Trademark Strength and Fame: The Federal Circuit Corrects the Trademark Trial and Appeal Board

Copyright and Trademark and Intellectual Property

Article Snapshot


J. Thomas McCarthy


The Trademark Reporter, Vol. 108, No. 3, pp. 904-912, 2018


In 2017, the United States Court of Appeals for the Federal Circuit decided the Joseph Phelps Vineyards case, reversing the Patent and Trademark Office's Trademark Trial and Appeal Board’s (TTAB) decision in a case asking whether consumers would likely be confused by a new trademark.

Policy Relevance

When the holder of an older trademark alleges that a new mark will confuse consumers, the holder of the older trademark has a stronger case if the older mark is well known.

Main Points

  • Trademark cases in the United States hold that the "strength" of a "senior" (older) trademark is a key factor in deciding whether a “junior” (new) mark will confuse consumers; a strong trademark is one that is widely known, such as Apple (for computers) or Google (for search engines).
  • Similar marks are more likely to confuse consumers when the senior mark is well known because the consumer is more likely to assume that the junior mark is related to a familiar product.
  • In trademark dilution cases, courts assess the absolute strength of a mark, asking if a mark is a "famous" mark, and answering either "yes" or "no;" however, in confusion cases, courts assess a mark's relative strength on a sliding scale, asking whether the mark is strong enough to make it probable that the junior mark will cause confusion.
  • All the federal appellate courts in the United States consider the relative strength of the senior trademark in consumer confusion cases, except for the Federal Circuit, which uses the term “fame” rather than “strength.”
  • Confused by the Federal Circuit’s language, the TTAB has asked if the senior user's mark is or is not "famous" mark even in confusion cases, rather than asking if the mark is strong enough that the junior user's mark is likely to confuse consumers.
  • In the Joseph Phelps Vineyards case the Federal Circuit ruled that the TTAB was wrong in treating the issue of “fame” in confusion cases as having a “yes” or “no” answer, specifying that the proper question is whether the senior mark is relatively strong or weak in the context of the case.


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