“The absence of intent to confuse would not preclude a finding of likelihood of confusion, but had such intent been shown (which it has not), it would be a factor to weigh against the newcomer.”
How later courts described this case
- “The absence of intent to confuse would not preclude a finding of likelihood of confusion, but had such intent been shown (which it has not), it would be a factor to weigh against the newcomer.”
- no likelihood of confusion between BOSTON SEA PARTY for restaurant services and BOSTON TEA PARTY for tea
Written by the judges who cited it.
The opinion
NIES, Judge,
concurring.
I agree with the majority that confusion has not been shown to be likely between the respective uses of the parties. My departure from the analysis of the majority is because of its reliance on the difference in meaning between the marks, one being a “common term” and one not. The “uncommonness” of appellee’s mark will only be apparent to those who perceive an actual difference from the mark of appellant. Were the marks here both applied to tea sold in the distracting environment of the supermarket, the harried shopper might well mistake one for the other because of striking similarity in sound and appearance. I do agree, however, that the difference in the marks is more likely to be noted when the respective uses are for restaurant services and tea.
I also agree that the derivation of the marks from the name of an historic event is a factor to be given consideration. In my view, however, it does not indicate “weakness” or “descriptiveness” of appellant’s mark but does give credence to appellee’s assertion that there was no intent to trade upon the goodwill of appellant. The absence of intent to confuse would not preclude a finding of likelihood of confusion, but had such intent been shown (which it has not), it would be a factor to weigh against the newcomer. Amstar Corp. v. Domino’s Pizza, Inc., 615 F.2d 252, 263 , 205 USPQ 969 , 978 (CA 5), cert. denied, 449 U.S. 899 , 101 S.Ct. 268 , 66 L.Ed.2d 129 (1980).