Fame of Mark Is Dominant and Possibly 'Outcome-Determinative' Factor in Likelihood of Confusion Analysis

Author:Mr John Dabney
Profession:McDermott Will & Emery

The U.S. Court of Appeals for the Federal Circuit has held that the fame of the opposer's mark, if fame exists, plays a dominant role in the likelihood of confusion analysis, and may be outcome-determinative. Bose Corp. v. QSC Audio Prods., Inc., 2002 U.S. App. LEXIS 11749 (June 14, 2002). The Court also held that fame may be established as a matter of law based on circumstantial evidence, e.g., length of use, sales and advertising figures, and media coverage, and that direct evidence of fame, e.g., surveys, is not required.

The opposer owns a federal registration for the mark for ACUSTIC WAVE for loudspeaker systems. The applicant filed an application to register the mark POWER WAVE for amplifiers. An opposition ensued and the U.S. Trademark Trial and Appeal Board awarded judgment in favor of the applicant.

The Federal Circuit reversed, finding that the Board erred in determining that there was no likelihood of confusion. The Court held that the Board had failed to give sufficient weight to the fame of the opposer's mark. "Fame of an opposer's mark," the Court explained, "plays a dominant role in the process of [determining whether there is a likelihood of confusion]." The Court further held that fame can be established, as a matter of law, by circumstantial evidencedirect evidence is not required. "Direct evidence of fame, for example from widespread consumer polls, rarely appears in contests over likelihood of confusion. Instead, our cases teach that the fame of a mark may be measured indirectly, among other things, by the volume of sales and advertising expenditures of the goods travelling under the mark, and by the length of time those...

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