In Re: Guild Mortgage Company
17-2620
Fed. Cir.Jan 14, 2019Background
- Guild Mortgage Co. applied to register the mark “GUILD MORTGAGE COMPANY” with a design for mortgage banking services (Class 36); use since 1960 and operations across many states.
- The USPTO examiner refused registration based on likelihood of confusion with the registered mark “GUILD INVESTMENT MANAGEMENT” (Class 36 for investment advisory services), owned by Guild Investment Management, Inc. in Los Angeles.
- The Trademark Trial and Appeal Board affirmed, finding the marks, services, and trade channels similar and concluding buyer care did not outweigh those similarities.
- Guild submitted evidence (CEO declaration) that the two marks have coexisted in southern California for over 40 years without any known instances of actual confusion and argued this under DuPont factor 8 (concurrent use without confusion).
- The Board’s opinion stated it considered DuPont factors with evidence but did not mention or analyze Guild’s factor-8 argument or the accompanying declaration.
- The Federal Circuit vacated and remanded, holding the Board erred by failing to consider Guild’s evidence and argument as to DuPont factor 8 and instructing the Board to reconsider likelihood of confusion in light of all evidence.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the Board erred by failing to consider evidence of 40+ years of concurrent use without actual confusion (DuPont factor 8) | Guild: Long, concurrent use in same market with no evidence of actual confusion weighs against likelihood of confusion | PTO: Uncorroborated statements of no confusion by the applicant are of little evidentiary value and such evidence may be irrelevant | Court: Vacated and remanded — Board erred by not considering Guild’s factor-8 argument/evidence; must reassess likelihood of confusion considering that evidence |
Key Cases Cited
- Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317 (Fed. Cir. 2014) (likelihood-of-confusion is a legal question based on DuPont factors reviewed for substantial evidence)
- In re E.I. DuPont DeNemours & Co., 476 F.2d 1357 (C.C.P.A. 1973) (sets thirteen-factor framework for likelihood-of-confusion)
- In re Dixie Rests., Inc., 105 F.3d 1405 (Fed. Cir. 1997) (Board must consider DuPont factors when they are of record)
- Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261 (Fed. Cir. 2002) (likelihood-of-confusion analysis considers all DuPont factors supported by evidence)
- Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334 (Fed. Cir. 2015) (vacatur where Board failed to properly assess relevant evidence)
- In re Majestic Distilling Co., 315 F.3d 1311 (Fed. Cir. 2003) (uncorroborated assertions of no actual confusion have limited evidentiary weight but concurrent-use evidence may still be probative)