797 F.3d 1363 (Fed. Cir. 2015)
When many owners already use a similar element, the mark is weak and its protection narrow. How Jack Wolfskin used third-party paw-print registrations to reverse a likelihood-of-confusion finding.
The 30-second version
Some design elements are so common that no one owns them outright. A paw print on athletic clothing is one of them — and that is the lesson of Jack Wolfskin.
Jack Wolfskin, a German outdoor brand, applied to register an angled paw-print design for clothing and footwear. New Millennium Sports — owner of the KELME brand, whose logo also features a paw — opposed, and the TTAB found a likelihood of confusion. Jack Wolfskin appealed.
The Federal Circuit reversed the confusion finding. Faced with a record full of other paw-print marks owned by other companies for clothing, the court held the Board had given New Millennium’s paw far more protection than a crowded element deserves — and had failed to compare the marks as whole designs.
Jack Wolfskin seeks to register an angled paw-print design mark for clothing, footwear, and accessories.
New Millennium Sports opposes under §2(d), citing its registered KELME-and-paw mark; Jack Wolfskin counterclaims to cancel, alleging abandonment. Both the Board and the court reject abandonment: modernizing a logo does not abandon it, so long as the updated form is a “legal equivalent” conveying the same continuing commercial impression.
The Board rejects the abandonment claim and finds a likelihood of confusion, sustaining the opposition.
The court affirms on abandonment but reverses the likelihood-of-confusion finding, citing the crowded field of paw-print marks and the need to compare the marks as wholes.
Examiners and opposers often treat a shared element — a star, a crown, a paw — as if the senior user owns the whole idea of it. But protection tracks distinctiveness: when an element is everywhere, each individual use is weak, and small differences are enough to avoid confusion. The trap is letting one prior registration of a common element stand in for a monopoly it never had.
Prong 1 — the marks
Mark strength is part of the marks prong. A mark (or an element of it) crowded by third-party use is conceptually weak and gets a narrow scope of protection.
Prong 2 — the goods
Comparison is of the marks as wholes. A shared element cannot be dissected out and compared in isolation; the word and design components together create the commercial impression.
Jack Wolfskin is a marks-prong case about scope, not a goods-relatedness case. The third-party evidence here goes to how weak the cited element is — the opposite use from In re Thor Tech, where third-party registrations went to whether the goods are related. Same kind of evidence, different DuPont factor. (The two “prongs” are a teaching shorthand: §2(d) is formally the 13-factor DuPont balancing test, and these are simply the factors that usually dominate.)
These are the two factors that usually decide §2(d), but the governing standard is the full 13-factor DuPont likelihood-of-confusion test — any factor can control on the right record.
A crowded field of paw prints
Jack Wolfskin put in numerous third-party registrations and uses of paw-print designs for clothing — evidence that the paw element was common and weak.
The marks compared as wholes
New Millennium’s mark included the word KELME alongside its paw; the court faulted the Board for not weighing the marks in their entireties.
Narrow scope of protection
Because the element was weak, the cited mark was entitled to only a narrow scope — not enough to bar a differently-styled paw used with other matter.
“evidence of third-party use of similar marks on similar goods “is powerful on its face,” even where the specific extent and impact of the usage has not been established.”
The rule to memorize
A mark built on a common element is weak and entitled to only a narrow scope of protection — and a substantial record of third-party registrations and uses of that element is powerful evidence of weakness. Marks must still be compared as wholes, not dissected to the shared element.
The cited mark’s [element] is a weak, crowded element entitled to a narrow scope of protection. As in Jack Wolfskin Ausrüstung für Draußen GmbH v. New Millennium Sports, S.L.U., 797 F.3d 1363 (Fed. Cir. 2015), the attached [N] third-party registrations and uses of [element] for [goods] show that consumers are accustomed to distinguishing such marks by their other elements. Compared in their entireties, Applicant’s mark and the cited mark convey distinct commercial impressions.
Build the crowded-field record first — registrations and, where possible, evidence of actual use. Then pivot to comparing the full marks. The third-party evidence does the heavy lifting; the whole-mark comparison closes it.
NEW MILLENNIUM SPORTS, S.L.U. · Serial 74391365
The asserted registration — New Millennium Sports’ KELME-and-paw-print mark, Reg. 1856808 (1994), for clothing. Its paw design, and the word KELME the Board under-weighted, were the heart of the opposition.
Live USPTO records in GleanMark — click through for full prosecution history.
The complete TTAB record behind this decision — every filing and exhibit, the full timeline, and a one-click AI summary.
Open proceeding 91195604Jack Wolfskin sits alongside Juice Generation as the modern authority for the crowded-field argument. Together they tell applicants something liberating and humbling at once: you can borrow a common element, but you can never own it.
What is the “crowded field” argument in trademark law?
When many different owners already use a similar mark or element for similar goods, each individual mark is considered weak and gets only a narrow scope of protection. A new mark with small differences is then less likely to cause confusion.
What did Jack Wolfskin hold?
The Federal Circuit reversed a likelihood-of-confusion finding because the TTAB ignored extensive third-party paw-print registrations and uses (showing the element was weak) and failed to compare the marks in their entireties.
How is Jack Wolfskin different from In re Thor Tech?
Both rely on third-party registrations, but for different purposes: Jack Wolfskin uses them to show a mark element is weak (the marks prong), while Thor Tech uses them to show goods are not related (the relatedness prong).
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