An application for a US trademark may be rejected if it is likely, when used on or in connection with the goods of the applicant, to cause confusion with another registered mark. On July 23, in Sunkist Growers, Inc. v. Intrastate Distributors, Inc., the Federal Circuit reversed the USPTO Trademark Trial and Appeal Board (TTAB) dismissal of the Sunkist Growers, Inc. opposition against the KIST mark of Interstate Distributors, Inc. (IDI). The court concluded that “substantial evidence does not support the Board’s finding that similarity of the marks favors no likelihood of confusion.” The court ruled that since the TTAB did not have this “substantial evidence” it should have rejected IDI’s KIST mark because it could create confusion with some Sunkist products.
Background of the Case
This opinion amusingly begins: “This trademark case concerns kisses, sunlight, and soft drinks.” In October 2019, IDI filed trademark applications with the USPTO to register the mark KIST in both standard and stylized (“
”) characters for “soft drinks, namely, sodas and sparkling water; concentrates and syrups for making soft drinks”. When the applications were published for opposition, Sunkist opposed the registrations citing a likelihood of confusion with its SUNKIST registrations for similar goods. In September 2023, after its analysis of the DuPont factors, the TTAB dismissed Sunkist’s opposition finding no likelihood of confusion. Sunkist appealed.
Federal Circuit Review
On appeal, the Federal Circuit reversed the TTAB’s dismissal of Sunkist’s opposition after a de novo review of the TTAB’s legal conclusions and its factual findings for substantial evidence.
In its analysis, the court notes that the TTAB had actually favored likelihood of confusion in several DuPont factors including similarity of goods; similarity of trade channels; conditions of sale; and strength of opposer’s mark. However, to support its decisions to dismiss the Sunkist opposition, the TTAB did not favor a likelihood of confusion based on the factors of similarity of the marks (specifically commercial impressions and appearance) and actual confusion.
The TTAB in finding the Sunkist and IDI marks were only “superficially similar” relied on a lips image with the KIST mark on some of its marketing materials and that Sunkist markets SUNKIST to reference a sun. The court, in its reversal, reasoned that the TTAB overly and erroneously relied on the lips image in the marketing materials. It found the lips image was not the focus of the marketing materials and that a ‘kiss’ image was not even part of the IDI marks in the applications. Similarly, the court notes that the majority of Sunkist registrations are standard character marks, i.e., without an image of the sun. Further Sunkist sells products without the sun design.
As to the DuPont factor of lack of actual confusion, the court cited VersaTop Support Sys., LLC v. Ga.Expo, Inc. in that “failure to prove instances of actual confusion is not dispositive against a trademark plaintiff, because actual confusion is hard to prove.”
Accordingly, the court ruled that the TTAB’s decision to dismiss Sunkist’s opposition was not supported by substantial evidence of record. IDI’s KIST marks when used in connection with the goods described in IDI’s applications would likely cause confusion with the registered SUNKIST mark.” In short, the court held that TTAB should have rejected IDI’s KIST trademark application.
The practical implications of this ruling remind us that when considering filing an opposition to another’s trademark application to research and provide the ‘substantial evidence.’ This would seek to avoid a finding of ‘superficially similar’ when applying the DuPont factor of similarity of marks. As for not being able to show actual confusion, though the court said this was not dispositive, it might still be useful to look for actual confusion in such places as online reviews or documenting whenever such instances occur such as, for example, calls to your customer service or help desks.
For more information on this decision, please contact Fitch Even partner John M. Naber, author of this alert.
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John M. Naber
John M. Naber strives to develop long-term relationships with clients as he works with them to help ensure the growth and success of their businesses. His clients come from a diverse range of business sectors, including automotive component manufacturing in the U.S. and internationally, as well as food and beverage products, foot care products, entertainment, fine arts, artificial intelligence, and computer software.