447 F. App'x 197
Fed. Cir.2011Background
- Estrada filed two applications on Sept. 2, 2007 to register AUDITORIO TELMEX (Class 43 arena services; Class 41 entertainment).
- Telefonos opposed both applications on priority and likelihood of confusion based on US use of TELMEX; Estrada did not submit evidence or brief to Board.
- Board found Telefonos used TELMEX in the United States since 2000 via Telmex USA and noted Telefonos’ extensive TELMEX use in Mexico; identified AUDITORIO TELMEX arena in Guadalajara as a Telefónos-sponsored venue.
- Board found Estrada evasive and disingenuous in responses; concluded bad faith and likelihood of confusion between TELMEX and AUDITORIO TELMEX for the respective services.
- The Board applied DuPont factors to conclude likelihood of confusion; the TTAB decision was reviewed de novo for legal conclusions and with substantial-evidence standard for underlying facts; the Federal Circuit affirmed.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Telefonos proved priority over Estrada. | Estrada’s priority supported by Board finding. | Telefonos’ prior US use established priority before Estrada’s filing. | Yes; Telefonos established priority. |
| Whether there is a likelihood of confusion between TELMEX and AUDITORIO TELMEX. | Marks are not sufficiently similar; services unrelated. | Marks highly similar; related services and promotional use create source association. | Yes; likelihood of confusion exists. |
| Whether Estrada acted in bad faith affecting likely confusion. | Bad faith not essential to outcome. | Evidence of evasive behavior supports bad faith finding. | Yes; substantial evidence supports bad faith finding. |
| Whether Telefonos had standing before the Board. | Standing contested due to different TELMEX registrant. | Board relied on common-law use to establish standing. | Telefonos had standing. |
Key Cases Cited
- In re E.I. DuPont DeNemours & Co., 476 F.2d 1357 (CCPA 1973) (DuPont factors guide likelihood-of-confusion analysis)
- On-Line Careline, Inc. v. America Online, Inc., 229 F.3d 1080 (Fed. Cir. 2000) (substantial-evidence standard for factual findings; broad consideration of record)
- Recot, Inc. v. Becton, 214 F.3d 1322 (Fed. Cir. 2000) (same goods can be related in consumer minds for source)
- In re Majestic Distilling Co., 315 F.3d 1311 (Fed. Cir. 2003) (DuPont factors not all equally weighted; case-by-case)
- Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565 (Fed. Cir. 1983) (case on likelihood of confusion framework)
- R.J. Reynolds Tobacco Co. v. American Brands, Inc., 493 F.2d 1235 (CCPA 1974) (evidence admissible through latest permissible date)
- Paddington Corp. v. Attiki Imps. & Distribs., Inc., 996 F.2d 577 (2d Cir. 1993) (where bad faith may tip likelihood-of-confusion)