In this trademark case, the Federal Circuit considered the impact of the “reasonable manner” doctrine—the Trademark Trial and Appeal Board (TTAB) infringement analysis tool it rejected in last year’s Citigroup decision. This time the Federal Circuit decided that the TTAB got the infringement issue right, even though it used this doctrine in its analysis.
In re Viterra Inc., No. 2011-1354 (Fed. Cir. Mar. 6, 2012) (Judges Dyk, Moore, and O’Malley)
Planting Seeds of Confusion
The U.S. Patent and Trademark Office (USPTO) rejected Viterra’s application for a federal trademark registration for XCEED for agricultural seeds. The examining attorney found that Viterra’s mark was likely to be confused with this already-registered mark, also for agricultural seeds:
The examining attorney and the TTAB gave a lot of weight to the fact that the goods both marks are associated with are exactly the same, so the trade channels and the consumers for these seeds are also exactly the same. Plus, the two marks sound identical, even though their spelling and appearance are different.
The TTAB also applied the “reasonable manner” infringement doctrine, since the case arrived at the TTAB before the Federal Circuit’s Citigroup decision issued. Under this doctrine the TTAB considers “all reasonable manners” in which a word mark could show up. Here, the TTAB found that that XCEED word mark could have a reasonable variation that looked something like the X-seed mark—a big X followed by little “ceed.” So, the TTAB concluded that customers would be likely to confuse to the two marks.
Weeding Out Old Doctrines…
Viterra made several arguments about TTAB error on appeal, but the Federal Circuit found all of them unpersuasive. The most interesting one, though, involves the “reasonable manner” doctrine I mentioned above. Viterra argued that the Federal Circuit should clarify how the Citigroup decision impacts cases like this one, where a standard word mark is compared to a registered design mark in a likelihood of confusion analysis.
In the 2011 Citigroup decision, the Federal Circuit instructed the TTAB that it shouldn’t use the “reasonable manner” doctrine anymore. The court stated that the “reasonable manner” doctrine unjustifiably narrowed the scope of marks that the TTAB considered in its infringement analysis because the TTAB only looks at “reasonable variations” of marks. Instead, the Federal Circuit told the TTAB to simply apply the DuPont likelihood of confusion factors. This approach allows the TTAB to consider the broadest range of marks.
Viterra tried to argue that Citigroup shouldn’t apply to cases that compare a standard character mark to a design mark or a combo word and design mark. The court disagreed, commenting that likelihood of confusion is a highly fact-based analysis, and the similarity of two marks has to be judged on a case-by-case basis. But the basis analysis is the same, whether the marks are plain word marks or are highly stylized. The court saw no reason to limit its Citigroup decision to standard character mark comparisons.
As for the TTAB’s application of the “reasonable manner” doctrine here, the Federal Circuit concluded it was harmless error at best. The TTAB was careful to point out that the applicant’s XCEED mark didn’t necessarily have to look exactly like the registered mark, but a “capital X, little ‘ceed’” variation would increase the similarity of the two marks.
… And Weak Arguments
Viterra also couldn’t convince the Federal Circuit that the large red X in the registered mark was the dominant portion of the mark, so the “seed” part should be given less weight when the court compared the two marks. The court responded that the verbal portion of the mark is generally the dominant part because that’s how customers will ask for the products.
In a final creative argument, Viterra claimed that the two marks didn’t sound alike because people will emphasize the second syllable of XCEED, but they’d emphasize the first syllable of X-Seed. The court wasn’t persuaded and reminded Viterra that there’s “no correct pronunciation of a trademark.”
Do you think the Federal Circuit handled the “reasonable manner” doctrine reasonably? Chime in!
Photo credit: Son of Groucho