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Getting defensive: A fresh take at the TTAB?

Scott J. Slavick

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The prior registration defense is an equitable doctrine that applies in cases where an applicant owns a prior registration for essentially the same mark, identifying essentially the same goods (or services) that are the subject mark and goods of the proposed application. In asserting such a defense, an applicant argues that an opposer cannot be further injured because there already exists an injurious registration, and the additional registration does not add to the injury.

The principles of a prior registration defense came into relief in the Trademark Trial and Appeal Board's March 4 split decision in GTFM Inc. v. Fresh Body LLC. The case concerned a likelihood of confusion opposition to registration of the mark Fresh Body and FB in a circle design, for "non-medicated skin care preparations, namely, lotions," in International Class 3, and "clothing, namely, shirts, pants, shorts, sweatshirts, sportswear, in the nature of sweat pants and tank tops," in International Class 25. The words fresh and body were disclaimed as single terms. (Opposition No. 91209621).

Particularly noteworthy about the decision, which is not precedential, is that the Board accepted the applicant's prior registration defense regarding its Class 3 goods, but then did find the mark confusingly similar to the opposer's registered mark FB for overlapping clothing items in Class 25.

Here, even though the applicant did not raise the prior registration defense in its affirmative defenses, it did claim ownership of a prior registration for the same FB in a circle mark that it had incorporated in the opposed Fresh Body and FB in a circle design marks for "non-medicated skin lotion." The applicant properly introduced a copy of that prior registration into evidence. The opposer did not object to this evidence until its brief at final hearing.

The first question that arises is whether the prior registration defense was tried by implied consent. Looking at the totality of circumstances, the Board concluded that the opposer was aware that the registration formed the basis of a defense, and it therefore ruled that the issue had been tried by implied consent.

Considering the merits of the prior registration defense, the Board found it applicable to the applicant's Class 3 goods. It observed that the goods in the subject application and the prior registration were "essentially identical."

As to the mark, the Board found instructive its own prior decision in The Place for Vision, Inc. v. Pearle Vision Center, Inc., 218 USPQ 1022, 1023 (TTAB 1983). In that case, Pearle Vision had sought to register the mark Pearle Vision Center with a design element, while already owning registrations for Pearle Vision Center in standard character form. At the time, the opposer's claim related only to the portion of the applicant's mark: Vision Center. So, in Place for Vision, the Board observed that "an opposer cannot suffer damage, within the meaning of Section 13 of the Trademark Act, by the issuance of a registration if the applicant for such registration already owns an unchallenged registration of that mark for the same goods."

In GTFM v. Fresh Body, the opposer's likelihood of confusion claim related only to the FB portion of the applied-for mark, and not to the phrase "Fresh Body," and design features of the mark. The Board explained that as in Place for Vision, the opposer cannot be damaged by registration of the present applied-for mark when the applicant already owns an unchallenged registration for the same goods covered by a mark that is closer to opposer's mark than the one applied for. The Board dismissed the opposer's likelihood of confusion claim against the applicant's Class 3 goods.

With respect to the Class 25 goods, however, the Board turned the tables. Both the challenged application and the opposer's registration included "pants" and "shirts." The Board explained that it had to presume that these goods travel in the same, normal channels of trade to the usual classes of consumers. The Board held that the goods for which the mark was applied for and the goods already covered by the registered mark encompass inexpensive items that would be purchased with no more than ordinary consumer care. These factors weighed heavily in favor of a finding of likely confusion.

As to the similarity of the parties' marks, the Board held that the FB component of the applicant's mark is highlighted by its central position in the mark and the two circles around it. Although the phrase Fresh Body gives the applicant's mark an appearance and sound different from that of the opposer, the Board could not overlook that these disclaimed words are less distinctive than the FB portion of the applicant's mark.

The Board concluded that, despite the differences between the parties' marks, the component they had in common—that is, the "FB"—was instrumental in creating the commercial impression of each, engendering similar impressions overall.

Further, the Board concluded that the words Fresh Body were likely to be viewed as identifying the previously anonymous source of the identical goods sold under the mark FB by the opposer, and could even be viewed as a house mark. Alternatively, and perhaps worse for the applicant, the Board felt that the letters FB standing alone in the opposer's mark could be perceived as simply a shortened form of the applicant's mark, especially when the respective marks are used in connection with identical goods.

So, with this admittedly complex preamble, the Board found confusion likely, and sustained the opposer's likelihood of confusion claim with regard to the applicant's Class 25 goods.

As discussed above, this case appears unique, because the Board has in the past often summarily rejected a prior registration defense on the grounds that said registration and an opposed mark are too dissimilar. This case's holding could signal a loosening of the previously tight control kept on the prior registration defense. Trademark attorneys mindful of this defense and the implications of this recent ruling may want to consider using it more often going forward.

Click here to read the article on Inside Counsel.


Reprinted with permission from the June 14, 2016 edition of Inside Counsel© 2016 ALM Media Properties, LLC. All rights reserved. Further duplication without permission is prohibited, contact 877-257-3382 or reprints@alm.com.

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