The significance of third-party marks in a post-Juice Generation

Abstract

... In trade mark proceedings before the US Patent and Trademark Office (USPTO), evidence of third-party use of similar marks on similar goods (or lack thereof) can play a strong part in determining the strength or weakness of a registered mark and, ultimately, whether a new mark can be registered. A substantial amount of third-party use can show that a registered mark is weak; the weaker the mark, the closer an applicant’s mark can come without causing a likelihood of confusion and thereby invading what amounts to a relatively narrow scope of protection.1 For years, it has been well-established that when asserting that a prior registration is weak to support an argument of a lack of confusion, an applicant is required to put forth evidence of actual use and recognition of third-party marks.2 The rationale behind requiring evidence of actual use in the marketplace and recognition by consumers was that this evidence was necessary to evaluate whether the third-party use was so widespread as to have had any impact on the perception of consumers. The Court of Customs and Patent Appeals (CCPA) had explained how the mere existence of such third-party registrations and third-party references does not act as evidence of what happens in the marketplace or that consumers are familiar with such third-party marks.3 Thus, without evidence of actual use and recognition, such as sales and advertising, courts deemed third-party marks as having limited probative value, that is, only persuasive for the purpose of providing the meaning of a term within a trade mark, not the scope of protection afforded to the mark. This is no longer the case.