Holding: Images that are not part of a trademark application should not be considered when determining commercial impression for likelihood of confusion of analysis, particularly when that image is not always shown with the mark when the mark is presented to consumers.
Sunkist opposed IDI’s applications to register the word mark KIST and stylized KIST mark for soft drinks. However, the TTAB found no likelihood of confusion between the IDI applications and Sunkist’s registered SUNKIST marks. Sunkist owns multiple registrations for SUNKIST for fruits, beverages, and concentrates and has offered products under the SUNKIST brand name for at least ninety years.
In its analysis, the TTAB analyzed the DuPont factors and found several factors including the similarity of the goods, similarity of the trade channels, conditions of sale, and strength of Sunkist’s mark to favor a likelihood of confusion. However, the TTAB found that the similarity of the marks factor favored no likelihood of confusion, alleging that the marks have different commercial impressions and the appearance, sound, and connotation are superficially similar. In the view of the TTAB, Sunkist markets its SUNKIST marks to reference the sun, while the KIST trademarks are in reference to a kiss. In finding no likelihood of confusion, the TTAB also gave weight to the fact that no evidence of actual confusion was presented.
The Federal Circuit reversed the TTAB’s decision, finding that IDI’s KIST marks are likely to cause confusion with the registered SUNKIST mark. In reviewing the TTAB’s analysis, the Federal Circuit focused on the TTAB’s finding that the similarity of the marks factor favored no likelihood of confusion. In its analysis, the TTAB relied on an image of lips next to the KIST mark to conclude that the IDI markets KIST with reference to a kiss.
However, the lips are not part of the wordmark or the design mark sought to be registered by IDI. Additionally, not all of IDI’s marketing materials including the KIST mark include the lips next to the mark. The image shown above that was considered by the TTAB was taken from a page of a marketing presentation, and there is no evidence that this image was shown to actual consumers. As an example, in another image in the same marketing presentation, the KIST mark was used on bottles of sparkling water without the lips image.
In addition to finding that the TTAB placed too much emphasis on the lips image for the KIST mark, the Federal Circuit also found that the TTAB overemphasized Sunkist’s marketing related to the sun. The majority of Sunkist’s SUNKIST marks are standard character marks, and the TTAB stated that it was focusing on these standard character marks in the likelihood of confusion analysis. Although some of the SUNKIST design marks include an image of a sun, the TTAB overly relied upon these design marks when considering the likelihood of confusion with the KIST marks.
The Federal Circuit also addressed the lack of evidence of actual confusion. Although actual confusion is useful for proving likelihood of confusion, a lack of actual confusion is not dispositive to showing that there is no likelihood of confusion. Actual confusion is hard to prove and not a prerequisite for finding likelihood of confusion between two marks.
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