984 F.3d 1031
Fed. Cir.2021Background:
- QuikTrip West, Inc. (QuikTrip) owns a registered design mark QT KITCHENS for food/beverage services since 2011 and operates convenience/gasoline stores.
- Weigel Stores, Inc. (Weigel) began using a stylized W KITCHENS in 2014 and, after receiving a cease-and-desist from QuikTrip, modified the mark to "W WEIGEL’S KITCHEN NOW OPEN" (changed plural to singular, altered font, added WEIGEL’S and NOW OPEN, and used an encircled W).
- Weigel applied to register the final mark in 2017; QuikTrip opposed under 15 U.S.C. § 1052(d) claiming likelihood of confusion with QT KITCHENS.
- The TTAB applied the DuPont factors, found overlap in goods, trade channels, customers, and conditions of purchase favoring confusion, but concluded the marks were dissimilar overall (giving reduced weight to the shared term “KITCHEN(S)” as descriptive/highly suggestive) and found no bad faith by Weigel.
- The TTAB dismissed QuikTrip’s opposition; the Federal Circuit affirmed, holding the dissimilarity of the marks dispositive and supported by substantial evidence.
Issues:
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Similarity of the marks (DuPont factor 1) | Shared word KITCHEN(S) makes marks substantially similar; Board improperly dissected marks | Board properly compared marks as a whole and gave less weight to descriptive term; dominant graphic/lettering differences control | Affirmed: substantial evidence supports treating “kitchen(s)” as descriptive and weighing distinctive graphic/letter elements more heavily; marks are dissimilar overall |
| Bad faith (DuPont factor 13) | Weigel viewed QuikTrip stores/marketing and copied elements; intent to confuse inferred | Weigel repeatedly modified its mark to avoid confusion, negating intent to deceive | Affirmed: substantial evidence supports Board finding no bad faith; mere knowledge or copying is insufficient without intent to confuse |
| Weighing of DuPont factors (overall likelihood of confusion) | Overlap in goods/channels/customers should make confusion likely despite mark differences | Dissimilarity of marks can be dispositive; Board balanced factors and found differences outweighed overlaps | Affirmed: Board permissibly found mark dissimilarity dispositive under DuPont balancing test |
Key Cases Cited
- In re E. I. DuPont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973) (establishes DuPont multifactor likelihood-of-confusion framework)
- Packard Press, Inc. v. Hewlett-Packard Co., 227 F.3d 1352 (Fed. Cir. 2000) (tribunal may give varying weight to mark features so long as entire mark is considered)
- In re Nat'l Data Corp., 753 F.2d 1056 (Fed. Cir. 1985) (descriptive/generic portions of a mark may be given less weight)
- Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334 (Fed. Cir. 2015) (third-party use affects mark strength)
- Swagway, LLC v. Int’l Trade Comm’n, 934 F.3d 1332 (Fed. Cir. 2019) (standard of review: factual findings for substantial evidence; DuPont weighing reviewed de novo)
- Champagne Louis Roederer, S.A. v. Delicato Vineyards, 148 F.3d 1373 (Fed. Cir. 1998) (a single DuPont factor, such as mark dissimilarity, can be dispositive)
- Sweats Fashions, Inc. v. Pannill Knitting Co., 833 F.2d 1560 (Fed. Cir. 1987) (bad faith requires more than knowledge of prior mark)
- Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97 (2d Cir. 2009) (relevant intent is intent to confuse; copying alone is insufficient)
- Novartis AG v. Torrent Pharms. Ltd., 853 F.3d 1316 (Fed. Cir. 2017) (tribunal need not explicitly discuss every piece of evidence or argument)
- On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080 (Fed. Cir. 2000) (definition of substantial evidence for administrative findings)
- In re Electrolyte Labs., Inc., 929 F.2d 645 (Fed. Cir. 1990) (dominant features of a mark weigh more in overall impression)