CAFC Affirms TTAB Finding of No Likelihood of Confusion Between Vape and Cigar Marks

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision Wednesday in Fuente Marketing Ltd. v. Vaporous Technologies, LLC, affirming the decision of the Trademark Trial and Appeal Board (TTAB) and holding that the Board correctly dismissed an opposition to a trademark application after finding no likelihood of confusion between the applied-for and registered marks.

Fuente Marketing Ltd. owns two standard character trademarks for the letter X for use in connection with cigars, ashtrays not of precious metal, cigar cutters, and lighters not of precious metal. Vaporous Technologies, LLC designs and manufactures oral vaporizers and filed an intent-to-use application seeking to register an image mark (– the “X Dot Mark”) for use on or in connection with oral vaporizers for smoking purposes.

Fuente opposed Vaporous’s application, alleging a likelihood of confusion between the X Dot mark and its own standard character X marks. The TTAB dismissed Fuente’s opposition after determining there was no likelihood of confusion between X Dot mark and the X marks. The Board assessed the likelihood of confusion by considering the factors set out in In re E.I. DuPont DeNemours & Co. The Board concluded that, although many factors weighed in favor of a likelihood of confusion, the marks create distinct commercial impressions and are sufficiently dissimilar to negate any likelihood of confusion. Fuente appealed the decision to the CAFC.

Writing for the CAFC, Judge Hughes addressed the first DuPont factor, which assesses the “similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.” The Board found that the first factor decisively weighed against a likelihood of confusion because consumers would perceive Vaporous’s mark as a stick figure, rather than the letter X. Since a stick figure has no pronunciation, unlike the letter X, the marks differed in sound. Fuente argued that the Board erred when it concluded that the X Dot mark would be perceived by consumers as a stick figure, contending that the Board erred in relying on the parties’ stipulation as conclusive evidence.

The CAFC disagreed with Fuente, noting that “to the extent that the Board relied on the parties’ stipulated description of Vaporous’s mark as dispositive of how consumers would perceive the mark, this reliance was harmless error.” The court explained that the Board also reached the same dissimilarity conclusion without reference to the stipulation, and the conclusion of the Board is supported by substantial evidence. The Board found that based on the record, consumers would not perceive Vaporous’s design mark as a letter X, but as a stick figure. The court stated that “substantial evidence supports the Board’s conclusion that consumers are likely to perceive the mark as a stick figure.”

The court also addressed the third and fourth DuPont factors, which consider the similarity or dissimilarity of the trade channels of the parties and the conditions under which and buyers to whom sales are made. The Board concluded that vapes and cigars “travel in overlapping channels of trade and, because [vapes] are considered in some respects to be an alternative to cigars, to some of the same customers.” The Board said that the third and fourth factors weighed in favor of a likelihood of confusion. Vaporous argued that the analysis of the Board is flawed because its conclusions conflict with reality. However, the court rejected this argument, stating that “registrability of an applicant’s mark ‘must be decided on the basis of the identification of goods set forth in the application,’” regardless of what the record reveals as to the current real-world nature of the goods, channels of trade, or class of purchasers.

Regarding the fifth DuPont factor, which considers the fame of the senior mark, the Board assessed both the conceptual and commercial strength of the X marks of Fuente. The Board concluded the X marks were arbitrary as applied to cigars and thus conceptually strong, but found the X marks to be commercially weak because “Fuente’s evidence of marketplace recognition largely depicted the letter X integrated into other marks and advertising.” Balancing the strong conceptual strength with the weak commercial strength, the Board concluded the X marks were entitled only to the same “protection accorded any inherently distinctive mark” and categorized the fifth factor as neutral. Fuente argued the Board erred by giving no weight to the conceptual strength of the X marks. The court found that Fuente misapprehended the opinion of the Board, as “the Board acknowledged the X marks are arbitrary, and thus conceptually strong, while separately concluding that this conceptual strength is offset by the marks’ limited commercial strength.”

Furthermore, the court considered the Board’s weighing of the DuPont factors. Fuente asserted that the Board failed to explain its balancing of the factors, so the court could not reasonably discern the Board’s rationale. The court disagreed, stating that “the likelihood of confusion analysis is a balancing test, and a single DuPont factor ‘may be dispositive,’ especially where, like here, ‘that single factor is the dissimilarity of the marks.’”

Having considered the parties’ remaining arguments and found them unconvincing, the court affirmed the Board’s decision.