This article first appeared here in the INTA Bulletin on February 15, 2017 and was reprinted with permission from the International Trademark Association (INTA).

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A December 27, 2016, precedential decision by the Trademark Trial and Appeal Board (Board) addresses the way the Board views evidence of third-party registrations in trademark opposition proceedings.

The Board issued an opinion allowing registration of the mark ROSE SENIOR LIVING, in standard character form with "SENIOR LIVING" disclaimed for "retirement homes" and other services. In doing so, the Board dismissed the opposition filed by the owner of the registered mark PRIMROSE, in typed form, for "providing congregate, independent, and assisted living facilities." The Board concluded that there was no likelihood of confusion between the two marks.

In reaching its conclusion, the Board found that the services of the applicant and the opposer were identical, at least in part, and presumed that the marks were used in the same channels of trade with the same classes of consumers. The Board concluded, however, that other factors weighed against finding a likelihood of confusion, including: specific differences in sound, appearance, and meaning of the marks; purchaser care; and similar third-party marks.

With respect to third-party marks, the applicant cited eight federal registrations, various state registrations, and numerous third-party websites using ROSE-formative marks for nursing home and assisted living facility services. The applicant also submitted testimony of an expert in the field of consulting and market research in the senior housing and health care industries, who testified that senior living facilities often have similar names, and that dozens of senior living facilities have "Rose" as part of their name. The applicant argued that this evidence showed that the opposer's PRIMROSE mark was weak and entitled to narrow protection.

The opposer argued that the evidence had little or no probative value because the applicant did not show any evidence of sales, consumer recognition, or other information by which the Board might gauge the consuming public's exposure to the third-party marks, citing Federal Circuit and Board decisions holding that the mere existence of third-party registrations, without more, is of only limited probative value absent evidence of their actual use. See, e.g., In re Mighty Leaf Tea, 601 F.3d 1342, 1347 (Fed. Cir. 2010).

The Board considered the evidence of third-party registrations over the opposer's objection, noting that the opposer had failed to address "the recent pronouncements of the Federal Circuit regarding the probative value of this type of evidence." The Board cited the Federal Circuit's recent decisions in Jack Wolfskin Ausrüstung Für Draussen GmbH v. New Millennium Sports S.L.U., 797 F.3d 1363 (Fed. Cir. 2015), and Juice Generation, Inc. v. GS Enterprises LLC, 794 F.3d 1334 (Fed. Cir. 2015), in which the Federal Circuit had stated that evidence of use and registration of a term could be "powerful on its face," even absent evidence of the extent and impact of such use on the public. Given the evidence of the existence of so many ROSE-formative marks submitted by applicant, the Board concluded that the opposer's mark was entitled to a more narrow scope of protection because consumers would be alert to "minute distinctions" between marks for the types of services at issue.

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