How Many Third Party Registrations Equal Trademark Weakness?

"CODE conference announcement which was refused registration based on too few third party registrations not showing trademark weakness"

One thing trademark searchers review any search results for is dilution or weakness. And the trademark weakness does not need to affect the entire mark. Trademark weakness may affect only a portion of the entire mark. When a trademark searcher finds weakness, it tells him or her that the mark being searched may be able to co-exist with the other marks registered or pending with the United States Patent and Trademark Office.

One common way to prove conceptual weakness is to find the co-existence of third party registrations that share a common element. But it is not enough that the marks share a common element. The marks also need to be registered in connection with related goods or services. This is something that is overlooked frequently when making a weakness argument.

In most appeals to the Trademark Trial and Appeal Board, the Applicant will argue that the extensive trademark dilution allows its mark to also peacefully co-exist with the other marks. Assuming the Applicant has found some third party registrations that share a common element and are for related goods or services, how many does it take to support a finding of trademark weakness? The Trademark Trial and Appeal Board recently gave us some insight into this question in the In re Vox Media, Inc. case.

Vox Media applied to register the mark CODE in connection with educational services in, among other fields, technology, business, and entrepreneurship. The Trademark Office refused registration of Vox Media’s mark on the ground that it was likely to cause confusion with the prior registered CODE2040 for educational services in, among other fields, technology, business, and entrepreneurship.

The Board found that the educational services at issue were legally identical because they identified the same educational fields. The fact that different fields were also identified by the applicant and registrant was irrelevant. The Board also found the marks were similar because the entirety of Vox Media’s mark appeared in the registrant’s mark.

Faced with the likelihood that the two dispositive factors – similarity of the marks and relatedness of the goods – would go against it, Vox Media turned to the trademark weakness argument in an attempt to argue that the rights in CODE2040 were limited to another identical mark. To support this argument, Vox Media offered nine third party registrations that contained CODE for some type of educational service.

Unfortunately for Vox Media, nine is not the magic number for trademark weakness. Extensive evidence of third party use and registrations is powerful on its face, even where the specific extent and impact of the usage has not been established, but when the Trademark Trial and Appeal Board previously made this finding, there were 26 relevant, third party registrations in the record. Not only did Vox Media have too few third party registrations, but the third party registrations it did offer had relevancy problems.

The Value of a Supplemental Registration on the Supplemental Register

"chart showing the differences between the supplemental registrations of the supplemental register versus the principal register"

A supplemental registration often times gets a bad wrap primarily for the fact that it is not a principal trademark registration. The United States Patent and Trademark Office maintains to trademark registers, the Principal Register and the Supplemental Register. The Supplemental Register is reserved for trademarks that are descriptive and need time to acquire trademark rights instead of being immediately protectable.

As you can imagine, trademarks on the Supplemental Register do not enjoy the same benefits as those on the Principal Register. However, a trademark owner with a trademark on the Supplemental Register is allowed to use the circle “R” trademark designation, which is often an overlooked benefit of the Supplemental Register. But probably a more important overlooked and often overlooked benefit is the ability to prevent a subsequent trademark owner from registering a confusingly similar mark. This potential was on display in the recent Trademark Trial and Appeal Board case In re Productos Verdes Valle, S.A. de C.V.

Productos Verdes Valle filed a trademark application to register the mark TAMAL TAMAYO & Design for “tamales.” The design consisted of a chef standing behind a stock pot holding the lid in his right hand. The Trademark Office refused registration of Productos Verdes Valle’s mark in the ground that it was likely to cause confusion with a prior supplemental registration for the mark TAMAYO in connection with restaurants.

The Board held that there is no categorical rule that citation of registrations on the Supplemental Register is limited to registrations of substantially identical marks for substantially similar goods or services, or that a different test for confusion applies to supplemental registrations.

When it came to assessing the strength the TAMAYO mark, the Board found there was no evidence of commercial strength. Therefore, there was nothing to counterbalance the conceptual weakness in the TAMAYO supplemental registration.

With respect to the similarity of the marks, the Board found that TAMAYO was the dominant feature of both marks. The word TAMAL would either be understood as the foreign word for tamales or a given name. Because more weight is given to words instead of designs, the Board held that the marks were confusingly similar.

Finally, the Board found that tamales and restaurants are unrelated. In a familiar story before the Trademark Office, something more needs to be shown to support the finding that restaurants and a food items are related. In this case, the only evidence the Trademark Office offered was that some restaurants also sell branded tamales. This evidence alone was insufficient to satisfy the “something more” requirement for finding tamales related to restaurants. Therefore, the Board reversed the likelihood of confusion finding by the Trademark Office.

What this case demonstrates is the potential for preventing the registration of a subsequent mark with a supplemental registration.

When Does a Word or Phrase Fail to Function as A Trademark

"I love you bracelet fails to function as a trademark"

In the wake of the In re Tam United States Supreme Court decision, there has been a rise of the number of registration refusals from the United States Patent and Trademark Office for failure to function as a trademark. As trademark searchers, this is a concept we need to be aware of when talking with our clients.

The critical question in determining whether a word or phrase functions as a trademark is the commercial impression it makes on the relevant public. In other words, whether the word or phrase sought to be registered would be perceived as a mark identifying the source of the goods or services. When evaluating a word or phrase that appears to be ornamental, rather than functioning as an indicator of source, the size, location, dominance, and significance of the alleged mark as applied to the goods are the relevant factors in determining whether the word or phrase is perceived as an indicator of source.

Recently, the Trademark Trial and Appeal Board decided whether the mark I LOVE YOU functions as a trademark mark for bracelets. The Trademark Office refused registration of Peace Love World Live, LLC’s application on the ground that I LOVE YOU merely conveys the common expression of endearment and fails to function as a trademark. To support its argument, the Trademark Office offered examples of the I LOVE YOU expression used by other jewelry makers in their pieces including bracelets.

In this case, the phrase I LOVE YOU literally was the bracelet itself and the Board found the I LOVE YOU is a common expression of endearment. Therefore, there was no way for consumers to perceive the phrase I LOVE YOU as anything but the expression of endearment and not as an indicator of source. It is not enough that the applicant intends the words or phrase to function as a trademark, the public has to be able to perceive it as an indicator of source.

Trade Dress May Not Differentiate A Mark Registered in Standard Character

"two men on a seesaw with a large finger pushing down on one side representing that trade dress cannot prove the absence of confusion when a prior mark is registered in standard character"

Generally, what’s good for the goose is good for gander. Except in certain circumstances when you are dealing with the Trademark Office. Relying on trade dress to distinguish your mark from a prior registered word mark is one of those situations where the rules apply differently if you are the Applicant instead of the Trademark Office.

When filing a trademark application you have the option to submit a stylized drawing of your mark or to claim your mark in a standard character form. When you choose to protect your mark in a standard character form, the trademark rights that result from that application exist in the word or words regardless of stylization. Filing in a standard character form does two things for a trademark owner. First, it provides flexibility for the modernization of a mark. Second, it prevents another party from avoiding the trademark owner’s rights by adopting a sufficiently different stylization for his or her mark.

The general rule is that when analyzing a word mark, the Trademark Office will not look to the trade dress associated with the word or words. The decision must be made on the marks as they appear in the application or registration. However, if you filed an application claiming your mark in a standard character form, the Trademark Office can look at your trade dress to determine if the manner in which you are using your mark creates a similar overall commercial impression with the mark displayed in the registration.

You would link that if the Trademark Office can rely on the real world trade dress to support its case, that the trademark owner should be able to do the same. Unfortunately, it is not the case. Trade dress may not be used to prove the absence of a likelihood of confusion.

For trademark searchers, we need to be aware of this disparity when evaluating the search results. We need to be cautious about clearing trademarks when the record reveals a mark with a logo or stylization similar to the planned designed for our mark. We also need to be cautious about recommending certain stylization or logos as a means to differentiate our mark from a prior mark registered in standard character form.

J5 Abbreviation is Confusingly Similar to JACKSON 5IVE and JACKSON 5

"Album cover of the JACKSON 5 and abbreviation J5 marks"

Siggy Music, Inc. registered the abbreviation J5 for “clothing, namely, footwear, shoes, hats, caps, shirts, and jackets,” which drew the ire of UMG Recordings, Inc. who owns the federally registered mark JACKSON 5 for “musical sound recordings” and common law rights for JACKSON 5 in connection with clothing. UMG Recordings also apparently has common law rights in JACKSON 5IVE and abbreviation J5 for goods related to musical sound recordings.

With respect to the similarity of the marks, Siggy Music registered its mark in standard character form, which is an option and a benefit of obtaining a federal registration. However, marks presented in standard characters are not limited to any particular depiction. The trademark rights reside in the wording, not in any particular display. Therefore, at any time Siggy Music could have presented its J5 mark in style that was similar to UMG Recording’s common law J5 mark. Although hindsight is twenty-twenty, Siggy Music made a mistake by protecting the J5 mark in a standard character form.

The more important lessons for trademark searchers though is the importance of searching the long form of any abbreviations and including the relatedness of goods factor in the search equation. We discussed in a prior post that adopting an abbreviation, nickname, or acronym of the long form for an otherwise problematic mark is not an acceptable workaround. And that is exactly what happened in the Siggy Music case.

The Trademark Trial and Appeal Bound stated that “users of language have a universal habit of shortening full names – from haste or laziness or just economy of words.” During discovery, UMG Recordings elicited an admission from Siggy Music that some consumers recognize J5 to mean JACKSON 5.

With respect to the relatedness of goods factor, we must have hit an all time record for the number of decisions relying on licensing as justification for finding two goods are related. For the third time, the Board cited with approval the common practice of licensing with respect to collateral products.

12TH MAN Handmade Soap is Related to a Sports Fan Towel

"Texas A&M 12TH MAN towels not handmade soap draped over stadium seats"

The Trademark Trial and Appeal Board had to stretch to support its finding that handmade soap is related to towels. And for the second time in 2018 the Board looked to a trademark owner’s licensing activity as a major factor in finding a likelihood of confusion. Like the Major League Baseball case we discussed in yesterday’s post, in Texas A&M University v. Washington Soap Company the Board used Texas A&M’s extensive trademark licensing to support the finding that its 12TH MAN mark was strong and that handmade soap and towels are related goods.

The Board primarily relied on the breadth of the descriptions in the pending application and registrations at issue to justify its finding of relatedness. When the descriptions are broad the identified goods are deemed to include all the goods of the nature and type described therein. In this case, “loofah soap” is broad enough to include soap designed to wash hands.

Texas A&M’s “towel” description is broad enough to encompass “hand towels.” Hand towels are used to dry wet hands after they have been washed with soap. In fact, the Board took judicial notice of the fact that hand towels are used to dry the hands after they are washed with soap and water. However, just because two goods are used together cannot alone support of finding of relatedness.

The Board next turned to Texas A&M’s licensing activity and found that it had licensed other marks – not the 12TH MAN mark – for soap. It is unclear from the decision whether the trademark licensing on soap was a current or past practice of Texas A&M. Nevertheless, Texas A&M also submitted hand towel and soap gift sets from places like William Sonoma and third-party registrations that covered both towels and soap.

It did not matter to the Board’s decision that the towel Texas A&M brands with its 12TH MAN mark is a sports fan towel that hangs on the back of a seat in the stadium not a hand towel. And the use of 12TH MAN on a sports fan towel is primarily ornamental to begin with, which means consumers do not perceive that use as indicating source (i.e., not trademark use).

What this case demonstrates is that you have to use broad goods and services descriptions when conducting a trademark search. It also demonstrates that parties needs to use petitions for partial cancellation more frequently and do not try to simply argue the marketplace reality of the goods at issue.

Major League Zombie Hunter Too Close for Major League Baseball

"major league baseball logo next to major league zombie hunter logo"

Despite the numerous MAJOR LEAGUE formative marks that use a blue, white, red color scheme including several variations involving zombie hunting, Major League Baseball thought Christopher Webb’s MAJOR LEAGUE ZOMBIE HUNTER was the one that crossed the line. Major League Baseball petitioned to cancel Mr. Webb’s supplemental registration for MAJOR LEAGUE ZOMBIE HUNTER & Design for “clothing, namely, short and long sleeve t-shirts, sweatshirts, jackets, baseball hats, and beanies” in International Class 25. Major League Baseball alleged, among other things, that this mark was likely to cause confusion with its prior registered MLB Logo.

The Trademark Trial and Appeal Board first considered the strength of the Major League Baseball mark. In determining strength, the Board considers its inherent strength based on the nature of the mark itself, and its commercial strength based on the marketplace recognition of the mark. Surprisingly, the terms MAJOR LEAGUE BASEBALL were found to be arbitrary when used in connection with clothing. Not surprising was the finding that the MAJOR LEAGUE BASEBALL mark is commercially strong. Accordingly, MLB’s trademarks are entitled to a broad scope of protection.

With respect to the similarity of the marks, the Board found that both marks consist of off-center, white silhouetted males from the torso up, facing left, wearing baseball caps or helmets, and posed for action inside a shaded, rectangular border, albeit engaged in different activities. According to the Board the dissimilarities (i.e., baseball bat vs. shotgun, backward cap vs. batting helmet, and the words MAJOR LEAGUE ZOMBIE HUNTER) were not sufficient to overcome the similarities.

The Board also cited with approval prior Board decisions that held it can take judicial notice of a common fact that licensing of commercial trademarks on collateral products has become a part of everyday life. Accordingly, the Board held that consumers are likely to mistakenly believe that MLB is associated with Mr. Webb’s t-shirts.

While licensing the use of a trademark on collateral goods is common, what is uncommon is for the trademark licensor to allow a licensee to mutilate its mark into something different. Additionally, the Board stated that it may take into account the trade dress of packages or labels that demonstrate the trademark projects a confusing similar commercial impression. But this is contrary to other cases where the Board has said its decision on similarity must be made on the drawings in the applications and registrations only. The Board again based its decision on certain presumptions that do not reflect marketplace reality.

KARUNA Fruit Infused Water is Related to Nutritional Supplements

"KARUNA fruit infused water"

Fulfill Food and Beverages, LLC’ s attempt to convince the Trademark Trial and Appeal Board that its KARUNA fruit infused water is unrelated to nutritional supplements when the marks at issue share an element fell flat. Fulfill’s failed attempt demonstrates once again that relying on intuition when evaluating the relatedness of goods and services factor can be a dangerous game.

FulFill sought to register the mark KARUNA THE ROOT OF GOOD HEALTH & Design for “a fruit infused plant-based drink, namely, filtered water infused with a fruit flavoring and plant-based ingredients,” which is a trademark attorney way of saying “fruit infused water.” The Trademark Office refused registration of FulFill’s mark on the ground that it was likely to cause confusion with a prior registration for KARUNA in connection with “nutritional supplements.” With respect to the similarity of the marks, the Board found that the dominant term in FulFill’s mark was KARUNA because the phrase THE ROOT OF GOOD HEALTH would be perceived by consumers as a slogan or motto and words are given more weight than designs. It is interesting that the Board found a slogan has less source identifying significance than a single word. Obviously some slogans, such as Nike’s Just Do It, have as much if not more source identifying significance than the single word.

Likewise, the Board too often give too little weight to the significance of designs. While it is true that a human has to physically say words to place an order, designs play a critical role in bringing the customer in to place that order in the first place.

The Board began its discussion of the relatedness of goods factor by reciting its standard policy.

When considering the similarity or dissimilarity of the goods, we note that goods need not be identical or even competitive in order to support a finding of likelihood of confusion. Rather, it is enough that the goods are related in some manner or that some circumstances surrounding their marketing are such that they would be likely to be seen by the same persons under circumstances which could give rise, because of the marks used or intended to be used therewith, to a mistaken belief that they originate from or are in some way associated with the same producer or that there is an association between the producers of the parties’ goods or services.

Based on the evidence submitted by the Examining Attorney, the Board found that fruit infused water can include or perform the same function as nutritional supplements. The Board ignored FulFill’s evidence of the actual nature of the KARUNA nutritional supplements. Because “nutritional supplements” is such a broad description, the Board said its hands are tied by precedent and it can’t consider the real world marketplace.

5 Characteristics of a Reputable Trademark Attorney

"person making a checklist of the characteristics of a reputable trademark attorney"

Finding a reputable trademark attorney is not an easy task for a couple of reasons. The first reason is that there are a lot of attorneys in the United States. The second reason is that unlike practicing before the United States Patent Office, the United States Trademark Office does not have a special bar exam that must be taken before an attorney is authorized to file and prosecute trademark applications. This means there are a lot of corporate attorneys, general business attorneys, and even some patent attorneys that will market themselves as a trademark attorney and take on a trademark client if the opportunity presents itself even though they do not regularly practice in the trademark law area.

There is nothing wrong with an attorney taking a trademark client provided the attorney can comply with Rule 1.1 of the Model Rules of Professional Conduct – Competence. “A lawyer shall provide competent representation to a client. Competent representation requires the legal knowledge, skill, thoroughness, and preparation reasonably necessary for the representation.” An attorney does not need to be an expert in the area of law the second a client walks in her office. The attorney can gain the competence he or she needs to represent the client.

Because of the costs involved in terms of both time and money to name a new company, product, or service and then to grow that name into a recognizable brand, it is important you do your due diligence before hiring an attorney to help with your trademarks. Here are 5 characteristics that a reputable trademark attorney possesses and to be on the look out for:

  1. They have filed several trademark applications. This is obvious and straight forward, but most people do not know how to confirm it. Go to the TESS page on the USPTO website and in the Structured Search option search for the attorney’s name in the Attorney of Record field. This will show you how many applications the individual has filed.
  2. They have overcome likelihood of confusion and merely descriptive refusals on the past. There is no such thing as a perfect trademark search, and it happens from time to time that the Examining Attorneys at the USPTO have a different opinion on the availability of the mark.
  3. They have experience before the Trademark Trial and Appeal Board. Although being before the Board is not ideally where a trademark owner wants to be, the Board can be a useful tool to overcome registration refusals.
  4. They have a thoughtful search strategy for your name based on your industry. A limited or one-size-fits-all search strategy is usually the sign of an inexperienced trademark attorney.
  5. They find creative solutions to clear a path for names you really like, but are not afraid to tell you no when no path exists.

Gucci Satisfies the 7 Factors that Determine Famous Trademarks

"Man holding a GUCCI shopping bag one of the famous trademarks"

Famous trademarks are the pinnacle of brand recognition and a distinction more trademarks reach than you would expect. Famous trademarks come in two varieties:  famous trademarks for a dilution claim and famous trademarks for a likelihood of confusion claim. The absolute pinnacle of brand recognition is a famous mark for a dilution claim, but a brand needs to pass through famousness for a likelihood of confusion claim to get there, which in and of itself is a good place to be.

Trademark fame plays a dominant role in the process of balancing the likelihood of confusion factors because famous trademarks enjoy a wide latitude of legal protection. Famous trademarks cast a long shadow that competitors must avoid. Consumer surveys provide direct evidence of fame and the best evidence of fame, but consumer surveys are not commonly used primarily because they are expensive to obtain.

Accordingly, circumstantial evidence is primarily relied on to establish the trademark’s fame. The most common categories of circumstantial evidence used to establish trademark fame:

  1. Volume of sales;
  2. Amount of advertising expenditures; and
  3. The length of time that both sales volume and advertising expenditures have been high.

These factors are indicative of a famous mark because they provide a sense of popularity among consumers and the likelihood of consumers encountering the mark. But equally important to these three common categories of evidence are:

  1. The length of the use of the mark;
  2. The trademark owner’s market share;
  3. Trademark licensing activities; and
  4. The variety of goods bearing the mark.

These factors were on display recently in the Gucci America, Inc. v. UGP, LLC case involving the GUCCI brand. Uberto Gucci – the great-grandson to the original founder Guccio Gucci – filed a trademark application to register the mark UBERTO GUCCI & Design for “electronic cigarettes.” Gucci America, Inc. opposed the application alleging prior use and registration of the GUCCI mark for a variety of goods.

While most of the financial information was submitted under seal to maintain its confidentiality, but sales of GUCCI products in the U.S. were reported to be in the billions of dollars. Gucci America’s advertisements appeared in publications with a combined circulation exceeding 220 million, it has 4.9 million Twitter followers, 17.4 million Instagram followers, 16 million FaceBook followers, and received over 16.2 million FaceBook likes. These data points show how important social media is to not only creating brand awareness, but also in legal determinations involving the strength of a mark.

Millions of people visit the Gucci website, several books have been written about the brand, and it is consistently ranked as a top global brand. All of this circumstantial evidence lead the Trademark Trial and Appeal Board to find that the GUCCI mark is famous and that its rights extend to electronic cigarettes.