1207.01(d)(iii)    Third-Party Registrations and Evidence of Third-Party Use

Third-party registrations used to show relatedness. Third-party registrations that cover the goods or services of the applicant and registrant may have some probative value to the extent that they may serve to suggest that goods or services are of a type that may emanate from a single source, if the registrations are based on use in commerce. See Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1267, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (evidence that "a single company sells the goods and services of both parties, if presented, is relevant to the relatedness analysis"); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB), aff’d per curiam, 864 F.2d 149 (Fed. Cir. 1988). Third-party registrations that are not based on use in commerce, such as those registered under §66(a) of the Trademark Act (15 U.S.C. §1141f(a) ),  or those registered solely under §44 of the Act (15 U.S.C. §1126(e) ), and for which no §8 or §71 affidavits or declarations of continuing use have been filed (15 U.S.C. §1058), have very little, if any, persuasive value. See In re Info. Builders Inc., 2020 USPQ2d 10444, at *6 n.19 (TTAB 2020) (citing (citing Calypso Tech., Inc. v. Calypso Cap. Mgmt., LP, 100 USPQ2d 1213, 1221 n.15 (TTAB 2011), appeal dismissed, No. 20-1979 (Fed. Cir. Oct. 20, 2020); In re Princeton Tectronics, Inc., 95 USPQ2d 1509, 1511 (TTAB 2010)); In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1583 (TTAB 2007); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993).

Third-party registrations used to show inherent or conceptual weakness of a term or mark component. Generally, the existence of third-party registrations cannot justify the registration of another mark that is so similar to a previously registered mark as to create a likelihood of confusion, or to cause mistake, or to deceive. E.g., In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); In re Max Cap. Grp. Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1272 (TTAB 2009). However, a large number of active third-party registrations including the same or similar term or mark component for the same or similar goods or services may be given some weight to show, in the same way that dictionaries are used, that a mark or a portion of a mark has a normally understood descriptive or suggestive connotation, leading to the conclusion that the term or mark component is relatively weak. See, e.g., Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129 (Fed. Cir. 2015); Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 1339, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 917, 189 USPQ 693, 694-95 (C.C.P.A. 1976); Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1059 (TTAB 2017); Primrose Ret. Cmtys., LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030, 1036 (TTAB 2016); Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1471 (TTAB 2014); In re Hartz Hotel Servs., Inc., 102 USPQ2d 1150, 1153-54 (TTAB 2012); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991). However, cancelled or expired third-party registrations for similar marks are not probative evidence of a mark’s descriptiveness, suggestiveness, or strength. See New Era Cap Co. v. Pro Era, LLC, 2020 USPQ2d 10596, at *13 (TTAB 2020) (citing In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1745 (TTAB 2018), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019)); In re Info. Builders Inc., 2020 USPQ2d 10444, at *6 n.19 (citing Bond v. Taylor, 119 USPQ2d 1049, 1054 n.10 (TTAB 2016), appeal dismissed, No. 20-1979 (Fed. Cir. Oct. 20, 2020); In re Kysela Pere et Fils Ltd., 98 USPQ2d 1261, 1264 (TTAB 2011)).

Third-party use to show commercial weakness. Evidence of third-party use falls under the sixth du Pont factor – the "number and nature of similar marks in use on similar goods." In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). Evidence of third-party use may bear on the commercial strength or weakness of a mark. Juice Generation, 794 F.3d at 1338-39, 115 USPQ2d at 1674. Significant evidence of third-party use of similar marks on similar goods or services can show that consumers have become conditioned by encountering so many similar marks that they distinguish between them based on minute distinctions. Id.; Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373-74, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005). If the applicant's evidence is properly submitted and establishes ubiquitous or considerable third-party use of the same or similar marks on the same or similar goods or services, it may be "relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection." Palm Bay Imps., 396 F.3d at 1373-74, 73 USPQ2d at 1693; see Jack Wolfskin, 797 F.3d at 1373-74, 116 USPQ2d at 1136-37, 1136 (finding evidence of ubiquitous use of a paw print design on clothing rendered that component of the opposer’s mark relatively weak for clothing); Juice Generation, 794 F.3d at 1337 n.1, 1341-42, 115 USPQ2d at 1673 n.1, 1676-77 (finding evidence of a considerable number of third-party uses of the component "peace and love" in connection with restaurant services or food products relevant to assessing the opposer’s mark’s strength or weakness without the need for specifics as to the extent or impact of use); In re FabFitFun, Inc., 127 USPQ2d 1670, 1674-75 (TTAB 2018) (finding the component term SMOKING HOT in the marks I’M SMOKING HOT and SMOKIN’ HOT SHOW TIME to be "somewhat weak" based in part on evidence of third-party use of the term on similar cosmetics goods, noting that such uses "tend to show consumer exposure to third-party use of the term on similar goods"); see also Primrose Ret. Cmtys., LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030, at 1034-36 (finding weakness based on at least eighty-five actual uses of ROSE-formative marks for similar services and eight similar third-party registrations); In re Broadway Chicken Inc., 38 USPQ2d 1559, 1565-66 (TTAB 1996) (holding no likelihood of confusion due to differences in the marks and finding "Broadway" weak for restaurant services based on evidence that hundreds of restaurants and eating establishments used Broadway as a trademark or trade name); cf. In re i.am.symbolic, llc, 866 F.3d at 1329, 123 USPQ2d at 1751 ("Symbolic’s evidence of third-party use of I AM for the same or similar goods falls short of the ‘ubiquitous’ or ‘considerable’ use of the mark components present in its cited cases.").

Limitations regarding probative value of third-party registration or use evidence to show weakness of mark in cited registration. The potential relevance of third-party registrations and uses offered to support registrability over the cited registration depends on the relationship they bear to the application and registration at issue. The third-party marks must generally be as similar to the registered mark as the applied-for mark. See, e.g., Specialty Brands, Inc. v. Coffee Bean Distribs., Inc., 748 F.2d 669, 675, 223 USPQ 1281, 1284-85 (Fed. Cir. 1984) ("Applicant introduced evidence of eight third-party registrations for tea which contain the word ‘SPICE’, five of which are shown to be in use. None of these marks has a ‘SPICE (place)’ format or conveys a commercial impression similar to that projected by the SPICE ISLANDS mark, and these third-party registrations are of significantly greater difference from SPICE VALLEY and SPICE ISLANDS than either of these two marks from each other."); see also In re Mighty Leaf Tea, 601 F.3d 1342, 1347, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010). Potential relevance also depends on whether the third-party registered marks and uses are for goods or services as similar to those in the cited registration as those identified in the application. See, e.g., Nat’l Cable Tel. Ass’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 1580, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991) ("None of the third party marks and uses of ACE made of record are nearly as closely related to the activities of the parties as the virtually identical uses of the parties are to each other. Thus, we agree with the Board that nothing in the record shows a narrowing of Editors’ identification with A.C.E./ACE by third party marks with respect to the relevant public, namely, the film industry or even the broader entertainment industry. In sum, Cable’s argument that it can use ACE because ACE is a ‘weak’ mark, as an abstract proposition, is not only unpersuasive but essentially meaningless.") (citation omitted); see also Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315, 1325-26, 128 USPQ2d 1686, 1694-95 (Fed. Cir. 2018) (citing Nat’l Cable Tel. Ass’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 1580, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991)).

However, considering a mark’s relative strength or weakness is only part of the process of determining whether there is a likelihood of confusion. Even registered marks deemed "weak" are entitled to the presumptions of validity under Section 7(b), and are entitled to protection under Section 2(d) against the registration of confusingly similar marks. See, e.g., In re Detroit Athletic Co., 903 F.3d 1297, 1304, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (affirming the Board’s conclusion that confusion was likely between DETROIT ATHLETIC CO. and DETROIT ATHLETIC CLUB, marks comprised of the "conceptually weak" wording DETROIT ATHLETIC combined with the non-source identifying business identifiers "Co." and "Club"); see also King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 1401, 182 USPQ 108, 109 (C.C.P.A. 1974); Food Specialty Co. v. Standard Prods. Co., 406 F.2d 1397, 1398, 161 USPQ 46, 47 (C.C.P.A. 1969) (in speaking of marks as being weak or strong, "we should not lose sight of the ultimate question that must be answered, namely, whether there is a likelihood of confusion, mistake, or deception."). Thus, arguments that third-party use has rendered the registered mark so weak as to lack any source-identifying ability may not be raised in examination, but only in cancellation proceedings. See, e.g., In re Dixie Rests., Inc., 105 F.3d 1405, 1408, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997) ("it is not open to an applicant to prove abandonment of a registered mark in an ex parte registration proceeding"; a cancellation proceeding against the registrant is required) (citations omitted). See Wallpaper Mfrs., Ltd. v. Crown Wallcovering Corp., 680 F.2d 755, 766, 214 USPQ 327, 336 (C.C.P.A. 1982) (where a "fail[ure] to police its mark" has "caused the [registered] mark to lose its significance as a mark," a cancellation proceeding for abandonment may lie).

See TMEP §710.01(b) regarding the proper submission of Internet evidence and §710.03 regarding making third party registrations of record.