In Re: Copeland-Smith ( 2019 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
IN RE: DAVID COPELAND-SMITH,
Appellant
______________________
2018-1968
______________________
Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board in No.
85498107.
______________________
Decided: November 12, 2019
______________________
JILL MARIA PIETRINI, Sheppard Mullin Richter &
Hampton LLP, Los Angeles, CA, for appellant. Also repre-
sented by PAUL BOST.
THOMAS W. KRAUSE, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, for
appellee Andrei Iancu. Also represented by THOMAS L.
CASAGRANDE, BENJAMIN T. HICKMAN, CHRISTINA J. HIEBER,
COKE MORGAN STEWART, MARY BETH WALKER.
______________________
Before LOURIE, REYNA, and HUGHES, Circuit Judges.
2 IN RE: COPELAND-SMITH
PER CURIAM.
David Copeland-Smith appeals from an order of the
U.S. Patent and Trademark Office Trademark Trial and
Appeal Board (“the Board”) refusing his application to reg-
ister the mark BEAST MODE SOCCER for t-shirts and
soccer balls. J.A. 1–18. For the reasons set forth below, we
affirm.
BACKGROUND
Copeland-Smith is a soccer coach. For years, he has
been training soccer players under his mark BEAST
MODE SOCCER, which was registered on August 14,
2012, for “coaching services in the field of soccer; providing
group coaching and learning forums in the field of soccer”
in International Class 41. J.A. 494–98. In conjunction
with his coaching, Copeland-Smith began selling merchan-
dise, including t-shirts and soccer balls. In 2011, Copeland-
Smith filed Application 85/498,107 in which he sought reg-
istration of the standard character mark BEAST MODE
SOCCER for “T-shirts” in International Class 25 and for
“sporting goods and equipment for soccer training, namely,
balls” in International Class 28. J.A. 21–26, 30, 619–21.
In an amendment, Copeland-Smith disclaimed any exclu-
sive right in the non-distinctive term SOCCER except as
part of the entire mark BEAST MODE SOCCER. J.A. 30.
The Examining Attorney refused registration of
Copeland-Smith’s mark under § 2(d) of the Lanham Act on
the basis that it was likely to cause confusion with two reg-
istered marks for BEAST MODE owned by retired NFL
football player Marshawn Lynch: U.S. Reg. 3,650,781 for
“T-shirts” and U.S. Reg. 4,254,213 for “Men’s, women’s and
children’s clothing, namely, shirts, sweatshirts; headwear,
namely hats, caps.” The Examining Attorney found that,
“[b]ased on the virtually identical nature of the marks, the
marks are confusingly similar.” J.A. 64. Copeland-Smith
responded that Lynch’s BEAST MODE marks are “weak
IN RE: COPELAND-SMITH 3
due to the existence of multiple third party uses and regis-
trations of trademarks featuring BEAST MODE,” and sub-
mitted examples of such uses and registrations for a
variety of goods and services. J.A. 93, 141–504. The Ex-
amining Attorney remained unpersuaded and entered a fi-
nal refusal, observing that the third-party uses and
registrations were “generally not for clothing or sporting
goods and equipment” and therefore did not show that
Lynch’s registrations were weak for those uses. J.A. 587–
616.
The Board affirmed the Examining Attorney’s refusal.
Based on the arguments and evidence in the record, the
Board concluded that Copeland-Smith’s mark BEAST
MODE SOCCER for t-shirts and soccer balls is likely to
cause confusion with Lynch’s mark BEAST MODE for
t-shirts and other clothing. J.A. 17–18. Copeland-Smith
appealed. We have jurisdiction under 28 U.S.C.
§ 1295(a)(4)(B).
DISCUSSION
Under § 2(d) of the Lanham Act, a mark may be refused
registration on the principal register if it is “likely, when
used on or in connection with the goods of the applicant, to
cause confusion” with another registered mark. 15 U.S.C.
§ 1052(d). Likelihood of confusion is a legal determination
based on underlying findings of fact relating to the factors
set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357 (CCPA 1973), referred to as the “DuPont factors.” Not
all of the DuPont factors are necessarily relevant or of
equal weight, and any one of them may control in a given
case depending on the evidence of record. Citigroup Inc. v.
Capital City Bank Grp., Inc., 637 F.3d 1344, 1355 (Fed. Cir.
2011). Only the DuPont factors “of significance to the par-
ticular mark need be considered” in the likelihood of confu-
sion analysis. In re Mighty Leaf Tea, 601 F.3d 1342, 1346
(Fed. Cir. 2010).
4 IN RE: COPELAND-SMITH
We review the Board’s factual findings on each rele-
vant DuPont factor for substantial evidence, but we review
the Board’s weighing of the DuPont factors de novo. Id. A
finding is supported by substantial evidence if a reasonable
mind might accept the evidence as adequate to support the
finding. Consol. Edison Co. v. NLRB, 305 U.S. 197, 229
(1938). “Where two different conclusions may be war-
ranted based on the evidence of record, the Board’s decision
to favor one conclusion over the other is the type of decision
that must be sustained by this court as supported by sub-
stantial evidence.” In re Bayer Aktiengesellschaft, 488 F.3d
960, 970 (Fed. Cir. 2007); see also Consolo v. Fed. Maritime
Comm’n, 383 U.S. 607, 620 (1966) (“[T]he possibility of
drawing two inconsistent conclusions from the evidence
does not prevent an administrative agency’s finding from
being supported by substantial evidence.”).
In this case, the Board considered and weighed the ev-
idence relevant to seven of the DuPont factors, namely, fac-
tors 1, 2, 3, 4, 6, 7, and 8. On appeal, Copeland-Smith
challenges the Board’s findings only with respect to
DuPont factors 1 and 6. For DuPont factor 1, Copeland-
Smith argues that the Board erroneously found that his
BEAST MODE SOCCER mark was similar in sound,
meaning, appearance, and commercial impression to
Lynch’s BEAST MODE mark. For DuPont factor 6,
Copeland-Smith argues that the Board erred in finding
that the record did not establish a significant weakness in
Lynch’s mark. We consider each of Copeland-Smith’s ar-
guments in turn.
A.
DuPont factor 1 concerns the similarity or dissimilarity
of the marks in their entireties as to appearance, sound,
connotation, and commercial impression. DuPont, 476
F.2d at 1361. “[T]he ‘similarity or dissimilarity of the
marks in their entireties’ is a predominant inquiry” in the
IN RE: COPELAND-SMITH 5
likelihood of confusion analysis. Herbko Int’l, Inc. v. Kappa
Books, Inc., 308 F.3d 1156, 1165 (Fed. Cir. 2002).
The Board in this case found that the marks are similar
because Copeland-Smith’s mark incorporates the entirety
of Lynch’s BEAST MODE mark and adds only the dis-
claimed word SOCCER. J.A. 9–10. “When one incorpo-
rates the entire arbitrary mark of another into a composite
mark, . . . inclusion of a merely suggestive or descriptive
element, of course, is of much less significance in avoiding
a likelihood of confusion.” Wella Corp. v. Cal. Concept
Corp., 558 F.2d 1019, 1022 (CCPA 1977); see also Am. Sec.
Bank v. Am. Sec. & Tr. Co., 571 F.2d 564, 567 (CCPA 1978)
(“While AMERICAN SECURITY BANK is a distinguisha-
ble, three-word mark, the word ‘bank’ is purely descriptive
and adds nothing to the origin-indicating significance of
AMERICAN SECURITY.”). Copeland-Smith argues that
the Board erred by failing to consider the BEAST MODE
SOCCER mark as a whole. Specifically, Copeland-Smith
argues that the word SOCCER distinguishes his mark
from Lynch’s mark, and that the Board arbitrarily dimin-
ished the impact of that word within the overall mark
BEAST MODE SOCCER.
Copeland-Smith characterizes the Board’s analysis as
a “total elimination of SOCCER” in comparing the marks.
See Appellant’s Br. 28–29 (citing Juice Generation, Inc. v.
GS Enters. LLC, 794 F.3d 1334, 1341 (Fed. Cir. 2015)).
That characterization is not accurate. Here, the Board
properly found that a descriptive or generic term within a
mark—like the word SOCCER—is accorded less weight in
forming the commercial impression of the overall mark.
J.A. 9; see Wella, 558 F.2d at 1022. The Board analyzed the
overall mark and determined that “there is no question
BEAST MODE is the portion of the mark likely to be re-
membered and used by consumers in calling for and refer-
ring to [Copeland-Smith’s] goods.” J.A. 9. The Board
considered each element of the mark as part of the mark as
6 IN RE: COPELAND-SMITH
a whole and found that the dominant shared term BEAST
MODE makes the marks similar in sound, meaning, ap-
pearance, and commercial impression. J.A. 9–10. Thus,
this case is not like Juice Generation, where we found that
the Board “did not set forth an analysis showing that it
avoided the error of giving no significance to the term.”
Juice Generation, 794 F.3d at 1341 (emphasis added).
Copeland-Smith attempts to analogize to other cases in
which marks with a common term were found to be distinc-
tive from each other. See Reply Br. 11–13. But none of
those cases involved a common term that dominated an ad-
ditional generic term in the applicant’s mark. See In re
Hearst Corp., 982 F.2d 493, 494 (Fed. Cir. 1992) (“The ap-
pearance, sound, sight, and commercial impression of
VARGA GIRL derive significant contribution from the com-
ponent ‘girl.’” (emphasis added)); Lever Bros. Co. v. Barcol-
ene Co., 463 F.2d 1107, 1108 (CCPA 1972) (finding that
ALL CLEAR had a different connotation than ALL); Col-
gate-Palmolive Co. v. Carter-Wallace, Inc., 432 F.2d 1400
(CCPA 1970) (affirming the Board’s determination that the
common term PEAK was not so strong as to cause confu-
sion despite the addition of the word PERIOD). Copeland-
Smith also relies on cases in which it was the generic term
that was common between two marks, a scenario that is
inapplicable to this case. See Opryland USA Inc. v. Great
Am. Music Show, Inc., 970 F.2d 847, 851 (Fed. Cir. 1992)
(common generic word OPRY); Knight Textile Corp. v.
Jones Inv. Co., 75 USPQ2d 1313, 1317 (TTAB 2005) (com-
mon suggestive word ESSENTIALS).
At bottom, Copeland-Smith asks us to reach a different
conclusion than the Board by finding that BEAST MODE
SOCCER is distinguishable in appearance, sound, conno-
tation, and commercial impression from BEAST MODE.
Copeland-Smith argues that the word SOCCER tells con-
sumers that the BEAST MODE level of training is for soc-
cer and not for some other athletic endeavor. He further
IN RE: COPELAND-SMITH 7
argues that the marks are visually and phonetically dis-
similar because of the number of words and syllables. And
he contends that the commercial impression of Lynch’s
BEAST MODE mark is associated with Lynch’s personal
nickname earned during his career playing college and pro-
fessional football. Copeland-Smith insists that “[Lynch]’s
mark contains absolutely no association with soccer, be-
cause [Lynch] is not associated with soccer, only football.”
Appellant’s Br. 36.
Copeland-Smith presented these same arguments to
the Board, and the Board found them unpersuasive. The
Board was entitled to lend more weight to the strength of
the term BEAST MODE in the overall mark over the addi-
tional word and syllables in the mark due to the word
SOCCER. J.A. 9; see In re Electrolyte Labs., Inc., 929 F.2d
645, 647 (Fed. Cir. 1990) (“More dominant features will, of
course, weigh heavier in the overall impression of a mark.”
(internal citations omitted)). And regarding the commer-
cial impression, the Board found that the evidence showed
many meanings for BEAST MODE that are not associated
with Lynch himself. J.A. 10–11. Moreover, the Board
found that Lynch’s mark would not necessarily be associ-
ated with football because Lynch’s marks are not restricted
to football-themed clothing and encompass trade channels
through which soccer clothing is also sold. J.A. 11.
This court has acknowledged the subjective and fact-
dependent nature of comparing marks, particularly the
weight given to respective words. See Hearst, 982 F.2d at
494. In this case, the Board’s overall analysis comports
with the directive to assess “whether the marks are suffi-
ciently similar in terms of their commercial impression
such that persons who encounter the marks would be likely
to assume a connection between the parties.” Coach Servs.
Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368 (Fed.
Cir. 2012) (internal quotation marks omitted). Substantial
evidence supports the Board’s findings that, looking at the
8 IN RE: COPELAND-SMITH
mark as a whole, the generic word SOCCER is the only
thing that distinguishes Copeland-Smith’s mark from
Lynch’s, and that generic word is dwarfed by the term
BEAST MODE. Thus, having considered Copeland-
Smith’s arguments with respect to DuPont factor 1, we con-
clude that substantial evidence supports the Board’s find-
ing that the marks are sufficiently similar to cause a
likelihood of confusion.
B.
DuPont factor 6 concerns the number and nature of
similar marks in use on similar goods. DuPont, 476 F.2d
at 1361. “[E]vidence of third-party use bears on the
strength or weakness of an opposer’s mark. The weaker an
opposer’s mark, the closer an applicant’s mark can come
without causing a likelihood of confusion and thereby in-
vading what amounts to its comparatively narrower range
of protection.” Juice Generation, 794 F.3d at 1338 (internal
citations omitted). “[S]ufficient evidence of third-party use
of similar marks can show that customers have been edu-
cated to distinguish between different marks on the basis
of minute distinctions.” Id. (quotations omitted). “In ad-
dition, a real evidentiary value of third party registrations
per se is to show the sense in which a mark is used in ordi-
nary parlance.” Id. at 1339 (quotations and emphasis omit-
ted). However, even weak marks are entitled to protection
against registration of a confusingly similar mark. See
King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 1401 (CCPA 1974).
Copeland-Smith contends, based on third-party uses
and registrations, that Lynch’s mark is weak and entitled
to limited protection. Based on definitions from the web-
site www.urbandictionary.com, Copeland-Smith asserts
that the term “Beast Mode” is a well-known phrase in
American slang that refers to a level of high effort or energy
in exercise or sports. See J.A. 102–140. Copeland-Smith
IN RE: COPELAND-SMITH 9
relies on evidence of 31 third-party uses, 3 third-party reg-
istrations, and 15 third-party applications that incorporate
the term “Beast Mode.” Appellant’s Br. 14–19; J.A. 141–
504, 648–722. Copeland-Smith argues that the Board im-
properly discounted the extensive evidence that third par-
ties have used and registered the BEAST MODE mark.
The Director responds that the Board carefully as-
sessed the evidence of third-party use and correctly deter-
mined that most of the evidence was too far removed from
the relevant fields of use for Copeland-Smith’s and Lynch’s
marks. Though the Director acknowledges that Copeland-
Smith produced a large quantity of evidence, he disputes
the quality of the evidence. In support of his argument, the
Director presents a table documenting the alleged third-
party uses, registrations, and applications, with an expla-
nation of why each is of little or no probative value. Appel-
lee’s Br. 28–32.
We agree with the Director. The Board gave due con-
sideration to all of the evidence of third-party uses, regis-
trations, and applications in the record. The Board closely
inspected the evidence and determined that, despite the
volume of evidence submitted, much of it was of limited
probative value on the question of the weakness of Lynch’s
BEAST MODE mark for t-shirts and other clothing.
J.A. 13. Of the evidence that was probative, the Board
found that it failed to “establish that the cited mark
BEAST MODE is so weak that confusion is not likely to
result from the registration of the very similar mark
BEAST MODE SOCCER for identical or even related
goods.” J.A. 14.
For example, regarding the applications upon which
Copeland-Smith relies, the Board found that, without evi-
dence that any of the applications were registered, they
had no probative value for determining actual third-party
use of the mark. J.A. 13 (citing In re Mr. Recipe, LLC, 118
10 IN RE: COPELAND-SMITH
USPQ2d 1084, 1089 (TTAB 2016)). The Board then con-
sidered the seven third-party registrations identified in the
record and found that none of them identifies articles of
clothing, but rather pertained to “computer software, die-
tary and nutritional supplements, beer, advertising and
marketing consultancy, and entertainment in the nature of
competitions in the field of fitness, that is, goods and ser-
vices unrelated to the goods at issue here.” 1 J.A. 13 (citing
In re i.am.symbolic, LLC, 866 F.3d 1315 (Fed. Cir. 2017)).
Finally, the Board considered Copeland-Smith’s submitted
evidence of Internet websites allegedly using the BEAST
MODE mark to offer goods and services for sale. J.A. 14–
15. The Board concluded that the foreign websites have
no probative value for determining likelihood of confusion
in the United States, and many of the U.S. websites have
limited probative value “inasmuch as they concern goods
and services other than clothing.” J.A. 14; see Omaha
Steaks Int’l Inc. v. Greater Omaha Packing Co., 908 F.3d
1315, 1324 (Fed. Cir. 2018) (“[T]he present analysis only
involves goods like those being offered by the parties to the
‘relevant public,’ while third-party use outside of that rele-
vant market is meaningless.”). The Board acknowledged
that roughly ten of the websites offered clothing and thus
had relevance to determining the weakness of Lynch’s
BEAST MODE mark but found that the evidence of those
ten websites “does not appear to approach the quantum of
evidence of use” in prior cases in which marks were found
to be weak. J.A. 14.
1In this appeal, Copeland-Smith limits his reliance to only
three of the seven registrations in the record. Appellant’s
Br. 19. Those three registrations, however, are for “fitness
competitions,” “fitness training,” and “dietary and nutri-
tional supplements”—i.e., the exact evidence that the
Board found was not related to Lynch’s clothing.
IN RE: COPELAND-SMITH 11
Copeland-Smith disagrees with the Board’s factual
findings regarding third-party uses, registrations, and ap-
plications. Copeland-Smith asserts that “athletic training
services, nutritional supplements, and energy drinks []
should be considered goods and services similar to cloth-
ing.” Appellant’s Br. 21 (emphasis added); Reply Br. 5. But
Copeland-Smith offers extremely limited factual support
for that assertion, namely, that one person—Lynch him-
self—filed applications to register BEAST MODE for en-
ergy drinks and participation in football games.
Appellant’s Br. 20; Reply Br. 4. Beyond that, Copeland-
Smith relies on an unrelated case about the relationship
between “restaurant services” and “food products”—nei-
ther of which is at issue in this case—and the fact that
“clothing” is related to “sports equipment.” Appellant’s Br.
22–24; Reply Br. 4–5. It does not follow, however, that
“clothing” must also be related to “athletic training ser-
vices, nutritional supplements, and energy drinks.” Nota-
bly, Copeland-Smith currently owns a registered mark for
BEAST MODE SOCCER for athletic training services,
which is consistent with the Board’s finding that there is a
difference between clothing and athletic training services.
See J.A. 494–498 (Reg. 4,189,996).
The law requires the Board to carefully parse the evi-
dence of third-party uses and registrations so as to avoid
crediting an applicant’s ability to amass a large quantity of
evidence pertaining to unrelated goods. See Conde Nast
Publ’ns, Inc. v. Am. Greetings Corp., 329 F.2d 1012, 1014
(CCPA 1964) (“[T]he board gave undue weight to the im-
posing array of third-party registrations.”). That is pre-
cisely what the Board did here. Copeland-Smith fails to
persuade us that the results of that parsing are not sup-
ported by substantial evidence.
Copeland-Smith also criticizes the Board’s finding that
only ten U.S. websites in the record offer clothing articles,
suggesting that individual styles displayed on websites
12 IN RE: COPELAND-SMITH
should be considered individual instances of third-party
use. But without a limiting principle, this argument is
simply an arbitrary disagreement with the Board’s find-
ings regarding the impact of the evidence. Again,
Copeland-Smith fails to demonstrate that the Board’s find-
ings were not supported by substantial evidence. Thus,
having considered Copeland-Smith’s arguments with re-
spect to DuPont factor 6, we find that substantial evidence
supports the Board’s factual finding that Copeland-Smith
“has not established any significant weakness in [Lynch]’s
mark” with respect to the goods at issue. J.A. 18.
C.
We finally turn to the Board’s weighing of the DuPont
factors. Having found that DuPont factors 1, 2, 3, 4, 6, 7,
and 8 weigh in favor of a likelihood of confusion, the Board
concluded that “[Copeland-Smith]’s mark BEAST MODE
SOCCER for his T-shirts and soccer balls is likely to cause
confusion with [Lynch]’s mark BEAST MODE for his T-
shirts and other clothing goods.” J.A. 18. We have consid-
ered Copeland-Smith’s challenges regarding DuPont fac-
tors 1 and 6, and we conclude that the Board’s findings
were supported by substantial evidence. We also credit the
Board’s factual findings regarding the other five DuPont
factors, which Copeland-Smith has not challenged in this
appeal. Like the Board, we conclude based on the DuPont
factors that Copeland-Smith’s mark is likely to cause con-
fusion with Lynch’s mark. The Examining Attorney there-
fore properly refused registration of Copeland-Smith’s
mark pursuant to § 2(d) of the Lanham Act.
CONCLUSION
We have considered Copeland-Smith’s remaining argu-
ments, but we find them to be unpersuasive. Accordingly,
the decision of the Board affirming the Examining Attor-
ney’s refusal to register is affirmed.
IN RE: COPELAND-SMITH 13
AFFIRMED