The Trademark Trial and Appeal Board in In re Palermo Villa, Inc. held that frozen pizzas are related to restaurant services. The Trademark Office offered Internet evidence showing restaurants that sold pizzas through their physical locations and frozen pizzas through other retailers under the same brand. The Trademark Office also offered evidence of third-party registrations covering both restaurant services and frozen pizzas.
Applicant, on the other hand, attempted to offer statistical evidence of the relatively few restaurants that offer both a restaurant service featuring pizza and a frozen pizza sold in other retailers. However, the Board found the Applicant’s statistical arguments concerning rarity to be flawed and have little probative value. The Board also down played Applicant’s evidence of numerous third-party marks for either frozen pizza or restaurant services, not both. The Board conveniently cited the following passage from In re G.B.I. Tile and Stone Inc., 92 USPQ 1366, 1370 (TTAB 2009):
“There is no requirement for goods to be found related that all or even a majority of the sources of one product must also be sources of the other product. Therefore, evidence showing only that the source of one product may not be the source of another product does not aid applicant in its attempt to rebut the evidence of the examining attorney.”
Once the again, the Board is willing to ignore the marketplace reality when it comes to the use of a mark and instead base a refusal on the minority of use cases to deny an applicant a registration. Just another reason why paying attention to prior case decisions on relatedness is important when assessing the availability of a mark.
Arsenal Firearms has reportedly decided to change its name to Archon Firearms to avoid a trademark dispute. There are no details reported about what company is opposite the former Arsenal Firearms in this dispute, but BOB needed to know if the former Arsenal Firearms conducted a trademark search before adopting its name.
According to the Nevada Secretary of State, the former Arsenal Firearms was formed on February 1, 2016. If the former Arsenal Firearms had used BOB to search its name before adopting it, it would have learned that there was a prior owner of two federal trademark registrations for ARSENAL with the identical goods “firearms” that was registered in 2005. These registrations are owned by Arsenal AD.
This trademark dispute has delayed the distribution of the company’s new pistol, which according to the story has confused the former Arsenal Firearms’s customers. This story highlights an often overlooked consequence of a forced rebrand, which is the public relations headache it creates. In situations like this, it is not uncommon to lose customers a company worked very hard to acquire in the first place.
Moral of the story, search your names before adopting them.
Igor – a naming agency in Sausalito, CA – published a process for developing a name. They start with a taxonomy that includes a spectrum that goes from functional to invented to experimental to evocative. Igor’s taxonomy spectrum closely resembles the spectrum of distinctiveness in trademark law.
The spectrum of distinctiveness goes from generic to descriptive to suggestive to arbitrary to fanciful. Generic terms are nouns for things and receive no trademark protection. Descriptive marks immediately describe a feature, function, or characteristic of a good or service. Descriptive marks can acquire trademark status over time. Suggestive marks are like descriptive marks except that the mark suggest instead of immediately describe something about the good or service. Arbitrary marks are known words used in an uncommon way, and fanciful marks are make up terms.
As you move from left to right on the spectrum of distinctiveness, the more conceptually strength the mark possesses. You also expect to have fewer marks that may pose an issue to your proposed mark. Regardless of whether your mark is fanciful or descriptive, a trademark search must be conducted. However, knowing where on the spectrum your mark falls can at least set the expectation about what the search results may look like.
For example, if you are choosing from a list of “functional” – as characterized by Igor – or “descriptive” marks, you stand a better chance of getting a red light from BOB, than if you are choosing from a list of “inventive” – as characterized by Igor – or “fanciful” marks. The reason is that there are likely more trademark owners using or incorporating descriptive marks in their branding.
DBD International did a nice piece on the reasons for branding. Some involve merely modernizing an existing mark. However, some involve selecting a new name. So when does it make sense to select a new name? Fortunately, DBD International has 19 questions to ask to help make that decision.
There should be a 20th question. If you get through the 19 questions and decide a new name is appropriate, then you should make it your priority to search that new name first before adopting it. You should also consider working with a naming professional.
BOB wishes you and your family a safe and merry Christmas!
The Trademark Trial and Appeal Board in In re Ben Zour found that “coffee shops” are related to “restaurant services.” The Board found that the the definition of a coffee shop is encompassed by the definition of a “restaurant service,” and the applicant, in this case, conceded this. This concession was a big reason why the Board found relatedness, but the Board needs to pay more attention to the marketplace reality.
BOB is not aware of a coffee shop that would also be considered a restaurant nor is there a restaurant brand that expanded into a coffee shop. So to make a decision based on an interpretation of dictionary definitions ignores what is likely happening in the real marketplace. Maybe the hesitation of wading into the real world marketplace is because of the Supreme Court’s decision in B&B Hardware, and the prospect of the Board’s decision having preclusive effect in a subsequent proceeding. But trademark attorneys are looking for that specialized court to make these tough decisions because more often than not the nuances of a trademark infringement case get lost in district court litigation.
From a searching perspective, this reality means you need to pay attention to the breadth of some goods or services descriptions. But keep the marketplace reality in mind and the possibility of a petition for partial cancellation to narrow overly broad description to pave the way for a proposed mark.
The Trademark Trial and Appeal Board in In re C G Asset Management Pty Ltd recently held that the mark THE SAISON D’HERETIQUE for beer was confusingly similar to the registered mark HERETIC BREWING COMPANY also for beer. The applicant conceded that a definition of SAISON is a type of ale, but argued that SAISON also means “season” in French and that to French speakers SAISON D’HERETIQUE would be understood as “season of a heretic.”
The Board held that while its decision on the similarity of the marks must be based on the marks in their entirety, the only way to consider the mark in its entirety is to consider every word in it including all salient meanings of those words. Under the doctrine of foreign equivalents, foreign words from common languages are translated into English to determine genericness, descriptiveness, as well as similarity of connotation in order to ascertain confusing similarity with English word marks. However, there are limitations on the doctrine:
- If the foreign language is not common, the doctrine does not apply;
- When it is unlikely that an American buyer will translate the foreign mark and will take it as is, the doctrine does not apply; and
- The doctrine of foreign equivalents is a guideline, not a rule.
In the C G Asset Management case, the Board held that beer drinkers would under SAISON to mean a style of ale not “season.”
What this case teaches us about searching is that as searchers we need to know the market for the goods or services with which the mark will be used. If it is unlikely that a relevant consumer in a particular market is unlikely to stop and translate the foreign word, then we should be comparing the foreign word to the English word in terms of sight, sound, and meaning. That means some foreign words will be similar to English words in meaning only, and because of the differences in sight and sound, the marks overall create different commercial impressions.
In 2014, the San Diego Comic Convention sued the organizers of the Salt Lake Comic Convention for trademark infringement. San Diego won and Salt Lake was permanently enjoined from using COMIC CON and ordered to pay $20,000 to San Diego for corrective advertising.
If Salt Lake had used BOB to conduct a search prior to adopting SALT LAKE COMIC CON, they would have learned that while San Diego had federally registered SAN DIEGO COMIC CON, they also would have learned that DENVER COMIC CON was a pending application and this application was not refused registration based on SAN DIEGO COMIC CON.
At this point, Salt Lake would have had a decision to make. If the use of COMIC CON was essential to making its conference a success, it could device a strategy for dealing with a complaint from San Diego. It is important that at this point the decision is based on a rationale business decision and not on whether you have what appears to be the better argument. First, juries and even some judges are unpredictable. So even if you have the better case, that does not alway mean you will win. Second, even if you are right, that decision can end up costing you a lot of money and not having any real effect on your business.
Hard to imagine that Salt Lake needed to use COMIC CON to have a successful conference. But hopefully they went into the decision to use COMIC CON with eyes wide open. Nothing worse than being surprised with a demand letter.
The Trademark Trial and Appeal Board recently held in In re Northern Brewer, LLC that wine and kits for making wine are related goods. In determining whether an applicant’s goods are related to a registrant’s goods, it is not necessary that the goods of applicant and registrant be similar or competitive in character to support a holding of likelihood of confusion; it is sufficient for such purposes to establish that the goods are related in some manner or that conditions and activities surrounding marketing of these goods are such that they would or could be encountered by same persons under circumstances that could, because of similarities of marks used with them, give rise to the mistaken belief that they originate from or are in some way associated with the same producer.
The Examining Attorney made of record 18 active, third-party registrations showing that the same entity registered a single mark identifying wine and kits for making wine. The Examining Attorney also submitted Internet evidence of a few wineries that sold wine and wine making supplies. On this evidence, the Board concluded that wine and wine making kits are related.
This case demonstrates the sparse evidence the Board will rely on to make a finding of relatedness. The Internet evidence is not compelling with respect to what consumers will think about relatedness because when a consumer is in a winery, it knows the supplies are coming from that winery. What would have been more persuasive is if a liquor store sold both wine and wine making supplies. The same can be said about 18 third-party registrations.
Intuitively, wine and wine making kits do not appear to be related. They are more often than not sold in separate channels to different target customers. But that is why it is crucial to search the Trademark Office and consider the relatedness of goods factor when you do.
According to the Trademark Manual of Examining Procedure, use of a mark by a company related to the applicant is allowed to support the registration of mark. However, the USPTO does not require an application to specify if the applied-for mark is not being used by the applicant but is being used by one or more related companies whose use inures to the benefit of the applicant under §5 of the Act. So the applicant is not necessarily always the company using the applied for mark in the marketplace.
If the commentary over the last couple years surrounding trademark bullying taught us anything when it comes to clearing trademarks it is that the identified applicant matters. Some applicants are much more aggressive than others when it comes to enforcement. So searching the marketplace only for a similar mark may cause you to miss important information about who will actually direct any enforcement of that mark. You may find a mark that is close, but in your estimation not that close only to find out later that Kellogg or some other large company actually owns a federal registration for the mark.
It is another reason why using BOB to conduct a search of the USPTO Trademark Database is always necessary before launching a company or new product.