Published 01/19/2021 by CIONCA IP TEAM (BR)
On January 7, 2021, the United States Court of Appeals for the Federal Circuit (“Federal Circuit”) made a decision in QuikTrip West, Inc. v. Weigel Stores, Inc. Opposer QuikTrip West, Inc. (“QuikTrip”) and Applicant Weigel Stores, Inc. (“Weigel”) both operate gasoline chains, wherein food products and other convenience items are also sold. QuikTrip has used their logo mark—“The mark consists of the letters "QT" in white on a red square background; the word "KITCHENS" in black and underlined in black; and a chef-style hat outlined in black located at the top left corner of the red square” (US Trademark Reg. No. 4,118,738)—to sell food items in their stores. Weigel’s started to sell their own food products as well, using their stylized mark W KITCHENS, which prompted QuikTrip to send a cease-and-desist to the competitor claiming similarity in their marks. After applying alterations to their logo mark, Weigel’s submitted an application for their new mark, which “consists of a white "W" justified to the right and inside of a red circle. To the right of the "W" in the circle is "Weigel's" above "Kitchen" in large black font. To the right of the "Weigel's" and "Kitchen" is "Now" above "Open" in diagonal, stylized, black font (US Serial No. 87324199). QuikTrip subsequently opposed the Weigel mark’s registration, again claiming that the mark has strong similarity to their own and would likely confuse consumers. The Board, however, concluded that the two marks are dissimilar enough and dismissed QuikTrip’s opposition. QuikTrip appealed and the United States Court of Appeals for the Federal Circuit has jurisdiction.
The Federal Circuit first examined the similarity of the two marks. QuikTrip raises that the Board did not properly consider the use of the term KITCHEN(S) in both marks. However, the Federal Circuit agreed with the Board in that the term KITCHEN(S) is merely highly suggestive, if not descriptive. Moreover, the Federal Circuit also supported the Board’s review of the marks as a whole, rather than only considering their literal elements. As such, Weigel’s encircled W and QuikTrip’s QT in a square are distinct differences that are enough to make the marks dissimilar.
In terms of linguistics, the Federal Circuit also affirmed the Board’s notation that the marks are not even phonetically similar: “W WEIGEL’S KITCHEN NOW OPEN” does not sound similar to “QT KITCHENS”. Their semantics also prompt differing meanings: “Weigel’s Kitchen” suggests a single kitchen owned by an individual named Weigel, while “QT Kitchens” suggests “a string of kitchens with chefs run by QT” (7).
Finally, the Federal Circuit addressed QuikTrip’s claim that Weigel acted in bad faith, with the intent to deceive. QuikTrip mentions that Weigel had photographed their mark and its use with the intent to copy and confuse. However, the Federal Circuit supports that Weigel substantially modified their mark in order to accommodate QuikTrip’s mark, which in and of itself actually demonstrates a lack of bad faith.
For the above reasons, the Federal Circuit affirmed the Board’s decision.
While two marks may seem similar, if both are considered in whole, the marks may be dissimilar enough to avoid likelihood of confusion. As such, while it is always best to develop a mark that is highly unique, registration of two slightly similar marks in the same space is still possible if all elements—both literal and design—are considered carefully.
Full QuikTrip West, Inc. v. Weigel Stores, Inc. decision can be read here: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1304.OPINION.1-7-2021_1713761.pdf.
Disclaimer: The views and opinions expressed throughout this blog are the views and opinions of the individual author(s) and/or contributor(s) and do not necessarily reflect the views and opinions of our firm, CIONCA IP Law. P.C.
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