Background
Fuente Marketing Ltd. owns registered standard character trademarks for the letter X used on cigars and related smoking accessories. Vaporous Technologies, LLC filed an intent-to-use application to register a design mark depicting a stylized letter X formed by a stick figure with a shaded circle for the head, used on oral vaporizers. Fuente opposed the application alleging a likelihood of confusion. The Trademark Trial and Appeal Board dismissed the opposition, finding the marks sufficiently dissimilar in commercial impression, sound, and appearance. Fuente appealed to the Federal Circuit.
The court’s reasoning
The Federal Circuit reviewed the Board’s application of the DuPont factors for likelihood of confusion. The court affirmed that the first DuPont factor, assessing the similarity of the marks, weighed decisively against confusion. The Board found consumers would perceive Vaporous’s mark as a stick figure rather than the letter X, creating distinct commercial impressions. The court held this finding was supported by substantial evidence and that any reliance on a stipulation was harmless error. Regarding the third and fourth factors concerning trade channels and consumer sophistication, the court ruled the Board correctly applied the law by assessing the scope of goods recited in the application rather than the parties’ actual limited market practices. The court also affirmed the Board’s neutral assessment of the fifth factor regarding the fame of Fuente’s marks, finding the evidence showed the X marks were commercially weak despite being conceptually strong. Finally, the court concluded that the dissimilarity of the marks under the first factor was sufficient on its own to negate a likelihood of confusion, rendering the other factors favoring confusion immaterial.
What it means going forward
The decision reinforces that the visual and conceptual dissimilarity of marks can override other factors in a likelihood of confusion analysis. It also clarifies that trademark applicants cannot narrow the scope of their registration based on actual market use if the application language is broader, and that stipulations regarding mark descriptions do not control consumer perception analysis.