Building Brand Awareness Requires Consistent Trademark Use

All startup companies and even some mature businesses have an issue with creating brand awareness, and brand awareness is the first step in the sales process. If prospective purchasers are unaware of your brand, it is much more difficult to get those prospective customers into the sales funnel and move them towards the conversion you want, which is ultimately a sale. There are many parts to building brand awareness, but one important part is consistent trademark use.

Recently, FastSigns highlighted four examples of business that made changes to their signs and graphics to help establish and grow their businesses. What you notice in the examples is not only the consistent use of graphics and colors, but also consistent use of the trademark. If the appearance of your trademark is different every time a prospective purchaser sees it, it will take longer to build up a strong association between the trademark and your goods and services.

After a mark is chosen, you then need to decide how the mark will be used so that it will stand out from the remaining text on the page and be distinguishable from other marks in the marketplace. These decisions should be standardized and set out in a Style or Usage Guide. 99designs has provided some tips on creating a Usage Guide, but their post also highlights the importance of working with a branding firm. After all, your business has just seven seconds with a customer to make a first impression.

Consistent trademark use is especially important if the chosen trademark is merely descriptive and the owner is trying to acquire trademark rights or the trademark exists in a crowded field. In these situations, the trademark conceptually is more difficult to distinguish from other similar trademarks. Therefore, creating the same experience for consumers will help estabi

Quaker Oats Brand Extensions Will Soon Include Milk

The Quaker Oat Company started its business by producing oats. However, the company has engaged in several brand extensions since its founding. Today, the QUAKER mark is used in connection with 80 different hot cereals, 28 different cold cereals, 37 different grain-based snacks, 22 different rice-based snacks, 22 other grain-based products.  That is a total of 189 different products.

When 2019 rolls around, The Quaker Oat Company will add product number 190 when QUAKER oat milk becomes available, and why not. Milk has been made of almost every type of nut, so its time to start making milk out of grains. And as long as the alt-milk trend continues, we’re sure to see other brand extensions into the milk category.

What is interesting is to examine the brand extensions The Quaker Oat Company has executed. With the exception of a few products like the REAL MEDLEY line, the only brands used are the QUAKER term and Logo. With respect to the Logo, most of the packaging uses the modern version of the Quaker image, but some packaging deliberately uses older versions of this logo. This is a strategic decision by the company to avoid even the potential argument that any prior rights in the logo have been abandoned. It’s a smart move if a company can pull it off as part of the overall brand strategy.

It is an interesting decision to use descriptive words only on the brand extensions and not name the product or product line. From a trademark strength perspective, extending the QUAKER mark and Logo increases strength. The more opportunity prospective purchasers have to interact with a trademark, theoretically, the stronger their association with the brand becomes. But consumers can and often do rely on more than one mark to identify the source of goods or services. You don’t have to look further than an infant who can recognize company logos before they can read.

The Heavy Burden of Proving Fame for Dilution Purposes

Most companies that have been using a federally registered trademark for ten years or more often mistakenly assume that the mark is famous. Long periods of use is a factor in the ultimate fame determination, but fame for dilution purposes is much different than fame for likelihood of confusion purposes. In fact, trademark owners would be better offer not using the word “fame” in the context of a likelihood of confusion. Recently, we saw this mistake play out in a case before the Trademark Trial and Appeal Board.

OTG Experience, LLC filed applications to register the mark PETER PIPER and PETER PIPER SMARTRUCK (in standard characters) for a variety of mobile food related services. OTG Experience’s applications were published for opposition and Peter Piper, Inc. opposed their registration relying on its prior registrations for PETER PIPER PIZZA (in standard characters with PIZZA disclaimed) in connection with “pizza” and “restaurant services.”

Peter Piper Pizza was founded in Arizona in 1973, and has used the PETER PIPER PIZZA mark for over 40 years. The company generates about $300 million in annual revenue across about 143 locations (although 43 are in Mexico) and spends about $20 million annually in advertising. While these numbers are significant, they were not enough to establish the fame of the PETER PIPER PIZZA mark.

The Trademark Trial and Appeal Board held that it is the burden of the party asserting fame to clearly prove it. In other words, fame needs to be proven by clear and convincing evidence. This standard requires the evidence presented must be highly and substantially more probable to be true than not and the trier of fact must have a firm belief or conviction in its factuality.

What this means for trademark owners is that offering numbers alone is highly unlikely to result in a fame finding. What a trademark owner needs to do is offer context for the raw statistics to demonstrate the general reputation the mark was with the public. Unfortunately, more often than not, trademark owners fail to provide the necessary context and the fame assertion fails because of it. That is what to Peter Piper Pizza.

Nevertheless, the raw statistics were enough for the Board to find that the PETER PIPER PIZZA mark was on overall strong mark entitled to a broad scope of protection. OTG Experience tried to counteract the strength evidence by relying on third-party use. Unfortunately, OTG Experience could only find three examples, well below the 10 minimum it appears is required to establish the weakness of a mark.

Limitations in Goods Descriptions Must be Meaningful to be Effective

You do not have to look far to find a Trademark Trial and Appeal Board decision that says the Board will not read a limitation into a goods descriptions where an express limitation does not exist. In fact, we have several blog posts this past year that touch on or directly address this principle. By now, readers of this blog know that broad goods descriptions cannot stand in the wake of a dispute with another mark. In order to succeed, the goods descriptions in the marks at issue must conform to the market place reality of the goods being offered.

The Board recently reiterated the importance of making meaningful limitations in goods and services descriptions in order to avoid potential disputes. Richard Rawlings’ Garage, LLC applied to register the mark RICHARD RAWLINGS’ GARAGE (in standard characters) for “headgear, namely, hats, caps, bandanas and beanies; hooded pullovers; hooded sweatshirts; jackets; pullovers; sweatshirts; t-shirts; tank tops; socks; underwear; all of the aforementioned goods bearing ornamental designs that associate the goods with the persona of Richard Rawlings or his business.”

The Trademark Office refused registration of this mark on the ground that it was likely to cause confusion with the prior registered mark RAWLINGS for various sports-related apparel. Richard Rawlings Garage’s primary argument against the refusal was that the limitation included in its application sufficiently distinguished its clothing from the sports-related clothing offered under the cited RAWLINGS mark. The Trademark Trial and Appeal Board disagreed.

Nothing in Richard Rawlings Garage’s identification stated that its goods cannot, or will not be sold, or worn as sporting apparel. Further, even though some of the owner of the cited mark’s goods were clearly for athletic purposes, not all of the goods were specifically sports-related. The Board must consider separately each item listed in an identification of goods. The fact that some of the  goods may be sports related by their nature does not limit other goods which are of more general use.

Additionally, the restriction had no bearing on the nature of the goods, classes of consumers, or channels of trade. The restriction simply restated what the applied for RICHARD RAWLINGS’ GARAGE mark was going to do, which was to indicate that Richard Rawlings Garage, LLC is the source of the identified goods. Because the restriction did not add a meaningful limitation to the goods description (not to mention the failure of not having a corresponding limitation in the cited marks), the Board affirm the registration refusal.

Girl Scouts Lawsuit Highlights Problems with Descriptive Marks

Despite both organizations having descriptive marks, the Girl Scouts of America recently sued the Boy Scouts of America for trademark infringement after the Boy Scouts announced its plans to drop the word “BOY” from its mark and allow girls to participate in its program. The Girl Scouts accused the Boy Scouts of undermining the Girl Scouts by attempting to covertly recruit girls into its organization. In its complaint, the Girl Scouts identify instances of alleged actual confusion where the Boy Scouts advertised that both boy and girl scouts may join its organization.

A defining characteristic for both the Boy Scouts and Girl Scouts from their inception and for about a century later was that boys joined BOY SCOUTS and girls joined GIRL SCOUTS. These terms describe a significant characteristic, feature, or purpose of the respective organizations. Accordingly, the terms BOY and GIRL do not have any source identifying significance, and the Boy Scouts can delete this term from its mark without changing the overall commercial impression of the mark. In other words, the Boy Scouts will not abandon their prior trademark rights by deleting BOY from the mark.

Trademark law also does not restrict or limit the operations of a company or organization. Despite historically accepting only male applicants, the Boy Scouts can broaden its applicant pool to include girls, adults, etc. In fact, broadening applicant pool may be evidence of a natural zone of expansion. When the expansion occurs, it will be promoted and certain words may be required for the promotion.

In the case of the Boy Scouts, the decision to broaden its applicant pool requires it to use the word “girl” in order to attract female applicants. Using the word “girl” in this way even with or in close proximity to SCOUTS is a classic fair use. Classic fair use occurs when another party uses a term to exploit its descriptive meaning. It is another negative aspect to adopting descriptive marks.

Addition of House Mark Did Not Eliminate Confusion

To add or not to add the house mark, that is the question. This is a good question because the Trademark Trial and Appeal Board has gone both ways on the question. In some cases, the Board has found that the addition of a house mark is sufficient to avoid confusion, and in others the Board has found that it aggravates the likelihood of confusion. In a recent decision involving the COCOON BY SEALY mark, the Board gave us some guidance on when to add the house mark.

Cocoon International Sales, LLC filed an application to register the mark COCOON BY SEALY (in standard characters) for “mattresses; pillows.” The Trademark Office refused registration of this mark on the ground that it was likely to cause confusion with the prior registered mark SLEEP COCOON (in standard characters) for “mattresses; pillows.”

The Trademark Office found the goods are identical and because the descriptions are unrestricted the channels of trade and class of consumers factor overlap. Cocoon International Sales tried the conceptual weakness argument but was only able to offer 4 third-party registrations (but in reality only two because three of the four were owned by the same entity), a number well below the 10 minimum we have posited is required.

Facing an uphill battle, Cocoon International Sales tried to distinguish its mark by arguing the addition of the famous SEALY house mark was enough to tip the mark similarity factor in its favor along with the ultimate finding of no likelihood of confusion. In finding that it did not adequately distinguish the COCOON marks, the Board identified when a house mark can distinguish two marks:

  1. When there are recognizable differences between the marks, then adding a house mark may help.
  2. When the marks are highly suggestive or merely descriptive, then adding a house mark may help.
  3. When the marks are conceptually weak, then adding a house mark may help.
  4. When the house mark precedes instead of follows the mark, adding it may help.

Unfortunately for Cocoon International Sales the Board found that COCOON was “mildly suggestive” of mattresses and pillows. Therefore, adding SEALY to the mark was not enough to avoid a likelihood of confusion finding.

Trademark Fame Lacking Admissible Evidence

Plaintiffs arguing trademark fame for purposes of the likelihood of confusion analysis is about as common as defendants arguing the plaintiff’s trademark is conceptually weak. Plaintiffs want to establish trademark fame because strong marks are entitled to a broad scope of protection. For the record, trademark fame for likelihood of confusion purposes is different from fame for trademark dilution purposes.

More often than not, a trademark fame argument fails not because the evidence of fame does not exist, but because the plaintiff fails to properly admit the evidence to the Trademark Trial and Appeal Board. During the discovery period it is easy to get fixated on obtaining the evidence the party needs and not on the admissibility of the evidence being acquired. This was the problem Diesel S.p.A. encountered in its recent case before the Trademark Trial and Appeal Board.

Misel Disel, LLC filed an application seeking registration on the Principal Register of the mark MISEL DISEL (in standard characters) for “smooth shave enhancer, namely, pre-shave liquid.” The Trademark Office reviewed the application and found no conflicting marks that would bar registration under Trademark Act Section 2(d). The MISEL DISEL mark was published for opposition and Diesel S.p.A. opposed the registration of the mark.

Diesel was the owner of several prior registrations for DIESEL (in standard characters) and DIESEL formative marks, but the Trademark Trial and Appeal Board focused on one:  DIESEL (in standard characters) for, among other goods, “pre- and after shave creams and lotions.” The Board found that the MISEL DISEL and DIESEL marks were similar, the goods closely related, and there was no weakness based on the co-existence of third-party registrations. Misel only came up with three registrations for DIESEL and none were for goods remotely close to pre- and after shave creams and lotions.

Diesel argued that its DIESEL mark was famous for likelihood of confusion purposes. To support this argument, it relied on documents only. It offered no testimony, which was Disel’s fatal mistake.

Financial information is key to establishing trademark fame, but this information must be offered through testimony. It is not self-authenticating evidence. Web pages can be self-authenticating, but the Web pages are admissible of what they show on their face only, not to prove the truth of any matter asserted in the them.

Documents produced in response to a Document Request are also inadmissible unless other authenticated through a Request for Admission.

Because Diesel did not give any consideration to admissibility, it was left with minimal evidence on trademark fame and the Board was unable to find that the DIESEL was famous for likelihood of confusion purposes.

How to Win the Relatedness of Goods Argument

Once again we see a trademark applicant trying to win the relatedness of goods argument without first narrowing the descriptions, and trying to win the conceptual weakness argument by not hitting the 10 third-party registration threshold. If you intend to make a real world marketplace argument, then the identifications of goods and services must reflect the real world. Unfortunately, this was a lesson Productos Verde Valle, S.A. de C.V. learned the hard way.

Productos Verde Valle applied to register the mark SONIA (in standard characters) for “sauces; chili sauce; hot sauce.” The Trademark Office refused registration of this mark on the ground that it was likely to cause confusion with the prior registered mark SONIA SONI LIFE IS A RECIPE (in standard characters) for, in relevant part, “spices, spice blends; spice rubs.”

The Trademark Office offered evidence showing the same mark being used for both sauces and spices. This evidence was sufficient to put the Tradmark Office in the first position to win the relatedness of goods argument. Productos Verde Valle argued the goods are unrelated because its sauces are sold as a Mexican food product whereas the SONIA SONI LIFE IS A RECIPE spices were sold as an Indian food product. However, the identification of goods descriptions were unrestricted as to a type of cuisine and an applicant may not restrict the scope of its goods or the scope of the goods covered in the cited registration by extrinsic argument or evidence.

The Trademark Trial and Appeal Board also noted that certain spices may be used in both Mexican and Indian cuisine. What this last sentence tells is the level of detail that may be required in order to differentiate the goods. In this case, for example, it would have been sufficient to say “Mexican sauces” and “Indian spices.” To win the relatedness of goods argument, it may be necessary to get very detailed about the real world marketplace. This requires examining the goods and services at issue in detail including not only the nature of the goods, but where they are marketed and who the target consumers are.

When it came to the conceptual weakness factor, Productos Verde Valle did not find any SONIA mark only marks that shared the letters “S”, “O”, “N”, and “A.” Unlike what happened in the CARDITONE case a few days ago where the Board refused to give any weight to the 69 CARDIO third-party registrations because the mark at it issue was CARDI, the Board gave some weight to the third-party registrations offered by Productos Verde Valle. Nevertheless, Productos Verde Valle was only able to find four third-party registrations to support its conceptual weakness argument. Accordingly, the Board did not find that the SONIA mark was weak.

Even if it was found to be a weak term, Productos Verde Valle’s mark was incorporated in its entirety in the SONIA SONI LIFE IS A RECIPE mark. If you are going to make the conceptual weakness argument, you must have something to point to that distinguishes your mark from the other mark that shares the weak term. Therefore, the Board affirmed the registration refusal.

A Crowded Field + Identical Services Requires a Distinctive Term

Twenty two third-party trademark registrations was too much for the Trademark Trial and Appeal Board to ignore even though it tried to downplay some of the registrations offered by 8415927 Canada, Inc. Despite the conceptual weakness, the Board affirmed the refusal to register the DIVE PRIME SEAFOOD (in standard characters) and with a Design marks because no distinctive term was used.

8415927 Canada, Inc. applied to register the mark DIVE PRIME SEAFOOD in connection with “bar services; restaurant services; take-out restaurant services.” The Trademark Office refused registration on the ground that the marks were likely to cause confusion with the prior registered mark DIVE COASTAL CUISINE & Design for “restaurant services.

8415927 Canada argued that DIVE was a diluted term and afforded a very narrow scope of protection. 8415927 Canada offered 22 third-party registrations for marks containing the term DIVE for restaurant and related services. The Board tried to undermine the third-party registrations noting that no evidence of use was offered, and that none were for DIVE by itself. According to the Board, the fact that some of the third-party registrations had other terms changed the meaning of the term DIVE.

Nevertheless, 22 was too much for the Board to ignore and well above the 10 we speculate is required to prove trademark weakness. Therefore, the Board concluded that the DIVE COASTAL CUISINE & Design mark was conceptually weak. While it is normally a good sign for the trademark applicant, it was not enough to overcome the other likelihood of confusion factors.

In particular, the Board was handcuffed by the unrestricted identification of services descriptions. The marks at issue identified “restaurant services,” consequently the Board was required to find that the class of consumers and trade channels overlapped. Less similarity between the marks was also required in order to find a likelihood of confusion.

The lesson learned in this case is that when there is a crowded field concerning a certain term and the goods or services at issue are identical, then the addition of descriptive terms is not enough to distinguish the marks. A distinctive term needs to be incorporated in the proposed mark.