In a victory for Taft client, Sferra Fine Linens, LLC (Sferra), the U.S. Court of Appeals for the Federal Circuit vacated and remanded a decision by the Trademark Trial and Appeal Board (the Board) relating to Sferra's opposition to a trademark application filed by Sfera Joven S.A (Sfera).
Background of the Dispute
The dispute centered on Sfera's application to register the stylized mark "Sfera" for a range of retail consumer goods, including perfumery, handbags, and clothing, at the U.S. Patent & Trademark Office. Sferra opposed the registration, citing a likelihood of confusion under Section 2(d) of the Lanham Act with its own registered marks, SFERRA and SFERRA BROS, both covering various linens, textile products, home goods, among other consumer retail goods.
After a trial, the Board dismissed the opposition, finding that while the parties' marks were similar and Sferra's mark had some commercial strength, Sferra had not sufficiently proven the relatedness of the goods or the overlap in trade channels.
Sferra appealed to the Court of Appeals for the Federal Circuit.
Legal Issues on Appeal
On appeal, Sferra challenged several aspects of the Board's analysis:
- Similarity of the Marks
- Relatedness of the Goods
- Trade Channels
- Consumer Sophistication
- Strength of the Mark
The Federal Circuit agreed with Sferra's argument that the Board erred in its analysis of key DuPont factors – similarity of marks and relatedness of goods – that determine likelihood of confusion between trademarks.
- Similarity: Citing Federal Circuit's precedent in Naterra International v. Bensalem, Taft argued that the Board erred by not weighing the similarity of the marks "heavily" in Sferra's favor. The Federal Circuit agreed, determining that the Board should have considered the similarity of the marks as weighing "heavily" in favor of a likelihood of confusion, given the near-identical appearance and sound of the marks.
- Relatedness of goods: Taft's team also highlighted evidence of record that demonstrates the fact that Sferra sells goods overlapping with those listed in Sfera's application. Taft argued that this evidence should not have been disregarded, and the Federal Circuit agreed.
Result: Decision Vacated and Remanded
The Federal Circuit vacated the Board's dismissal order and remanded the case for further proceedings. Consistent with Taft's arguments, the Federal Circuit specifically instructed the Board to:
- Weigh the similarity of the marks "heavily" in favor of Sferra.
- Consider Sferra's evidence that it sells goods related to those of Sfera.
Find the opinion and more analysis in this Law360 article (subscription required).
The Sferra Taft team included O. Joseph Balthazor, Jr., Philip R. Bautista, Hannah S. Fereshtehkhou, JoZeff W. Gebolys, and Amy L. Wright. Counsel of record with the Federal Circuit were Philip R. Bautista and JoZeff W. Gebolys.