Third-Party Registrations and Evidence of Third-Party Use

Third-party registrations used to

show relatedness of goods or services

. Third-party

registrations that cover the goods or services of the applicant and

registrant may have some probative value to the extent that they may serve

to suggest that goods or services are of a type that may emanate from a

single source, if the registrations are based on use in commerce.

See

Hewlett-Packard Co. v. Packard Press, Inc.

, 281 F.3d

1261, 1267, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (evidence that "a single

company sells the goods and services of both parties, if presented, is

relevant to the relatedness analysis");

Made in Nature, LLC v.

Pharmavite LLC

, Opp. No. 91223352, 2022 TTAB LEXIS 228, at

*54-55 (2022) (quoting

Joel Gott Wines LLC v. Rehoboth Von Gott

Inc.

, 107 USPQ2d 1424, 1432 (TTAB 2013));

In re Mucky

Duck Mustard Co.

, 6 USPQ2d 1467, 1470 n.6 (TTAB 1988),

aff’d per curiam

, 864 F.2d 149 (Fed. Cir. 1988).

Third-party registrations that are not based on use in commerce, such as

those registered under Trademark Act §66(a),

15

U.S.C. §1141f(a)

, or those registered solely under

§44,

15 U.S.C. §1126(e)

, and for which no

§8 or §71 affidavits or declarations of continuing use have been filed

(

15 U.S.C.

§§1058

,

1141k

),

have very little, if any, probative value.

See

Heil Co. v. Tripleye GmbH

, Opp. No. 91277359, 2024 TTAB

LEXIS 494, at *59-60 (2024) (citing

Made in Nature, LLC v.

Pharmavite LLC

, 2022 TTAB LEXIS 228, at *30-31);

In

re Info. Builders Inc.

, 2020 USPQ2d 10444, at *6 n.19 (TTAB

2020) (citing

Calypso Tech., Inc. v. Calypso Cap. Mgmt.,

LP

, 100 USPQ2d 1213, 1221 n.15 (TTAB 2011)),

appeal

dismissed

, No. 20-1979 (Fed. Cir. Oct. 20, 2020);

In

re 1st USA Realty Pros., Inc.

, 84 USPQ2d 1581, 1583 (TTAB

2007).

Third-party registrations used to

show inherent or conceptual weakness of a term or mark

component

30-31);

In

re Info. Builders Inc.

, 2020 USPQ2d 10444, at *6 n.19 (TTAB

2020) (citing

Calypso Tech., Inc. v. Calypso Cap. Mgmt.,

LP

, 100 USPQ2d 1213, 1221 n.15 (TTAB 2011)),

appeal

dismissed

, No. 20-1979 (Fed. Cir. Oct. 20, 2020);

In

re 1st USA Realty Pros., Inc.

, 84 USPQ2d 1581, 1583 (TTAB

2007).

Third-party registrations used to

show inherent or conceptual weakness of a term or mark

component.

Generally, the existence of third-party

registrations cannot justify the registration of another mark that is so

similar to a previously registered mark as to create a likelihood of

confusion, or to cause mistake, or to deceive.

E.g.

,

In re i.am.symbolic, llc

, 866 F.3d 1315, 123 USPQ2d

1744 (Fed. Cir. 2017);

In re Max Cap. Grp. Ltd.

, 93

USPQ2d 1243, 1248 (TTAB 2010);

In re Toshiba Med. Sys.

Corp.

, 91 USPQ2d 1266, 1272 (TTAB 2009). However, a large

number of active third-party registrations including the same or similar

term or mark component for the same or similar goods or services may be

given some weight to show, in the same way that dictionaries are used, that

a mark or a portion of a mark has a normally understood descriptive or

suggestive connotation, leading to the conclusion that the term or mark

component is relatively weak.

See

,

e.g.

,

Spireon, Inc. v. Flex Ltd.

,

71 F.4th 1355, 1363, 2023 USPQ2d 737, at *4-5 (Fed. Cir. 2023);

Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v.

New Millennium Sports, S.L.U.

, 797 F.3d 1363, 116 USPQ2d 1129

(Fed. Cir. 2015);

Juice Generation, Inc. v. GS Enters.

LLC

, 794 F.3d 1334, 1339, 115 USPQ2d 1671, 1675 (Fed. Cir.

2015);

Tektronix, Inc. v. Daktronics, Inc.

, 534 F.2d 915,

917, 189 USPQ 693, 694-95 (C.C.P.A. 1976);

Heil Co. v. Tripleye

GmbH

, 2024 TTAB LEXIS 494, at *70-71;

Made in Nature,

LLC v. Pharmavite LLC

, 2022 TTAB LEXIS 228, at *28;

Tao Licensing, LLC v. Bender Consulting Ltd.

, 125

USPQ2d 1043, 1059 (TTAB 2017);

In re Melville Corp.

, 18

USPQ2d 1386, 1388 (TTAB 1991)

15 USPQ2d 1671, 1675 (Fed. Cir.

2015);

Tektronix, Inc. v. Daktronics, Inc.

, 534 F.2d 915,

917, 189 USPQ 693, 694-95 (C.C.P.A. 1976);

Heil Co. v. Tripleye

GmbH

, 2024 TTAB LEXIS 494, at *70-71;

Made in Nature,

LLC v. Pharmavite LLC

, 2022 TTAB LEXIS 228, at *28;

Tao Licensing, LLC v. Bender Consulting Ltd.

, 125

USPQ2d 1043, 1059 (TTAB 2017);

In re Melville Corp.

, 18

USPQ2d 1386, 1388 (TTAB 1991). However, cancelled or expired third-party

registrations for similar marks are not probative evidence of a mark’s

descriptiveness, suggestiveness, or strength.

See

New Era Cap Co. v. Pro Era, LLC

, 2020 USPQ2d 10596, at

*13 (TTAB 2020) (citing

In re Inn at St. John’s, LLC

, 126

USPQ2d 1742, 1745 (TTAB 2018),

aff’d per curiam

, 777 F.

App’x 516, 2019 BL 343921 (Fed. Cir. 2019));

In re Info. Builders

Inc.

, 2020 USPQ2d 10444, at *6 n.19 (citing

Bond v.

Taylor

, 119 USPQ2d 1049, 1054 n.10 (TTAB 2016)),

appeal dismissed

, No. 20-1979 (Fed. Cir. Oct. 20,

2020);

In re Kysela Pere et Fils Ltd.

, 98 USPQ2d 1261,

1264 (TTAB 2011)).

Third-party use to show commercial

weakness

. Evidence of third-party use falls under the sixth

DuPont

factor – the "number and nature of similar

marks in use on similar goods."

In re E. I. du Pont de Nemours

& Co.

, 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A.

1973). Evidence of third-party use may bear on the commercial strength or

weakness of a mark.

Juice Generation

, 794 F.3d at

1338-39, 115 USPQ2d at 1674. Significant evidence of third-party use of

similar marks on similar goods or services can show that consumers have

become conditioned by encountering so many similar marks that they

distinguish between them based on minute distinctions.

Id.

;

Palm Bay Imps., Inc. v. Veuve Clicquot

Ponsardin Maison Fondee en 1772

, 396 F.3d 1369, 1373-74, 73

USPQ2d 1689, 1693 (Fed. Cir. 2005)

9, 115 USPQ2d at 1674. Significant evidence of third-party use of

similar marks on similar goods or services can show that consumers have

become conditioned by encountering so many similar marks that they

distinguish between them based on minute distinctions.

Id.

;

Palm Bay Imps., Inc. v. Veuve Clicquot

Ponsardin Maison Fondee en 1772

, 396 F.3d 1369, 1373-74, 73

USPQ2d 1689, 1693 (Fed. Cir. 2005). If the applicant's evidence is properly

submitted and establishes ubiquitous or considerable third-party use of the

same or similar marks on the same or similar goods or services, it may be

"relevant to show that a mark is relatively weak and entitled to only a

narrow scope of protection."

Palm Bay Imps.

, 396 F.3d at

1373-74, 73 USPQ2d at 1693;

see

Jack Wolfskin

, 797 F.3d at 1373-74, 116 USPQ2d at 1136-37

(finding evidence of ubiquitous use of a paw print design on clothing

rendered that component of the opposer’s mark relatively weak for clothing);

Juice Generation

, 794 F.3d at 1337 n.1, 1341-42, 115

USPQ2d at 1673 n.1, 1676-77 (finding evidence of a considerable number of

third-party uses of the component "peace and love" in connection with

restaurant services or food products relevant to assessing the opposer’s

mark’s strength or weakness without the need for specifics as to the extent

or impact of use);

In re FabFitFun, Inc.

, 127 USPQ2d

1670, 1674-75 (TTAB 2018) (finding the component term SMOKING HOT in the

marks I’M SMOKING HOT and SMOKIN’ HOT SHOW TIME to be "somewhat weak" based

in part on evidence of third-party use of the term on similar cosmetics

goods, noting that such uses "tend to show consumer exposure to third-party

use of the term on similar goods");

see also

Primrose Ret. Cmtys., LLC v. Edward Rose Senior Living,

LLC

, 122 USPQ2d 1030, at 1034-36 (finding weakness based on at

least eighty-five actual uses of ROSE-formative marks for similar services

and eight similar third-party registrations);

In re Broadway

Chicken Inc

r cosmetics

goods, noting that such uses "tend to show consumer exposure to third-party

use of the term on similar goods");

see also

Primrose Ret. Cmtys., LLC v. Edward Rose Senior Living,

LLC

, 122 USPQ2d 1030, at 1034-36 (finding weakness based on at

least eighty-five actual uses of ROSE-formative marks for similar services

and eight similar third-party registrations);

In re Broadway

Chicken Inc.

, 38 USPQ2d 1559, 1565-66 (TTAB 1996) (holding no

likelihood of confusion due to differences in the marks and finding

"Broadway" weak for restaurant services based on evidence that hundreds of

restaurants and eating establishments used Broadway as a trademark or trade

name);

cf.

In re i.am.symbolic, llc

, 866 F.3d at 1329, 123 USPQ2d at

1751 ("Symbolic’s evidence of third-party use of I AM for the same or

similar goods falls short of the ‘ubiquitous’ or ‘considerable’ use of the

mark components present in its cited cases.").

Limitations regarding probative

value of third-party registration or use evidence to show weakness of

mark in cited registration

. The potential relevance of

third-party registrations and uses offered to support registrability over

the cited registration depends on the relationship they bear to the

application and registration at issue. The third-party marks must generally

be as similar to the registered mark as the applied-for mark.

See

,

e.g.

,

Specialty

Brands, Inc. v. Coffee Bean Distribs., Inc.

, 748 F.2d 669,

675, 223 USPQ 1281, 1284-85 (Fed. Cir. 1984) ("Applicant introduced evidence

of eight third-party registrations for tea which contain the word ‘SPICE’,

five of which are shown to be in use. None of these marks has a ‘SPICE

(place)’ format or conveys a commercial impression similar to that projected

by the SPICE ISLANDS mark, and these third-party registrations are of

significantly greater difference from SPICE VALLEY and SPICE ISLANDS than

either of these two marks from each other.");

see also

In re Mighty Leaf Tea

, 601 F.3d 1342, 1347, 94 USPQ2d

1257, 1259 (Fed. Cir. 2010)

in use. None of these marks has a ‘SPICE

(place)’ format or conveys a commercial impression similar to that projected

by the SPICE ISLANDS mark, and these third-party registrations are of

significantly greater difference from SPICE VALLEY and SPICE ISLANDS than

either of these two marks from each other.");

see also

In re Mighty Leaf Tea

, 601 F.3d 1342, 1347, 94 USPQ2d

1257, 1259 (Fed. Cir. 2010). Potential relevance also depends on whether the

third-party registered marks and uses are for goods or services as similar

to those in the cited registration as those identified in the application.

See

,

e.g.

,

Nat’l Cable

Tel. Ass’n, Inc. v. Am. Cinema Editors, Inc.

, 937 F.2d 1572,

1580, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991) ("None of the third party marks

and uses of ACE made of record are nearly as closely related to the

activities of the parties as the virtually identical uses of the parties are

to each other. Thus, we agree with the Board that nothing in the record

shows a narrowing of Editors’ identification with A.C.E./ACE by third party

marks with respect to the relevant public, namely, the film industry or even

the broader entertainment industry. In sum, Cable’s argument that it can use

ACE because ACE is a ‘weak’ mark, as an abstract proposition, is not only

unpersuasive but essentially meaningless.") (citation omitted);

see

also

Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co.

,

908 F.3d 1315, 1325-26, 128 USPQ2d 1686, 1694-95 (Fed. Cir. 2018) (citing

Nat’l Cable Tel. Ass’n, Inc. v. Am. Cinema Eds.,

Inc.

, 937 F.2d 1572, 1580, 19 USPQ2d 1424, 1430 (Fed. Cir.

1991)).

However, considering a mark’s relative

strength or weakness is only part of the process of determining whether

there is a likelihood of confusion. Even registered marks deemed "weak" are

entitled to the presumptions of validity under §7(b), and are entitled to

protection under §2(d) against the registration of confusingly similar

marks.

See

,

e.g.

,

In re

Detroit Athletic Co.

, 903 F.3d 1297, 1304, 128 USPQ2d 1047,

1049 (Fed. Cir

ative

strength or weakness is only part of the process of determining whether

there is a likelihood of confusion. Even registered marks deemed "weak" are

entitled to the presumptions of validity under §7(b), and are entitled to

protection under §2(d) against the registration of confusingly similar

marks.

See

,

e.g.

,

In re

Detroit Athletic Co.

, 903 F.3d 1297, 1304, 128 USPQ2d 1047,

1049 (Fed. Cir. 2018) (affirming the Board’s conclusion that confusion was

likely between DETROIT ATHLETIC CO. and DETROIT ATHLETIC CLUB, marks

comprised of the "conceptually weak" wording DETROIT ATHLETIC combined with

the non-source identifying business identifiers "Co." and "Club");

see also

King Candy Co. v. Eunice King’s Kitchen, Inc.

, 496 F.2d

1400, 1401, 182 USPQ 108, 109 (C.C.P.A. 1974);

Food Specialty Co.

v. Standard Prods. Co.

, 406 F.2d 1397, 1398, 161 USPQ 46, 47

(C.C.P.A. 1969) (in speaking of marks as being weak or strong, "we should

not lose sight of the ultimate question that must be answered, namely,

whether there is a likelihood of confusion, mistake, or deception."). Thus,

arguments that third-party use has rendered the registered mark so weak as

to lack any source-identifying ability may not be raised in examination, but

only in cancellation proceedings.

See

,

e.g.

,

In re Dixie Rests., Inc.

,

105 F.3d 1405, 1408, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997) ("it is not open

to an applicant to prove abandonment of a registered mark in an ex parte

registration proceeding"; a cancellation proceeding against the registrant

is required) (citations omitted);

Wallpaper Mfrs., Ltd. v. Crown

Wallcovering Corp.

, 680 F.2d 755, 766, 214 USPQ 327, 336

(C.C.P.A. 1982) (where a "fail[ure] to police its mark" has "caused the

[registered] mark to lose its significance as a mark," a cancellation

proceeding for abandonment may lie).

See

TMEP

§710.01(b)

regarding the proper submission of

Internet evidence and

§710.03

regarding making third party registrations of record.