By W. Scott Cameron

Mighty Leaf Tea sought to register the mark “ML” in standard character form to market, not tea, but rather personal care products and skin care products, including skin soap, body wash, foam bath, body lotion, body scrub, bath salts, massage oils, potpourri, and incense.  It filed its application with the United States Patent and Trademark Office on July 2, 2007, claiming first use in November of 2004.  The USPTO denied the application, however, because it found a likelihood of confusion with the mark “ML MARK LEES,” which had previously been registered for “skin care products, namely skin cleanser, skin toner, skin cream, skin lotion, skin mask gel, make-up foundation, powder and blush.” 

Mighty Leaf Tea appealed the rejection to the USPTO Trademark Trial and Appeal Board (“TTAB”). In support of its position, Mighty Leaf Tea argued that it sought only to register the mark in standard character form, and the ML MARK LEES mark was registered in stylized form. Therefore, Mighty Leaf Tea contended, the marks are not so similar as to cause confusion. Mighty Leaf Tea also pointed to other marks containing “ML,” which it contended rendered the mark weak. The TTAB agreed with the Examining Attorney and affirmed the rejection. 

Mighty Leaf Tea wasn’t done yet. Rather than accept defeat, it appealed the TTAB decision to the United States Court of Appeals for the Federal Circuit. When most California attorneys think of which courts are important to their practice, the U.S. Court of Appeals for the Federal Circuit does not immediately come to mind. Even intellectual property practitioners, who regularly appear in federal court, would consider the Ninth Circuit before the Federal Circuit. However, the Federal Circuit is quite important in the world of IP litigation, and is charged with hearing all appeals of TTAB actions. Moreover, appeals in patent cases are heard in the Federal Circuit, no matter which district court handled the matter below.

In this case, the Federal Circuit had to decide whether “ML” is confusingly similar to “ML.” Mighty Leaf Tea had several arguments why its version of “ML” was not confusingly similar to Mark Lees’ version, but none were persuasive. First, Mighty Leaf Tea argued that it was registering the standard character form, which does not specify a font or stylization, and therefore Mark Lees’ mark, which included a stylized ML over the name MARK LEES was not similar. However, the specimen provided to the USPTO showed that Mighty Leaf Tea intended to use a “stylized ML presented in highly cursive, abstract fashion which is similar to the stylized ML presented in a highly cursive, abstract fashion” used in Mark Lees’ registered mark. 

Mighty Leaf Tea also argued that it only sought to register the “ML” where the registered mark included “ML MARK LEES” and not simply the “ML.” Again, the court was not persuaded. The court examined the factors for confusing similarity as stated in In re E.I. DuPont De Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973). Practitioners in California are familiar with AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979), in which the Ninth Circuit enumerated its own list of factors. 

These lists are very similar. Mighty Leaf Tea also argued that many other marks contained the characters “ML” and therefore the mark was weak. The court did not buy this argument either, concluding that the fact that another mark had the letters “M” and “L” in them did not make them similar, or reduce the strength of the mark “ML.” Significantly, both marks in question here had the “ML” set off from any other letters, and in Mighty Leaf Tea’s case, that was the entirety of the mark. Thus, Mighty Leaf Tea’s mark was completely included in the registered mark “ML MARK LEES.” The fact that both marks were to be used to marked the same or very similar products, added to the likelihood of confusion. 

In large part, the question came down to the standard of review. The TTAB’s decisions are reviewed for whether they are supported by substantial evidence, not whether the court would have come to the same conclusion. Because the court here concluded that substantial evidence supported the TTAB’s decision, the Federal Circuit affirmed. 

One important thought to take away from this case is the understanding that practicing intellectual property litigation may take the lawyer outside of his usual and customary habitat. An IP litigator might be comfortable in his or her local federal district court, but needs to be ready to take the show on the road when necessary. While he or she can choose the forum by bringing an infringement action in his or her own district (usually), if the fight has to be fought this early on, at the registration level, the fight must be fought at the TTAB. If unsuccessful, the appeal can only be heard in the Federal Circuit. While it may seem obvious, that court may have controlling cases with slightly different standards than the Ninth Circuit cases and standards that we are used to. A brief written in the language of the right circuit has a much better chance for success.