The Chilling Effect Trademark Bullying Can Have on Speech

"Basketball going through a basketball hoop the NCAA trademark bullying"

The National Collegiate Athletic Association has and continues to aggressively enforce its trademark rights in the MARCH MADNESS trademark. In fact, its reputation for trademark enforcement is so well known that the KFANN sports radio station in Minneapolis, MN will not use the entire phrase MARCH MADNESS in an advertising spot for a local restaurant chain for fear of being sued by the NCAA. Instead, the word MADNESS is replaced with the sound of buzzer to indicate that the NCAA Men’s Basketball Tournament can be watched at this particular restaurant. This is a prime example of the chilling effect that trademark bullying can have on speech even when the speech is legal.

The NCAA’s first Trademark Trial and Appeal Board proceeding was commenced on May 24, 2007 against the University of Kentucky’s BIG BLUE MADNESS trademark application. Since then, NCAA has opposed:

  1. MOJO MADNESS for “prepared potatoes,” which is it ultimately lost when Shakey’s USA, Inc. voluntarily amended its description to “MOJO brand potatoes prepared at Shakey’s restaurants.” As an aside, this is a good example of how details a broad goods description may have to become in order to win a likelihood of confusion battle.
  2. MARCH RADNESS for a variety of clothing articles, which the NCAA won.
  3. LIVE THE MADNESS for a variety of clothing articles, which the NCAA won.
  4. APRIL MADNESS for sweepstakes, which the NCAA won.
  5. MARKDOWN MADNESS for automobile dealerships, which the NCAA lost.
  6. MARCH MATNESS for a website featuring entertainment information, which the NCAA won.
  7. MARCH IS ON! for coordinating and promoting athletic events, which the NCAA lost.
  8. MUNCH MADNESS for dips, processed vegetables, and chips, which the NCAA won.
  9. BASKETBALL MADNESS for downloadable video games, which is ongoing but suspended in light of a lawsuit filed in the United States District Court of the Eastern District of Kentucky. As an aside, the NCAA also petitioned to cancel the mark XOOKER, which is owned by the same owner of the BASKETBALL MADNESS mark. Hard not to construe that action as clear trademark bullying.
  10. And the most recent proceeding against MARCH MULLIGANS for sweepstakes, games of chance, and contests.

These are just the actions taken by the NCAA before the Trademark Trial and Appeal Board, but the NCAA has a reputation for also firing off demand letters. Some of these actions are legitimate, but several of them are not. It’s this overreaching that creates a trademark bully.

Not every use of another party’s trademark amounts to infringement. Under the doctrine of nominative fair use, a party – even a competitor – can use another party’s trademark to refer to that party provided only so much of the trademark is used to refer to the trademark owner. In other words, don’t use the full logo if the words are enough to refer to the trademark owner. In the case of the KFANN advertising spot, the radio station can legally use MARCH MADNESS to refer to the NCAA Men’s Basketball Tournament and should fear reprisal from the NCAA because of its overly aggressive trademark enforcement behavior.

Bicycles and Snack Bars Related Because Some Retailers Sell Both

"TREK snack bar packaging related to bicycles"

Most bicycle manufacturers do not make bicycles and snack foods. In fact, in a recent Trademark Trial and Appeal Board decision there was no evidence presented of a bicycle manufacturer also owning a federal trademark registration for the same mark in connection with any type of snack food. Nevertheless, the Trademark Trial and Appeal Board held that bicycles and snack bars are related goods.

Natural Balance Foods Limited sought to register the mark TREK for a variety of snack bars. The Trademark Office approved the TREK mark for opposition and Trek Bicycle Corporation (“Trek”) timely opposed the registration of Natural Balance Foods’ mark. Trek alleged that the TREK mark for snack bars was likely to cause confusion with its prior registered marks for TREK in connection with bicycles, online retail store services, and powders used in the preparation of sports drinks and energy drinks.

Based on the goods descriptions alone, snack bars, bicycles, online retail store services, and sport drink powders are different goods. However, when no restrictions are identified in the goods or services descriptions, these different goods are deemed to travel in all normal channels of trade and appeal to all classes of consumers. Natural Balance Foods made it easy for Trek to win its case.

Trek offered several third-party websites that sold bicycles and snack bars. The snack bars sold by the retailers were a different brand owner from both the retailer and bicycle manufacturer. But the fact that these goods were sold by the same retailer was enough for the Board to conclude that the channels of trade overlapped. And because the marks were identical, this overlap was enough for the Board to conclude that a likelihood of confusion was likely.

This decision highlights the challenge for trademark searchers. It is not enough to rely on the good or services descriptions because on their face these descriptions may lead to an incorrect analysis. It is imperative to consider past decisions to determine whether a relatedness finding had been found.

List of the Top 50 Most Valuable Apparel Brands

"person wearing NIKE shoes are the the most valuable apparel brands"

Brand Finance issued its list of the Top 50 Most Valuable Apparel Brands, and topping the list for a second year is NIKE. Brand Finance used the same valuation methodology in its evaluation of the Top 500 Bank Brands. Rounding out the Top 10 Apparel Brands are ZARA, ADIDAS, H&M, CARTIER, LOUIS VUITTON, UNIQLO, HERMES, GUCCI, and ROLEX.

Examining the list reveals an important insight. The majority of luxury brands are associated with a well-known designer. PRADA was founded by Mario Prada in 1913. GUCCI was founded by Guccio Gucci in 1921. HERMES was founded by Thierry Hermes in 1837. LOUIS VUITTON was founded by Louis Vuitton in 1854. CARTIER was founded by Louis-Francois Cartier in 1847.

The non-luxury brands are not associated with designers and are all inherently distinctive marks. Nike was a goddess in Greek mythology who personified victory. Victory being suggestive of sports apparel. The North Face being suggestive of outdoor apparel. Under Armour is also suggestive of athletic apparel.

These non-luxury brands demonstrate the importance of starting the journey from trademark to well-known brand with a suggestive, arbitrary, or fanciful mark. The law rewards creativity, and that reward comes in part with a finding that the mark is conceptually strong. Conceptual strength forms the keystone upon which a commercially strong mark can be built.

Coming up with a suggestive, arbitrary, or fanciful mark that resonates positively with consumers is not easy. That is why working with a naming professional is important. While cost is a concern for startups, considering the cost of a rebrand not only in terms of money spent but also lost time puts into perspective the value you get with a professional namer. Because of their experience, professional namers have a better sense for what will resonate with consumers than the founder of a company who more often than not chooses a name that sounds goods or merely describes the goods or services, which is not where you want to be.

Consumers Likely to Confuse Coffee and Energy Drinks

"Kick Ass coffee can related to energy drinks"

In a second case this year the Trademark Trial and Appeal Board looked beyond the identifications of goods descriptions to determine whether two goods were related. David John Critchley registered the mark KICK ASS (in standard characters) for, among other goods, energy drinks. Kicking Horse Coffee Co. Ltd. petitioned to cancel Mr. Critchley’s registration based on its prior rights in KICK ASS for coffee.

The Trademark Trial and Appeal Board found that the marks were similar and Mr. Critchley failed to produce more than 10 third-party registrations for coffee or goods related to coffee to establish that Kick Ass Coffee’s rights in KICK ASS were limited to coffee. The disputed factor was the relatedness of the goods.

The Board stated as it always does that the relatedness of goods is determined based on the goods or services as described in the application or registration. In this case, coffee and energy drinks are not technical goods in nature, nor are these words vague. An “energy drink” is defined as “any of various types of beverage that are considered a source of energy, especially a soft drink containing a high percentage of sugar and/or caffeine or other stimulant.” It is common knowledge that coffee contains caffeine and is consumed for a source of energy.

Coffee falls squarely within the definition of an “energy drink.” Nevertheless, the Board considered evidence of the real world marketplace to determine if identical marks were used on coffee and on energy drinks. Because there were numerous examples showing this, the Board concluded that coffee and energy drinks are related.

On May 5, 2006, David John Critchley filed a trademark application for KICK ASS in connection with, among other goods, energy drinks. Then for 8 years Mr. Critchley battled to acquire his registration going all the way through an ex parte appeal. His KICK ASS application was published for opposition on April 8, 2014 and matured into a registration on June 24, 2014. Then, shortly after his registration issued, on September 10, 2014 Kicking Horse Coffee Co. Ltd. petitioned to cancel his registration.

What is amazing about this prosecution history is that the application was filed on intended use of the mark in the United States. Why someone would fight for 12 years over a mark that is not even being used in the United States is peculiar. The amount of money spent by the applicant is simply not justified.

Evidentiary Mistakes Haunt NABOSO Application

"NABOSO product packaging"

Naboso Technology, LLC filed a trademark application to register the mark NABOSO (in standard characters) for “orthotics for feet,” rubber flooring, and “yoga mats.” Naboso Technology identified in its application that the English translation of NABOSO is BAREFOOT. The Trademark Office refused registration of Naboso Technology’s mark on the ground that it was likely to cause confusion with prior registrations for the mark BAREFOOT in connection with orthotics, rubber flooring, and yoga mats.

Naboso Technology did not attempt to narrow its goods descriptions and make a corresponding amendment to the descriptions in the cited registrations. Therefore the goods were deemed to be related, travel in the same channels of trade, and appeal to the same class of consumer. Not a good start for Naboso Technology.

Naboso Technology decided to make the conceptual weakness argument, and was on the right path because it submitted 11 third-registrations for marks containing the term BAREFOOT. However, there was a cloud over what appeared to be sufficient evidence because Naboso Technology did not properly introduce its evidence.

To make third-party registrations of record, that status and title copy of the registration must be introduced. Offering the registration certificate is insufficient. Additionally, lists of third-party registrations are also insufficient. Nevertheless, Naboso Technology made both mistakes. The only reason any of its third-party registration evidence was considered was because the Examining Attorney did not object to it.

When it came to commercial strength, the Board did not give many of the third-party registrations any weight because Naboso Technology did not introduce evidence of use for most of these marks. This was a costly mistake because instead of having 11 third-party registrations to rely on the number dropped to four, which was well below the 10 minimum.

The Board next considered the third-party registrations with respect to the conceptual strength of BAREFOOT mark. The lack of use evidence negatively impacted the conceptual strength argument as well brining the number of third-party registrations below 10. The Board also found that the third-party registrations demonstrated that BAREFOOT was a suggestive. Overall, the Board found that the BAREFOOT mark was not weak.

Finally, the Board turned to the similarity of the marks. Applying the doctrine of foreign equivalents, the Board found the the marks were confusingly similar. The outcome may have been different if the strength factor had come out in favor of Naboso Technology because Czechoslovakian is not a common language in the U.S.