According to a recent Sixth Circuit opinion filed May 3, 2017, there is “no obligation” for a District Court to defer to the USPTO examiner’s decision rejecting an application for trademark registration.
In 2013, the world’s largest package delivery company, United Parcel Service, Inc., submitted an application to the USPTO to register the mark “UPS OrderLink.” The USPTO examiner rejected the application based on a likelihood of confusion with Progressive Distribution Services, Inc.’s “OrderLink” mark, a registered mark since 2004 and allegedly used for at least 19 years. Undeterred by the examiner’s decision, UPS began using the recently rejected mark in connection with launching a software program.
Despite the fact that UPS abandoned its use of the “UPS OrderLink” mark three days earlier, Progressive filed a complaint against UPS in the U.S. District Court for the Western District of Michigan alleging UPS violated the Lanham Act, among other things. The District Court granted summary judgment in favor of UPS on the basis that there was no likelihood of confusion between the marks as a matter of law. The Sixth Circuit affirmed.
There is a multitude of case law analyzing the Sixth Circuit’s eight-factor likelihood of confusion test. This case was no different, and the Sixth Circuit ultimately agreed with District Judge Gordon J. Quist’s conclusion that Progressive could not meet its burden. However, the more interesting piece of the Sixth Circuit’s analysis involved a related, but more specific question. As posed by the Sixth Circuit, the Court was called to decide “what level of deference is to be accorded an initial USPTO decision that denied UPS’s trademark of ‘UPS OrderLink’ on the basis of its finding that there was a likelihood of confusion with Progressive’s mark.” See Opinion, at 6 (emphasis added). In other words, if the USPTO examiner already engaged in a likelihood of confusion analysis and found in Progressive’s favor, in what way, if at all, could the District Court consider the USPTO’s preliminary decision?
Naturally, Progressive claimed the District Court incorrectly ignored the USPTO’s decision rejecting the “UPS OrderLink” application. The Sixth Circuit disagreed, concluding that there was “no error” in the fact that the District Court decided not to defer to the USPTO examiner’s preliminary findings. In reaching this conclusion, the Court noted that an examiner does not consider “many of the factors that courts consider in a Lanham infringement action–including a consideration of the manner in which the marks are actually used in the marketplace.” Opinion, at 7. As a result, and agreeing with a similar analysis performed by the U.S. Court of Appeals for the Third and Ninth Circuits, “the examiner’s analysis was incomplete.” See Opinion, at 8.
Takeaway
Just because an application for registration is rejected by a USPTO examiner due to likelihood of confusion, that decision likely will not carry any weight with the District Court. While the District Court is permitted to “look to the USPTO opinion to inform its conclusions on trademark analysis,” there is “no obligation” for the District Court to defer to the examiner. As a side note, perhaps Progressive should have reconsidered filing suit when UPS abandoned the mark in response to Progressive’s cease and desist letter? However, had it done so, the Sixth Circuit might not have had the opportunity to give guidance on this interesting issue.
Bundren on Competitive Practices 