The United States Court of Appeals for the Federal Circuit is the primary reviewing Court for a TTAB decision. Certain standards of review apply when the case involves the likelihood of confusion test, which is the same test trademark searchers apply when evaluating the potential for a conflict with a prior trademark. Understanding how the Trademark Trial and Appeal Board must support its factual findings on the likelihood of confusion factors helps us as trademark searchers understand how the examining attorneys at the United States Patent and Trademark Office will support their conclusions on the same likelihood of confusion factors.
In Stratus Networks, Inc. v. UBTA-UBET Communications Inc., the Federal Circuit addressed the standard of review applied to the factual findings of the likelihood of confusion factors from a TTAB decision. The Board’s findings of fact are reviewed for substantial evidence. If the factual findings are supported by substantial evidence in the record, then the Federal Circuit will not disturb the Board’s finding.
At first blush, substantial evidence seems like a high burden. In reality, it’s pretty low. According to the Federal Circuit, substantial evidence is more than a mere scintilla and is such relevant evidence as a reasonable mind would accept as adequate to support a conclusion. Where two different conclusions may be warranted based on the evidence of record, the Board’s decision to favor one conclusion over the other is the decision that the Federal Circuit must sustain.
This substantial evidence standard of review helps to explain the trend where the Board will find a conceptually weak mark when the number of relevant third-party registrations is 10 or more. Anything less may not satisfy the substantial evidence standard of review. It also helps us understand that having good facts in favor of registering a trademark is not good enough if there are also good facts against registering a trademark.
This does not mean that as trademark searchers we need to be overly cautious evaluating the similarity of the marks or relatedness of goods likelihood of confusion factors. It also does not mean that trademark owners need to ensure a mark is 100% in the clear before adopting a particular mark.
What it means is that all involved parties need to understand that ties go to USPTO, which means there should be a plan “B.” In close cases, too often are all of a trademark owner’s eggs put in one basket. When the preferred mark is considered to be a close call, it’s worth having a backup ready if the worst should happen.