In re Charger Ventures LLC

Docket No. 2022-1094 (https://cafc.uscourts.gov/opinions-orders/22-1094.OPINION.4-13-2023_2110336.pdf)

PROST, REYNA, STARK

April 13, 2023

Brief Summary:   TTAB affirmance of examiner’s refusal to register mark due to likelihood of confusion affirmed. Summary:  Charger appealed TTAB decision denying registration of its trademark SPARK LIVING “for leasing of real estate; real estate listing; real estate service, namely, rental property management” on grounds of likelihood of confusion with an earlier registered trademark SPARK for “[r]eal estate services, namely, rental brokerage, leasing and management of commercial property, offices and office space.”  After the examiner alleged a risk of confusion between the marks, Charger “amended its description of services to only cover residential real estate services” and argued “that the examining attorney failed to compare the marks in their entireties”.  The examiner then issued a new office action “requiring Charger to disclaim “LIVING” because “adding a term to a registered mark” or ‘[i]ncorporating the entirety of one mark within another does not obviate the similarity between the compared marks . . . nor does it overcome a likelihood of confusion’”.  “Thus,” the FC panel noted the examiner found “the marks had similar sound, appearance, connotation and commercial impression and similarity in just one element of a mark, alone, is sufficient to find likelihood of confusion.”  Charger then disclaimed “LIVING” and “amended the description to “specifically” exclude commercial property and office space”.  Charger appealed the subsequent rejection to the TTAB, which affirmed the examiner’s rejection.  The FC panel found the TTAB properly “addressed five of the Dupont factors: (1) similarity or dissimilarity of the marks, (2) similarity of dissimilarity of the nature of the goods or services, (3) the similarity or dissimilarity of established, likely-tocontinue trade channels, (4) the conditions under which and buyers to whom sales are made, and (5) strength of the mark (e.g., the number and nature of similar marks in use on similar goods)”, “the similarity or dissimilarity of the marks as well as the goods or services” being “key factors” (In re E.I. DuPont, CCPA 1973; Federated Foods, CCPA 1976; “the services need not be “identical or even competitive” but merely “related in some manner”).  The FC panel explained that the TTAB “concluded that, despite some commercial weakness in the term SPARK and sophistication of consumers, there was ‘insufficient evidence’… to overcome the ‘close similarity’ of the marks and relatedness of the services” (Coca-Cola, CCPA 1975).  The FC panel also explained that the TTAB “can focus its analysis on dispositive factors” depending on the circumstances (In re Dixie, FC 1997) and even “[a] single DuPont factor may…be dispositive of the likelihood of confusion analysis” (Kellogg, FC 1991).  The FC panel concluded the TTAB’s analysis was proper (e.g., it “compared the marks “in their entireties” and based its findings on the “overall commercial impression engendered by the marks as a whole”) and supported by substantial evidence (e.g., “companies are known to offer both residential and commercial services under the same mark”).  The TTAB decision was therefore affirmed.

Patrick Halloran

Pat has a Ph.D. in Microbiology and Immunology from The University of Health Sciences / The Chicago Medical School (now the Rosalind Franklin Institute (North Chicago, IL) (1994)). He also completed post-doctoral studies at The National Cancer Institute (1994-1996) where he developed novel…

Pat has a Ph.D. in Microbiology and Immunology from The University of Health Sciences / The Chicago Medical School (now the Rosalind Franklin Institute (North Chicago, IL) (1994)). He also completed post-doctoral studies at The National Cancer Institute (1994-1996) where he developed novel approaches for gene therapy of melanoma. Pat has been an attorney (IL) since 1999 after graduating from Chicago-Kent College of Law, which was recently ranked as one of the top five law schools for Intellectual Property in the U.S. (U.S. News and World Report link). Pat also has a B.A. in Biology from Augustana College (Rock Island, IL; 1989) where he was on two NCAA Division III National Championship football teams (1985, 1986). He currently resides in Center Valley, PA.