In Re: Guild Mortgage Co.

On January 14, 2019, the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) decided In Re: Guild Mortgage Co., holding the U.S. Patent and Trademark Office”™s (“USPTO”) Trademark Trial and Appeal Board (“TTAB”) must consider an applicant”™s evidence and arguments related to absence of actual confusion.

Guild Mortgage Co. (“Guild”) filed a trademark application in the United States Patent and Trademark Office (“USPTO”) to register the mark “GUILD MORTGAGE COMPANY.” The Examiner refused the registration, citing a likelihood of confusion with the registered mark “GUILD INVESTMENT MANAGEMENT.” In response, Guild argued that it and Guild Investment Management have coexisted in business in Southern California for over 40 years without any evidence of actual confusion. Guild supported its argument by submitting a declaration of its President and CEO stating Guild had never received communications from Guild Investment Management regarding infringement nor has Guild received any customer inquiries as to whether Guild was affiliated with Guild Investment Management. The Examiner rejected this argument in a final office action. The TTAB affirmed the Examiner”™s refusal to register Guild”™s mark. In its opinion, the TTAB did not address Guild”™s argument and evidence regarding the absence of actual confusion. Guild subsequently appealed to the Federal Circuit.

On appeal, Guild argued that the TTAB failed to address its arguments and evidence related to an absence of actual confusion. In response, the USPTO argued that the TTAB properly dismissed Guild”™s argument because in ex parte registration proceedings, the “uncorroborated statements of no known instances of actual confusion” of the party involved in the case are “of little evidentiary value.” Therefore, the USPTO argued Guild”™s argument and evidence were irrelevant.

The Federal Circuit stated 15 U.S.C. § 1052(d) provides that the USPTO may refuse to register a trademark if it so resembles a prior used or registered mark “as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive.” However, the Federal Circuit further stated that examiners and the TTAB must consider all evidence of record when determining whether there is likelihood of confusion. With respect to the USPTO”™s argument regarding the irrelevant nature of Guild”™s argument and evidence, the Federal Circuit again explained all evidence is first considered and then the appropriate weight given to each piece of evidence is determined.

Thus, the Federal Circuit concluded the TTAB erred by failing to consider Guild”™s argument and evidence in its final opinion. The Federal Circuit refused to assess the evidentiary weight of Guild”™s declaration. Accordingly, the Federal Circuit vacated the TTAB”™s decision and remanded the case back to the TTAB to properly consider Guild”™s evidence.