Evidence of Actual Confusion can be a One Way Street

The Applicant filed for the following trademark for clothing:

k8n1xHslwEWOigS4BLjICIjcncRwCXCRERC5O4nhEuAiIyBydxLDRQb8v1mpQc63SDUuAAAAAElFTkSuQmCC

The application was denied based on a cited registration, also for clothing, for:

DHjAAAAAElFTkSuQmCC

Not surprisingly, the TTAB found both marks essentially equivalent to “MOUNTAIN LIFE.”  The design elements were given little weight with the word portions deemed dominant for the purpose of likelihood of confusion.

This case is a pretty typical case where the marks and goods were found to be quite similar, supporting a finding of likelihood of confusion.

What makes this case interesting is that it is a good example of how the absence of evidence of actual confusion often DOES NOT necessarily help the Applicant (i.e., Junior User).  Specifically, in support of its case, the Applicant provided testimony designed to clearly establish a complete absence of actual confusion.  The TTAB dismissed the relevance of the evidence as unhelpful, claiming Applicant had merely proved it did not know of any instances of actual confusion and that allegation, even if accepted as true, did not foreclose the possibility actual confusion existed.  

Perhaps the most ineffective argument to be made is:  “there cannot be a likelihood of confusion because the parties’ trademarks have co-existed for years with no known complaints by consumers.”  

This is so because actual confusion is merely one factor to be considered when conducting a likelihood of confusion analysis.  However, while evidence of actual confusion is GREAT evidence supporting a finding of likelihood of confusion, it is not necessary in order to prove a likelihood of confusion.

In summary, while evidence of actual confusion can be a big help to the party with prior rights, the inability to prove of actual confusion (i.e., or a claim that one has never encounter actual confusion in the relevant consumer base) does not usually carry the day for the party with inferior rights.

Author: Gary Nelson

Image Courtesy of: Tom Hall Used under Creative Commons license.