Louis Vuitton trademark application blocked by similar trademark.

A trademark is something that a product manufacturer uses to distinguish their products from competitors products. Traditionally a trademark is thought of as a word, phrase, or symbol. Modern trademark law can grant trademark rights to just about anything that consumers associate with the producer of a product. The key to the strength of a trademark in the United States is the association consumers make between a trademark and the producer of the products branded with the trademark. In the United States, a trademark can be registered with the United States Patent and Trademark Office to strength the rights associate with a trademark. However, registration is not a prerequisite to gaining a right to a trademark. Using a trademark in commerce in the United States is the event that grants a user a claim to a trademark.

The first company to use a trademark in commerce is considered the senior user. Subsequent companies to use the trademark are considered junior users. A senior user’s claim to a trademark has priority over a junior user. Even if a junior user registers their trademark, the senior user’s right to use the trademark within the geographic region that senior user operates will not be extinguished.

When a trademark user files an application with the United States Patent and Trademark Office to register the trademark, an examining attorney will be assigned to the application. The examining attorney will review the trademark application to ensure that the trademark meets all the statutory requirements for registration and perform a search to confirm that the trademark in the application is not confusingly similar to trademarks which are already registered. If the examining attorney does not raise an objection to the trademark application or the applicant overcomes all the objections the trademark will be published in the “Official Gazette”. After the trademark is published any party who believes it may be damaged by registration of the mark has thirty (30) days from the publication date to file either an opposition to registration or a request to extend the time to oppose. If the trademark is based on use in commerce, a foreign registration, or an extension of protection of an international registration to the United States under Section 66(a), and no party files an opposition or request to extend the time to oppose, the United States Patent and Trademark Office will register the trademark and send the owner a certificate of registration. After the trademark registers, the owner of the trademark must file specific maintenance documents to keep the registration live.

The 30 days after publication can be a nervous time for a trademark applicant. Even though the examining attorney has performed a search of relevant trademark, any member of the public can step forward and object to the registration of the trademark.

An example of a trademark application that was halted during the publication period is IN RE: LOUIS VUITTON MALLETIER, 2018-1651 (C.A.F.C. 2019). Louis Vuitton is a retailer of luxury products that are enjoyed by consumers around the world. On February 6, 2015, Louis Vuitton’s applied for trademark protection on the standard character mark “APOGÉE”, the name of a perfume it had developed. The company sought to register the mark in connection with a broad spectrum of goods, including cosmetic and skincare products. The Examining Attorney preliminarily approved the application and published the mark on January 19, 2016. Within a day, a letter of protest was filed by KAB Brands. KAB Brands objected to the trademark “APOGÉE” given the likelihood of confusion with it’s registered trademark “APHOGEE.” The Examining Attorney determined that there was a likelihood of confusion and issued a final denial of Louis Vuitton’s trademark application. Louis Vuitton appealed to the Trademark Trial and Appeal Board, who agreed with the examining attorney. Louis Vuitton then appealed to the Court of Appeals for the Federal Circuit.

The Federal Circuit reviewed the DuPont factors to determine whether there was a likelihood of consumer confusion between “APOGÉE” and “APHOGEE.” The Federal Circuit found that substantial evidence supported the determination that APOGÉE and APHOGEE are similar in appearance, sound, and commercial impression. Substantial evidence supported the determination that the goods are related. Goods need not be identical or similar in kind to be related. The Federal Circuit found that the goods would be solid in similar channels of trade. With respect to the conditions of sale factor the Federal Circuit found this factor to be neutral. Even though KAB Brands sells modestly priced products and Louis Vuitton sells luxury goods, nothing is preventing either party from changing the price points of their products.

Weighing all these factors together the Federal Circuit affirmed the decision of the Trademark Trial and Appeal Board denying Louis Vuitton’s trademark application.

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