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.