The Federal Circuit recently affirmed a TTAB decision refusing to register Charger Ventures LLC's SPARK LIVING application for “leasing of real estate; real estate listing; real estate service, namely, rental property management.” In re Charger Ventures LLC, No. 2022-1094, — F.4th — (Fed. Cir. Apr. 13, 2023). The Board found likelihood of confusion under Section 2(d) with an existing SPARK registration for “[r]eal estate services, namely, rental brokerage, leasing and management of commercial property, offices and office space.”

The Federal Circuit noted that Charger had disclaimed the word LIVING in its mark, but the disclaimer of a word in an application to register a mark has “no legal effect on the issue of likelihood of confusion” because the public is unaware what words have been disclaimed. In re Nat'l Data Corp., 753 F.2d 1056, 1059 (Fed. Cir. 1985); see also Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1243 (Fed. Cir. 2004).

[W]hile the Board must consider the disclaimed term, an additional word or component may technically differentiate a mark but do little to alleviate confusion. Detroit Athletic, 903 F.3d at 1304–05. We have previously found no error with the Board's decision to focus on dominant portions of a mark. Id. at 1305.

Also, although Charger's mark was directed towards residential property services, and the registered mark was directed towards “commercial” properties; the Court found that “the record shows that companies are known to offer both residential and commercial services under the same mark and, often, on the same website.”

The Court also agreed that there was a “potential overlap of consumers” of residential property owners and commercial owners.

Furthermore, while evidence of third-party use was “probative” to show “some” weakness in the term “spark” for real estate services, it was not enough to render it unprotectable. Charger only submitted one third-party registration as evidence that SPARK is conceptually weak, and about twenty-four third-party uses of a SPARK-formative mark.

          Furthermore, an “ex parte proceeding is not the proper forum” for a trademark applicant to launch an attack on a registered mark to try to narrow the scope of services described. Detroit Athletic, 903 F.3d at 1309. “The relevant inquiry in an ex parte proceeding focuses on the goods and services described in the application and registration.” Id. at 1307. Given that this is a proceeding between Charger and the PTO, the registrant of SPARK is not a party and cannot defend the validity of its trademark rights. Appellee's Br. 23; see also In re Calgon Corp., 435 F.2d 596, 598 (CCPA 1971) (finding that a collateral attack on the validity and ownership of a registration without seeking formal cancellation proceedings is improper in an ex parte proceeding). A certificate of registration of a mark on the principal register is “prima facie evidence of [its] validity,” 15 U.S.C. § 1057(b), and the Board properly considered this when evaluating the registered mark's potential weakness in an ex parte proceeding

Finally, while the Board's weighing of the DuPont factors is reviewed de novo, the Federal Circuit held “there is sufficient evidence from its assessment of the relevant DuPont factors to support the Board's finding of a likelihood of confusion of Charger's mark SPARK LIVING.”

Thomas P. Howard, LLC is experienced in trademarks nationwide including in Colorado.