상표 유사성 판단에 있어서 기술적인(descriptive) 부분의 무게 산정

The Strength of Descriptive Parts in the Analysis of Likelihood of Confusion in Trademark Disputes [QUICKTRIP WEST, INC. v. WEIGEL STORES, INC. U.S. Court of Appeals for the Federal Circuit. Decided: January 7, 2021]

QuickTrip West, Inc. (“QuickTrip”) and Weigel Stores, Inc. (“Weigel”) both operate combination gasoline and convenience stores. QuickTrip has sold food and beverages in its stores under the registered mark QT Kitchens since 2011. Weigel began using the stylized mark W Kitchens in connection with food and beverages sold in its stores in 2014. In response to QuickTrip’s cease-and-desist letter, Weigel modified its mark twice, to which QuickTrip objected to Weigel’s continued use of the word “kitchen” in its mark. In 2017, Weigel filed a trademark application to register the final iteration of its mark, W Weigel’s Kitchen Now Open. QuickTrip filed an opposition to Weigel’s mark under 15 U.S.C. § 1052(d) on the ground that it would create a likelihood of confusion with its QT Kitchens mark. U.S. Patent and Trademark Office Trademark and Trial Board (“TTAB”) dismissed QuickTrip’s opposition. The Board concluded that although several factors weighed in favor of a likelihood of confusion, Weigel’s mark was “so dissimilar to [QuickTrip’s] pleaded mark” that there would not be a likelihood of confusion. QuickTrip appealed to U.S. Court of Appeals for the Federal Circuit(“CAFC”). Under § 2(d) of the Lanham Act, a mark may be refused registration on the principal register if it is “likely, when used on or in connection with the goods of the applicant, to cause confusion” with another registered mark. 15 U.S.C. § 1052(d). Likelihood of confusion is a legal determination based on underlying findings of fact relating to the factors set forth in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973) (“the DuPont factors”). CAFC considered both parties’ arguments and found that TTAB’s factual finding that the marks, in their entireties, differ in appearance, sound, connotation, and commercial impression was supported by substantial evidence. And it also found that TTAB properly found that Weigel’s willingness to take steps to alter its mark evidenced its lack of bad faith in view of the fact that Weigel substantially modified its mark not once, but twice to accommodate QuickTrip’s concerns regarding customer confusion. CAFC therefore affirmed the decisions of TTAB.