In Re Mighty Leaf Tea

United States Court of Appeals for the Federal Circuit
2009-1497
(Serial No. 76/678,969)

IN RE MIGHTY LEAF TEA

Charles C. Valauskas, Valauskas & Pine LLC, of Chicago, Illinois, for appellant.
With him on the brief was Allison M. Corder.

Raymond T. Chen, Solicitor, United States Patent and Trademark Office, of
Arlington, Virginia, for the Director of the United States Patent and Trademark Office.
With him on the brief were Thomas V. Shaw and Janet A. Gongola, Associate Solicitors.

Appealed from: United States Patent and Trademark Office
Trademark Trial and Appeal Board
 United States Court of Appeals for the Federal Circuit

2009-1497
(Serial No. 76/678, 969)

IN RE MIGHTY LEAF TEA

Appeal from the United States Patent and Trademark Office, Trademark Trial and Appeal
Board.
___________________________

DECIDED: April 13, 2010
___________________________

Before NEWMAN, CLEVENGER, and LINN, Circuit Judges.

NEWMAN, Circuit Judge.

Mighty Leaf Tea appeals the decision of the Trademark Trial and Appeal Board

affirming the refusal to register the mark ML, in standard character form, for use with

certain personal care and skin care products. In re Mighty Leaf Tea, No. 76678969 (TTAB

May 8, 2009). We affirm the Board’s decision.

BACKGROUND

On July 2, 2007 Mighty Leaf Tea filed an application to register the mark ML on the

Principal Register in Class 003, for “personal care products and skin care preparations,

namely, skin soap, body wash, foam bath, body lotion, body scrub, bath salts and massage

oil; potpourri; incense.” The applicant asserted first use in commerce on November 1,
2004. The Examining Attorney rejected the application under Section 2(d) of the Lanham

Act, 15 U.S.C. §1052(d), 1 finding likelihood of confusion with the mark ML MARK LEES

shown below, registered in Class 003 on January 27, 1998, for “skin care products, namely,

skin cleanser, skin toner, skin cream, skin lotion, skin mask gel, make-up foundation,

powder and blush”:

In response to the rejection, Mighty Leaf Tea stated that it sought to register the

mark ML in standard character form, 2 as distinguished from the stylized form shown, and

also stated that the Examining Attorney erred by failing to determine whether and to what

extent similar marks were in use on similar goods. Mighty Leaf Tea argued that the

1
Section 2(d) states, in relevant part:
No trademark by which the goods of the applicant may be distinguished from
the goods of others shall be refused registration on the principal register on
account of its nature unless it—
....
(d) Consists of or comprises a mark which so resembles a mark
registered in the Patent and Trademark Office, or a mark or trade name
previously used in the United States by another and not abandoned, as to be
likely, when used on or in connection with the goods of the applicant, to
cause confusion, or to cause mistake, or to deceive . . . .
2
“Standard character” marks are registered “without claim to any particular font
style, size, or color.” 37 C.F.R. §2.52(a). These marks were formerly known as “typed”
marks, see Trademark Manual of Examining Procedure §807.03(i) (5th ed. 2007), until the
PTO changed the nomenclature in 2003 to conform with international norms established
under the Madrid Protocol, see Rules of Practice for Trademark-Related Filings Under the
Madrid Protocol Implementation Act, 68 Fed. Reg. 55,748, 55,755 (2003) (explaining
revisions to 37 C.F.R. §2.52).

2009-1497 2
existence of many similar marks showed the weakness of the registered marks, such that

consumers would look to fine distinctions to distinguish the sources of goods. Mighty Leaf

Tea submitted evidence of several third-party registrations and pending applications that

included the letters “ML” along with other letters. The cited registered marks are MLE,

MLUXE, M’LIS, JML, and AMLAVI, and the cited pending applications are for MLAB, TMLA,

FEMLOGIC, and SIMLINE; all are for personal care or skin care products and thus within

the relevant market as defined by the Examining Attorney. The Examining Attorney

maintained the refusal to register, and the Board affirmed.

The Board discussed the DuPont factors, relevant to determination of likelihood of

confusion, as set forth in In re E.I. DuPont De Nemours & Co., 476 F.2d 1357, 1361 (CCPA

1973). The Board found that the goods defined in the subject application and the cited

registration are in part identical, and that neither the trade channels nor the conditions of

sale serve to distinguish them. The Board found that each mark includes the letters “ML,”

and that the stylized form of the cited registration does not distinguish it because Mighty

Leaf Tea seeks to register ML in standard character form, which is not limited to any

particular style. The Examining Attorney had observed that “applicant’s specimen of record

shows applicant’s use of its mark in a stylized ML presented in a highly cursive, abstract

fashion which is similar to the stylized ML presented in a highly cursive, abstract fashion

shown as a component of the registered mark.”

The Board found that the presence of the name MARK LEES in the registered mark

does not diminish the likelihood of confusion, because consumers familiar with the

registered mark are likely to assume that applicant’s ML is merely a variation or shortened

version of the registered mark. The Board took note of Mighty Leaf Tea’s evidence of third-

2009-1497 3
party marks that include the letters “ML,” but observed that inclusion of the letters “ML” in

other words or aggregates does not render these marks so similar and weak that the public

would be alert to small differences. The Board concluded that ML used with the designated

goods was likely to cause confusion with ML MARK LEES for the same goods.

DISCUSSION

Likelihood of confusion under Section 2(d) of the Lanham Act is a legal

determination based on factual underpinnings. In re Chatam Int’l Inc., 380 F.3d 1340, 1342

(Fed. Cir. 2004). The Board’s legal conclusion receives plenary review, while the factors

relevant to likelihood of confusion are reviewed for support by substantial evidence, in

accordance with the criteria of the Administrative Procedure Act. Bose Corp. v. QSC Audio

Prods., Inc., 293 F.3d 1367, 1370 (Fed. Cir. 2002). Evidence is deemed substantial if a

reasonable person could find that the evidence is adequate to support the agency’s finding.

On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085 (Fed. Cir. 2000).

Not all of the DuPont factors are relevant to every case, and only factors of

significance to the particular mark need be considered. In re Dixie Restaurants, Inc., 105

F.3d 1405, 1406–07 (Fed. Cir. 1997). No mechanical rule determines likelihood of

confusion, and each case requires weighing of the facts and circumstances of the particular

mark. In re Shell Oil Co., 992 F.2d 1204, 1206 (Fed. Cir. 1993). As applied to trademark

registration, reasonable doubt as to the likelihood of confusion is resolved against the

newcomer, “for the newcomer has the opportunity of avoiding confusion, and is charged

with the obligation to do so.” Id. at 1209; see also Hewlett-Packard Co. v. Packard Press,

Inc., 281 F.3d 1261, 1265 (Fed. Cir. 2002).

2009-1497 4
 Mighty Leaf Tea argues that the Board erred in its analysis of the DuPont factors,

and focuses primarily on the sixth factor: “The number and nature of similar marks in use

on similar goods.” 476 F.2d at 1361; see Trademark Manual of Examining Procedure

§1207.01 (the sixth DuPont factor is among those “most relevant” in an ex parte case).

Mighty Leaf Tea states that the Board did not have a correct understanding of the relevant

marketplace because it focused on only one similar registered mark, without considering

other similar marks in use on similar goods. Mighty Leaf Tea contends that its evidence of

third-party registrations and pending applications that incorporate the letters “ML” shows

that ML is a weak mark, and that consumers are already conditioned to look to minor

distinctions in marks that include the letters “ML,” citing Palm Bay Imports, Inc. v. Veuve

Clicquot Ponsardin Maison Fondée en 1772, 396 F.3d 1369, 1373 (Fed. Cir. 2005)

(“Evidence of third-party use of similar marks on similar goods is relevant to show that a

mark is relatively weak and entitled to only a narrow scope of protection.”). Mighty Leaf

Tea argues that its evidence of third-party use was given inadequate weight by the Board,

and that when properly considered, this evidence confirms that confusion is unlikely to

occur between its mark and the cited registered mark.

The Patent and Trademark Office (“PTO”) responds that the Board afforded

appropriate weight to all of the relevant DuPont factors, and that substantial evidence

supports the Board’s findings underlying its conclusion of likelihood of confusion. As to the

sixth DuPont factor, the PTO states that the mere presence of similar third-party

registrations, without more, is of only limited value for showing whether additional entrants

would lead to confusion in use. See Palm Bay Imports, 396 F.3d at 1373 (“The probative

value of third-party trademarks depends entirely upon their usage.”); Tektronix, Inc. v.

2009-1497 5
Daktronics, Inc., 534 F.2d 915, 916 (CCPA 1976) (“[A]lthough third-party registrations are

entitled to little weight on the question of likelihood of confusion where there is no evidence

of actual use, they may be given some weight to show the meaning of a mark in the same

way that dictionaries are used.”); see also 2 J. Thomas McCarthy, McCarthy on

Trademarks and Unfair Competition §11:89 (4th ed. 2009) (“The mere citation of third party

registrations is not proof of third party uses for the purpose of showing a crowded field and

relative weakness.”). Mighty Leaf Tea provided no evidence of the actual use of these

third-party marks, but contends that the cited registrations themselves establish use,

because use in commerce is a prerequisite to registration. However, the issue is likelihood

of confusion, and on the facts herein more is required than a showing of the existence of

various marks. No additional evidence, or proffer, was presented to contravene the

Board’s finding that the third-party marks were not similar enough to the mark ML to

establish that there is a crowded field for the letters “ML.” The Board stated:

Applicant has merely submitted a group of registrations that have the letters
“ML” as part of a longer letter string (i.e., MLUXE, M’LIS, JML and AMLAVI).
The indiscriminate citation of third-party registrations without regard to the
similarity of the marks involved is not indicative that the letters ML have a
suggestive or descriptive connotation. The only mark that is arguably close
to applicant’s mark and registrant’s mark is MLE, but that registration in
addition to the marks at issue are not sufficient to demonstrate that the letters
“ML” have significance in connection with skin care products.

Mighty Leaf Tea, Op. at 11 (citations omitted).

In response, Mighty Leaf Tea cites precedent in which consumer confusion was not

deemed likely to result from marks incorporating a common element. See, e.g., In re

Broadway Chicken, Inc., 38 USPQ2d 1559, 1565–66 (TTAB 1996) (evidence showed that

third-party use of the term BROADWAY was so common that consumers would look to the

other elements of applicant’s mark BROADWAY CHICKEN and thereby would distinguish

2009-1497 6
the source of the goods from BROADWAY PIZZA and BROADWAY BAR & PIZZA). The

PTO argues that this reasoning is not applicable here, because Mighty Leaf Tea has not

made an adequate showing of a common element. The PTO states that the letters “ML” in

various character strings does not establish these two letters as a common element, such

as “Broadway,” that has acquired an understood meaning or suggestiveness. We agree

that the occurrence of two letters in longer words or strings does not of itself establish a

“common element,” for there was no evidence that the two letters “ML” had any recognized

meaning or significance within the longer strings. The Board appropriately gave little weight

to the proffered evidence of third-party use in view of these considerations.

Mighty Leaf Tea also contends that the additional words MARK LEES distinguish the

registrant’s mark from ML standing alone. However, as the PTO states, the presence of an

additional term in the mark does not necessarily eliminate the likelihood of confusion if

some terms are identical. See, e.g., China Healthways Inst., Inc. v. Wang, 491 F.3d 1337,

1341 (Fed. Cir. 2007) (the common word in CHI and CHI PLUS is likely to cause confusion

despite differences in the marks’ designs); In re West Point–Pepperell, Inc., 468 F.2d 200,

201 (CCPA 1972) (WEST POINT PEPPERELL likely to cause confusion with WEST POINT

for similar goods); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324 (CCPA 1967) (THE

LILLY as a mark for women’s dresses is likely to be confused with LILLI ANN for women’s

apparel including dresses); In re United States Shoe Corp., 229 USPQ 707 (TTAB 1985)

(CAREER IMAGE for women’s clothing stores and women’s clothing likely to cause

confusion with CREST CAREER IMAGES for uniforms including items of women’s

clothing). In United States Shoe the Board observed that “Applicant’s mark would appear

to prospective purchasers to be a shortened form of registrant’s mark.” 229 USPQ at 709.

2009-1497 7
In this case the Board found, similarly, that ML is likely to be perceived as a shortened

version of ML MARK LEES when used on the same or closely related skin care products.

The Board thus recognized that these initials comprise a dominant feature of the registered

mark, and that a newcomer’s use of the same initials, in connection with the same goods,

would likely lead consumers to view the goods as coming from the same source.

Avoidance of this kind of confusion about the provenance of goods is the very problem to

which the Lanham Act was directed. See DuPont, 476 F.2d at 1360 (“The basic goal of the

Act, which dealt with a good deal more than registration, was ‘the protection of trademarks,

securing to the owner the good will of his business and protecting the public against

spurious and falsely marked goods.’”).

The Board also recognized that “when marks would appear on virtually identical

goods or services, the degree of similarity necessary to support a conclusion of likely

confusion declines.” Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874,

877 (Fed. Cir. 1992). The Board found that the specific style of the letters “ML” in the

registered mark could not serve as a basis for distinction, because the appellant sought to

register ML in standard character form; these marks “are not limited to any particular

rendition of the mark.” Cunningham v. Laser Golf Corp., 222 F.3d 943, 950 (Fed. Cir.

2000). In view of these considerations, the Board determined that the applicant’s mark and

the registrant’s mark are similar “as to appearance, sound, connotation, and commercial

impression” (DuPont factor one). There was no contrary evidence before the Board.

The PTO points out that several other DuPont factors also support the Board’s

ultimate conclusion as to likelihood of confusion. The Board found that the appellant’s and

the registrant’s goods were quite similar (DuPont factor two), and that the goods share the

2009-1497 8
same channels of trade and purchasers (DuPont factor three). The Board also found that

these goods are relatively low-priced, and do not require much consumer sophistication

(DuPont factor four). Mighty Leaf Tea has not contested these findings, each of which

provides additional support for the Board’s conclusion.

While likelihood of confusion turns on the facts and evidence as to the particular

mark, we agree with the Board that customer confusion is likely between ML and ML MARK

LEES, when used on nearly identical goods. The decision of the Board is affirmed.

AFFIRMED

2009-1497 9