CAFC Reverses TTAB Dismissal of Sunkist’s Opposition, Finding Faulty DuPont Factor Analysis

In a precedential trademark decision issued today, the U.S. Court of Appeals for the Federal Circuit (CAFC) reversed a Trademark Trial and Appeal Board (TTAB) ruling that had found no likelihood of confusion between the marks KIST and SUNKIST.

Beverage company Sunkist Growers, Inc. opposed Intrastate Distributors, Inc.’s applications to register the mark KIST in standard characters and the stylized mark for “[s]oft drinks, namely, sodas and sparkling water; concentrates and syrups for making soft drinks.” SUNKIST submitted 16 registrations for SUNKIST during the opposition but the TTAB ultimately dismissed the opposition.

Despite finding that four of the six DuPont factors for determining likelihood of confusion favored confusion, the Board said the similarity of the marks and actual confusion did not favor a finding of confusion and that these two factors outweighed the rest. With respect to commercial impression, the TTAB said the SUNKIST marks are marketed to reference a sun, while the KIST marks reference a kiss. It also said that the lack of any reported instances of confusion favored a finding of no actual confusion.

On appeal, the CAFC first addressed the Board’s DuPont factor analysis. Since actual confusion is not dispositive of a finding of likelihood of confusion, the court focused on the similarity of the marks factor. The TTAB’s finding that the KIST mark’s commercial impression is meant to reference a kiss was based on its belief that the phonetic equivalent of KIST is “kissed” and because there was an image of lips next to the mark in one example of marketing materials. But the CAFC said this lips image is not part of the mark. “The KIST mark is not a design mark that includes a lips image that is always shown with the mark,” said the court.

The Board cropped the image of the mark with the lips image from an exhibit that contained many instances of the mark without lips. There was also no evidence supplied to indicate how much exposure consumers had to the images including lips. Additionally, the page the lips image was cropped from actually emphasized different sparkling water flavors, said the opinion, none of which include a lips image. Furthermore, reference to the exhibit in a declaration made by IDI’s CEO, Mr. Tim Dabish, does not mention lips and instead refers to the sparkling water products and flavors.

Lastly, the court rejected the TTAB’s over-emphasis on the SUNKIST design marks including the image of a sun and held that its decision finding similarity of the marks favors no likelihood of confusion was not supported by substantial evidence.

Having rejected that finding, the CAFC–citing VersaTop Support Sys., LLC v. Ga. Expo, Inc., 921 F.3d 1364, 1372 (Fed. Cir. 2019)–explained that “failure to prove instances of actual confusion is not dispositive against a trademark plaintiff, because actual confusion is hard to prove,” and reversed the TTAB’s decision because “IDI’s KIST marks when used on or in connection with the goods described in IDI’s applications are likely to cause confusion with the registered SUNKIST mark.”