Trademark decision gives sport marketers cause for paws: Wolfskin v. New Millennium.

Levine, Jeffrey F.

Introduction

The United States Court of Appeals for the Federal Circuit recently ruled on an intellectual property dispute between outdoor apparel company Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA (Wolfskin), and sportswear company New Millennium Sports, S.L.U. (New Millennium). The case arose after Wolfskin attempted to trademark a non-human paw print design to use on its products. The court's analysis of the legal effect of modifications to protected trademarks and its discussion concerning the common use of paw prints in trademark designs is particularly useful to sport marketers and those responsible for intellectual property design, development, and protection.

Facts

Wolfskin, an outdoor clothing company, applied to the United States Patent Trademark Office (USPTO) in 2009 to obtain a trademark to use a paw print design for a variety of products, including clothing, footwear, and accessories (Wolfskin v. New Millennium, 2015). New Millennium, which owned a sportswear label known as Kelme, had received a trademark for clothing from the USPTO in 1994. The trademark displayed the word "KELME" on the left side and a paw print image on the right side (see Figure 1). Since Wolfskin's trademark application and New Millennium's trademark both involved the use of a paw print on clothing, New Millennium opposed the granting of Wolfskin's proposed trademark. Wolfskin, in response to New Millennium's opposition, filed a claim for cancellation of New Millennium's mark (Wolfskin v. New Millennium, 2015). Wolfskin contended that New Millennium had ceased using its 1994 trademark after adopting an altered version of the mark, thus abandoning the original mark and creating a basis for cancellation. The Trademark Trial and Appeal Board (the Board) rejected Wolfskin's abandonment argument because New Millennium had continuously used the registered trademark or a version that had not been materially altered and found Wolfskin's proposed trademark was likely to cause confusion between it and the previously registered New Millennium mark. Wolfskin then appealed the Board's ruling to the United States Court of Appeals for the Federal Circuit (Federal Circuit).

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The Court's Decision

On appeal, there were two issues for the Federal Circuit to decide: (1) whether New Millennium had abandoned its right to enforce its trademark due to the company's use of a modified version of the registered mark and (2) whether consumers were likely to confuse the paw trademark Wolfskin sought to register with New Millennium's registered trademark.

1. Wolfskin's Abandonment Claim The basis of Wolfskin's abandonment claim stemmed from New Millennium's 2004 decision to use a modified version of its mark, changing the font of its KELME text element and the style of its paw print (see Figure 1) (Wolfskin v. New Millennium, 2015). At issue was whether the original New Millennium mark had been modified to the point that another company would not expect the one presently used by New Millennium to be protected under the registration.

The Federal Circuit relied upon the rule that if an old version and the new version of the mark were "legal equivalents," then a claim for abandonment would be unsuccessful (Van Dyne-Crotty v. WearGuard, 1991). According to the Van Dyne-Crotty court, marks are the legal equivalent if two marks do not "materially differ" from each other and "create the same, continuing commercial impression" (p. 1,159, emphasis added). Examining the two marks, the Federal Circuit upheld the Board's findings that the changes to the New Millennium mark were merely minor stylistic modifications, as New Millennium only altered a portion of the KELME and the paw print's style. According to the court, because "[the trademark design] appeared to be a paw before, and now it still appears to be a paw," the trademark still created the same continuing commercial impression (Wolfskin v. New Millennium, p. 10). In other words, the modified trademark was essentially the same trademark as the 1994 registered mark. Therefore, Wolfskin's claim for abandonment failed.

2. New Millennium's Claim of Likelihood of Confusion The Federal Circuit next considered whether Wolfskin's desired trademark was confusingly similar to New Millennium's registered mark. To prevail in a trademark infringement action, it must be proven that there is a "likelihood of confusion" among consumers (M2 Software v. M2 Commc'ns, 2006, p. 1,382). A 13factor test known as the DuPont factors is used to determine likelihood of confusion (In re E. I. DuPont DeNemours, 1973). One determinative factor is the similarity of the marks (M2 Software). Here, the Board considered seven factors and, in a side-by-side comparison, found that the similarity of the animal paw marks, similarity of the goods (clothing and apparel), and similarity of the trade channels "pointed to" consumers likely being confused (Wolfskin v. New Millennium, p. 10). After balancing the remaining factors, the Board concluded that Wolfskin's mark was likely to confuse or deceive consumers regarding the source of Wolfskin's goods because it so closely resembled New Millennium's registered mark (Wolfskin v. New Millennium, p. 11). The Board's decision that a likelihood of confusion existed focused on the paw print element of the two trademarks; it explained that companies who have trademarks containing both a symbol and text often use the logo portion of the mark as a shorthand symbol of the brand (Wolfskin v. New Millennium). Therefore, the Board found that Wolfskin's paw mark logo created a likelihood of confusion even though the New Millennium design included both a paw print design and text.

The issue in front of the Federal Circuit concerned whether the Board failed to account for the KELME text in New Millennium's trademark. On appeal, Wolfskin challenged the Board's decision that the two marks were sufficiently similar to cause a likelihood of confusion (Wolfskin v. New Millennium). Wolfskin argued that the

Board improperly separated New Millennium's mark by overemphasizing the paw print, thus diminishing the importance the mark's text (Wolfskin v. New Millennium). The Federal Circuit agreed with Wolfskin, saying that "the Board essentially disregarded the verbal portion of New Millennium's mark and found that the two paw print designs were substantially similar" (Wolfskin v. New Millennium, p. 13). The Board's likelihood of confusion analysis was incomplete because it did not consider each mark as a whole. Instead, the Board ignored Millennium's KELME text and solely compared the two paw elements.

The Federal Circuit proceeded to examine the entirety of New Millennium's trademark, not just focusing on the paw print but also the text (In re Viterra, 2012). New Millennium argued that it used the paw print element as a trademark; however, this argument was not persuasive. Instead, the Federal Circuit ruled that New Millennium failed to provide any example that definitively showed that the paw print alone, without the KELME brand name, was used as a source identifier for its products to consumers (Wolfskin v. New Millennium). The Federal Circuit concluded that the Board's finding of a likelihood of confusion based on the similarity of the marks was not warranted.

Another factor that influenced the Federal Circuit's decision was the common third-party use of paw print designs in the marketplace without a likelihood of confusion occurring (Wolfskin v. New Millennium). While the Board minimized the importance of these other marks, many used in connection with clothing, the Federal Circuit viewed the paw print marks with more interest in the likelihood of confusion analysis. The Federal Circuit interpreted Wolfskin's voluminous evidence on record as illustrating the "ubiquitous use of paw prints on clothing as source identifiers" in the marketplace such that consumers are conditioned to look for additional visual cues, such as text or color, for source identification (Wolfskin v. New Millennium, p. 16). The fact that so many paw print marks exist illustrate that consumers are more sophisticated and less likely to be confused by differing, although similar looking paw prints (Wolfskin v. New Millennium, p. 17).

Implications for Sport Marketers

Sport marketers may wish to pay attention to several aspects within their control that assisted in formulating the Federal Circuit's decision. When considering whether to revise an organization's registered trademark, any proposed alterations should contain the "same, continuing commercial impression" as the original mark (Van Dyne-Crotty, Inc. v. Wear-Guard Corp., p. 1,159). A substantial variation that changes the commercial impression may endanger the trademark's legal status. For example, the Los Angeles Clippers recently rebranded their team, which included a revised, more streamlined logo (Helin, 2015). If the Clippers intended to link the modified logo to the old version, and receive the same trademark protection, this might create an issue. If a consumer is no longer able to recognize the new logo as linking the team to the company, it could indicate there is no longer the same commercial impression, potentially making the logo legally vulnerable to a claim for cancellation.

A second implication concerns the scope of protection afforded by trademark registration and the intended function of the trademark. If a trademark is registered as consisting of both text and a symbol, then trademark protection will only be given to goods that display both the text and symbol. Therefore, if a sport marketer, organization, or team wants trademark protection for a good that is affixed with only a symbol, then that symbol alone should also be registered for trademark protection. Had New Millennium also trademarked its paw print design alone in addition to its trademark for the paw symbol and text, it may have strengthened the company's case.

References

Helin, K. (2015, April 20). Clippers will rebrand this summer, new potential logos leaked. Pro Basketball Talk. Retrieved from http://nba.nbcsports.com/2015/04/20/dippers-will-rebrand-this-summer-new-potential-logos-leaked/

In re E. I. DuPont DeNemours & Co., 476 F.2d. 1357 (CCPA 1973).

In re Viterra Inc., 2012, 671 F.3d 1358 (Fed. Cir. 2012). Jack Wolfskin Ausrustung fur Draussen GmBH & Co. KGaA v. New Millennium Sports SLU, 14-1789 (Fed. Cir. 2015).

M2 Software, Inc. v. M2 Commcns, Inc., 450 F.3d 1378 (Fed. Cir. 2006). Van Dyne-Crotty, Inc. v. Wear-Guard Corp., 1991 926 F.2d 1156 (Fed. Cir. 1991).

Welch, J. L. (2015, August 20). CAFC reverses TTAB: Paw print marks not confusingly similar. The TTABlog. Retrieved from http://thettablog.blog spot.com/2015/08/cafc-reverses-ttab-paw-print-marks-not.html

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Jeffrey F. Levine

Jeffrey F. Levine, JD, is a doctoral student and graduate assistant in the University of Louisville's Sport Administration Program. His research interests include labor relations in sport and the intersection of sport and public policy. He can be contacted at jeffrey.levine@louisville.edu.

Author Correspondence

Jeffrey F. Levine

Department of Educational Leadership, Evaluation and Organizational Development College of Education and Human Development University of Louisville Louisville, KY 40292 Email: jeffrey.levine@louisville.edu