefore affirmed the Board’s ruling.

Full In re: Detroit Athletic Co. can be read here: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/17-2361.Opinion.9-10-2018.pdf

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