In Re: Guild Mortgage Company
912 F.3d. 1376 (2019)
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Rule of Law:
The Trademark Trial and Appeal Board (Board) must consider all relevant DuPont factors, including evidence and arguments related to the length of concurrent use without actual confusion (factor 8), when determining the likelihood of confusion for trademark registration, and a failure to do so constitutes reversible error.
Facts:
- Guild Mortgage Co. ("Guild") has operated as a mortgage loan provider since 1960, using the mark “GUILD MORTGAGE COMPANY.”
- Guild expanded its operations from San Diego, California, to over 40 other states.
- Guild applied to register its mark “GUILD MORTGAGE COMPANY,” and design, for "mortgage banking services" in International Class 36.
- The mark "GUILD INVESTMENT MANAGEMENT" is registered and owned by Guild Investment Management, Inc. ("Registrant"), an investment company in Los Angeles, California.
- Registrant's mark is registered in International Class 36 for "investment advisory services."
- Guild and Registrant have coexisted in business for over 40 years, with both operating in the southern California geographic market, without Guild being aware of any actual confusion.
Procedural Posture:
- Guild Mortgage Co. applied to the United States Patent and Trademark Office (PTO) to register its mark “GUILD MORTGAGE COMPANY” and design.
- A PTO examiner refused to register Guild's mark, finding a likelihood of confusion with the registered mark “GUILD INVESTMENT MANAGEMENT” based on similar marks, services, and trade channels.
- Guild Mortgage Co. appealed the examiner's refusal to the Trademark Trial and Appeal Board (Board).
- The Board affirmed the examiner’s findings and refusal to register Guild's mark.
- Guild Mortgage Co., as the appellant, appealed the Board's decision to the United States Court of Appeals for the Federal Circuit.
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Issue:
Did the Trademark Trial and Appeal Board err by failing to consider Guild Mortgage Company's arguments and evidence regarding the length of concurrent use without actual confusion (DuPont factor 8) when determining the likelihood of confusion between Guild's mark and a previously registered mark?
Opinions:
Majority - Moore, Circuit Judge
Yes, the Trademark Trial and Appeal Board erred by failing to consider Guild Mortgage Company’s arguments and evidence regarding the length of concurrent use without actual confusion (DuPont factor 8) when determining the likelihood of confusion. The Federal Circuit emphasized that in every likelihood of confusion case, the examiner, the Board, and the court have a duty to find whether confusion is likely by considering all evidence, and all DuPont factors of record must be considered. The Board explicitly stated it considered factors for which there were arguments and evidence but failed to mention or address Guild’s arguments and the declaration of its CEO, Mary Ann McGarry, concerning over 40 years of concurrent use of the marks in the same geographic market without any known instances of actual confusion. The PTO's argument that uncorroborated statements of no known actual confusion are of little evidentiary value, citing In re Majestic Distilling Co., was found to sweep too broadly. Majestic Distilling applied this principle to DuPont factor 7 (nature and extent of actual confusion), but not to factor 8 (length of time during concurrent use without evidence of actual confusion). Evidence of a long period of concurrent use without actual confusion, especially when services are similar and in the same trade channels, weighs against a likelihood of confusion and must be considered and balanced against other evidence. The Board's failure to consider this evidence and argument was not harmless error, leading to vacation and remand.
Analysis:
This case reinforces the mandatory nature of considering all relevant DuPont factors when evaluating the likelihood of trademark confusion. It clarifies the distinction between DuPont factor 7 (evidence of actual confusion) and factor 8 (absence of actual confusion over time), indicating that while uncorroborated statements are of limited value for factor 7, evidence of long concurrent use without confusion for factor 8 must be formally considered. The decision ensures that applicants are afforded due process, requiring the Board to explicitly address and weigh all evidence presented, which can significantly impact the outcome of trademark registration disputes.
