Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U.
797 F.3d 1363
| Fed. Cir. | 2015Background
- Jack Wolfskin applied to register a paw-print design mark for clothing, footwear, and accessories.
- New Millennium opposed on likelihood of confusion with its KELME mark and Wolfskin counterclaimed to cancel for abandonment.
- The Board rejected Wolfskin’s abandonment claim and sustained the opposition on likelihood of confusion.
- Wolfskin appeals, challenging abandonment and the Board’s likelihood-of-confusion analysis.
- Court affirms abandonment ruling, but reverses on likelihood of confusion and remands for further proceedings.
- Key issue centers on proper comparison of marks as wholes and the impact of third-party paw-print usage.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Abandonment standard and tacking | New Millennium abandoned its mark via modernization | Minor changes preserve continuity of commercial impression | New Millennium did not abandon; maintained same impression |
| Proper comparison of marks for confusion | Board overemphasized paw print, ignored KELME word element | Paw print design drives overall impression | Must assess marks in their entireties; no likelihood of confusion |
| Role of third-party paw-print marks in strength analysis | Extensive third‑party paw-print registrations show weak protection for paw prints | Some third-party uses are not probative or distinguishable | Third-party paw-print usage weakens opposer’s position; supports no confusion |
Key Cases Cited
- Hana Fin., Inc. v. Hana Bank, 135 S. Ct. 907 (2015) (same, continuing commercial impression fact-bound standard)
- Van Dyne-Crotty, Inc. v. Wear-Guard Corp., 926 F.2d 1156 (Fed. Cir. 1991) (same, continuing commercial impression for priority/abandonment)
- Ilco Corp. v. Ideal Sec. Hardware Corp., 527 F.2d 1221 (CCPA 1976) (equivalence of marks preserving priority if same impression)
- In re Thrifty, 274 F.3d 1349 (Fed. Cir. 2001) (material alteration standard for amendments to avoid abandonment)
- Viterra Inc. v. 671 F.3d 1358, 671 F.3d 1358 (Fed. Cir. 2012) (consider marks in their entirety; avoid dissecting overall impression)
- Packard Press, Inc. v. Hewlett-Packard Co., 227 F.3d 1352 (Fed. Cir. 2000) (design emphasis must be supported by evidence; overall impression matters)
- CBS Inc. v. Morrow, 708 F.2d 1579 (Fed. Cir. 1983) (design+word must be evaluated for source identification)