Quiktrip West, Inc. v. Weigel Stores, Inc.

Case: 20-1304 Document: 52 Page: 1 Filed: 01/07/2021

United States Court of Appeals

for the Federal Circuit

______________________

QUIKTRIP WEST, INC.,

Appellant

v.

WEIGEL STORES, INC.,

Appellee

______________________

2020-1304

______________________

Appeal from the United States Patent and Trademark

Office, Trademark Trial and Appeal Board in No.

91235273.

______________________

Decided: January 7, 2021

______________________

WESLEY EDENTON WEEKS, Wiley Rein, LLP, Washing-

ton, DC, for appellant. Also represented by RACHEL BLUE,

JESSICA JOHN BOWMAN, McAfee & Taft, Tulsa, OK.

ROBERT E. PITTS, Pitts & Lake, P.C., Knoxville, TN, for

appellee. Also represented by PAUL A. FORSYTH, JACOB G.

HORTON.

______________________

Before LOURIE, O’MALLEY, and REYNA, Circuit Judges.

Case: 20-1304 Document: 52 Page: 2 Filed: 01/07/2021

2 QUIKTRIP WEST, INC. v. WEIGEL STORES, INC.

LOURIE, Circuit Judge.

QuikTrip West, Inc. (“QuikTrip”) appeals from a judg-

ment of the U.S. Patent and Trademark Office Trademark

Trial and Appeal Board (“the Board”) dismissing its oppo-

sition to Weigel Stores, Inc.’s (“Weigel”) registration of the

design mark W WEIGEL’S KITCHEN NOW OPEN. Quik-

Trip West, Inc. v. Weigel Stores, Inc., No. 91235273

(T.T.A.B. Oct. 24, 2019); J.A. 1–22. The Board dismissed

QuikTrip’s opposition on the ground that there was no like-

lihood that consumers would confuse Weigel’s

W WEIGEL’S KITCHEN NOW OPEN mark with Quik-

Trip’s registered design mark QT KITCHENS. For the rea-

sons set forth below, we affirm.

BACKGROUND

QuikTrip and Weigel both operate combination gaso-

line and convenience stores. QuikTrip has sold food and

beverages in its stores under the registered mark

QT KITCHENS since 2011. J.A. 31; Appellant Br. at 1.

The QT KITCHENS mark is pictured below.

J.A. 30 (U.S. Registration 4,118,738).

In 2014, Weigel began using the stylized mark

W KITCHENS in connection with food and beverages sold

in its stores. J.A. 214, 221. Subsequently, QuikTrip sent

Weigel a cease-and-desist letter, requesting that Weigel

stop using the W KITCHENS mark on the basis that it was

confusingly similar to QuikTrip’s QT KITCHENS mark.

Id. at 74. In response to QuikTrip’s concerns, Weigel mod-

ified its mark by changing the plural “KITCHENS” to the

singular “KITCHEN,” altering the font, and adding the

Case: 20-1304 Document: 52 Page: 3 Filed: 01/07/2021

QUIKTRIP WEST, INC. v. WEIGEL STORES, INC. 3

words “WEIGEL’S” and “NOW OPEN.” Id. at 106–108,

120, 963–964, 1142. Weigel’s initial and modified marks

are pictured below. Despite Weigel’s modifications, Quik-

Trip objected to Weigel’s continued use of the word

“KITCHEN” in its mark. Id. at 1142.

Appellant Br. at 12.

In 2017, Weigel applied to register the final iteration of

its mark, W WEIGEL’S KITCHEN NOW OPEN. J.A. 1153

(Application 87/324,199). QuikTrip filed an opposition to

Weigel’s mark under 15 U.S.C. § 1052(d), asserting that it

would create a likelihood of confusion with its QT

KITCHENS mark.

The Board evaluated the likelihood of confusion be-

tween the two marks by referencing the factors set forth in

In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 1361

(C.C.P.A. 1973) (“the DuPont factors”). It first found that

the parties’ identical-in-part goods and related services,

overlapping trade channels, overlapping classes of custom-

ers, and similar conditions of purchase pointed to a likeli-

hood of confusion finding. J.A. 5–9, 20–21. However, the

Board found that the dissimilarity of the marks weighed

against a likelihood of confusion. Id. at 18. In conducting

its similarity analysis, the Board acknowledged that both

Case: 20-1304 Document: 52 Page: 4 Filed: 01/07/2021

4 QUIKTRIP WEST, INC. v. WEIGEL STORES, INC.

marks include the word “KITCHEN(S) 1” but determined

that customers would not focus on that word for source in-

dication because it is “at least highly suggestive, if not de-

scriptive.” Id. at 13–15. The Board further found that

Weigel did not act in bad faith in adopting the mark

W WEIGEL’S KITCHEN NOW OPEN. Id. at 18–20.

Lastly, the Board found the following DuPont factors to be

neutral: the extent of actual confusion, the extent of poten-

tial confusion, the length of time during and conditions un-

der which there was concurrent use without evidence of

actual confusion, and the variety of goods on which a mark

is or is not used. Id. at 21–22.

The Board concluded that although several factors

weighed in favor of a likelihood of confusion, Weigel’s mark

was “so dissimilar to [QuikTrip’s] pleaded mark” that there

would not be a likelihood of confusion. Id. at 22. The Board

subsequently dismissed QuikTrip’s opposition to Weigel’s

registration of its mark. QuikTrip appealed to this court.

We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(B).

DISCUSSION

Under § 2(d) of the Lanham Act, a mark may be refused

registration on the principal register if it is “likely, when

used on or in connection with the goods of the applicant, to

cause confusion” with another registered mark. 15 U.S.C.

§ 1052(d). Likelihood of confusion is a legal determination

based on underlying findings of fact relating to the factors

set forth in DuPont. DuPont, 476 F.2d at 1361. We review

the Board’s factual findings on each relevant DuPont factor

for substantial evidence, but we review the Board’s

1 QuikTrip’s mark includes the plural word

“KITCHENS”, whereas Weigel’s mark includes the singu-

lar word “KITCHEN.” Like the Board, we refer to the over-

lapping portions of the marks collectively as

“KITCHEN(S).”

Case: 20-1304 Document: 52 Page: 5 Filed: 01/07/2021

QUIKTRIP WEST, INC. v. WEIGEL STORES, INC. 5

weighing of the DuPont factors de novo. Swagway, LLC v.

Int’l Trade Comm’n, 934 F.3d 1332, 1338 (Fed. Cir. 2019).

A finding is supported by substantial evidence if a reason-

able mind might accept the evidence as adequate to sup-

port the conclusion. On-Line Careline, Inc. v. Am. Online,

Inc., 229 F.3d 1080, 1085 (Fed. Cir. 2000) (quoting In re

Gartside, 203 F.3d 1305, 1312 (Fed. Cir. 2000)).

On appeal, QuikTrip challenges the Board’s analysis

regarding DuPont factor one, the similarity of the marks,

and DuPont factor thirteen, Weigel’s alleged bad faith.

QuikTrip further challenges the Board’s overall weighing

of the Dupont factors. We address each argument in turn.

I. Similarity of the Marks

We first turn to QuikTrip’s arguments regarding

DuPont factor one. DuPont factor one concerns the “simi-

larity or dissimilarity of the marks in their entireties as to

appearance, sound, connotation and commercial impres-

sion.” DuPont, 476 F.2d at 1361. QuikTrip asserts that the

Board improperly dissected the marks when analyzing

their similarity. Specifically, it contends that the Board ig-

nored the substantial similarity created by the marks’

shared word KITCHEN(S) and gave undue weight to other

dissimilar portions of the marks. Weigel responds that the

Board correctly compared the marks as a whole. According

to Weigel, the Board did not disregard the shared word

KITCHEN(S). Rather, it simply found that other, more

distinct portions of the marks, including Weigel’s encircled

W and QuikTrip’s QT in a square, eliminate any likelihood

of confusion.

We agree with Weigel that the Board correctly ana-

lyzed the marks as a whole. It is not improper for the

Board to determine that, “for rational reasons,” it should

give “more or less weight . . . to a particular feature of the

mark” provided that its ultimate conclusion regarding the

likelihood of confusion “rests on [a] consideration of the

marks in their entireties.” Packard Press, Inc. v. Hewlett-

Case: 20-1304 Document: 52 Page: 6 Filed: 01/07/2021

6 QUIKTRIP WEST, INC. v. WEIGEL STORES, INC.

Packard Co., 227 F.3d 1352, 1357 (Fed. Cir. 2000) (citing

In re Nat’l Data Corp., 753 F.2d 1056, 1058 (Fed. Cir.

1985)).

Here, the Board properly found that, when evaluating

the similarity of the marks, it should accord less weight to

the shared term KITCHEN(S) because “kitchen” is a

“highly suggestive, if not descriptive” word. J.A. 13. See

In re Nat’l Data Corp., 753 F.2d at 1058–59 (“That a par-

ticular feature is descriptive or generic with respect to the

involved goods or services is one commonly accepted ra-

tionale for giving less weight to a portion of a mark . . . .”).

QuikTrip asserts that the word “kitchen” is not descriptive

because “[t]he parties do not sell kitchens—they sell food

and food-related services.” Appellant Br. at 29. But Quik-

Trip’s argument fails to address the Board’s extensive rec-

itation of evidence demonstrating that kitchen is a

descriptive term, including dictionary entries defining a

kitchen as a room where food is prepared, and numerous

articles, third-party uses, and third-party registrations of

marks incorporating the word “kitchen” for sale of food and

food-related services. J.A. 9–14; see also Juice Generation,

Inc. v. GS Enters. LLC, 794 F.3d 1334, 1338 (Fed. Cir.

2015) (“[E]vidence of third-party use bears on the strength

or weakness of an opposer’s mark.”) (citing Palm Bay

Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En

1772, 396 F.3d 1369, 1373 (Fed. Cir. 2005))). Moreover, the

Board was also entitled to afford more weight to the domi-

nant, distinct portions of the marks—Weigel’s encircled W

next to the surname Weigel’s and QuikTrip’s QT in a

square below a chef’s hat—given their prominent place-

ment, unique design, and color. J.A. 15–16; see also In re

Electrolyte Labs., Inc., 929 F.2d 645, 647 (Fed. Cir. 1990)

(“More dominant features will, of course, weigh heavier in

the overall impression of a mark.”).

Although the Board weighed certain portions of the

marks more heavily, it still compared the marks in their

entireties. The Board specifically observed that the marks

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QUIKTRIP WEST, INC. v. WEIGEL STORES, INC. 7

contain different letters and geometric shapes, and that

“[e]ven the common word KITCHEN(S) appears in a very

different font in each mark.” J.A. 16–17. The Board also

noted that, unlike Weigel’s mark, QuikTrip’s mark in-

cludes a chef’s hat tilted to one side. Id. at. 16. Phoneti-

cally, the Board found that “W WEIGEL’S KITCHEN NOW

OPEN” does not sound similar to “QT KITCHENS” because

the “letters do not rhyme or otherwise sound close to one

another, and the component WEIGEL’S adds an entirely

different sound.” Id. at 17. With respect to the marks’ com-

mercial impressions and connotations, the Board deter-

mined that Weigel’s mark connotes a kitchen belonging to

a person named Weigel and QuikTrip’s mark, in contrast,

connotes a string of kitchens with chefs, run by QT. Id. at

17–18. Accordingly, the Board’s factual finding that the

marks, in their entireties, differ in appearance, sound, con-

notation, and commercial impression is supported by sub-

stantial evidence.

II. Bad Faith

We next turn to QuikTrip’s argument that Weigel acted

in bad faith. A party’s bad faith in adopting a mark is rel-

evant to the thirteenth DuPont factor, which includes “any

other established fact probative of the effect of use.”

DuPont, 476 F.2d at 1361; see also Estrada v. Telefonos De

Mex., S.A.B. de C.V., 447 F. App’x 197, 204 (Fed. Cir. 2011)

(nonprecedential) (“An applicant’s bad faith is potentially

relevant in the likelihood-of-confusion analysis.”). “[A]n in-

ference of ‘bad faith’ requires something more than mere

knowledge of a prior similar mark.” Sweats Fashions, Inc.

v. Pannill Knitting Co., 833 F.2d 1560, 1565 (Fed. Cir.

1987). It requires an intent to confuse. Starbucks Corp. v.

Wolfe’s Borough Coffee, Inc., 588 F.3d 97, 117 (2d Cir. 2009)

(“[T]he ‘only relevant intent is intent to confuse. There is

a considerable difference between an intent to copy and an

intent to deceive.’” (quoting 4 J. Thomas McCarthy,

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8 QUIKTRIP WEST, INC. v. WEIGEL STORES, INC.

MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION §

23.113)); see also J.A. 19.

QuikTrip first argues that the Board failed to meaning-

fully weigh evidence that Weigel intentionally copied ele-

ments of QuikTrip’s mark in order to confuse customers.

QuikTrip’s evidence includes, inter alia, Weigel’s alleged

surreptitious photographing of QuikTrip’s stores and its

examination of QuikTrip’s marketing materials. QuikTrip

next faults the Board for not explicitly discussing its argu-

ment that Weigel’s alleged appropriation of QuikTrip’s

trade dress evidenced bad faith and would have contrib-

uted to a likelihood of confusion because, according to

QuikTrip, the parties’ marks are rendered even more con-

fusingly similar when presented in comparable trade dress

contexts. Weigel responds that its willingness to alter its

mark several times in order to prevent customer confusion

negates any inference of bad faith. It also asserts that the

Board was not required to discuss every argument that

QuikTrip put forward.

We agree with Weigel. In order to accommodate Quik-

Trip’s concerns regarding customer confusion, Weigel sub-

stantially modified its mark not once, but twice. That

evidence does not demonstrate that Weigel intended to

copy QuikTrip’s mark in order to confuse customers. The

Board properly found that Weigel’s willingness to take

steps to alter its mark evidenced its lack of bad faith. J.A.

19. We are also unpersuaded by QuikTrip’s assertion that

the Board erred by not discussing QuikTrip’s trade dress

argument. We have held “on multiple occasions that fail-

ure to explicitly discuss every issue or every piece of evi-

dence does not alone establish that the tribunal did not

consider it.” Novartis AG v. Torrent Pharms. Ltd., 853 F.3d

1316, 1328 (Fed. Cir. 2017). Although the Board did not

expressly reference Weigel’s trade dress in its bad faith or

similarity analysis, it was not obliged to discuss every piece

of evidence that QuikTrip raised. Thus, with respect to

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QUIKTRIP WEST, INC. v. WEIGEL STORES, INC. 9

DuPont factor thirteen, substantial evidence supports the

Board’s finding that Weigel did not act in bad faith.

III. Weighing of the DuPont Factors

We finally turn to the Board’s weighing of the DuPont

factors. QuikTrip contends that the Board legally erred in

giving decisive weight to the dissimilarity of the marks un-

der DuPont factor one, while disregarding other DuPont

factors strongly supporting a likelihood of confusion. Those

factors include the overlap in the parties’ goods, services,

channels of trade, classes of consumers, and conditions of

sale.

We are unpersuaded by QuikTrip’s argument that the

Board gave undue weight to the dissimilarity of the marks.

Analysis of the DuPont factors constitutes a balancing test.

DuPont, 476 F.2d at 1361. One DuPont factor “may be dis-

positive in a likelihood of confusion analysis, especially

when that single factor is the dissimilarity of the marks.”

Champagne Louis Roederer, S.A. v. Delicato Vineyards, 148

F.3d 1373, 1375 (Fed. Cir. 1998). Contrary to QuikTrip’s

assertion, the Board did not disregard evidence supporting

a likelihood of confusion. It simply found that such evi-

dence was outweighed by the differences between the

marks. We see no error in the Board’s determination that

the dissimilarity of the marks was dispositive in its likeli-

hood-of-confusion analysis, especially given the Board’s

findings that the marks noticeably differed in appearance,

sound, connotation, and commercial impression.

CONCLUSION

We have considered QuikTrip’s remaining arguments

and find them unpersuasive. For the foregoing reasons,

the decision of the Board is affirmed.

AFFIRMED