Identicalness in Trademark World

Identicalness in Trademark World


A recent case decision involving a real estate dispute is illuminating because it deals with the “likelihood of confusion” trademark issue where neither the two trademarks in dispute nor the respective goods/services were exactly the same. The lack of identicalness in terms of the trademarks themselves and the respective goods/services of the parties is often confounding and confusing for clients who think identicalness IS required for there to be legally actionable trademark infringement.

The Court of Appeals for the Federal Circuit (“CAFC”) upheld the Trademark Trial & Appeal Board's (“TTAB”) decision affirming a refusal to register the mark SPARK LIVING for a series of services related to the leasing of residential real estate due to a likelihood of confusion with the registered mark SPARK for brokerage, leasing, and management of commercial property, offices, and office space - In re Charger Ventures LLC, 2023 U.S.P.Q.2d 451 (Fed. Cir. 2023). The TTAB had found that despite some commercial weakness in the SPARK mark and despite the sophistication of relevant consumers, there was insufficient evidence to overcome the close similarity of the marks and the relatedness of the services. In other words, identicalness of the trademarks themselves and the goods/services of the respective parties was NOT necessarily required for there to be a legal basis for refusing registration of the SPARK LIVING; as a practical matter, nor would identicalness necessarily be required to mount a legally actionable trademark infringement claim in a court of law. (The whole opinion is, of course, a bit more complicated/detailed than that, but that’s really the gist of it).

Why is this important?
• First, clients (and often opposing counsel who don’t have a lot of experience with trademarks) are frequently confused by the legal standards for trademark infringement and they assume that identicalness of both the trademarks themselves and the respective good/services is required for there to be a valid claim of trademark infringement.
• This is often particularly confounding for defendants/potential defendants who are accused of trademark infringement who simply don’t get it or believe it.
• On the flip side, sometimes trademark owners who might have a valid claim for trademark infringement against a competitor forego pursuing their rights because they are misinformed about the legal standards.
• This decision – as with many others just like it – serves as a reminder that valid trademark infringement claims don’t necessarily require identicalness of the trademarks themselves and the goods/services of the respective parties.