Failure to Show Confusion Over Marks Means Mark Application Will Stand
Description An Appeals court reviewed the factors used to determine if a trademark application will be rejected. The Trademark Board improperly decided that there would be confusion between existing marks and a new mark, but failed to provide evidence of confusion, so the new mark will be allowed.
Topic Intellectual Property
Key Words Trademarks; Confusion; Opposition to Application
C A S E   S U M M A R Y
Facts Packard Press is a commercial printer in New York. Expanding its services via the Internet, it selected the mark "Packard Technologies" and filed an application with the Trademark Office for the mark. Hewlett-Packard (H-P), holder of many marks, filed an opposition to the application on the grounds that it was confusingly similar to H-P's existing marks. The Trademark Board held that there was a likelihood of confusion and denied the mark. Packard Press appealed.
Decision Reversed. A likelihood of confusion that would warrant denial of a trademark registration application is based on many factors: 1) similarity or dissimilarity of marks in their entireties as to appearance, sound, connotation and commercial impression; 2) similarity or dissimilarity and nature of goods or services; 3) similarity or dissimilarity of established, likely-to-continue trade channels, 4) conditions under which buyers make purchases-impulse buying versus sophisticated purchasing; 5) fame of the prior mark; 6) number and nature of similar marks in use on similar goods; 7) nature and extent of any actual confusion; 8) length of time and conditions under which there has been confusion; 9) variety of goods on which the mark is or is not used; 10) market interface between the applicant and the owner of the prior mark; 11) extent to which applicant has the right to exclude others from use of its mark; 12) extent of potential confusion; and 13) any other fact regarding the effect of the use of the mark. The Board failed to show that there was a likelihood of confusion, which was the reason it rejected the application, so the mark will be allowed.
Citation Packard Press, Inc. v. Hewlett-Packard Co., 227 F.3d 1352 (Fed. Cir., 2000)

Back to Intellectual Property Listings

©1997-2002  SW Legal Studies in Business. All Rights Reserved.