In Re: Detroit Athletic Co.
903 F.3d 1297
Fed. Cir.2018Background
- DACo (Detroit Athletic Co.) filed to register the standard-character mark DETROIT ATHLETIC CO. for sports-apparel retail services; amended to Supplemental Register after disclaiming ATHLETIC CO.
- The USPTO refused registration under 15 U.S.C. § 1052(d) as likely to be confused with the registered mark DETROIT ATHLETIC CLUB for clothing (Principal Register).
- The Trademark Trial and Appeal Board affirmed, finding marks similar in appearance, sound, connotation, and commercial impression; goods/services related; and trade channels overlapping.
- DACo argued the terminal words (“Co.” vs. “Club”) and differing business types distinguish the marks, and submitted limited evidence of no actual confusion.
- The Federal Circuit reviewed factual findings for substantial evidence and affirmed the Board, applying the DuPont factors to conclude likelihood of confusion.
Issues
| Issue | Plaintiff's Argument (DACo) | Defendant's Argument (USPTO/Registrant) | Held |
|---|---|---|---|
| Whether DETROIT ATHLETIC CO. is likely to be confused with DETROIT ATHLETIC CLUB under § 2(d) | Marks distinguishable because of terminal words (“Co.” v. “Club”) and different business types; minimal actual confusion | Marks are nearly identical in dominant portion (“Detroit Athletic”); goods/services and trade channels overlap; evidence of no confusion not probative | Affirmed: Likelihood of confusion found; substantial evidence supports Board’s factual findings |
| Similarity of the marks (DuPont factor 1) | Whole-mark analysis favors DACo; terminal words matter | Lead words “Detroit Athletic” are dominant; terminal words are descriptive/disclaimed and carry little weight | Held: Marks similar in appearance, sound, connotation, commercial impression |
| Relatedness of goods/services (DuPont factor 2) | DACo’s retail services differ from registrant’s private club activities; different classes (35 v. 25) matter | Registrant’s clothing description is broad and encompasses sports apparel; goods and retail services overlap despite class differences | Held: Goods/services substantially overlap; supports confusion finding |
| Trade channels and classes of consumers (DuPont factor 3) | Registrant allegedly sells only to club members on-site, so channels don’t overlap | Registration has no trade-channel limitations; goods presumed to travel in all normal channels including retail/online | Held: Channels overlap; Board properly considered the unqualified registration |
| Evidence of actual confusion (DuPont factor 8) | Submitted customer affidavit and search/review results showing no confusion | Proffered evidence is sparse, not probative; lack of actual confusion not dispositive in ex parte context | Held: Board reasonably gave little weight to DACo’s evidence; lack of actual confusion insufficient to rebut likelihood finding |
Key Cases Cited
- In re Viterra Inc., 671 F.3d 1358 (Fed. Cir.) (likelihood-of-confusion is legal question based on factual findings; standard of review)
- Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334 (Fed. Cir.) (Board may weigh components of a mark but must analyze the mark as a whole)
- Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369 (Fed. Cir.) (prominence of initial word in composite mark can be dispositive)
- In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463 (Fed. Cir.) (retail services can overlap with goods; class distinctions are not dispositive)
- Shen Mfg. Co. v. Ritz Hotel, Ltd., 393 F.3d 1238 (Fed. Cir.) (disclaimed matter must still be considered; public unaware of disclaimers)
- In re Majestic Distilling Co., 315 F.3d 1311 (Fed. Cir.) (lack of evidence of actual confusion carries little weight in ex parte proceedings)