February 2018

February 28, 2018February 27, 2018

Related Goods Watch 2018

The Trademark Trial and Appeal Board in In re Shurtape Technologies, LLC decided whether SHURSTICK for “painters [sic] masking tape” in Class 17 was likely to cause confusion with SHUR-STIK for “adhesives for applying floor tiles, floor coverings, carpets and wall coverings and wall covering adhesive activator” in Class 1; “wall size; primers for preparing surfaces to be painted” in Class 2; “spackling compounds; mortar patch compounds; asphalt patching compound made of an asphalt base” in Class 19, and SHUR-STIK PERMANENT PATCH for “patching compounds for walls and ceilings” in Class 19. The Board found that the most relevant goods to Applicant’s “painter’s masking tape” were “primers for preparing surfaces to be painted” and “spackling compounds.”

In comparing the goods, the issue is not whether purchasers would confuse Applicant’s and Registrant’s goods, but rather whether there is a likelihood of confusion as to the source of those goods. In re Cook Medical Technologies LLC, 105 USPQ2d 1377, 1380 (TTAB 2012). It is not necessary that they be identical or even competitive in nature in order to support a finding of likelihood of confusion. The goods need only be “related in some manner or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that they emanate from the same source.” 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007).

Where the goods at issue have complementary uses, and therefore are often used together or otherwise purchased by the same purchasers for the same or related purposes, such goods have generally been found to be sufficiently related such that confusion would be likely if they are marketed under the same or similar marks. See, e.g., In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984) (finding bread and cheese to be related because they are often used in combination, and stating: “Such complementary use has long been recognized as a relevant consideration in determining a likelihood of confusion.”); American Drill Bushing Co. v. Rockwell Mfg. Co., 342 F.2d 1019, 145 USPQ 144, 146 (CCPA 1965) (drill press and drill bushings/drill bushing liners are complementary products); In re Sela Products, LLC, 107 USPQ2d 1580, 1587 (TTAB 2013) (surge protectors, wall mounts and brackets complementary goods because purchasers are likely to encounter both during course of purchasing a television, audio or home theater system); Polo Fashions, Inc. v. La Loren, Inc., 224 USPQ 509, 511 (TTAB 1984) (finding bath sponges and personal products such as bath oil and soap to be closely related because they are complementary goods that are likely to be purchased and used together by the same purchasers).

Based on the evidence of record, the Board found that Applicant’s painter’s masking tape was related to the Registrant’s spackling compound and primers. This decision demonstrates again that International Class Numbers are not what is important. Applicant’s goods were classified in Class 17 and the Registrant’s goods were classified in Classes 2 and 19. The heading for Class 19 is “building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal.” The heading for Class 17 is “rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal.”

If you rely on the headings to make your determination about relatedness, you would likely conclude that the goods in Class 17 are unrelated to the goods in Class 19. But as we see in this case, your intuition would be wrong. That is why it is important to look at prior case law when making the relatedness of goods decision, which is what BOB does.

www.trademarkbob.com

February 27, 2018February 26, 2018

Rebranding Report: MONI Rebrands to Brink’s Home Security

Security Sales & Integration reported that after rebranding from Monitronics to MONI less than two years ago, MONI became the exclusive licensee of the Brink’s Home Security brand. Brink’s Home Security was spun off from The Brink’s Company in 2008 and changed its corporate name to Broadview Security in 2009 as a requirement of the spinoff. Broadview Security was acquired by Tyco International 2010, and its services were transitioned to the ADT brand. There are two federal registrations for the BRINK’S HOME SECURITY mark, which are owned by Brink’s Network.

MONI is one of the largest home security companies in the U.S. with about one million subscribers. Peter Giacalone – a Security Sales & Integration columnist – opined that the reason MONI pulled the plug on its rebrand so fast was because “[t]he MONI brand really had no great impact or history. It was a good thought at the time, but pales in comparison to resurrecting the Brink’s brand.” First year royalties for the BRINK’S HOME SECURITY mark are reported to be about $5 million.

This story demonstrates what we discussed in a prior post that brand drives revenue. If you have the opportunity and financial means to step into the shoes of a recognized brand, it may be hard to turn that opportunity down, which is what MONI apparently was presented with.

www.trademarkbob.com

February 26, 2018February 25, 2018

Land Rover’s Brand Extension Into Mobile Phones

Land Rover introduced a LAND ROVER brand mobile telephone. From a trademark perspective, brand extensions help to increase the conceptual strength of a mark. The more opportunities there are for consumers to encounter a mark, the stronger the law will deem the mark to be. And strong marks are entitled to a broader scope of protection not just in terms of the type of goods and services that could create a likelihood of confusion but also less similarity with a subsequent mark.

However, in an earlier post, we talked about treating a brand extension like it is the first time you are using the mark. Do you think LAND ROVER followed this advice? CLICK HERE to see if LAND ROVER followed this advice.

www.trademarkbob.com

February 23, 2018February 22, 2018

The Importance of Context in Trademark Law

An often overlooked but important consideration in almost every trademark decision is context. When trademark owners consider potential trademark issues in a vacuum, they loose the forest for the trees. Said another way, when a trademark owner sees him or herself as a hammer, then everything looks like a nail.

The importance of context is most evident when considering the impact of third-party registrations on the availability of a prospective mark. Generally, the existence of third-party registrations cannot justify the registration of another mark that is so similar to a previously registered mark as to create a likelihood of confusion, or to cause mistake, or to deceive. E.g., In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1272 (TTAB 2009). However, third-party registrations may be relevant to show that a mark or a portion of a mark is descriptive, suggestive, or so commonly used that the public will look to other elements to distinguish the source of the goods or services. See, e.g., In re Hartz Hotel Servs., Inc., 102 USPQ2d 1150, 1153-54 (TTAB 2012).

But the existence of a registration alone is insufficient to establish how the public may perceive a portion of the mark. The registrations must be backed up by evidence of use. Evidence of third-party use falls under the sixth du Pont factor – the “number and nature of similar marks in use on similar goods.” In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). If the evidence establishes that the consuming public is exposed to third-party use of similar marks on similar goods, it “is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection.” Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373-74, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005).

Moreover, it is important that the context of the use evidence support how the public may perceive the mark. Using the restaurant industry as an example, if the use evidence consists of a hand full of single-location restaurants, then it makes it more difficult to conclude how the public may perceive the mark. Similar problems exist when websites are offered without any supporting traffic data.

As searchers, we should always keep our eyes on context when reviewing search results.

www.trademarkbob.com

February 22, 2018February 21, 2018

Foreign Priority in the Trademark Search Process

Under Section 44(d) of the Lanham Act, a party that files a foreign trademark application in a qualifying country can file a trademark application in the United States within six months and claim its foreign filing date as its priority date in the United States. This presents an interesting issue for trademark searchers in the United States. Should we be searching available foreign databases as part of our search due diligence? And if yes, then where should we search?

There are a lot of countries that are members of a treaty with the United States that would afford them the benefit of a priority claim in the United States. The World Intellectual Property Organization offers a global trademark search engine for conducting trademark searches. While this can be a great resource, as searchers we can only look for similar marks. We are left to our intuition to try and determine if an conflict may exist with particular goods or services.

Trademark rights are territorial. Therefore, each country will have its own interpretation of what constitutes infringement including what goods or services are related. For those countries that consider relatedness of goods and services as part of the infringement analysis, it is inevitable that different opinions on the subject will arise.

Searching the WIPO trademark search engine as part of the trademark search due diligence should be treated like searching the Internet generally. If you find a trademark that is similar and has been filed in a foreign country, it deserves further investigation to determine if a filing in the United States is likely. But the primary focus should be the principal register of the United States Patent and Trademark Office.

www.trademarkbob.com

February 21, 2018February 20, 2018

Freebie Trademark Search: TARRACO for Automobiles

The car manufacturer Seat, SA recently used a survey format to select the name of its new SUV. The participants chose the name TARRACO. 146,124 individuals participated in the survey representing 134 countries.

Seat, SA is s Spanish automobile manufacturer headquartered in Martorell, Spain. Seat sells its automobiles worldwide except the United States, Canada, Hong Kong, Macau, Australia, and India. BOB wondered if Seat, SA decided to sell, for the first time, its TARRACO SUV in the United States, would it be able to? We used BOB to search the mark TARRACO with “automobiles.” We inputed TAR$ OR $ACO in the Wild Card Search Field because we want to look for any marks beginning with TAR or ending with ACO. You can see BOB run this search HERE.

After watching the video, leave a comment and let us know if you think the TARRACO name is available for “automobiles” in the United States.

www.trademarkbob.com

February 20, 2018February 19, 2018

Related Goods Watch 2018

In In re Louis Vuitton Malletier, the Trademark Trial and Appeal Board decided whether Louis Vuitton Malletier’s APOGEE mark was likely to cause confusion with the prior registered mark APHOGEE both for beauty care and personal products.

The Trademark Trial and Appeal Board stated that likelihood of confusion must be found as to the entire class if there is likely to be confusion with respect to any good that comes within the identification of goods in that class. In re C.H. Hanson Co., 116 USPQ2d 1351, 1355 (TTAB 2015) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981)). For searchers, this is important to remember especially if you an encounter a foreign registration that generally include laundry lists of goods and services. If a foreign registration is the one that may potentially block the registration of your mark, then you should investigate of the use of that mark. If not use is found, then a partial cancellation proceeding may necessary to clear the way for you to move forward with your mark.

The Trademark Trial and Appeal Board also stated that “[b]ased on the identifications themselves, the involved goods fall under the general category of beauty and personal care products. This, standing alone, does not suffice to show relatedness since there is no per se rule in this regard.” As searchers it is important to understand the limitations of our intuition. Our habit is to broadly categorize goods and service and then conclude those broadly categorized goods or services are related. However, based on what the Trademark Trial and Appeal Board has said, intuition is simply a guess and the reality is the searcher needs to look deeper to uncover true relatedness.

It also underscores what we discussed in a prior post; namely, that it is relatedness of the goods not International Class numbers that matter.

www.trademarkbob.com

February 19, 2018February 18, 2018

Don’t Ever Go Against the Trademark Family

Recently, Jonathan Ball – CEO and Founder of WANT branding – reported that WeWork was building a family of “WE” marks. He identified the following marks associated with WeWork: WeLive, WeGrow, WeLove, WeLearn, WeMove, and WeWorld. As a trademark searcher, when you see another party attempting to create a family of marks, that should raise your antenna.

The United States Court of Appeals for the Federal Circuit has defined a family of marks as follows:

“A family of marks is a group of marks having a recognizable common characteristic, wherein the marks are composed and used in such a way that the public associates not only the individual marks, but the common characteristic of the family, with the trademark owner. Simply using a series of similar marks does not of itself establish the existence of a family. There must be a recognition among the purchasing public that the common characteristic is indicative of a common origin of the goods.”

J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1891 (Fed. Cir. 1991).

This significance of having a family of mark is that the scope of rights is broadened. This means that it is more likely that consumers will assume a similar mark is part of the family. It also means that the owner of the family is likely to be more aggressive if an opposition proceeding becomes necessary.

Even though seeing a number of similar marks owned by the same trademark owner should get on your radar, it should also signal you to dig more to confirm the family exists. One of the most overlooked requirements to the existence of the family is that the marks are promoted together as a family. Generally, trademark owners trying to build a family mistakenly believe that registration alone is enough to create the family.

www.trademarkbob.com

February 16, 2018February 15, 2018

I’m Stuck: How to Select Goods and Services Descriptions for New Technology

BOB is starting a new article series today called “I’m Stuck.” These articles will feature helpful tips on problems that can arise during the search process. The first “I’m Stuck” tip concerning finding the right goods or services description for new technology.

New technologies are continuously being introduced to the mark. And innovation moves faster than the trademark office. New technologies can be difficult to describe and classify; thus, making the search process more difficult. However, what does not change are the broader categories the new technologies belong too. For example, artificial intelligence is computer software having a unique, functional trait. Cryptocurrency is a different form of currency, which is a type of financial service.

Here are a couple tips for finding the right description to search new technology:

Review competitor websites. Seeing how your competitors are describing their goods or services can clue you into to how broadly the new goods or services are being defined. The key is to pay attention to the text that is setting up the generic term for the actual good or service.
Use the United States Patent and Trademark Office. Odds are you are not the first person to try to protect a mark for the new technology. Use the “Structured” search option in the Trademark Electronic Search System. Enter the generic term of the new technology and select Goods & Services from the dropdown menu. Look at the records returned from the search to see how others described the new technology and use the broader description when conducting your search.

It will take a little time upfront to find the right description to use in a search when dealing with new technology. But that effort will pay dividends when it comes to the thoroughness of your search.

www.trademarkbob.com

February 15, 2018February 14, 2018

Freebie Search: Mattel’s DOS card game

Mattel is launching a sequel to the UNO card game called DOS. On August 1, 2017, Mattel filed a intent-to-use trademark application for DOS in connection with “toys and games.” On October 11, 2017, the United States Patent and Trademark Office issued an office action against the registration of Mattel’s DOS mark on the ground that it is likely to cause confusion with a prior registered, identical mark DOS for the identical “card games.”

Using BOB to search DOS with “games” would have revealed the identical mark that was cited against the DOS application:

BOB would have returned a red light since Mattel’s application would not have been part of the search results. Since DOS is a Spanish word for TWO and after starting with a broad description, it would have made sense to run a second search with the “cards, playing” description. When this search is run, Mattel would have learned that the cited mark is peacefully co-existing with a number of TWO marks for card games:

This should have alerted Mattel to the fact that DOS for “games” was likely to get a refusal from the trademark office. But DOS and another term for a more narrowly tailored identification of goods description, may avoid a refusal.

Some times is takes a couple searches to see the full picture, which is why BOB allows you to change the identification of goods description up to 2 times after you run the first search for free.