May 2018 | BOB

May 31, 2018June 2, 2018

Restaurant Services are Related to Alcoholic Beverages

Honeyhole Sandwiches, Inc. filed a service mark application to register the mark HONEYHOLE SANDWICHES “restaurant with bar specializing in serving proprietary unique sandwiches, local beers and alcohol in a vibrant, eclectic environment.” This is a very detailed description to begin with when filing a trademark application, and usually you do not see much detail in a goods or services description until the trademark application examination requires it to overcome a registration refusal from the Trademark Office. Unfortunately, the detail voluntarily provided by Honeyhole Sandwiches at the beginning of the registration process did not prevent a registration refusal. The Trademark Office refused registration of the HONEYHOLE SANDWICHES mark on the ground that it was likely to cause confusion with previously registered mark HONEY HOLE for “alcoholic beverages except beers.”

In In re Honeyhole Sandwiches Inc., as it has stated so many times in the past, the Trademark Trial and Appeal Board said that the relatedness of the goods or services determination is based on the goods and services descriptions in the application and registrations at issue. The goods and services need not be identical to find likelihood of confusion. Rather, they need only be related in such a way that the circumstances surrounding their marketing would result in relevant consumers mistakenly believing that the goods and services originate from or are associated with the same source. In the case of food or beverage items and restaurant services, the TTAB looks for evidence of a specific commercial relationship between the goods and restaurant services that indicates consumers would be likely to believe an association exists between the specific food or beverage items and restaurant services.

Honeyhole Sandwiches argued that its identification of services specifically states that it specializes in sandwiches not alcoholic beverages. However, the Board pointed out that the services description, that Honeyhole Sandwiches voluntarily chose, also indicates that it serves “local beers and alcohol.” And to compound the problem for Honeyhole Sandwiches, its menu contains the label “Honeyhole Cocktails.” There was also evidence offered that showed restaurants private labeling their own alcoholic beverages. Even though Honeyhole Sandwiches does not specialize in alcoholic beverages, the Board found consumers were likely to mistakenly believe there was a connection between HONEY HOLE whiskey and Honeyhole Sandwiches restaurant.

What can we learn from this case as trademark searchers? First, it is another example of how our intuition can lead us astray when it comes to assessing the critically important relatedness of goods factor. Second, it is a reminder that we must search broadly during the search process. If we search with a too narrow description, we are setting ourselves up to miss something important. Third, we can add value to our search results by helping our clients with their risk tolerance. Clients appreciate not only identifying landmines, but also how to potentially diffuse or avoid them.

May 30, 2018June 25, 2018

Avoiding Analysis Paralysis when Conducting a Trademark Check

Siegel + Gale recently republished a post by Jason Hall on navigating the decision-making process. Jason’s advice is straight and to the point – make a damn decision already. Jason’s advice for picking a name translates into the trademark check task.

It is easy to get overwhelmed with the amount of data that needs to be considered in a trademark check. To start, there are millions of registered and pending trademarks in the United States Patent Office TESS database. Your job as a trademark seacher is to narrow this enormous list of marks down to a more manageable list of trademarks that are relevant to the trademark you are searching. From there, you may need to investigate the prosecution history of those marks in the smaller list to better understand how the USPTO is treating these marks and maybe even investigate how the marketplace is treating the marks.

All along the process, the hundreds of questions are swirling through your head: “is there a crowded field”; “am I okay if my mark differs from the other marks by a few letters”; “am I okay if I add a house mark”; “am I okay if I add a logo”; “are the goods related”; “will I really have an issue in the marketplace”; etc. The more trademarks you look at the more questions you have. And around and around you go until an hour or more has gone by and you realize you have ten plus marks to go on your list of proposed marks.

It is important to realize that there is no such thing as a perfect trademark search. In fact, J. Thomas McCarthy – a nationally renowned authority on trademarks – said in his well-known legal treatise McCarthy on Trademarks and Unfair Competition: “it is almost impossible to find out with total certainty whether anyone has previously used a non-registered trade name in the United States such that every possible conflict can be foreseen in advance. Thus, even an expensive and extensive trademark search can only provide a conditional guarantee that no conflicts exist. But [any] search is better than no search at all.”

Don’t strive for perfection. Instead, work on understanding your risk tolerance for the trademark you are searching. This will help you become more comfortable with the search results and the ultimate decision of when to move on to other aspects of the branding process.

May 29, 2018June 26, 2018

USPTO’s Guidance on 2 a Scandalous Meaning Trademarks

Trademarks containing a scandalous meaning are on the verge of being protectable by the federal government as registered trademarks. Section 2 a of the Lanham Act is under siege for a second time.

Section 2 a of the Trademark Act used to prohibit the registration as a trademark of any matter that:

“[c]onsists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute ***.”

Then, in 2016, the United States Supreme Court decided the In re Tam case holding that the disparagement provision violates the Free Speech Clause of the First Amendment. Accordingly, that a mark may “disparage . . . or bring . . . into contempt, or disrepute” is no longer a valid ground on which to refuse registration or cancel a registration. The portions of Trademark Manual of Examining Procedure (TMEP) §1203 that relate specifically to examination under the disparagement provision no longer apply. After the In re Tam decision, what was left of Section 2 a was:

“consists of immoral, deceptive, or scandalous matter; or matter which may . . . falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols ***.”

At the time of the In re Tam decision, the In re Brunetti case was pending, which concerned the constitutionality of the scandalous meaning aspect of Section 2 a. On December 15, 2017, the United States Court of Appeals for the Federal Circuit held in In re Brunetti that the scandalousness meaning provision of Section 2 a also violates the First Amendment of the Constitution because it impermissibly restricts free speech.

The Trademark Office has advised that it will continue to review applications for scandalousness until either the deadline to file a petition for writ of certiorari expires on July 11, 2018, the U.S. Supreme Court denies certiorari, or termination of the U.S. Supreme Court decision if certiorari is granted. In the meantime, applications refused on the ground of being scandalous will be suspended in the first office action.

What does this mean for trademark searchers? There may be a whole host of new trademarks you never thought you would need to pay attention to and now do. This probably will not happen on the Trademark Office database, but common law searching may become more challenging. It may become more challenging because you may have people unknowingly creating trademark rights in disparaging and scandalous meaning terms. You can certainly imagine a simple example of someone creating a line of t-shirts under a disparaging or scandalous meaning term not intending to create trademark rights but choosing the name solely for its shock value.

The similarity of the marks considers: visual similarity; phonetic similarity; and similar meanings. Maybe the meaning element is what will ultimately distinguish your client’s proposed mark from the other mark, but do you advise that the client invest in a brand knowing a potential issue with a disparaging or scandalous mark exists? A conflict may never come, but the person adopting a disparaging and scandalous mark is most likely an opportunist and may see his new trademark rights as an opportunity as well.

May 28, 2018May 25, 2018

Happy Memorial Day

BOB thanks every man and woman – and their families – for the sacrifice they gave for the United States of America. God bless you all.

May 25, 2018June 4, 2018

Avoid a Possible Attorney’s Fee Award with a Trademark Search

An attorney’s fee award became more likely following the U.S. Supreme Court’s decision in Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014), which provided an opening for a more liberal standard to award attorney’s fees in trademark cases. Octane Fitness was a patent case where the Supreme Court interpreted the Patent Act’s identical attorney fees language: “The court in exceptional cases may award reasonable attorney fees to the prevailing party.” 35. U.S.C. § 285.

Before Octane Fitness, an attorney’s fee award was only recoverable in an “exceptional case” under the Lanham Act if there was evidence that the defendant acted in bad faith or willfully infringed the plaintiff’s trademark rights. Both acts were very difficult to prove, so an attorney’s fee award was very rare in trademark infringement cases.

Octane Fitness held that, “an ‘exceptional case’ is simply one that stands out from others with respect to the substantive strength of a party’s litigation position (considering both the governing law and facts of the case) or the unreasonable manner in which the case was litigated.” The Third, Fourth, Fifth, Sixth, Ninth, and Federal Circuits have held that Octane Fitness applies an attorney’s fee award under the Lanham Act. The remaining circuits are expected to follow suit.

Under the old, exceptional case standard, a failure to search alone was insufficient to conclude that a defendant acted in bad faith or willfully infringed the plaintiff’s mark. In fact, in some judicial circuits, a finding of actual confusion is a condition precedent to an attorney’s fee award, which Octane Fitness does not change.

Under the new, more liberal Octane Fitness standard, a failure to search alone will still be unlikely to warrant an attorney’s fee award. But it may be a consideration when weighing the substantive strength of a party’s litigation position. Defendants that did not conduct a search and do not have reasonable arguments supporting the absence of a likelihood of confusion need to carefully consider the impact protracted litigation may have on a possible attorney’s fee award.

Most trademark attorneys advise their clients to obtain, at a minimum, all the top-level domain names associated with their trademark even if they will only use one of those domain names because the low-cost of a domain name registration is cheap insurance against the problem of cybersquatting compared to the cost associated wrestling a domain name away from a cybersquatter.

Conducting a reliable trademark search using a reputable trademark search engine like BOB can function the same way as purchasing the available top-level domain names by assisting with a reasonable argument at a low cost that no likelihood of confusion exists; thus, potentially insulating you from an attorney’s fee award.

May 24, 2018June 3, 2018

How to Conduct a Proper Trademark Search

A proper trademark search requires the consideration of three factors: (1) similarity of the marks; (2) relatedness of the goods or services; and (3) dilution. Generally, DIY searchers mistakenly believe they are conducting thorough searches by searching for the mark and any alternate spellings of the mark and considering closely related International Classes, which as we discussed in yesterday’s post is the wrong focus.

Searching for different spellings of a proposed mark is important, but the similarity of the marks analysis is deeper than looking for similar spellings. As trademark searchers, we need to assess the proposed mark to determine its dominant feature or features. We then need to include those dominant features in our search equation because the Trademark Office has said numerous times that more weight can be given to dominant features of a mark when determining similarity. Logically breaking up a mark to search its components is necessary because searching only for the identical mark, which is often called a direct hit search is – in most cases -worthless.

We then need to consider the relatedness of goods or services for two reasons. The first reason is because relatedness of the goods is an important likelihood of confusion factor. The second reason is so that we can properly assess dilution in the search results. You cannot properly evaluate dilution if there is no accurate consideration of relatedness.

Dilution occurs when similar marks or components of a mark for related goods or services owned by different owners peacefully co-exist on the Principal Register. When dilution is present in the search results, then the similar, shared elements of the marks in the results have less weight. If you are not properly considering the relatedness factor, then your dilution assessment can be flawed as well.

BOB focusses on the key considerations for a proper trademark search: (1) similarity of the marks; (2) relatedness of the goods or services; and (3) dilution.

May 23, 2018July 30, 2018

International Class Numbers are Irrelevant to Likelihood of Confusion

The case law is clear and settled that international class numbers are “wholly irrelevant” to a likelihood of confusion claim. See, e.g., Jean Patou, Inc. v. Theon, Inc., 29 U.S.P.Q.2d 1771, 1774 (Fed. Cir. 1993). Nevertheless, there is far too much emphasis placed on searching the right international class numbers than on finding goods or services that may be related to the goods or services offered or intended to be offered in connection with a proposed mark. The Nice Classification system is merely a way for Trademark Offices around the world to organize the millions of applications that are filed each year. So why do so many trademark search engines and some manual searchers rely on international class numbers as a way for evaluating potential conflicts between marks?

For one, old habits die-hard. DIY Searchers have been using the International Class System in their evaluations for years because it is perceived as a shortcut to evaluating the relatedness of goods factor. After all, the system does not randomly categorize goods or services together. But that does not mean that all goods or services categorized in a particular international class number are legally related.

To evaluate the relatedness of goods likelihood of confusion factor requires research to determine what goods and services have been found to be legally related to one another. Although DIY Searchers have access to some legal databases for free – TTAB’s e-FOIA page and Justia, it is time consuming to conduct this research. Considering the similarity of the marks and the international classes only is not a thorough trademark search and can result in a costly mistake. As we discussed in a previous post, a legal proceeding can cost $300,000 or more and the cost to rebrand can cost at least $10,000.

In corporating the results from the relatedness of goods research can be a more time consuming process than doing the research in the first place. For example, the Trademark Trial and Appeal Board has found “restaurant services” to be related to over 100 different goods or services. It would take days incorporate the results in the trademark searcher’s search equation. A software application though can include this necessary research at lightning speed, which give the searcher more time to dedicate to other important naming tasks.

May 22, 2018June 1, 2018

Related Goods Watch 2018: Athletic Wear and Jewelry

In In re Henson, the Trademark Trial and Appeal Board had to decide whether athletic wear and jewelry are related goods. Zackery Henson applied to register the mark LYKAN for “athletic apparel, namely, shirts, pants, shorts, jackets, coats, hats, caps, athletic uniforms, button-down shirts, graphic T-shirts, short-sleeved T-shirts, long-sleeved T-shirts; microfiber performance shirts; women’s apparel, namely, tops, jackets, coats, and pants; socks, underwear.” The Trademark Office refused registration based on a prior registration for the identical LYKAN mark for “watches” and “jewelry.”

The Trademark Office offered several retail websites that sell both athletic apparel and watches. The retail websites were primarily for department stores though. Nevertheless, the Trademark Office found that this evidence demonstrates consumer expect althetic clothing and watches or jewelry to be offered under the same mark.

Mr. Henson argued that the examples the Trademark Office relied on were for large, well-known brands like Macy’s and Adidas. But the TTAB was not persuaded that this meant the average consumer does not expect athletic apparel and watches or jewelry to emanate from the same source. In fact, the TTAB found that this made the relatedness of the goods more rather than less likely.

Finally, the TTAB reiterated that the relatedness of goods determination must be made on the descriptions in the application and registration, not the marketplace reality, and that the international class numbers are irrelevant to the likelihood of confusion analysis. Because Mr. Henson did not narrow his description of goods and did not attempt to the registrant’s description, his athletic apparel and the registrant’s watches and jewelry were deemed to travel in the same channels of trade and appeal to the same class of consumers.

When it comes to assessing relatedness of goods or services, it is necessary to consider prior court decisions because your intuition about what goods or services may be related is too prone to be incorrect.

May 21, 2018July 1, 2018

Trademark Searches Should Use Broad Goods or Services Descriptions

Using the right goods or services descriptions is key to conduct trademark searches will uncover potential issues with a prior mark. In a prior post, we discussed that it is the goods or services descriptions that are important not the International Class Numbers. When thinking about what goods or services descriptions to use, it is tempting to use the exact wording that describes the goods or services that will be offered with the proposed mark. But using a narrow description in the trademark search is a mistake. Instead, you want to use a broad description.

Why use a broad description? Because trademark owners as a filing strategy try to obtain as broad a description as possible. After all, the goods or services descriptions dictate, in part, the scope of the trademark owner’s rights in a mark. A recent case from the Trademark Trial and Appeal Board demonstrates this filing strategy.

In In re Dyson Technology Ltd. the TTAB decided whether Dyson Technology’s “Suspended lights in the nature of LED lighting fixtures designed to be suspended from a ceiling with uplighters and/or downlighters, the aforesaid optimized to reduce eye strain and increase comfort and productivity; parts and fittings for the aforesaid goods” were related to “Lighting apparatus and instruments – namely, a hand held combination spotlight and floodlight.” Based on the evidence submitted, the TTAB found that the goods were not related, but Dyson Technology’s identification of goods description did not start with this narrow and detailed description.

Dyson Technology filed its request for extension of protection into the United States on July 7, 2016 with the following goods description:

“Apparatus for lighting; electric lights; ceiling lights; desk lights; floor lights; wall lights; suspended lights; spotlights; lighting units; lighting fittings; uplighters; downlighters; combined uplighters and downlighters; lamps; LED lighting apparatus; reflectors; diffusers and lenses for lights and lamps; light bulbs; LED light bulbs; parts, fittings and accessories for the aforesaid good.”

The use of a semicolon (;) in a goods for services description indicates a new good. You can see that Dyson Technology began the application process attempting to register its mark for, among other goods, the broad description “suspended lights.” Dyson Technology received a registration refusal from the Trademark Office and attempted to overcome the refusal by amending its original identification of goods description to:

“ceiling lights; suspended lights in the nature of lighting fixtures design to be suspended from a ceiling with uplighters and/or downlighters; parts and fittings for the aforesaid goods.”

This amendment did not persuade the Trademark Office to withdraw the refusal and it issued a final office action refusing Dyson Technology’s trademark application. Dyson Technology responded to the final office action by further amending its identification of goods description to the actual description of its goods; namely:

“suspended lights in the nature of LED lighting fixtures designed to be suspended from a ceiling with uplighters and/or downlighters, the aforesaid optimized to reduce eye strain and increase comfort and productivity; parts and fittings for the aforesaid goods.”

You can see the progression of Dyson Technology’s identification of goods description. As trademark searchers, if you started with the third, more detailed description, you would have certainly missed marks that may have been concerning even though the third description describes the actual goods. But if you searched more broad for just “suspended lights,” you would have uncovered not only the broad descriptions but also the narrow ones as well because the narrow descriptions include the broad categories.

May 17, 2018June 14, 2018

Distinction Between Reverse Confusion and Forward Confusion

Reverse confusion and forward confusions are the two forms of confusion that consumers can succumb to. When we talk about the harm caused by confusion in the marketplace, we generally are referring to forward confusion. Forward confusion occurs when consumers mistake the junior user for the senior user and because of the confusion unjustly enrich the junior user at the cash register. Or if the confusion occurs outside of the checkout and the junior user offers a product or service that is inferior to the senior user, then the senior user can potentially lose sales over the mistaken connection.

If the senior user is a small company, forward confusion provides a scenario where a junior user could decide to intentionally infringe the senior user’s trademark. The incentive exists because the monetary damages in a forward confusion case are: (1) the senior user’s actual damages caused by the infringement; or (2) disgorgement of the junior user’s profits. Actual damages are difficult and costly to prove, so most trademark infringement cases involve disgorgement of profits. But profits are awarded only in those geographic areas where confusion was possible; hence, the incentive to intentionally infringe.

A junior user in a forward confusion case to make the decision knowing that if it is forced to pay over its profits in say Minnesota – and even if this amount is trebled, which a court has the authority to do – it was a worthwhile business risk to intentionally infringe. And this may be something as searchers we identify to a client because we have more fully investigated a potentially concerning record in the search results and determined the particular trademark owner is unlikely to expand beyond its current geographic area. That is until reverse confusion came into play.

Reverse confusion occurs when the junior user saturates the market with its mark so that consumer mistake the senior user for the junior user. In this case, the harm to the senior user is the loss of its ability to control its reputation. The monetary remedy in these situations is corrective advertising. The theory for corrective advertising is that the senior user needs an amount of money equal to what was spent by the junior user to take back control of its reputation.

This does not mean that the senior user is entitled to the same amount of money spent on a national advertising campaign. Generally, the senior user is entitled to a percentage of the national advertising spend based on the number of states the senior user is operating in. But the amount of money for corrective advertising will most likely be larger than an actual damage or profits award.

As trademark searchers, we need to keep reverse confusion in mind along with our the company’s marketing plans. This will impact how company’s decide to address problematic marks.