Victory at the Trademark Trial and Appeal Board
On February 16, 2017, the Trademark Trial and Appeal Board (Board) sustained our client’s, the National Grange of the Order of Patrons of Husbandry, opposition of the trademark application for the mark NEWGRANGE PRESS based on a finding a likelihood of confusion. National Grange of the Order of Patrons of Husbandry v. Mulejewels Publ’ns Ltd., Opp. No. 91222078 (T.T.A.B. 2017).
The National Grange is the nation’s oldest general farm and rural public interest organization and has chapters nationwide. The National Grange owns numerous trademark registrations, including registrations for GRANGE covering “newsletters, brochures, and pamphlets about family life in farm, rural and suburban communities, national legislative affairs,” and “cookbooks.” Additionally, the National Grange has common law rights in the mark THE NEW GRANGE for a “general membership information newsletter” for local members and interested members of the media.
On May 26, 2015, the National Grange initiated a Board proceeding to oppose the registration of the mark NEWGRANGE PRESS for use in connection with “publication of books and reviews.” The applicant, Mulejewels Publications Ltd. (“Mulejewels”), is a publisher who intends to publish or offer for sale “novels, short stories, poems or compilations (reviews) of the same” under the mark NEWGRANGE PRESS.
After nearly a year and a half of litigation, including discovery, deposition, and briefing on the merits, the Board found in favor of the National Grange, holding that the NEWGRANGE PRESS mark is confusingly similar to the National Grange’s prior GRANGE registrations and common law trademarks under the du Pont analysis. In analyzing the similarity or dissimilarity of the marks, the Board agreed that the term GRANGE is the dominant part of Mulejewels’ mark and that consumers may associate Mulejewels’ NEWGRANGE PRESS with the National Grange. Additionally, while Mulejewels argued that the commercial impression differs because the mark is referencing a famous landmark in Ireland, the Board found that Mulejewels failed to show that this landmark is known to a substantial percentage of consumers in the United States. Therefore, the Board found the marks to be confusingly similar.
The Board also found that the nature of the goods and services, channels of trade, and class of purchasers were confusingly similar. As an affirmative defense, Mulejewels suggested that the NEWGRANGE PRESS application could be modified by limiting the goods or expressly excluding any goods identified in any registration currently held by the National Grange. The Board found that this amendment would not aid in the avoidance of confusion since the goods of both parties are closely related and an amendment would not change this relationship. Additionally, the Board found that the goods travel in the ordinary channels of trade for books and other publications, which include bookstores and Internet sites that sell books, such as Amazon and Barnes & Noble where the National Grange sells its publications. As a result of the analysis of the relevant du Pont factors, the Board found a likelihood of confusion between the NEWGRANGE PRESS mark and the National Grange’s marks.
The Board’s decision fortifies the strength of the National Grange’s trademarks and reinforces their broad scope of protection for goods and services beyond those specifically identified in federal registrations.