Juice Generation, Inc. v. Gs Enterprises LLC
794 F.3d 1334
| Fed. Cir. | 2015Background
- Juice Generation applied in 2012 to register the mark “PEACE LOVE AND JUICE” (disclaiming “JUICE”) for juice-bar services; GS Enterprises opposed based on its family of restaurant-service registrations containing the phrase “PEACE & LOVE.”
- GS owns four principal-register marks using “PEACE & LOVE” (some with designs), registered for restaurant services.
- The Trademark Trial and Appeal Board found likelihood of confusion under DuPont factors, emphasizing similarity of the marks and services and treating “PEACE LOVE” as the dominant portion of Juice Generation’s mark.
- The Board discounted third-party uses of “peace”/“love” combinations because the record lacked specifics about the extent or consumer impact of those uses, and it gave little weight to GS’s prosecution statements suggesting limited distinctiveness.
- The Board concluded the additional word “JUICE” and the design did not sufficiently distinguish Juice Generation’s three-word mark from GS’s two-word marks and refused registration; Juice Generation appealed.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the Board properly assessed the strength/weakness of GS’s marks given third-party uses | Juice Gen.: Board ignored widespread third-party use showing PEACE & LOVE is weak/suggestive, narrowing GS’s scope | GS: Its registered marks are entitled to protection; third-party evidence insufficient without details of use/impact | Court: Board erred by inadequately weighing third-party evidence and not placing GS’s marks on the strength spectrum; remand required |
| Whether the Board considered Juice Generation’s mark as a whole versus dissecting it | Juice Gen.: The three-word phrase “PEACE LOVE AND JUICE” conveys a different commercial impression and must be assessed in toto | GS: “PEACE LOVE” is the dominant element and virtually identical to GS’s phrase, so JUICE adds little | Court: Board improperly dissected the mark, overemphasized "PEACE LOVE," and failed to analyze the mark’s overall commercial impression; remand required |
| Whether lack of evidence of actual confusion is dispositive | Juice Gen.: Years of use without actual confusion supports registration | GS: Absence of actual confusion carries little weight because there may have been few opportunities for confusion | Held: Board permissibly discounted actual confusion here but its other analytical errors require remand |
| Whether Board’s errors were harmless | Juice Gen.: Errors affected outcome and require reconsideration | GS: Any errors were harmless given overall similarity | Court: Errors were not harmless; vacated and remanded |
Key Cases Cited
- In re E. I. DuPont DeNemours & Co., 476 F.2d 1357 (C.C.P.A. 1973) (multi-factor likelihood-of-confusion framework)
- Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369 (Fed. Cir. 2005) (third-party use relevant to mark strength and scope of protection)
- In re Coors Brewing Co., 343 F.3d 1340 (Fed. Cir. 2003) (third-party use can show a mark is weak)
- Packard Press, Inc. v. Hewlett-Packard Co., 227 F.3d 1352 (Fed. Cir. 2000) (agency must explain reasoning when asserting it considered marks in their entireties)
- Stone Lion Capital Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317 (Fed. Cir. 2014) (prosecution statements inform commercial impression)
- Consolidated Edison Co. v. N.L.R.B., 305 U.S. 197 (1940) (definition of substantial evidence standard)