Cannabis is undoubtedly a polarizing subject. Some people like Anheuser Busch heir Adolphus Busch V are jumping in head first starting cannabis companies. Other companies want nothing to do with plant and will fight to ensure prospective purchasers do not mistakenly associate it with any type of cannabis company. M. Shanken Communications Inc., the publisher of Wine Spectator magazine, is on the later side of the cannabis spectrum, and sued Modern Wellness Inc. for using the mark WEED SPECTATOR for a website that provides information about cannabis and cannabis-based products.
Wine Spectator alleged in the lawsuit that Weed Spectator not only adopted a confusingly similar trademark, but that it also copied its 100-point rating system. In fact, Wine Spectator alleged that this was a “classic case of passing off.” In addition, Wine Spectator filed a letter of protest against Modern Wellness’ pending applications for WEED SPECTATOR in connection with “providing on-line digital publications in the nature of education in the field of cannabis via the Internet.”
A letter of protest is a way to object to a pending application before the application is published for opposition. The party submitting the letter of protest is not allowed to make any arguments about the registrability of the pending mark. You are only allowed to submit evidence the party believes supports a refusal to register the pending mark. If accepted, that evidence will be used as a basis to refuse registration of the applied for mark. Letters of protest are not always accepted though.
This case raises an interesting point for trademark searchers. We have talked a lot about the importance of the relatedness of goods factor and that prior case law is the best indicator for assessing whether certain goods or services are related. But what do you do when there is not a lot of case law to turn to? Cannabis is still a banned substance federally, but has recently been legalized in some states. There has not been an opportunity for a court to decide the issue of whether wine and weed are related goods.
In these situations, trademark searchers need to look to other context to see what other type of products have been found to be related. The context of the Weed Spectator website is to inform individuals about something they could use in a social setting much like alcoholic beverages are used in a social setting. Therefore, it would be reasonable to compare how the Trademark Office has treated alcoholic beverages and cigars, for example, to assess how the relatedness of goods factor will shake out. However, overtime, a body of case law will develop around cannabis and cannabis-based products.
Oberlo blogged about the Color Psychology, which is the important role color plays in how consumers perceive a brand. According the post, color affects our day-to-day decisions including what items to buy. The Drum also wrote about blue being the dominant color used by global industries. Because of its importance in the purchasing decision, more companies should consider protecting colors as trademarks. However, not as many as you think attempt to do this because obtaining a trademark registration for a color – as a non-traditional trademark – can require some effort.
Recently, the Trademark Trial and Appeal Board addressed, for the first time, whether multiple colors applied to product packaging can be an inherently distinctive trademark or if the colors must acquire distinctiveness. Forney Industries, Inc. – manufacturer of welding and abrasives tools, equipment, and accessories – applied to register the colors black, yellow, and red applied to packaging for a variety of welding and abrasives goods. The Trademark Office refused registration of Forney’s mark on the ground that the multiple colors is not an inherently distinctive trademark.
Color applied to product packaging is treated the same as color applied to a product and because color applied to a product can never be an inherently distinctive trademark, color applied to product packaging can never be an inherently distinctive trademark. This does not mean that color can never function as a trademark for a product or its packaging, but that color must acquire distinctiveness. It is not immediately protectable as a trademark. And there is no meaningful distinction between a single color or multiple colors when applying this principle.
This case involved color in the abstract. If Forney had applied the multiple colors applied to well-defined shape, pattern, other distinctive design, then the color applies to that extra matter could be inherently distinctive. But since Forney did not argue in the alternative that its multiple color mark had acquired distinctiveness, the Board affirmed the refusal to register Forney’s multiple color mark.
Although there seems to be less publicity recently about trademark bullies, that does not mean they have gone away. Trademark bullying is alive and well, and the Associated Press recently published an article pointing the finder at universities as the newest members to this disfavored group. A few examples the article highlighted are:
- Duke University opposed the registration of DUKE’S FOLLY for “wine” and “custom production of wine for others; providing information about wine-making”;
- North Carolina State University objected to the use of WOLFPACK – the nickname for its sports teams – by a convenience store in Raleigh, NC called Wolfpack Mini Mart, and a California brewery’s use of Wolfpack to promote its wolf themed beers; and
- Texas A&M University objected to Erik Nolte’s plans to produce a beer called the 12TH CAN.
The United States Patent and Trademark Office once defined a “trademark bully” as “a trademark owner that uses its trademark rights to harass and intimidate another business beyond what the law might be reasonably interpreted to allow.” Despite this definition, most people believe a trademark bully is any large company that is picking on a smaller company, but this is not always the case. And while most “trademark bullies” do not have a specific intent to harass the other party, they do have an intention to intimidate their opponent.
The problem with bullies is that they cause their opponent to unnecessarily spend money and sometimes money they don’t have. Here are some characteristics to be on the lookout for to avoid a party that is likely a trademark bully:
- Does the person or party own numerous trademark registrations for the same mark?
- Do those marks exist in a crowded field?
- Does the correspondent information at the USPTO for the trademark owner’s marks identify a solo practitioner, small firm, or large firm with a reputation for aggressive litigation tactics? A common problem in the trademark bully area are lawyers that do not have a deep understanding of the likelihood of confusion factors.
- Has the trademark owner been involved in several proceedings before the Trademark Trial and Appeal Board?
The United States Trademark Office is fighting for its decision to refuse registration of the mark FUCT for “Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps; Children’s and infant’s apparel, namely, jumpers, overall sleepwear, pajamas, rompers and one-piece garments” on the ground that the mark is vulgar; thus, scandalous. Recently, the USPTO filed a Petition for Writ of Certiorari with the United States Supreme Court asking that it review the decision of the United States Court of Appeals for the Federal Circuit that held registration refusals on the ground of scandalousness violates the free speech right of the First Amendment to the U.S. Constitution.
We previously discussed the timing of the recent decisions involving Section 2(a) of the Trademark Act and the impact Federal Circuit’s decision would have on trademark searching if the decision stands. And the reason we discussed in that prior post is the argument the Trademark Office is making in its Petition to the Supreme Court. Section 2(a) will not prevent trademark owners from using immoral or scandalous terms as trademarks, it will simply prevent the trademark owner from receiving certain benefits from the Trademark Office that are afforded to registered trademarks.
When the In re Tam decision resulted in disparaging words no longer being off-limits for trademark registrations, we did not see a rash of new applications for disparaging marks. Similarly, it seems like the only person who took advantage of the Federal Circuit’s decision on immoral and scandalous terms was Erik Brunetti himself who filed five new trademark applications for or containing FUCT.
It is hard to imagine that the Supreme Court is going to make a meaningful distinction between disparaging terms and immoral or scandalous terms. Nevertheless, if the Trademark Office is successful, the concern about having to consider scandalous or immoral terms in a trademark search will remain.
It should not come as a shock that the timeline to register a trademark at the United States Patent and Trademark Office is not quick. But understanding the process and how much time it actually takes is important for companies, trademark searchers, and naming firms because it should inform when the naming process should start. The USPTO issued some timelines based on the filing basis of the application, but they are not the easiest diagrams to follow.
When a trademark application is filed with the USPTO regardless of the filing basis, the application will be assigned to an examining attorney to review the application. This assignment will not happen for three months. To the extent an issue exists with the application, the first office action will likely not issue for a couple of weeks after the assignment of the application. If no issue exists with the application, then the Trademark Office will issue the notice of publication.
Already, there is a three-month delay before you will know whether the mark is available. Let’s assume there are no issues with the application and the notice of publication issues. When the application is published for opposition, this starts a 30-day period when anyone that believes he or she will be damaged by the registration of the mark may formally oppose its registration. So now you are a little over four months before you will know your proposed mark will register.
But let’s assume a first office action issues, then a response to the office action is not due for six months from the date it issued. Most parties do not respond to the first office action right away and most wait until the six month response deadline is close. According to the USPTO’s Data Visualization Center, the total pendency of resolving a first office action is 9.7 months from the filing of the application. It is only after this first office action is resolved that the opposition period begins, which would then kick the timing out another month.
The timeline to register a trademark means that you should start the naming process early. If you don’t start the naming process early, then you need to be more conservative during the trademark search process because you may not have the luxury of starting over with a different mark.
Pizza Inn, Inc. filed an application to register the mark AMERICA’S HOMETOWN PIZZA PLACE (standard characters) for “restaurant services; carry-out restaurant services.” The company voluntarily disclaimed PIZZA PLACE; thus, admitting that AMERICA’S HOMETOWN was the dominant portion of its mark. The Trademark Office refused registration of Pizza Inn’s mark on the ground that it was likely to cause confusion with the prior registered mark HOWTOWN PIZZA (standard characters) for “restaurant services.”
This application was facing an uphill battle from the beginning. The services descriptions were identical, so less similarity between the marks is necessary in order for a likelihood of confusion to exist. And the descriptions are not technical or vague, so it would be inappropriate for the Trademark Office to consider any extrinsic evidence of the use of the mark in the marketplace. Finally, the cited mark – HOMETOWN PIZZA – was incorporated in its entirety in Pizza Inn’s proposed mark.
The only chance the Applicant had was to argue that HOMTOWN PIZZA was so conceptually weak that the addition of AMERICA’S and PLACE were sufficient to avoid confusion. Pizza Inn offered eight third-party registrations that were for or included the term HOMETOWN for “restaurant services.” And of those eight third-party registrations, two were dead registrations, which are given no consideration during the examination of a trademark application. So Pizza Inn really only had six, third-party registrations.
Pizza Inn was four registrations shy of the ten mark where the Trademark Office has found a crowded field exists for a particular term. And the Trademark Trial and Appeal Board found that the third-party registration evidence offered by Pizza Inn was insufficient to establish that HOMETOWN PIZZA was conceptual weak; thus, entitled to a narrow scope of protection. What Pizza Inn should have done was offer evidence of third-party use not registrations of HOMETOWN PIZZA. A simple Internet search reveals numerous restaurants called HOMETOWN PIZZA.
Phil Davis – founder of Tungsten Branding – recently wrote an article for Forbes about why your last name may not be the best choice for the name of your business. The article identifies many problems with adopting your last name as your company name, but the one problem that recently was addressed by the Tradmeark Trial Appeal Board is that your name may be one of many similar last names. There is no right to use your name as a trademark if it is likely to cause confusion with another mark.
Doofood filed an application to register the mark DOOFOOD & Design for made-to-order meal kits. Doo is part of the Applicant’s name DooJin Kim. The Trademark Office refused registration of this mark on the ground that it was likely to cause confusion with a prior registered mark DO FOOD & Design for a prepared meal kit. The Trademark Trial and Appeal Board found that goods and services at issue were related and the design components of the marks at issue would likely be perceived as background to the literal elements of the marks. The use of pot design in the DOOFOOD & Design mark only reinforced the preparation of food.
Doofood did not offer any evidence of the conceptual weakness of the DO FOOD mark. Instead, it attempted to argue that the meanings of the marks were sufficiently different to avoid a likelihood of confusion. Dissimilarity of sound has trumped similarity in the appearance of the marks at issue. And dissimilarity of appearance has trumped similarity in sound before. But rarely if ever has dissimilarity in meaning trumped similarity as to sound and appearance.
Compounding Doofood’s problem was its lack of evidence on the difference in meanings. It appears that Doofood relied only on argument, which the Board held will never make up for a lack of evidence.
This case highlights that even your name needs to be searched before making the decision to adopt it as the name of your business.
The Trademark Trial and Appeal Board for the second time this year considered what was happening in the real world marketplace to determine if consumers were likely to confuse the ASKBOT and ASK trademarks. ASKBOT, Spa filed a trademark application to register the mark ASKBOT in connection with software for creating online forms that allow the posting of questions and answers. The ASKBOT software is sold B2B with the users never seeing the registered trademark.
IAC Search & Media, Inc. petitioned to cancel the ASKBOT on the ground that the mark was likely to confusion with its ASK mark for a search engine service. As we have reported time and time again, the Board generally constrains its analysis of the relatedness of goods or services to the descriptions contained in the registration and application at issue. However, when the identification of goods or services descriptions are technical or vague and require clarification, it is appropriate for the Board to consider extrinsic evidence of use to determine the meaning of the identification of goods or services descriptions.
In this case, the Board did not describe what was technical or vague about the descriptions in the registrations at issue. And although it concluded that the consideration of extrinsic evidence was appropriate, it found that the goods at issue were related.
What the Board used the extrinsic evidence for was to identify differences in the channels of trade and classes of consumers. And what the Board found was that IAC Search & Media’s customers and prospective customers were unlikely to encounter the ASKBOT mark because they target consumers whereas ASKBOT, Spa targets businesses.
The nail in the coffin for IAC Search & Media was when ASKBOT, Spa was able to cross the 10 third-party registration threshold by producing 11 third-party registrations for marks containing ASK in connection with services related to online searching. These registrations coupled with the dictionary definition of “ask” were enough for the Board to conclude that the ASK mark was inherently weak and that would be something that IAC Search & Media would be unable to overcome.
WPP, the world’s largest advertising agency, reported its second-quarter results that showed weak performance in North America. The Wall Street Journal reported that “[l]ike-for-like net sales – a figure closely watched by analysts to measure the company’s underlying performance – dropped 3.3% in North America.” Some of this decline was attributed to advertisers paying less on traditional ad campaigns, but it was also attributed to advertisers demanding a wider suite of services including new product development. It goes without saying that new project development necessitates the creation of new names.
Not only are companies requirements from firms changing, but the manner in which they pay for those services is also changing. No longer are companies paying large retainers to have an agency of record. Instead, companies now are paying by the project. Small to mid-size companies have likely been paying by the project for some time, but what this article shows is that agencies need to become more efficient to remain profitable as the pricing pressure from companies intensifies.
This problem is not unique to the advertising industry. All service based businesses (e.g., law firms, accounting firms, etc.) are feeling the pricing pressure from companies, and the demands for efficiency.
The way to survive the pricing pressures and to demonstrate a commitment to efficiency is to be an early adopter and user of technology when it makes sense to do so. There are some tasks that are ripe for technological intervention. One of those tasks for agencies is the trademark search function. This is not a task that an agency should be spending its time doing when there are tools available that can do it more quickly and more cost effectively.
BOB is a tool that not only can save agencies time and money, but also demonstrate a commitment to technology to prospective clients to help develop more business. BOB’s patent pending, multi-name search functionality accomplishes this and is easy to use. Just complete the Excel worksheet that is available on the BOB website with the marks you want to search. Select the goods or services you want to search the list of marks in connection with, and then wait for the search results to be delivered to your in-box. You can watch the multi-name search work by clicking HERE.
Keep a quick reference to the spectrum of distinctiveness close when working with trademarks. The spectrum of distinctiveness is the starting point to determining what is protectable trademark subject matter to assessing the similarity between marks or trademark strength. Here are a few pointers for using the spectrum:
- Trademarks that are suggestive, arbitrary, or coined/fanciful starting creating trademark rights the second they are used in commerce. Trademarks that fall in the descriptive category must acquire distinctiveness because they can create trademark rights. The general rule is that descriptive marks acquire distinctiveness after five years of substantially exclusive use in commerce. Although, this five year period can be shortened with the right advertising campaign.
- Generic terms can never function as a trademark. The general saying is “once generic always generic.” The United States Court of Appeals for the Federal Circuit recently held that not only do generic terms exist for a genus of goods but also to a subgenus. In this case, the Court found that the relevant public understands the term ZERO to refer to a subgenus of soda.
- It is possible for a trademark to slide down the left side of the spectrum towards generic. However, trademark attorneys make more about genericide than they should. You would be hard pressed to come up with a recent example of a trademark that has succumb to genericide.
- Trademark markings are helpful, but not required. Nevertheless, it is always a good idea to put others on actual notice of your trademark rights.
- The further to the right your trademark lands on the spectrum of distinctiveness, the more conceptual strength the trademark has. When thinking of a starting point for a new brand, being on the right side of the spectrum has its advantages.
Naming firms may talk about the spectrum of distinctiveness using a slightly different vocabulary, but anyone working in naming or trademarks has the spectrum close to whatever project they are working on.