LA CHULA UNLikely to Cause Confusion with CHULA BRAND

"La Chula logo unlikely to cause confusion with CHULA BRAND"

The Trademark Trial and Appeal Board issued another rare reversal this year finding that the LA CHULA & Design (in color) for “preserved, frozen, dried, and cooked fruits” is unlikely to cause confusion with CHULA BRAND (BRAND disclaimed) for “fresh fruits and vegetables, namely, citrus, lemons, avocados, coconuts, papayas, pineapples.”

The Board found that “the applied-for mark and cited mark share the dominant, arbitrary term LA CHULA.” Actually, the only shared term is CHULA. Nevertheless, the Board concluded the marks were similar in terms of sound, appearance, connotation, and commercial impression. The Board also found that the goods at issue are commercially related and that consumers are likely to mistakenly believe they emanate from the same source.

From reading the beginning of the decision, you would think that a decision sustaining the refusal was on its way, but you would be wrong. The Board found that the 13th Du Pont factor outweighed the similarity of the marks and relatedness of the goods or services confusion factors ultimately confusion the applied for mark was unlikely to cause confusion. The 13th Du Pont factor is “any other established fact probative of the effect of use.” This factor is used by the Board and Courts as a catchall in order to decide cases on what they think is happening or likely to happen in the marketplace.

In this case, the Applicants previously registered a similar mark in black and white but for “fruit conserves.” In other words, color was not claimed as a feature of the mark like it was in the Applicants’ applied for mark. And while “fruit conserves” is not an identical description to the applied for goods, the Board found that the goods were closely related. Because the Applicant’s previously registered the same mark in black and while for closely related goods, the Board found there could be no confusion with the colored version fo the logo.

The Board made the right decision, but this case highlights how different trademark examiners examine applications differently.

Did The TTAB Set the Conceptual Weakness Standard at 10?

"Smoking Hot Show Time mascara conceptually weak"

We previously discussed how much dilution is required to prove a word is conceptually weak. But a recent decision from the TTAB may have zeroed in on a number.

The TTAB recently reversed the Trademark Office’s refusal to register the mark I’M SMOKING HOT for, among other goods, cosmetics based on a prior registered mark SMOKING HOT SHOW TIME also for cosmetics. The facts of this case seemed eerily similar to the facts of the SQUEEZE JUICE COMPANY decision we discussed just five days ago.

In the I’M SMOKING HOT case, the goods at issue were identical, so the relatedness of goods factor weighed in favor of the refusal as did the overlapping channels of trade and target consumer factors. The case law is legion that when the goods at issue are identical, less similarity is required between the marks at issue for a likelihood of confusion to exist.

In the SQUEEZE JUICE COMPANY case, 12 examples of third-party use of a mark similar to SQUEEZE were offered as evidence to demonstrate the conceptual weakness of the cited mark. The Board accepted these 12 examples as sufficient to establish the weakness of the SQUEEZE term for juice bar services. And about a month ago, the TTAB held that nine examples of third-party use was insufficient to establish the conceptual weakness of the term CODE for some type of educational service.

FabFitFun, Inc. – the owner of record for the I’M SMOKING HOT application – offered 10 examples of third-party use of the terms SMOKING HOT for cosmetics. And in this case, the Trademark Trial and Appeal Board found that the 10 examples were sufficient to establish the conceptual weakness of the SMOKING HOT terms for cosmetics.

In addition to the 10 examples of third-party use, FabFitFun offered the definition of “smoking hot” from the MacMillan Dictionary, which is an open dictionary. The definition of “smoking hot” was submitted by Shahbaz Shahin from Bangladesh on August 31, 2015. This definition is not representative of how an American consumer defines or understands “smoking hot,” and should not have been considered by the Trademark Trial and Appeal Board.

Based on its weakness the finding, the TTAB concluded that the addition of SHOW TIME was sufficient to distinguish the cited mark from the I’M SMOKING HOT mark.

If At First You Don’t Succeed, Start the Rebranding Process

"times square at night showing the rebranding process"

The rebranding process is often times easier said than done, but it should not be considered an off-limits concept. Especially for startups who may not have the money to pay for professional naming services, it may be that the name you adopt does not resonate with your customer base. The foolish thing that any business can do is to recognize a bad decision but to stubbornly not make the necessary changes. The smart business decision is to start working on the rebranding process – maybe this time with some professional naming help.

If you find yourself in a situation where the rebranding process is necessary, you don’t have to feel alone. Some of the worlds largest companies went through a rebrand.

Larry Page and Sergey Brin, the founders of Google, originally launched the search engine under the BACKRUB name. After a year of living with BACKRUB, the name was changed to GOOGLE.

Richard Schulze, the founder of Best Buy, opened his first electronics store under the name SOUND OF MUSIC. However, after a tornado forced Mr. Schulze to run a large sale of the damaged merchandize promising “best buys,” which was a huge success, the company’s name was officially changed to BEST BUY.

Steve Case, the founder of AOL, launched the online bulletin board under the name QUANTUM COMPUTER SERVICES. This name stayed with the company while it acquired more than 100,000 members, but was eventually changed to AOL.

Caleb Bradham, the inventor of Pepsi, originally branding the soda BRAD’S DRINK, but about five years later rebranded it Pepsi-Cola. PayPal was originally CONFINITY. Blackberry was originally called RESEARCH IN MOTION. And Yahoo was originally called – take a breath – JERRY AND DAVID’S GUIDE TO THE WORLD WIDE WEB.

There are other examples that could have been included, but the point is that business owners should not be afraid to change course on a name if the name originally chosen is not working. Just make sure you conduct a trademark search on the new name first.

IN-N-STOUT beer: Branding Genius or Branding Mistake

"in-n-stout branding"

Several articles and blog posts have been written about Seven Stills “neapolitan milkshake stout” beer that it called IN-N-STOUT. It was painfully obvious from the artwork for the beer can that Seven Stills was trying to copy the IN-N-OUT fast food restaurant trade dress. Not surprising that when Seven Stills announced the release of its beer that In-N-Out restaurant sent it a letter demanding that Seven Still stop using its trade dress and a confusingly similar name.

What remains unanswered is whether the IN-N-STOUT mark was a clever branding play designed to raise the public awareness of Seven Stills or was the brewery under the mistaken impression that it was okay to use the IN-N-STOUT mark because it was for beer. If it is was the later, it is likely because Seven Stills followed the flawed International Class method for assessing the relatedness of goods and services. “Beer” is classified in International Class 32, whereas “restaurant services” are in International Class 43. But as we have talked about numerous times before, it is relatedness of the goods and services that matter, not class numbers.

If Seven Stills had used BOB to search for IN-N-STOUT, it would have quickly learned that the mark was unavailable because beer and restaurant services are related goods. You can watch BOB conduct this trademark search by clicking HERE.

On the other hand, this may have been a crazy-genius branding play to garner some attention – however fleeting – from getting the attention of a large company like IN-N-OUT. We say crazy-genius because Seven Stills had no way of knowing how In-N-Out would react to the name and trade dress for the beer. Around the Super Bowl, we saw Budweiser creatively respond to a brewery in Minnesota’s release of a DILLY DILLY beer. But In-N-Out has a history of being litigious when it comes to its trademarks. Just looking at the Trademark Trial and Appeal Board proceedings, In-N-Out has been a party in 70 proceedings.

While more trademark owners should take a Budweiser approach to infringement when the situation calls for some diplomacy instead of a hammer, it is risky to roll the dice and hope for the former when the publicity from it is fleeting.

Trademark Fair Use Protects Use of LOL, WTF, FML, and NBD

"Procter & Gamble products fair use to register WTF, NBD, and FML for these products"

Trademark fair use is an important concept that trademark owners should be aware of when selecting a new name. It is a lesson that can be learned form the Procter & Gamble’s attempt to register some common acronyms. Procter & Gamble made a lot news recently about trademarking popular millennial messages like LOL, WTF, FML, and NBD. Procter & Gamble filed trademark applications for these acronyms in connection with soap and other household cleaners. The majority reaction at the attempt at trademarking these acronyms has been negative with a hint of criticizing P&G for being self-righteous. How can a big company like Procter & Gamble think that they can own a trademark for common phrases like LOL, WTF, FML, and NBD? These comments stem from a misunderstanding of what is required to establish trademark rights in the first place.

We have discussed before that there is no such thing as a trademark right in gross. In other words, trademark rights must be in some thing either a physical good or service. In this case, Procter & Gamble will use the LOL, WTF, FML, and NBD acronyms in connection physical goods soap and other household cleaners. These goods are the starting point for its rights in these acronyms. Where the rights go from there is anybody’s guess, but given the proliferation of the use of these acronyms, the smart money is on Procter & Gable’s rights remaining limited to soap and other household goods.

Another misconception about Protecter & Gamble’s attempt at trademarking LOL, WTF, FML, and NBD is that no one else will be able to use these acronyms in connection with soap and other household goods. While Procter & Gamble may obtain trademark registrations, these acronyms clearly have a descriptive aspect. Individuals and companies are free to exploit the descriptive aspect of these acronyms even if the context of this use is in connection with soap or household cleaners. This principle is called is classic fair use, and is an issue trademark owners need to understand exists when they adopt words or phrases with known meanings as their trademark.

Rare Reversal of SQUEEZE JUICE COMPANY Trademark Refusal

"SQUEEZE JUICE COMPANY mark survived trademark refusal"

Trademark weakness, or dilution, can influence the availability of a potential mark, and can even be the deciding factor. This was the case in a recent, rare reversal of the trademark refusal of the mark SQUEEZE JUICE COMPANY.

Boston Juicery filed a trademark application to register the mark SQUEEZE JUICE COMPANY (Standard Characters) for “fruit juices; vegetable juices; smoothies” and “juice bar services; smoothie bar services; cafe services.” Boston Juicery voluntarily disclaimed the terms JUICE COMPANY in its first office action response; thus, acknowledging that SQUEEZE was the dominant portion of its mark.

The Trademark Office refused registration of the SQUEEZE JUICE COMPANY mark on the ground that it was likely to cause confusion with the prior registered mark SQUEEZE & Design for “bar services; juice bar services.”

We have talked before that when the goods at issue are related (or in this case legally identical because the same description is used by the Boston Juicery and the owner of the cited mark), less similarity between the goods is necessary in order for there to be a likelihood of confusion. We also talked before that marks applied for in standard characters are deemed to seek protection of those words in all forms of stylization.

Just considering the prior discussions we have had, you would think that Boston Juicery’s SQUEEZE JUICE COMPANY application was dead in the water and a trademark refusal was a certainty:

  1. The marks share the dominant element SQUEEZE;
  2. The application share the identical services description “juice bar services”;
  3. Boston Juicery applied for its mark in a standard character form; and
  4. The case law is settled that words dominate designs when assessing mark similarity.

Then out of the blue comes trademark dilution to save the day and overcome the trademark refusal! Boston Juicery offered 12 third-party registrations for marks containing the term SQUEEZE. The majority of the third-party registrations identified “fruit juices.” Only two identified the identical “juice bar services” description and two identified a cafe service. The Board found that these 12 registrations were sufficient to establish the weakness of the SQUEEZE term.

You may be asking yourself that less than a month ago the TTAB found that nine third-party registrations was not enough to establish trademark weakness, and you would be right. And in the Vox Media case, the addition of 2040 was insufficient to distinguish two CODE marks for similar educational services, but Boston Juicery was able to distinguish its mark by adding the generic terms JUICE COMPANY to SQUEEZE.

This case possibly can help us understand that having 12 third-party registrations may be enough to establish trademark weakness or dilution. It also demonstrates how difficult it can be to forecast where the Trademark Office may go with any particular case. So get a trademark professional involved to make the final review about the availability of a proposed mark before sinking a lot of time and money into a new brand.

Hashtag Symbol Incapable of Rescuing Will.I.Am’s Trademark

"Will.I.Am album cover hashtag symbol WILLPOWER"

The hashtag symbol is incapable of distinguishing otherwise confusingly similar trademarks, but that did not stop musical artist Will.I.Am from trying to convince the Trademark Office that it was possible to distinguish marks with a hashtag symbol. i.am.symbolic, llc (company owned by Will.I.Am) applied to register the mark #WILLPOWER for a variety of clothing items. The Trademark Office refused registration of i.am.symbolic’s mark on the ground that it was likely to cause confusion with prior registered mark WILLPOWER WEAR HAVE THE WILL . . . & Design for “hats; jackets; pants; shirts; shoes.”

i.am.symbolic’s principal argument was that the hashtag symbol transformed the meaning conveyed by the word WILLPOWER such that consumers would distinguish the two marks. Instead of conveying “energetic determination,” which is the Merriam-Webster definition of the term, the meaning conveyed by the #WILLPOWER mark is “Will’s power.” Unfortunately for i.am.symbolic, punctuation matters when assessing the meaning of a mark and if it is not present in a mark the Trademark Office will not read punctuation into a mark much like it will not read restrictions into an application that are not present in the identification of goods or services description.

The Trademark Trial and Appeal Board found that a hashtag symbol or the word HASHTAG generally adds little or no source-indicating distinctiveness to a mark. At most, the hashtag symbol simply appears as a social media tool to create a metadata tag.

The fact that the cited mark contained the additional wording HAVE THE WILL and two mountain design was also insufficient to avoid a likelihood of confusion. The Board found that the dominant portion of the marks at issue was the word WILLPOWER, and there was no significant dilution of the term. Finally, i.am.symbollic did not narrow its goods description to narrow the universe of relevant consumers so that its arguments about Will.I.Am being a fashion influencer had a chance of being persuasive.

A couple of things to take away from this case trademark searchers. First, unless dilution is present, if your proposed mark is included in its entirety in a prior registered mark, there is a good chance the Trademark Office will refuse registration of the mark. Second, narrowing the identification of goods or services to overcome a registration refusal is not a bad thing. Too often trademark owners mistakenly believe that if they narrow the identification, then they can’t offer the excluded goods or services. The only impact the limitation has is on your registered rights. It does not prevent the use on other goods or services.

PROMISES MADE PROMISES KEPT Campaign Slogan Problems

"New York Mayor Bill de Blasio Promises Made Promises Kept similar to President Trump's campaign slogan, which is not copyright protected"

New York City Mayor Bill de Blasio gave a speech at the site of what will be a new school in Brooklyn. His podium was placed in front of a sign with the campaign slogan PROMISES MADE PROMISES KEPT, which also appeared on a nameplate directly below the microphone. President Trump Tweeted his reaction to the speech by accusing Mayor de Blasio of stealing his campaign slogan and saying he has no “imagination.”

Unfortunately for President Trump, there is no such thing as campaign slogan misappropriation, and he has not sought to protect the PROMISES MADE PROMISES KEPT slogan has his trademark. The dispute between President Trump and May de Blasio is like the Seinfeld episode involving George Costanza and the name Seven. But this is an important principle for others to be aware of when having brainstorming sessions or casual conversations with others about potential names.

A slogan like PROMISES MADE PROMISES KEPT can be protected as a trademark if:  (1) it is attached to a good or service; (2) is capable of distinguishing the goods or services of others; and (3) is used in interstate commerce. Once these elements are satisfied, then the slogan owner has some legal recourse against another party that may use a confusingly similar slogan to deceive consumers. But if these elements are not met, then there is no actionable claim for trademark infringement or unfair competition.

In the case of copyrights, copyright protection does not extend to titles, names, slogans, or short phrases. Copyright protects original works of authorship including literary, dramatic, musical, and artistic works such as poetry, novels, movies, songs, software, and architecture. There is no copyright protection available for the PROMISES MADE PROMISES KEPT slogan.

What you need to do to protect your naming ideas is to treat them as a trade secret or other proprietary information. If you are in the business of naming, this means having Non-Disclosure Agreements with clients or including confidentiality terms in service contracts that requires the other party to acknowledge your exclusive ownership of the name and to refrain from using the names not chosen from the short list.

If you are an entrepreneur kicking around names over a couple beers or cups of coffee with friends, advisors, or anyone that will listen to you, having a signed agreement first is not going to happen. What you need to do is exercise some discipline about what information you disclose. Or at least make sure you can trust the people you are sharing the names with will not try to usurp the name for their own venture.

Did Pepsi Pay $3.2B to Bury the SODASTREAM Brand?

"SodaStream Logo purchased by Pepsi"

Pepsi announced that it was paying $3.2B cash to buy SodaStream, which sells machines that carbonate water as well as syrups that can be added to create different beverages. Some commentators have lauded the move as another way for Pepsi to diversify its holdings away from soda, which now account for less than 25% of its sales. Or was this a strategic play in response to Dr. Pepper Snapple Group’s merger with Keurig Green Mountain in July 2018? With Nestle and Starbucks entering their multi-billion dollar trademark license deal in May 2018, Coca Cola may be scrambling to find an entrance to the at home beverage market.

In 2017, SodaStream International earned $543.37m in revenue. While a large number, it is largely insignificant to Pepsi that had $63.53 billion in revenue in 2017. Under the circumstances, it is entirely possible that Pepsi’s purchase of the company was to prevent someone else (i.e., Coca Cola) from purchasing it first.

If Pepsi decides to bury the SodaStream brand, it is worth looking at exactly what it is giving up. According to its trademark filings, SODASTREAM (Stylized) in the form consumers recognize it has been around since 2009. But the mark was actually first registered by Sodastream Limited, a British company, on September 23, 1969. The identification of goods description reads “apparatus used in the manufacture of soft drinks and carbonated waters, namely, mixing, carbonating, and bottling machinery, and parts therefor” and “soft drinks and concentrates therefor.” Impressively, the registration claims a date of first use as early at 1904 (i.e., over 114 years). In 1999, SodaStream International’s predecessor in interest acquired the registration from Sodastream Limited.

It goes without saying that 114 years is a very long time and generally time is the friend of strong trademark rights. Given that the SODASTREAM mark has been around for over a century, Pepsi likely will not bury the brand as some commentators have speculated.

Life is Good Learned the Hard Way that Font Style Matters

"Life is Good logos with different font styles and colors"

The goal of every trademark applicant should be to secure the broadest scope of rights possible. One way to achieve this is to rely on the standard character form drawing when filing a trademark application instead of the particular font style used for the literal portion of the mark. We talked about the standard character form drawing in a prior post. However, sometimes protecting the font style used in a trademark makes business sense to do.

Life is Good used a unique font style for its LIFE IS GOOD logo that resonated with consumers. In fact, the font style became something consumers relied on to distinguish LIFE IS GOOD goods and services from others. In 2015, Life is Good substituted the unique font style for a more traditional typeface. This seemingly small change had a large impact on the brand’s image.

The main purpose of the mark drawing is to provide notice of the nature of the mark sought to be registered.  The drawing of a mark is promptly entered into the automated records of the USPTO and is available to the public through the Trademark Electronic Search System (“TESS”) and the Trademark Status and Document Retrieval (“TSDR”) database on the USPTO website. A special form drawing is required if words, letters, or numerals are presented in a distinctive form that engenders an uncommon or “special” commercial impression that would be altered or lost if the registration issued based on a standard character drawing.

A trademark applicant employing a unique font style that it recognizes consumers rely on to distinguish its goods or services from those of another company should protect both the literal portion of its mark in a standard character form and its stylized form. The reason to protect the stylized form in this circumstance is that it makes a potential enforcement matter more easy if the infringer adopts a similar typeface as well. But if you don’t know if consumers will rely on the typeface to distinguish your goods or services from others, then just stick with the standard character drawing.