Third-Party Uses Weaken Marks and Reduce Likelihood of Confusion: TTAB | Practical Law

Third-Party Uses Weaken Marks and Reduce Likelihood of Confusion: TTAB | Practical Law

In Primrose Retirement Communities, LLC v. Edward Rose Senior Living, LLC, the Trademark Trial and Appeal Board (TTAB) determined that there is no likelihood of confusion between two marks where extensive third-party uses of similar marks indicate the weakness of the opposer's mark and consumers had been educated to look for minute details to distinguish marks.

Third-Party Uses Weaken Marks and Reduce Likelihood of Confusion: TTAB

Practical Law Legal Update w-005-2535 (Approx. 4 pages)

Third-Party Uses Weaken Marks and Reduce Likelihood of Confusion: TTAB

by Practical Law Intellectual Property & Technology
Published on 05 Jan 2017 • USA (National/Federal)
In Primrose Retirement Communities, LLC v. Edward Rose Senior Living, LLC, the Trademark Trial and Appeal Board (TTAB) determined that there is no likelihood of confusion between two marks where extensive third-party uses of similar marks indicate the weakness of the opposer's mark and consumers had been educated to look for minute details to distinguish marks.
On December 27, 2016, in Primrose Retirement Communities, LLC v. Edward Rose Senior Living, LLC, the Trademark Trial and Appeal Board (TTAB) dismissed an opposition based on likelihood of confusion in a precedential decision, giving significant weight to evidence of extensive third-party uses of similar marks for related services (Opposition No. 91217095 (T.T.A.B. Dec. 27, 2016)).
Edward Rose Senior Living, LLC applied to the US Patent and Trademark Office to register the ROSE SENIOR LIVING mark for services including retirement homes and assisted living facilities, nursing home services, and rental of apartments and residential housing. Primrose Retirement Communities, LLC opposed the application on the ground that Edward Rose's mark was likely to cause confusion with its registered mark PRIMROSE in connection with providing congregate, independent, and assisted living facilities.
The TTAB applied the DuPont multi-factor analysis to determine that there is no likelihood of confusion in denying Primrose's opposition (In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973)). The Board gave particular consideration to the sixth DuPont factor, supported by recent decisions from the US Court of Appeals for the Federal Circuit (see Jack Wolfskin Ausrustung Fur Draussen GMBH & Co. KGAA v. New Millenium Sports, S.L.U., 797 F.3d 1363 (Fed. Cir. 2015); Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334 (Fed. Cir. 2015)), in finding that evidence of extensive third-party uses and registrations of ROSE and ROSE-formative marks for senior care living services indicate that:
  • ROSE and ROSE-formative marks for the relevant services are relatively weak.
  • Consumers have been educated to distinguish different marks on the basis of minute distinctions.
  • ROSE and ROSE-formative marks in connection with the relevant services should be given a restricted scope of protection.
The TTAB observed that evidence of Primrose’s inactions supported this interpretation, namely its failure to:
  • Pursue legal recourse, beyond sending cease and desist letters with little to no follow-up action, against third-party users of PRIMROSE.
  • Take any action whatsoever against various other third-party users of ROSE-formative marks, including uses occurring in the same geographic area as Primrose's operations.
The TTAB further found that:
  • Identical or otherwise related services, and a lack of restrictions on trade channels and classes of consumers in the recitations of services, favored a finding of likelihood of confusion.
  • The marks are specifically different in sound, appearance, and meaning, and, in light of the sixth factor analysis, result in different overall commercial impressions, favoring a finding of no likelihood of confusion.
  • Consumers of senior living communities can be expected to exercise some thought and research in their purchasing decisions minimizing any likelihood of confusion.
The TTAB's decision underscores the importance of policing trademark rights and taking consistent action against third parties that infringe or misuse a mark to avoid weakening the strength and scope of protection of a mark.