April 2010
A Single Factor of Dissimilarity of Marks Precluded Likelihood of Confusion Between Farm Boy Design Trademarks
| Judges: Mayer (author), Gajarsa, Linn |
| [Appealed from TTAB] |
In Odom’s Tennessee Pride Sausage, Inc. v. FF Acquisition, L.L.C., No. 09-1473 (Fed. Cir. Mar. 19, 2010), the Federal Circuit affirmed a decision of the TTAB granting SJ in favor of FF Acquisition, L.L.C. (“FF”) and dismissing Odom’s Tennessee Pride Sausage, Inc.’s (“Odom’s”) opposition to a trademark application filed by FF. In particular, the Court held that the visual distinctions between FF’s applied-for mark and Odom’s registered marks created unquestionably different commercial impressions, precluding a finding of likelihood of confusion. The Court also found that a single factor, out of all the factors set forth in In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (CCPA 1973), may be dispositive in a likelihood-of-confusion analysis, especially when that single factor is the dissimilarity of marks.
Odom’s has obtained a number of trademark registrations depicting farm boys to designate its food products distributed primarily through grocery stores. FF, a supermarket and grocery store operator, also has a registered trademark that shows only the head and shoulders of a farm boy with a piece of straw in his mouth. Both Odom’s and FF’s marks have coexisted for over twenty-five years. Recently, however, FF filed an application for a new mark, which combines the head and shoulders of the farm boy in its existing mark with the remainder of the farm boy’s body.
In proceedings before the TTAB, Odom’s opposed FF’s new mark under section 2(d) of the Lanham Act on the ground that it resembled Odom’s mark and was likely to cause prospective consumers to be confused, mistaken, or deceived. FF moved for SJ, arguing that there was no likelihood of confusion between the marks. The TTAB granted FF’s SJ motion, concluding that FF’s applied-for mark was so dissimilar from Odom’s pleaded marks that no likelihood of confusion could exist as a matter of law. Odom’s appealed.
On appeal, the Federal Circuit first addressed Odom’s argument that the TTAB’s analysis inappropriately considered only Odom’s registered marks and failed to consider uses of its marks that differ in some respect from what is depicted in the registrations. The Court found that a use of Odom’s mark, sufficiently distinct from its registered marks to cause confusion where the registered marks do not, was a separate unregistered mark. The Court also held that the TTAB was not required to consider any unregistered marks in its analysis because Odom’s had failed to plead that FF’s mark was confusingly similar to its unregistered marks. And the Court noted that although the TTAB’s procedures allow it to deem pleadings as amended to include unpled issues under certain circumstances, the procedures were permissive and did not require the TTAB to do so.
“[T]he visual distinctions between the marks at issue here create unquestionably different commercial impressions, thereby precluding a finding of likelihood of confusion.” Slip op. at 5.
The Court next addressed the issue of similarity between Odom’s registered marks and FF’s applied-for mark. The Court concluded that the visual distinctions between the marks created unquestionably different commercial impressions, thereby precluding a finding of likelihood of confusion. In particular, the Court noted that the marks differed in the size and shape of the boys’ hands and feet, the shape and style of their hats, and that FF’s boy had a piece of straw in his mouth and shoes on his feet while Odom’s had neither. The Court also held that the TTAB did not err by focusing on individual components of the marks in its analysis because it was the individual aspects of the marks that collectively created differences in the overall impression.
Finally, the Court addressed the use of the DuPont factors in evaluating likelihood of confusion. Odom’s argued that the TTAB erred by relying solely on the dissimilarity of the marks instead of considering the other DuPont factors. The Court disagreed, holding that a single DuPont factor may be dispositive in a likelihood-of-confusion analysis, especially when that single factor is the dissimilarity of marks. The Court thus found that even if all the other relevant DuPont factors favored Odom’s, the dissimilarity of marks was a sufficient basis to conclude that no confusion was likely.
