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In re Guild Mortgage Co.

United States Court of Appeals, Federal Circuit

January 14, 2019

IN RE: GUILD MORTGAGE COMPANY, Appellant

          Appeal from the United States Patent and Trademark Office, Trademark Trial and Appeal Board in No. 86709944.

          George Ehrich Lenz, Incorvaia & Associates, APC, Carlsbad, CA, argued for appellant. Also represented by Joel L. Incorvaia.

          Thomas L. Casagrande, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, argued for appellee Andrei Iancu. Also represented by Thomas W. Krause, Christina J. Hieber, Mary Beth Walker.

          Before Moore, Reyna, and Chen, Circuit Judges.

          Moore, Circuit Judge.

         Guild Mortgage Co. ("Guild") appeals a decision of the Trademark Trial and Appeal Board affirming the examiner's refusal to register the mark "GUILD MORTGAGE COMPANY" and design shown below based on a likelihood of confusion with the registered mark "GUILD INVESTMENT MANAGEMENT." Because the Board failed to consider relevant evidence and argument directed to DuPont factor 8, we vacate and remand.

         Background

         Guild is in the business of making mortgage loans and has used the mark "GUILD MORTGAGE COMPANY" since 1960. Guild was founded in San Diego, California, and has expanded to over 40 other states. It applied to register the mark "GUILD MORTGAGE COMPANY," and design, in International Class 36 for "mortgage banking services, namely, origination, acquisition, servicing, securitization and brokerage of mortgage loans." J.A. 1- 2; J.A. 32. The application states that color is not claimed as a feature of the mark and that the "mark consists of the name Guild Mortgage Company with three lines shooting out above the letters I and L": J.A. 2; J.A. 31.

         (Image Omitted)

         Registration was refused due to a likelihood of confusion between Guild's mark and the mark "GUILD INVESTMENT MANAGEMENT" registered in International Class 36 for "investment advisory services," which is owned by Guild Investment Management, Inc. ("Registrant"), an investment company in Los Angeles, California. The examiner concluded there was a likelihood of confusion based on her findings that the marks, nature of the services, and trade channels were similar. The Board affirmed those findings, concluding that, on balance, those factors outweighed the Board's finding that consumers "may exercise a certain degree of care in investing money, if not perhaps in seeking a mortgage loan." J.A. 10-11. Guild appeals. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(B).

         Discussion

         Section 2(d) of the Lanham Act provides that the Patent and Trademark Office 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." 15 U.S.C. § 1052(d). Whether a likelihood of confusion exists is determined using the factors set out in In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973). Likelihood of confusion is a question of law based on underlying factual findings made pursuant to the DuPont factors, which on appeal from the Board are reviewed for substantial evidence. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321 (Fed. Cir. 2014). Those factors are:

(1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
(2) The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection ...

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