United States Court of Appeals 

for the Federal Circuit ______________________ 

JUICE GENERATION, INC.,

Appellant

v.

GS ENTERPRISES LLC,

Appellee

______________________ 

2014-1853

______________________ 

Appeal from the United States Patent and Trademark 

Office, Trademark Trial and Appeal Board in No. 

91206450.

______________________ 

Decided: July 20, 2015

______________________ 

NIGAMNARAYAN ACHARYA, Seyfarth Shaw LLP, Atlanta, GA, argued for appellant. Also represented by 

MICHAEL H. BANIAK, Chicago, IL.

JUSTEN S. BARKS, Craft Chu PLLC, Houston, TX, argued for appellee. Also represented by LOREN JEREMY 

CRAFT. 

_______________________ 

Before NEWMAN, REYNA, and TARANTO, Circuit Judges.
2 JUICE GENERATION, INC. v. GS ENTERPRISES LLC

TARANTO, Circuit Judge.

Juice Generation applied to the Patent and Trademark Office to register a mark consisting of “PEACE 

LOVE AND JUICE” and a design for use with its juice 

bar services. GS Enterprises opposed the application on 

the ground that Juice Generation’s mark was likely to 

cause confusion with its own family of marks, all of which 

contain the phrase “PEACE & LOVE” and are registered 

for use with restaurant services. The Trademark Trial 

and Appeal Board sustained the opposition and refused to 

register Juice Generation’s mark. We conclude that the 

Board did not adequately assess the weakness of GS’s 

marks and did not properly consider the three-word 

combination of Juice Generation’s mark as a whole in 

comparing it to the two-word combination in GS’s marks. 

We therefore remand for further proceedings.

BACKGROUND

Juice Generation operates a chain of juice bars in the 

New York City area. Under 15 U.S.C. § 1051(b), it applied to the PTO in 2012 to register the following mark on 

the principal register in connection with “[j]uice bar 

services”:
JUICE GENERATION, INC. v. GS ENTERPRISES LLC 3

U.S. Trademark Application Serial No. 85549820 (filed 

Feb. 22, 2012). The application disclaimed the word 

“juice.” Id.

GS owns four related registrations, each incorporating 

the phrase “PEACE & LOVE,” all on the principal register, and all in connection with “[r]estaurant services”: 

“P & L PEACE & LOVE,” Registration No. 3291917; “ALL 

YOU NEED IS PEACE & LOVE,” Registration No. 

3291918; “PEACE & LOVE,” Registration No. 3713785; 

“P & L PEACE & LOVE NEW YORK,” Registration No. 

3885867 (disclaiming “New York”). Two of the marks also 

include designs: 

GS opposed Juice Generation’s application under 15 

U.S.C. § 1052(d), arguing that Juice Generation’s “PEACE 

LOVE AND JUICE” mark created a likelihood of confusion with GS’s family of marks.

The Trademark Trial and Appeal Board evaluated the 

existence of a likelihood of confusion by following our 

predecessor court’s non-exhaustive listing of thirteen 

considerations in In re E. I. DuPont DeNemours & Co., 

476 F.2d 1357, 1361 (CCPA 1973). The Board determined 

that the similarity of the marks, the similarity of the 

services, the similarity of the trade channels, and the 

similarity of the buyers and purchasing conditions all 

pointed to a likelihood of confusion, whereas the number 
4 JUICE GENERATION, INC. v. GS ENTERPRISES LLC

of similar marks in use was neutral or at most pointed 

slightly against a likelihood of confusion. The Board also 

considered that Juice Generation had been using its 

“PEACE LOVE AND JUICE” mark for several years and 

yet the record contained no evidence of actual confusion, 

but the Board found that, on the facts, “[t]he lack of 

evidence of actual confusion carries little weight” on the 

question of likely confusion, because there was no evidence “to establish that the parties’ use of their respective 

marks has been at such a level that there have been 

meaningful opportunities for actual confusion to have 

occurred among purchasers.” GS Enters. LLC v. Juice 

Generation, Inc., No. 91206450, 2014 WL 2997639, at *8

(T.T.A.B. June 18, 2014). 

When comparing Juice Generation’s mark to GS’s 

marks, the Board first identified the words of the mark, 

rather than its design, as the dominant feature, and then 

further zeroed in on “PEACE LOVE” as “[t]he dominant 

portion of [Juice Generation’s] mark.” Id. at *5. It concluded that “[t]he dominant portion of [Juice Generation’s] mark, PEACE LOVE, and the entirety of [GS’s] 

mark PEACE & LOVE are virtually identical in appearance and sound.” Id. Then, recognizing that it “must 

consider [Juice Generation’s] mark in its entirety, not 

merely the dominant portion,” the Board declared that 

“the additional disclaimed word ‘JUICE’ and nondistinctive design features do not serve to sufficiently 

distinguish [Juice Generation’s] mark from [GS’s] standard character mark PEACE & LOVE.” Id. at *6. The 

Board observed that GS’s standard character mark was 

not limited by font, size, or color or to horizontal or vertical display, but it did not elaborate on its consideration of 

the three-word combination “PEACE LOVE AND JUICE” 

in its entirety. Id. at *5–6.

The Board also considered the testimony of Juice 

Generation’s founder regarding third-party uses of similar 

marks—“Peace Love and Pizza,” “Peace Love and Pop-
JUICE GENERATION, INC. v. GS ENTERPRISES LLC 5

corn,” and more in a similar vein.1 Id. at *6. But the 

Board determined that this evidence did not enable it “to 

find that customers have become conditioned to recognize 

that other entities use PEACE AND LOVE marks for 

similar services,” which would have cut against a likelihood of confusion. Id. at *7.

Finally, the Board reviewed statements made by GS 

during the prosecution of its own marks, which might 

have demonstrated GS’s own belief that the words “peace” 

and “love” lack distinctiveness. Id. But the Board gave 

those statements little weight. Id.

On balance, the Board decided, the DuPont factors 

favored the conclusion that “consumers familiar with 

[GS’s] ‘restaurant services’ rendered under the mark 

PEACE & LOVE would be likely to mistakenly believe, 

1 Examples of registered or unregistered marks in 

the record include the following: “PEACE LOVE 

NOODLES HE AI MIAN,” “PEACE LOVE AND PIZZA,” 

“PEACE LOVE YOGURT,” “PEACE, LOVE & ICE 

CREAM,” “PEACE, LOVE AND LITTLE DONUTS,” 

“PEACE.LOVE.DÖNER,” “PEACE, LOVE & BEER,” 

“PEACE, LOVE, AND CHOCOLATE,” “PEACE LOVE & 

OATS,” “PEACE. LOVE. & GOOD FOOD.,” “PEACE, 

LOVE AND FRENCH FRIES,” “PEACE, LOVE & 

CUPCAKES,” “PEACE LOVE BURRITOS,” “PEACE, 

LOVE, AND BURGERS,” “PEACE · LOVE · 

PANCAKES,” “PEACE LOVE & BARBECUE,” “PEACE, 

LOVE & CRUNCH,” “PEACE LOVE GRANOLA,” 

“PEACE, LOVE AND PINOT,” “PEACE. LOVE. 

TREATS.,” “PEACE, LOVE, AND CHOPS,” “PEACE, 

LOVE, AND HOT DOGS,” “PEACE. LOVE. PASTA.,” 

“PEECE LUV CHIKIN,” “PEACE, LOVE & 

CHEESECAKE,” “PEACE LOVE AND APPLE PIE.” 

Eight of those marks were particularly featured in testimony by Juice Generation’s founder. 

 
6 JUICE GENERATION, INC. v. GS ENTERPRISES LLC

upon encountering [Juice Generation’s] mark PEACE 

LOVE AND JUICE and design for ‘juice bar services,’ that 

the services originated from or are associated with or 

sponsored by the same entity.” Id. at *9. The Board 

therefore sustained the opposition and refused to register 

Juice Generation’s mark.

Juice Generation appeals that decision. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(B).

DISCUSSION

The Board’s ultimate conclusion regarding a likelihood of confusion—which is a ground for Board refusal to 

register a mark, 15 U.S.C. § 1052(d)—is a question of law 

that we review de novo. StonCor Grp., Inc. v. Specialty 

Coatings, Inc., 759 F.3d 1327, 1331 (Fed. Cir. 2014). This 

legal conclusion is based on underlying factual findings, 

which we review for substantial evidence. Id. “Substantial evidence is more than a mere scintilla. It means such 

relevant evidence as a reasonable mind might accept as 

adequate to support a conclusion.” Consol. Edison Co. v. 

N.L.R.B., 305 U.S. 197, 229 (1938). 

Likelihood of confusion must be analyzed on a caseby-case basis, considering all evidence actually relevant to 

that inquiry, as stated by DuPont’s final, catch-all item in 

its list of potentially relevant considerations. 476 F.2d at 

1361; see also Coach Servs., Inc. v. Triumph Learning 

LLC, 668 F.3d 1356, 1366 (Fed. Cir. 2012) (DuPont’s 

specific items are not exhaustive of inquiry); M2 Software, 

Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382 (Fed. Cir. 

2006) (even within DuPont list, only factors that are

“relevant and of record” need be considered). In this case, 

we agree with Juice Generation that the Board inadequately assessed and weighed the strength or weakness of 

GS’s marks—a consideration that is connected to “the 

number and nature of similar marks in use on similar 

goods,” identified in DuPont, 476 F.2d at 1361, and is in 

any event probative of the likelihood of confusion—and 
JUICE GENERATION, INC. v. GS ENTERPRISES LLC 7

gave inadequate consideration to Juice Generation’s 

three-word combination in its “entiret[y],” id., as distinct 

from GS’s two-word combination. Both errors are significant given the evidence in this case, which includes a 

substantial number of third-party marks incorporating 

the phrase “peace and love” in connection with restaurant 

services or food products, the bulk of which are threeword phrases much like Juice Generation’s mark.

A 

As the Board understood, sufficient evidence of thirdparty use of similar marks can “show that customers . . . 

‘have been educated to distinguish between different . . . 

marks on the basis of minute distinctions.’” 2 McCarthy 

on Trademarks and Unfair Competition § 11:88 (4th ed.

2015) (quoting Standard Brands, Inc. v. RJR Foods, Inc., 

192 U.S.P.Q. 383 (T.T.A.B. 1976)). More broadly, evidence of third-party use bears on the strength or weakness of an opposer’s mark. See Palm Bay Imps., Inc. v. 

Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 

F.3d 1369, 1373 (Fed. Cir. 2005). The weaker an opposer’s mark, the closer an applicant’s mark can come without causing a likelihood of confusion and thereby invading 

what amounts to its comparatively narrower range of 

protection. Id. (“Evidence of third-party use of similar 

marks on similar goods is relevant to show that a mark is 

relatively weak and entitled to only a narrow scope of 

protection.”); In re Coors Brewing Co., 343 F.3d 1340, 

1345 (Fed. Cir. 2003) (third-party use can establish that 

mark is not strong); Fleetwood Co. v. Mende, 298 F.2d 

797, 799 (CCPA 1962) (“Where a party uses a weak mark, 

his competitors may come closer to his mark than would 

be the case with a strong mark without violating his 

rights.”).

Although Juice Generation introduced evidence of a 

fair number of third-party uses of marks containing 

“peace” and “love” followed by a third, product-identifying 
8 JUICE GENERATION, INC. v. GS ENTERPRISES LLC

term, see note 1, supra, the Board discounted the evidence 

because there were no “specifics regarding the extent of 

sales or promotional efforts surrounding the third-party 

marks and, thus, what impact, if any, these uses have 

made in the minds of the purchasing public.” GS Enters., 

2014 WL 2997639, at *7. Accordingly, the Board determined it could not “find that customers have become 

conditioned to recognize that other entities use PEACE 

AND LOVE marks for similar services.” Id. The Board’s 

treatment of the evidence of third-party marks, we conclude, does not adequately account for the apparent force 

of that evidence.

The “specifics” as to the extent and impact of use of 

the third parties’ marks may not have been proven, but in 

the circumstances here, Juice Generation’s evidence is 

nonetheless powerful on its face. The fact that a considerable number of third parties use similar marks was 

shown in uncontradicted testimony. In addition, “[a] real 

evidentiary value of third party registrations per se is to 

show the sense in which . . . a mark is used in ordinary 

parlance.” 2 McCarthy on Trademarks and Unfair Competition § 11:90 (4th ed. 2015) (emphasis added). “Third 

party registrations are relevant to prove that some segment of the composite marks which both contesting 

parties use has a normally understood and wellrecognized descriptive or suggestive meaning, leading to 

the conclusion that that segment is relatively weak.” Id.; 

see Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 917 

(CCPA 1976) (even if “there is no evidence of actual use” 

of “third-party registrations,” such registrations “may be 

given some weight to show the meaning of a mark in the 

same way that dictionaries are used”). Marks that are 

descriptive or highly suggestive are entitled to a narrower 

scope of protection, i.e., are less likely to generate confusion over source identification, than their more fanciful 

counterparts. See, e.g., Nat’l Data Corp. v. Computer Sys. 

Eng’g, Inc., 940 F.2d 676, at *2 (Fed. Cir. 1991) (un-
JUICE GENERATION, INC. v. GS ENTERPRISES LLC 9

published); Drackett Co. v. H. Kohnstamm & Co., 404 F.2d 

1399, 1400 (CCPA 1969) (“The scope of protection afforded 

such highly suggestive marks is necessarily narrow and 

confusion is not likely to result from the use of two marks 

carrying the same suggestion as to the use of closely 

similar goods.”).

In the present case, the Board overlooked this aspect 

of the inquiry by insisting on specifics as to the thirdparty use. It never inquired whether and to what degree 

the extensive evidence of third-party use and registrations

indicates that the phrase PEACE & LOVE carries a 

suggestive or descriptive connotation in the food service 

industry, and is weak for that reason. See, e.g., Anthony’s

Pizza & Pasta Int’l, Inc., 95 U.S.P.Q.2d 1271, at *8

(T.T.A.B. Nov. 10, 2009) (“The testimony, third-party 

registrations, and telephone listings are sufficient to show 

that the name ‘Anthony’s’ has been extensively adopted, 

registered and used as a trademark for restaurant services, in particular for Italian restaurants and pizzerias, 

and therefore that ‘Anthony’s’ has a significance in this 

industry. Thus, the evidence corroborates the testimony 

that ‘Anthony’s’ suggests an Italian restaurant or even a 

New York style Italian restaurant. As a result, a mark 

comprising, in whole or in part, the name ‘Anthony’s’ in 

connection with restaurant services should be given a 

restricted scope of protection.”). A proper likelihood-ofconfusion inquiry requires such consideration—which is 

not barred by the fact that GS’s marks are registered. See 

Petro Stopping Ctrs., L.P. v. James River Petroleum, Inc., 

130 F.3d 88, 92 (4th Cir. 1997).

Such consideration was particularly important in this 

case because of statements GS made to the PTO in successfully applying for registration of one of its marks. An 

examiner initially denied registration of GS’s “PEACE & 

LOVE” mark due to a likelihood of confusion with the 

mark “PEECE LUV CHIKIN.” See J.A. 3012–13. GS 

responded that its mark conveyed a “different overall 
10 JUICE GENERATION, INC. v. GS ENTERPRISES LLC

impression” because its “mark, as applied to restaurant 

services, elicits in the consumer an overall commercial 

impression of a restaurant that has a theme and atmosphere of the counterculture prevalent in the 1960’s and 

1970’s.” J.A. 3013. Although estoppel based on prosecution of an application has played a more limited role for 

trademarks than for patents, see Anthony’s, 95 U.S.P.Q.2d 

1271, at *12, aff’d, 415 F. App’x 222 (Fed. Cir. 2010) (not 

mentioning estoppel); see also 6 McCarthy on Trademarks 

and Unfair Competition § 32:111 (4th ed. 2015), we have 

recognized that such comments have significance as “facts 

‘illuminative of shade and tone in the total picture confronting the decision maker,’ ” GS Enters., 2014 WL 

2997639, at *7 (quoting Interstate Brands Corp. v. Celestial Seasonings, Inc., 576 F.2d 926, 929 (CCPA 1978)); see 

also Stone Lion Capital Partners, L.P. v. Lion Capital 

LLP, 746 F.3d 1317, 1322 (Fed. Cir. 2014). Other courts 

have afforded even greater weight to such statements. 

E.g., Freedom Card, Inc. v. JPMorgan Chase & Co., 432 

F.3d 463, 476 (3d Cir. 2005). GS’s comments therefore 

support Juice Generation’s argument that “PEACE & 

LOVE” is suggestive or descriptive.

For the foregoing reasons, we conclude that the Board 

gave inadequate consideration to the strength or weakness of GS’s marks. See Elec. Design & Sales, Inc. v. Elec. 

Data Sys. Corp., 954 F.2d 713, 718 (Fed. Cir. 1992) (noting the Board’s duty to consider all evidence when evaluating the likelihood of confusion between marks). “[T]he 

strength of a mark is not a binary factor.” In re Coors, 

343 F.3d at 1345. It “varies along a spectrum from very 

strong to very weak.” Id. The Board here did not conduct 

an analysis of all evidence relevant to where on that 

spectrum GS’s marks fall and the resulting effect on the 

overall likelihood-of-confusion determination. We remand 

for the Board to undertake this inquiry in the first instance. In re Nett Designs, Inc., 236 F.3d 1339, 1341 (Fed. 

Cir. 2001) (“Placement of a term on the fanciful-
JUICE GENERATION, INC. v. GS ENTERPRISES LLC 11

suggestive-descriptive-generic continuum is a question of 

fact.”).

B 

Marks are compared along the axes of their “appearance, sound, connotation and commercial impression.” 

Dupont, 476 F.2d at 1361. “The commercial impression of 

a trade-mark is derived from it as a whole, not from its 

elements separated and considered in detail.” Estate of 

P.D. Beckwith, Inc., v. Comm’r of Patents, 252 U.S. 538, 

545–46 (1920). Our predecessor court explained that “a 

mark should not be dissected and considered piecemeal; 

rather, it must be considered as a whole in determining 

likelihood of confusion.” Franklin Mint Corp. v. Master 

Mfg. Co., 667 F.2d 1005, 1007 (CCPA 1981). That does 

not preclude consideration of components of a mark; it 

merely requires heeding the common-sense fact that the 

message of a whole phrase may well not be adequately 

captured by a dissection and recombination. See FCC v. 

AT&T Inc., 562 U.S. 397, 406 (2011) (making similar 

point about “personal privacy”). It is the mark in its 

“entiret[y]” that must be assessed. DuPont, 476 F.2d at 

1361.

The Board paid insufficient heed to that important 

principle in analyzing the three-word combination 

“PEACE LOVE AND JUICE.” The Board declared that 

“PEACE LOVE” is the “dominant” portion of that combination, compared that portion to GS’s “PEACE & LOVE” 

phrase, found that they are “virtually identical,” and then 

simply added that “the additional disclaimed word 

‘JUICE’ . . . do[es] not serve to sufficiently distinguish” 

Juice Generation’s mark from GS’s marks. GS Enters., 

2014 WL 2997639, at *5–6. That analysis is inadequate. 

It does not display any consideration of how the threeword phrase in Juice Generation’s mark may convey a 

distinct meaning—including by having different connotations in consumers’ minds—from the two-word phrase 
12 JUICE GENERATION, INC. v. GS ENTERPRISES LLC

used by GS. Cf. Packard Press, Inc. v. Hewlett-Packard 

Co., 227 F.3d 1352, 1357 (Fed. Cir. 2000) (“To be sure, the 

Board stated that it had considered the marks in their 

entireties. But this statement, absent further explanation 

of the agency’s reasoning, is simply insufficient for proper 

review of PTO factfinding.” (citation omitted)).

While the Board may properly afford more or less 

weight to particular components of a mark for appropriate 

reasons, it must still view the mark as a whole. In re 

Nat’l Data Corp., 753 F.2d 1056, 1058 (Fed. Cir. 1985)

(“[T]here is nothing improper in stating that, for rational 

reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion 

rests on consideration of the marks in their entireties.”). 

The Board did not err in giving less emphasis to the word 

JUICE when it noted that the term is generic. GS Enters., 2014 WL 2997639, at *5. But the Board did not set 

forth an analysis showing that it avoided the error of 

giving no significance to the term, which is impermissible 

notwithstanding that the term is generic and disclaimed. 

See Opryland USA Inc. v. Great Am. Music Show, Inc., 

970 F.2d 847, 851 (Fed. Cir. 1992) (Board erred by giving 

no weight to generic term); see also Shen Mfg. Co. v. Ritz 

Hotel, Ltd., 393 F.3d 1238, 1243 (Fed. Cir. 2004) (“The 

disclaimed elements of a mark, however, are relevant to 

the assessment of similarity. This is so because confusion 

is evaluated from the perspective of the purchasing public, which is not aware that certain words or phrases have 

been disclaimed.” (citation omitted)); Nat’l Data Corp., 

753 F.2d at 1059 (“The technicality of a disclaimer in 

National’s application to register its mark has no legal 

effect on the issue of likelihood of confusion. The public is 

unaware of what words have been disclaimed during 

prosecution of the trademark application at the PTO.”

(footnote omitted)). More generally, we see no analysis 

sufficient to demonstrate consideration of the mark as a 

whole. 
JUICE GENERATION, INC. v. GS ENTERPRISES LLC 13

A remand is needed for the Board to undertake that 

consideration, along with consideration of the evidence of 

third-party use. We cannot deem the Board’s errors 

harmless. The remand analysis might well call for an 

answer to the overall likelihood-of-confusion question

different from the answer the Board gave in the decision 

on review. 

CONCLUSION

For the foregoing reasons, we vacate the Board’s decision that there is a likelihood of confusion between GS’s 

and Juice Generation’s marks, and we remand for further 

proceedings consistent with this opinion.

Costs awarded to appellant. 

VACATED AND REMANDED