Mortgage lender wins Fed Circuit appeal against TTAB decision
An American mortgage lender has won its appeal against a decision of the US Trademark Trial and Appeal Board (TTAB) after the board confirmed the rejection of its trademark application.
The precedential ruling was issued by the US Court of Appeals for the Federal Circuit on Monday, January 14.
Guild Mortgage Company applied to register its logo (US number 86709944) in July 2015. The mark covers international class 36 for mortgage banking services.
The US Patent and Trademark Office (USPTO) examiner rejected the application, finding that it was likely to cause confusion with the trademarked name (US number 3657486) of Guild Investment Management. The investment firm’s mark covers international class 36 for investment advisory services.
On appeal, the TTAB upheld the examiner’s finding.
In the TTAB’s view, the similarity between the two marks with respect to the nature of the services and trade channels involved outweighed the fact that a prospective customer would apply a “certain degree of care in investing money”.
Guild appealed against the decision, arguing that the TTAB had failed to consider the length of time the two companies had co-existed for without any evidence of confusion.
The Federal Circuit reaffirmed that trademark examiners must determine the likelihood of confusion between two marks with respect to the so-called DuPont factors. Factor eight concerns “the length of time during and conditions under which there has been concurrent use without evidence of actual confusion”.
Mary Ann McGarry, Guild’s CEO, offered a written statement as evidence testifying that the two companies had co-existed in business for over 40 years and that there had not been any evidence of confusion between the two.
The defendant, the USPTO, argued that uncorroborated statements were “of little evidentiary value” and irrelevant with respect to factor eight.
In the ruling, however, the court said that it was making no assessment of the value that should be attributed to Guild’s evidence, and found simply that the TTAB had erred in not considering it.
The court overruled the TTAB’s decision and ordered it to reconsider the likelihood of confusion “in light of all the evidence”.
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