United States: Fame and Actual Confusion Are Not Prerequisites to Proving a Likelihood of Confusion Under the Lanham Act

The U.S. Court of Appeals for the Federal Circuit has now held that fame and actual confusion are not necessary in order for a trademark examiner to refuse registration of a mark on the ground that it is confusingly similar to a previously registered mark. In re Majestic Distilling Co., Inc., 2003 U.S. App. LEXIS 5 (Fed. Cir. Jan. 2, 2003).

An applicant applied for the mark RED BULL for tequila. The U.S. Trademark Trial and Appeal Board (TTAB) affirmed the trademark examiner’s refusal to register based on prior registrations, all owned by a third party (Stroh’s) for RED BULL for malt liquor.

The Federal Circuit held that tequila (a distilled spirit) and malt liquor (a brewed product) are related goods for trademark purposes because they are both alcoholic beverages that are marketed in many of the same channels of trade to many of the same consumers, and many consumers are not even aware of the different ways each is made.

The Court also rejected the applicant’s contention that there was no likelihood of confusion because the mark RED BULL for malt liquor was not famous. "Although we have previously held that the fame of a registered mark is relevant to likelihood of confusion, we decline to establish the converse rule that likelihood of confusion is precluded by a registered mark’s not being famous." Further, the Court discounted the fact that there was no evidence of actual confusion. "A showing of actual confusion would of course be highly probative, if not conclusive, of a high likelihood of confusion. The opposite is not true, however. The lack of evidence of actual confusion carries little weight, especially in an ex parte context."