No Kitchen Confusion: When Comparing Marks, the Trademark Board Can Give Less Weight to Shared Terms if the Terms Are Suggestive or Descriptive
Before Lourie, O’Malley, and Reyna. Appeal from the Trademark Trial and Appeal Board.
Summary: When comparing marks under the Dupont factors, the Board may give less weight to shared terms that are highly suggestive if not descriptive. Further, a party’s willingness to alter its mark multiple times to prevent customer confusion demonstrates a lack of bad faith.
In 2014, Weigel Stores, Inc. began using the stylized mark W KITCHENS in connection with food and beverages sold in its stores. The mark as originally used by Weigel appeared as follows:
QuikTrip West, Inc. sent Weigel a cease and desist letter requesting that Weigel cease use of the W KITCHENS mark on the basis that it was confusingly similar to QuikTrip’s registered QT KITCHENS mark, shown below:
In response, Weigel modified its mark twice before applying to register the third and final iteration of its mark, shown below:
QuikTrip then filed an opposition to Weigel’s mark under 15 U.S.C. § 1052(d), alleging that it would create a likelihood of confusion with its QT KITCHENS mark. The Board dismissed QuikTrip’s opposition, finding that there was no likelihood of confusion under the DuPont factors. QuikTrip appealed.
On appeal, QuikTrip challenged the Board’s analysis of two DuPont factors, the similarity of the marks and Weigel’s alleged bad faith. Regarding the similarity of the marks, the Federal Circuit found that the Board properly determined that, when comparing the marks, it should give less weight to the shared term KITCHEN(S) because “kitchen” is a highly suggestive if not descriptive word. Further, the Board correctly gave more weight to the dominant, distinct portions of the marks, namely, Weigel’s encircled W and QuikTrip’s QT. Regarding Weigel’s alleged bad faith, QuikTrip argued that the Board failed to meaningfully consider evidence of Weigel’s intentional copying of elements of QuikTrip’s mark, including Weigel’s alleged photographing of QuikTrip’s stores and its review of QuikTrip’s marketing materials. In response, Weigel argued that its willingness to alter its mark multiple times to prevent customer confusion should negate any inference of bad faith. Both the Board and the Federal Circuit agreed with Weigel and the Federal Circuit affirmed the decision of the Board.
Editor: Paul Stewart