“Everyone is Using It” as a Defense in Trademark Law

If I want to start using a trademark similar to someone else’s, does it matter whether other people are using similar marks? Last week, in Jack Wolfskin Ausrustung Fur Draussen Gmbh & Company KGAA v. New Millennium Sports, S.L.U., the United States Court of Appeals for the Federal Circuit said “yes.”

In Jack Wolfskin, Jack Wolfskin applied to the United States Patent and Trademark Office to register a paw print as a trademark for clothing, footwear, and accessories. New Millennium Sports, S.L.U. opposed the application on the ground that it was likely to be confused with its previously registered mark for clothing, a logo that included a similar paw print and the word “KELME.”

“Likelihood of confusion” is the touchstone of trademark infringement, and a likelihood of confusion between a newly applied-for trademark registration and an already-registered mark requires rejection of the application. The Trademark Trial and Appeal Board (the section of the United States Patent and Trademark Office that handles such disputes) rejected Jack Wolfskin’s application, finding a likelihood of confusion between Jack Wolfskin’s paw print logo and New Millennium’s previously-registered logo.

The Court of Appeals disagreed and held that Jack Wolfskin’s paw print logo should register. The Court of Appeals found no likelihood of confusion for two reasons. First, the Court of Appeals held that the inclusion of the word “KELME” in New Millennium’s registered mark undercut any likelihood of confusion.

Moreover, the Court of Appeals held that Jack Wolfskin’s extensive evidence of other registrations and uses of paw print logos showed that New Millennium’s mark was weak. “Weak” trademarks receive relatively narrow protection under the trademark law. Here, because the evidence showed numerous other paw print registrations and uses, the Court of Appeals found that consumers would expect that many different companies include paw prints in their trademarks and would not assume that all products paw print logos come from one source. The Court of Appeals therefore held that no likelihood of confusion existed and that Jack Wolfskin was entitled to register its paw print mark.

The decision has important implications for the selection and enforcement of trademarks – and the defense of infringement claims. It emphasizes that registrations and uses of similar marks by third parties can dramatically undercut claims of likely confusion.

Here is link to the Federal Circuit’s decision: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/14-1789.Opinion.8-17-2015.1.PDF