Most people are familiar with the Circle K stores as being convenience stores selling a wide variety of goods. Circle K states it operates over 10,000 stores in North America with 7000 of those in the United States. They also operate several thousand stores throughout Europe and Asia.
Circle K Stores Inc. (“Circle K”) owns several word and design trademark registrations related to retail grocery and convenience store services. Several of the design marks include the letter “K” with a circle around it, two of which shown below:
Medical Marijuana Inc. (“Medical”) filed a trademark application to register a design mark of the letter “K” with a circle around it as shown below:
The mark alleges use for marketing consultation and retail services for hemp-based products. During prosecution of the mark in the Trademark Office, Medical amended its mark to include only marketing and retail services for cosmetic products. This amendment made in response to an Office Action refusing the mark as being unlawful. It is unlawful to introduce food containing added CBD into interstate commerce or to market CBD as, or in, dietary supplements, regardless of whether the substances are hemp-derived. After the amendment, the Trademark Office sent the mark for publication.
Circle K recently instituted an opposition proceeding with the Trademark Trial and Appeal Board to oppose registration of Medical’s design mark based on a likelihood of confusion. They note prior dates of first use, constructive use, and filing dates of its trademarks as compared to any use date or the filing date of Medical’s mark. Circle K alleges a likelihood of confusion between the marks. Both marks use the letter “K” with a circle around it. Medical’s mark includes a leaf as part of the letter “K”. Accordingly, one question the TTAB may ask is whether the leaf is a dominant portion of the mark. If so, they also need to determine how much weight to afford to it.
The Examiner for TLP’s mark did not cite Small’s mark against them. However, this is not dispositive of a lack of likelihood of confusion. The Trademark Trial and Appeal Board will weigh the evidence presented by both sides and evaluate the similarity of the marks using the Dupont factors. Further, when examining a likelihood of confusion case, the goods need not be identical. The standard is whether an ordinary consumer would be confused as to the source of the goods. Even in cases with dissimilar goods, a likelihood of confusion can be found.
No, goods/services do not need to be identical. The standard is whether an ordinary consumer would be confused as to the source of the goods.