Federal Circuit Reverses TTAB’s Determination that Trademarks Are Dissimilar Due to Lack of Evidence

The Federal Circuit reversed the Trademark Trial and Appeal Board’s (“TTAB”) dismissal of an opposition because the TTAB’s conclusion that the marks were dissimilar was not based on substantial evidence and because lack of actual consumer confusion was insufficient to outweigh other factors suggesting that confusion was likely.

Background

Applicant Intrastate Distributors, Inc. (“IDI”) filed two trademark applications to register the mark KIST — one in standard characters and another in a stylized script — for soft drinks, namely, sodas and sparkling water, and concentrates and syrups for making soft drinks. IDI is a bottling company that owns and distributes various beverage brands. It acquired the KIST brand in 2009 from Leading Edge Flavors, Inc. d/b/a Leading Edge Brands (“LEB”). LEB had previously owned a trademark registration for KIST, which was issued in 2003 but cancelled in 2013 due to failure to file an acceptable declaration under Section 8.

Opposer Sunkist has offered and licensed a variety of products and services under the SUNKIST mark for at least ninety years, including for citrus flavored soft drinks. The company owns multiple SUNKIST trademark registrations for fresh fruits, as well as various beverages and concentrates.  Sunkist opposed IDI’s applications to register the KIST marks, arguing that KIST was likely to cause confusion with its own SUNKIST mark.

Despite finding that four DuPont factors favored a likelihood of confusion — including similarity of goods, trade channels, sales conditions, and the strength of the SUNKIST mark— the TTAB dismissed Sunkist’s opposition because these factors were outweighed by two DuPont factors, namely, the dissimilarity of the marks themselves and the lack of actual consumer confusion.  Specifically, the TTAB held that the marks themselves created different commercial impressions because IDI’s KIST mark evokes a “kiss,” while SUNKIST suggests “sun.” Further, although the marks had a history of co-existing in the marketplace, providing ample opportunity for confusion to arise, the record contained no evidence of actual consumer confusion.  Consequently, the TTAB concluded that there was no likelihood of confusion between the marks.

Decision

On appeal, the Federal Circuit reversed the TTAB’s decision. The Federal Circuit agreed that the TTAB had correctly determined that four DuPont factors favored a likelihood of confusion. However, the Federal Circuit disagreed with the TTAB’s analysis regarding the similarity of the marks and the absence of actual consumer confusion.

The TTAB’s decision that IDI marketed KIST to evoke “kiss” was based entirely on a single image of lips on a small section of one page of some marketing materials that were apparently shown only to distributors and retail chains. The Federal Circuit pointed out that the lips image was not part of the applied-for trademark, was not shown on any packaging for the IDI products, and was not a focus or prominent feature in IDI’s advertising.  Indeed, the Federal Circuit noted that there was no evidence that any image of lips was actually seen by consumers of the KIST products. Consequently, there was no substantial evidence to justify the TTAB’s conclusion that the KIST mark would be associated with the concept of a “kiss” by consumers.

The Federal Circuit also found that the TTAB placed too much emphasis on SUNKIST design marks featuring a sun.  Most of Sunkist’s registered marks were in standard character format (without any design), and the SUNKIST mark was also used without any sun design.  When comparing the marks themselves, without the improper focus on lips and sun designs, the Federal Circuit concluded that the record did not support the TTAB’s finding that the marks were dissimilar.

The Federal Circuit further held that the TTAB gave improper weight to the only remaining factor favoring no likelihood of confusion, namely, the absence of actual consumer confusion. Actual confusion is inherently difficult to prove. Without more, lack of actual confusion is not dispositive as to whether confusion is likely.  Therefore, this single factor did not outweigh the other DuPont factors, all of which favored a finding that confusion between KIST and SUNKIST was likely when used on the parties’ goods.  As a result, the Federal Circuit reversed the TTAB’s dismissal.

The case is In re Sunkist Growers, Inc. v. Intrastate Distributors., Inc., No.  2024-1212 (Fed. Cir. July 23, 2025).