Under Section 2(d) of the Lanham Act, the U.S. Patent and Trademark Office (“USPTO”) may refuse to register a trademark because of a likelihood of confusion with an existing registration. One possible response is to argue that consumers are likely to distinguish such marks from one another based on minute differences if there is a crowded field of third-party registrations and similar marks being used by others.

“The purpose of introducing evidence of third-party use is ‘to show that customers have become so conditioned by a plethora of such similar marks that customers have been educated to distinguish between different [such] marks on the bases of minute distinctions.'” Omaha Steaks Int'l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315 (Fed. Cir. 2018) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369 (Fed. Cir. 2005) (internal quotation omitted)).

The “number and nature of similar marks in use on similar goods” is part of the sixth DuPont factor.

The Trademark Trial and Appeal Board (“TTAB”) recently addressed this issue of third-party use in Section 2(d) refusal. In re Loew's Hotels, Inc., Serial Nos. 88425357, 88433338, 88433342, and 88433348 (TTAB May 11, 2022). The appeal involved Section 2(d) refusals of four trademark applications (one word mark, and three composite marks) for “Bar and restaurant services, namely, providing cocktails and small dishes in an outdoor lounge setting attached to a high-end hotel”:

CLOVER CLUB

The four CLOVER CLUB applications were refused under Section 2(d) as being likely, when used in connection with the services identified in the applications, to cause confusion, to cause mistake, or to deceive, with respect to existing CLOVER trademark registrations for “Catering; restaurant services; take-out restaurant services; mobile restaurant services provided via mobile trucks and carts.”

On appeal, Lowe's argued that the word “clover” is commonly used as a trademark in connection with restaurants, and twenty-seven (27) examples of CLOVER being used with restaurants were submitted as evidence.

The TTAB held that the third-party uses must be “relevant” in the sense that they use the word CLOVER in a manner that “show[s] that customers have become so conditioned by a plethora of such similar marks that customers have been educated to distinguish between different [such] marks on the bases of minute distinctions.” Omaha Steaks, 908 F.3d 1324 (quoting Palm Bay Imps., 396 F.3d at 1374).

Relevance has two elements: (1) the similarity of the goods or services for which the third-party marks are used to the involved goods or services, id. at 1693-94; and (2) the similarity of the third-party marks to the cited mark. Id. at 1693; see also Juice Generation, 115 USPQ2d at 1674 (noting evidence of “a considerable number of similar marks” in connection with restaurant services or food products).

Here, the TTAB found that “the involved [restaurant] services are legally identical.” But the degree of similarity of the third-party marks was “a more complex issue.”

Discounting uses such as where “Clover” referred to a street name, the TTAB found there were slightly fewer than twenty “probative” uses which included ten “identical or very similar third-party CLOVER-formative marks for restaurant services,” together with other less similar, but still probative, uses of CLOVER-formative marks. This rendered the cited CLOVER registered trademark “weak” for restaurant services.

Although this factor weighs against a finding of a likelihood of confusion, the TTAB held that nonetheless it did not outweigh the similarity between the existing CLOVER registration and the applied-for CLOVER CLUB word mark for legally identical services. Nor was it enough with respect to the applied-for ESTD. CLOVER CLUB 2019 & Design mark.

But it was enough with respect to the two applied-for CLOVER CLUB marks that also contained the words “MADE IN TEXAS” (even though “made in Texas” had been disclaimed in the applications because it refers to the geographic source of Applicant's services).

[The summitted] third-party marks are sufficient in quantity and quality to show that consumers will be able to distinguish between the cited standard-character mark CLOVER and the other two of Applicant's nonstandard-character [“Made in Texas”] CLOVER CLUB marks based on the relatively “minute distinctions” between those marks. Juice Generation, 115 USPQ2d at 1674.

The TTAB affirmed the refusal of two CLOVER CLUB applications, but reversed the refusal of the two “Made in Texas” CLOVER CLUB applications.

If Loew's appeals the two refusals, it would be interesting to see whether the Federal Circuit would agree that “CLOVER CLUB” is so similar to “CLOVER” that their differences amount to less than minute distinctions, or that their respective services really are legally identical.

The trademark attorneys at Thomas P. Howard, LLC are experienced in the prosecution of trademark applications before the USPTO, as well as in enforcing trademarks or defending against infringement claims in litigation nationwide including in Colorado.