By Thomas Long, J.D.
The Board erred by disregarding evidence of the lender’s longtime use of its mark in the same location as a similar registered mark, without consumer confusion. Because this was evidence that confusion was unlikely, the Board’s error was not harmless.
In refusing to register a mortgage lender’s mark GUILD MORTGAGE COMPANY and design, for mortgage banking services, based on a likelihood of confusion with the registered mark GUILD INVESTMENT MANAGEMENT, the Trademark Trial and Appeal Board failed to consider relevant evidence and argument regarding the concurrent use of the marks without actual confusion taking place. Evidence that the marks had been used in the same geographic area for over 40 years without any indication of actual confusion weighed against a finding of likelihood of confusion and should not have been disregarded by the Board. Accordingly, the U.S. Court of Appeals for the Federal Circuit vacated the Board’s decision and remanded for further proceedings (In re Guild Mortgage Co., January 14, 2019, Moore, K.).
Applicant Guild Mortgage Co. was in the business of making mortgage loans and has used the word mark GUILD MORTGAGE COMPANY since 1960. Founded in San Diego, Guild had expanded to over 40 states. Guild applied to register its word-and-design mark in connection with "mortgage banking services, namely, origination, acquisition, servicing, securitization and brokerage of mortgage loans." The USPTO refused to register the mark due to a likelihood of confusion with the mark GUILD INVESTMENT MANAGEMENT, which had been registered by Guild Investment Management, Inc., in connection with "investment advisory services." The Board affirmed the refusal, finding that the similarity of the marks, services, and trade channels outweighed the Board’s finding that consumers "may exercise a certain degree of care in investing money, if not perhaps in seeking a mortgage loan." The applicant appealed to the Federal Circuit.
Guild argued that the Board’s findings with respect to the likelihood of confusion factors that it relied in refusing registration on were not supported by substantial evidence. Guild also contended that the Board erred in failing to address Guild’s argument and evidence directed to the eighth DuPont likelihood of confusion factor—the length of time during and conditions under which there has been concurrent use without evidence of actual confusion. The court agreed with Guild’s argument as to the eighth DuPont factor and vacated the Board’s decision on that ground, deciding that it was not necessary to reach Guild’s other arguments.
The court noted that the Board was obligated to consider all of the evidence in making its likelihood of confusion finding. In response to the USPTO examiner’s refusal to register Guild’s mark, Guild argued that it and the registrant had coexisted in business for over 40 years without any evidence of actual confusion. This argument was supported by a declaration of Guild’s president and CEO. There was no indication in the Board’s decision affirming the examiner’s refusal that it had considered DuPont factor 8. "The Board’s opinion does not mention factor 8, let alone address Guild’s argument and evidence directed to that factor," said the court. "The Board erred in failing to consider Guild’s arguments and evidence."
The USPTO contended that the Board did not need to credit Guild’s argument because in ex parte registration proceedings, the "uncorroborated statements of no known instances of actual confusion" of the only party involved in the case are "of little evidentiary value." However, "these proclamations to dismiss Guild’s evidence out of hand sweep too broadly," in the court’s view. Although Guild did not submit declarations from the owner of the registered mark or other parties testifying as to the absence of actual confusion, Guild presented evidence of concurrent use of the two marks for over 40 years, during which time the two businesses operated in the same geographic market (southern California) without any evidence of actual confusion. In addition, the Board’s findings that Guild’s and Registrant’s services were similar and moved in the same channels of trade were relevant when assessing whether the absence of actual confusion was indicative of the likelihood of confusion. The Board erred in its analysis by failing to consider this evidence and argument as to factor 8, the court concluded. This evidence weighed in favor of a finding of no likely confusion, and therefore the error was not harmless. Accordingly, the court vacated the Board’s decision and remanded, directing the Board to reconsider its likelihood of confusion determination in the first instance in light of all the evidence.
This case is No. 2017-2620.
Attorneys: George Ehrich Lenz (Incorvaia & Associates, APC) for Guild Mortgage Co. Thomas L. Casagrande for the USPTO.
Companies: Guild Mortgage Co.
MainStory: TopStory Trademark FedCirNews
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