Confusion Is Likely Between the Marks “ML” and “ML MARK LEES” for Identical Goods
April 13, 2010
Last Month at the Federal Circuit - May 2010
Judges: Newman (author), Clevenger, Linn
[Appealed from: TTAB]
In In re Mighty Leaf Tea, No. 09-1497 (Fed. Cir. Apr. 13, 2010), the Federal Circuit affirmed the TTAB’s refusal to register the mark ML for skin care products, based on a likelihood of confusion with the mark ML MARK LEES for identical products. The Court rejected the applicant’s argument that the TTAB gave inadequate weight to its submitted evidence of third-party marks incorporating the letters “ML” for skin care products and agreed with the TTAB that the additional words MARK LEES in the registrant’s mark were not enough to distinguish the mark from ML.
Applicant Mighty Leaf Tea filed an application in July 2007 to register the mark ML for skin care and bath products in Class 003. The Examining Attorney rejected the application based on a likelihood of confusion with the mark ML MARK LEES for skin care products and makeup. In response to the rejection, Mighty Leaf Tea stated that its application was for the mark ML in standard character form, as opposed to the stylized script form used on the cited mark. Mighty Leaf Tea also argued that the Examining Attorney failed to determine whether, and to what extent, similar marks were being used on similar goods. In arguing that the field is crowded for skin care products under marks including the letters “ML,” Mighty Leaf Tea submitted evidence of third-party registrations and pending applications for skin care products that included the letters “ML” along with other letters, such as MLE, MLUXE, and JML. The Examining Attorney maintained the refusal to register, and the TTAB affirmed.
The TTAB found that some of Mighty Leaf Tea’s goods were identical to those in the cited registration and could not be distinguished by the channels of trade or the conditions of sale. Further, the stylized form of the cited ML MARK LEES mark did not distinguish it from ML; Mighty Leaf Tea was seeking to register ML in standard character form, which is not limited to any particular style. The TTAB held that the presence of the name MARK LEES in the registered mark did not diminish the likelihood of confusion, since consumers familiar with the mark would likely assume that Mighty Leaf Tea’s ML mark was likely a variation or abbreviation of ML MARK LEES. As to Mighty Leaf Tea’s evidence of third-party “ML” marks for skin care products, the TTAB observed that “inclusion of the letters ‘ML’ in other words or aggregates does not render these marks so similar and weak that the public would be alert to small differences.” Slip op. at 4. The TTAB concluded that the mark ML for the designated goods was likely to cause confusion with ML MARK LEES for the same goods. Mighty Leaf Tea appealed.
On appeal, the Federal Circuit addressed Mighty Leaf Tea’s argument that the TTAB erred in its analysis of the sixth DuPont likelihood of confusion factor—the number and nature of similar marks in use on similar goods. Mighty Leaf Tea contended that its evidence of third-party registrations and pending applications incorporating the letters “ML” for skin care products demonstrates that ML is a weak mark for these goods, and that consumers are used to looking to minor distinctions in marks that include the letters “ML.” According to Mighty Leaf Tea, this evidence confirmed that confusion is unlikely to occur between its ML mark and the cited ML MARK LEES registered mark. In response, the TTAB stated that the mere presence of similar third-party registrations, without more, is of limited value to whether additional marks would lead to confusion in use. Mighty Leaf Tea did not provide evidence of the actual use of these third-party marks, merely contending that the cited registrations themselves established use since use in commerce is a prerequisite to registration.
However, the Federal Circuit noted, the issue of likelihood of confusion requires more than just showing the existence of various marks. The PTO stated that Mighty Leaf Tea merely submitted a group of registrations that include “ML” as part of a longer letter string, and this indiscriminate citation without regard to the similarity of the marks was not indicative that the letters “ML” have a suggestive or descriptive connotation. Mighty Leaf Tea did not present any evidence to counter the TTAB’s finding that the cited third-party marks were not similar enough to the ML mark. In arguing that there is a crowded field for the letters “ML,” Mighty Leaf cited In re Broadway Chicken, Inc., 38 USPQ2d 1559, 1565-66 (TTAB 1996), in which the TTAB found that third-party use of the term BROADWAY was so common that consumers would distinguish applicant’s BROADWAY CHICKEN from the cited registrations BROADWAY PIZZA and BROADWAY BAR & PIZZA. The Federal Circuit disagreed, adopting instead the PTO’s finding that the letters “ML” in various strings of letters does not establish that “ML” is a common element, such as “Broadway,” that has acquired an understood meaning. The Court “agree[d] that the occurrence of two letters in longer words or strings does not of itself establish a ‘common element,’ for there was no evidence that the two letters ‘ML’ had any recognized meaning or significance within the longer strings.” Slip op. at 7. The Court thus denied Mighty Leaf Tea’s argument that the TTAB did not give appropriate weight to its third-party evidence. Mighty Leaf Tea also challenged the TTAB’s finding that the additional words MARK LEES in the cited registration did not serve to distinguish the registrant’s mark from ML alone. The Federal Circuit rejected this argument, citing its own and the TTAB’s precedent that the presence of an additional term in the mark does not necessarily eliminate the likelihood of confusion if some terms are identical. Here, the Court explained, the term ML is likely to be perceived as a shortened version of ML MARK LEES when used on identical or similar skin care products. These initials function as a dominant feature of the registered mark, and a newcomer’s use of the same initials on the same goods would likely lead consumers to believe that the goods emanated from the same source. The Federal Circuit also noted that several other DuPont factors favored the TTAB’s likelihood of confusion holding: the goods are quite similar, the channels of trade and purchasers are the same, and the fact that the goods are relatively low priced and do not require much consumer sophistication at purchase. These findings, which Mighty Leaf Tea did not contest, provided additional support for the TTAB’s conclusion. The Federal Circuit affirmed the TTAB’s decision that consumer confusion is likely between the marks ML and ML MARK LEES when used on nearly identical goods.
Summary authored by Dana M. Nicoletti, Esq.