The U.S. Patent and Trademark Office (USPTO) must reexamine a request by a juice bar operator in New York City to register a mark, “PEACE LOVE AND JUICE."
The USPTO’s Trademark Trial and Appeal Board (TTAB or appeal board) previously refused to register Juice Generation Inc.’s mark, concluding that it was too similar to marks used by GS Enterprises LLC.
But in a decision Monday, three appeals judges with the Federal Circuit ruled that the TTAB should reevaluate the case because it had not sufficiently considered the evidence.
“We conclude that the Board did not adequately assess the weakness of GS’s marks and did not properly consider the three-word combination of Juice Generation’s mark as a whole in comparing it to the two-word combination in GS’s marks," wrote Circuit Judge Richard Taranto on behalf of the three-judge panel. Circuit judges Pauline Newman and Jimmie Reyna joined the opinion.
GS Enterprises owns registrations that incorporate the phrase “PEACE & LOVE" and relate to restaurant services. The registrations include “P & L PEACE & LOVE," “ALL YOU NEED IS PEACE & LOVE," “PEACE & LOVE" and P & L PEACE & LOVE NEW YORK."
Juice Generation was founded in 1999 by Eric Helms, who opened a juice bar in New York City’s Hell’s Kitchen, according to the company’s website. The company, which has expanded to more than a dozen stores in Manhattan, had applied to the USPTO for its mark in 2012. The TTAB concluded that Juice Generation’s mark and GS Enterprises’ marks were similar and likely to create consumer confusion.
The TTAB insufficiently weighed the strength or weakness of GS’s marks, a factor that is “probative of the likelihood of confusion," Taranto wrote in the 13-page opinion. He also said the appeal board failed to adequately consider Juice Generation’s three-word combination.
The judge quoted a 2003 Federal Circuit case involving Coors Brewing Co. that noted, “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."
Juice Generation introduced evidence that third parties had used the marks “peace" and “love" in combination with a third term identifying specific products. The TTAB wasn’t persuaded, referencing an absence of details “regarding the extent of sales or promotional efforts surrounding the third-party marks and, thus, what impact, if any, these uses have made in the minds of the purchasing public."
But Taranto said the appeal board “never inquired whether and to what degree the extensive evidence of third-party use and registrations indicates that the phrase PEACE & LOVE carries a suggestive or descriptive connotation in the food service industry, and is weak for that reason."
‘PEACE LOVE AND JUICE’
The Federal Circuit further concluded that the TTAB inadequately considered the three-word mark that was used by Juice Generation. The appeal board considered “peace" and “love" the dominant words and held that “juice" didn’t adequately distinguish Juice Generation’s mark from the marks used by GS Enterprises.
The appeal board’s analysis was flawed, according to the Federal Circuit.
“It does not display any consideration of how the three-word phrase in Juice Generation’s mark may convey a distinct meaning—including by having different connotations in consumers’ minds—from the two-word phrase used by GS," Taranto wrote. “While the Board may properly afford more or less weight to particular components of a mark for appropriate reasons, it must still view the mark as a whole."
Reaction to Decision
Nigamnarayan (Nigam) Acharya and Michael Baniak of the law firm Seyfarth Shaw LLP argued the case for Juice Generation. Justen Barks and Loren Craft of the law firm Craft Chu PLLC represented GS Enterprises.
“The case is important because only 10%-15% of TTAB decisions are reversed by the Federal Circuit on appeal," Acharya said in an emailed statement. He added that “the decision is precedential and clarifies the manner in which the TTAB and the USPTO are to examine evidence of third-party trademark registrations and usages."
Barks did not immediately respond to a request for comment on the ruling.