TTAB Erred in Failing to Address DuPont Factor 8

Last week, the United States Court of Appeals for the Federal Circuit issued an opinion in In Re Guild Mortgage Co., 2017-2620 (January 14, 2019). A trademark examiner rejected Guild’s application to register the mark GUILD MORTGAGE COMPANY based on a likelihood of confusion with the registered mark GUILD INVESTMENT MANAGEMENT, and the Trademark Trial and Appeal Board (TTAB) affirmed. The Federal Circuit vacated and remanded because the TTAB failed to consider relevant evidence and argument directed to DuPont factor 8—the length of time during and conditions under which there has been concurrent use without evidence of actual confusion. During examination, Guild presented evidence, in the form of a declaration of its President, of concurrent use of the two marks for more than 40 years in the same geographic area without any evidence of actual confusion. The TTAB decision affirming rejection of the application did not discuss that evidence. On appeal, the government argued the evidence did not merit consideration because in ex parte registration proceedings, “uncorroborated statements of no known instances of actual confusion” of the only party involved in the case are “of little evidentiary value,” quoting In re Majestic Distilling Co., 315 F.3d 1311 (Fed. Cir. 2003). The Court explained that the holding of Majestic Distilling applies to DuPont factor 7—the nature and extent of any actual confusion—and not to DuPont factor 8. The Court held that in every case turning on likelihood of confusion all DuPont factors for which there is evidence of record must be considered. Because there was evidence of record on DuPont factor 8, and because the TTAB erroneously failed to consider it, the Court vacated the TTAB’s decision and remanded the case with instructions to the TTAB to reconsider its decision in light of all of the evidence.