Patterson Intellectual Property Law

Firm Update

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Peace and Love? Not When it Comes to Trademarks

“Peace and love” is such a heart-warming sentiment — until it becomes the subject of a trademark dispute. Then there are distinct limits to the phrase’s protections. Case in point: Juice Generation, Inc. v. GS Enterprises, LLC.

Applicant gets squeezed

Juice Generation operates a chain of juice bars in the New York City area. It applied to the U.S. Patent and Trademark Office (PTO) to register the mark “PEACE LOVE AND JUICE” and a design for its use. GS Enterprises opposed the application, asserting that the mark was likely to cause confusion with its own family of marks. These marks contain the phrase “PEACE & LOVE” and are registered for use with restaurant services.

The Trademark Trial and Appeal Board (TTAB) evaluated the existence of the likelihood of confusion using the commonly applied DuPont factors. On balance, the board determined that the factors favored the conclusion that consumers familiar with GS’s restaurant services provided under the mark “PEACE & LOVE” would be likely to mistakenly believe that Juice Generation’s mark for juice bar services originated from or was associated with or sponsored by GS. It therefore refused to register the mark.

Court pulps analysis

On appeal, the U.S. Court of Appeals for the Federal Circuit agreed with Juice Generation that the TTAB had inadequately assessed and weighed the strength or weakness of GS’s marks — a consideration that’s connected to one of the DuPont factors: “the number and nature of similar marks in use on similar goods.” The weaker an opposer’s mark, the closer an applicant’s mark can come without causing a likelihood of confusion.

In particular, the appellate court faulted the board’s treatment of the “considerable number” of third parties using similar marks, both registered and not. Third-party registrations, the court said, are relevant to prove that some segments of the composite marks that both parties use have a normally understood and well-recognized descriptive or suggestive meaning. And marks that are descriptive or highly suggestive are less likely to generate confusion.

Consideration of such marks was especially important here because of statements that GS had made to the PTO when successfully applying for registration of one of its marks. Specifically, GS had stated that its mark conveyed a “different overall impression” than did the mark “PEECE LUV CHIKIN” — an impression of 1960s and 1970s counterculture. According to the court, these statements supported Juice Generation’s argument that “PEACE & LOVE” is suggestive or descriptive.

The court also faulted the TTAB for focusing on the “PEACE LOVE” portion. The board’s analysis, it said, didn’t show consideration of how the three primary words in Juice Generation’s mark (“PEACE,” “LOVE” and “JUICE”) may convey a distinct meaning from the two-word phrase used by GS. One such distinct meaning is having different connotations in consumers’ minds. Although the TTAB can properly give more or less weight to particular components of a mark for appropriate reasons, it still must view the mark as a whole.

Food for thought

Ultimately, the appeals court vacated the TTAB’s finding of a likelihood of confusion and remanded the case back to the board for further consideration consistent with the court’s opinion. This ruling demonstrates the limits of trademark protections — even for registered marks.