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TTAB Must Consider all Relevant DuPont Factors

Reviewing a decision from the Trademark Trial and Appeal Board (TTAB), the US Court of Appeals for the Federal Circuit vacated and remanded the TTAB’s affirmation of an examining attorney’s refusal to register the trademark GUILD MORTGAGE COMPANY and design on grounds of likelihood of confusion with a prior registration, finding that the TTAB did not properly consider all relevant DuPont factors when confirming the registration refusal. In re: Guild Mortgage Company, Case No. 2017-2620 (Fed. Cir. Jan. 14, 2019) (Moore, J).

Having used its eponymous trademark since 1960, Guild Mortgage Co. filed a US trademark application in 2015 to federally register the GUILD MORTGAGE COMPANY and design mark in relation to its mortgage banking services. The examining attorney refused registration of the mark based on likelihood of confusion with a prior registration for the mark GUILD INVESTMENT MANAGEMENT covering investment advisory services.

Registration of a trademark may be refused if there is a likelihood of consumer confusion with an earlier-filed US trademark application or registration. Whether a likelihood of confusion exists between two trademarks is determined using the factors set out in the venerable 1973 In re E.I. DuPont DeNemours & Co. decision issued by the CCPA, the predecessor court to the Federal Circuit. There are 13 DuPont factors that compare various commercial elements, such as the similarity of the parties’ respective trademarks, goods and services, and trade channels, and the sophistication of relevant consumers.

In the case of Guild Mortgage, the TTAB agreed with the examining attorney’s refusal to register, finding that the GUILD MORTGAGE COMPANY and design trademark was likely to cause consumer confusion with the prior registration for GUILD INVESTMENT MANAGEMENT, based on the examining attorney’s conclusion that the marks, the nature of the services, and the parties’ respective trade channels were similar. The TTAB concluded that, on balance, those factors outweighed the TTAB’s opposite finding on the factor that consumers “may exercise a certain degree of care in investing money, if not perhaps in seeking a mortgage loan.” Guild Mortgage appealed.

The Federal Circuit found that the TTAB did not properly address DuPont factor 8, which examines the “length of time during and conditions under which there has been concurrent use without evidence of actual confusion.” The Court noted that Guild Mortgage had argued before the examining attorney and the TTAB that it and Guild Investment Management have coexisted in business for more than 40 years without any evidence of actual confusion. The company submitted a declaration by its president and CEO confirming those facts. Given more than 40 years of concurrent use of both trademarks, Guild Mortgage argued that “there is no possibility of confusion in the minds of consumers between [both marks].”

The Federal Circuit noted that the TTAB’s opinion provided no indication that it considered DuPont factor 8, and found that the TTAB erred in failing to consider Guild Mortgage’s arguments and evidence. The Court further found that the TTAB’s error was not harmless, because the mortgage company’s evidence weighed in favor of no likelihood of confusion between the two GUILD trademarks. The Court made no determination as to the weight with which the mortgage company’s evidence should be accorded, just that it was error not to consider it at all, and remanded the case to the TTAB to reconsider its likelihood of confusion determination in light of all available evidence.

© 2019 McDermott Will & Emery

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About this Author

Sarah Bro, McDermott Will Emery Law Firm, Intellectual Property Attorney
Associate

Sarah Bro is an associate in the law firm of McDermott Will & Emery LLP and is based in the Firm’s Orange County office.Sarah focuses her practice on trademark prosecution and trademark litigation support.

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