Do You Believe in Miracles … Trade Channels Decide TTAB Case

Before you get too excited about the headline, this most recent TTAB decision may be another curveball and something that will not become the norm. On the other hand, it could be the start of something so we will be watching to see if another trend develops. The trend that may be starting is whether the introduction of uncommon trade channels to the goods or services description can defeat goods or services descriptions that are unrestricted as to channels of trade.

Minibar North America, Inc. filed a trademark application to register the mark MINIBAR SMARTSNAX (in standard characters) for “packaged snack foods, namely, candies, nuts, pretzels, popcorn, and cookies.” The Trademark Office refused registration of the MINIBAR SMARTSNAX mark on the ground that is was likely to cause confusion with two prior registered marks: SMART SNACKS (in standard characters) for “candy, caramels, chocolate and chewing gum” and THE SMART SNACK (in standard characters) for “dried fruits; dried fruit mixes; dried fruit snack foods; snack mix consisting primarily of processed fruit, processed nuts and/or raisins; shelled, roasted or otherwise processed nuts; candied nuts; raisins.” None of the goods descriptions in any of the marks at issue identified trade channel or class of consumer restrictions.

We also see again a trademark owner attempting to register the broadest goods description as possible. This is another example supporting the trademark search theory that you need to start broad with your search descriptions. Starting with a narrow description will result in missed registrations.

In response to the Office Action, Minibar North America did the smart thing and voluntarily amended its goods description to include a trade channel limitation. Minibar North America amended the goods description in its MINIBAR SMARTSNAX application to: “packaged snack food, namely, candies, pretzels, popcorn, and cookies packaged for sale to hotels, motels, and temporary stay facilities for distribution through refrigerators and food storage cabinets having sensors to detect presence and removal of packages” in International Class 30 and “packaged snack food, namely, processed nuts packaged for sale to hotels, motels, and temporary stay facilities for distribution through refrigerators and food storage cabinets having sensors to detect presence and removal of packages” in International Class 29. The Trademark Office maintained the refusal and Minibar North America appealed.

Minibar North America did not take the next step to petition to partially cancel the SMART SNACKS and THE SMART SNACK registrations to exclude “sale to hotels, motels, and temporary stay facilities for distribution through refrigerators and food storage cabinets having sensors to detect presence and removal of packages.” Ordinarily, the failure to obtain this corresponding amendment in the cited mark registrations would have been the final nail in the coffin for the MINIBAR SMARTSNAX application, but not this time.

The TTAB restated its settled precedent that unrestricted goods descriptions are presumed to travel through all usual channels of trade and are offered to all normal potential purchasers.” The TTAB took the opportunity to conclude that distribution through refrigerators and food storage cabinets having sensors to detect presence and removal of packages was not a “usual” trade channel for candy, cookies, nuts, etc. Rather, vending machines, convenience stores, grocery stores, and the like were the usual trade channels for candy, cookies, nuts, etc.

The TTAB’s analysis, which was correctly pointed out by the dissent, completely ignored the TTAB’s precedent that the owner of an unrestricted trademark registration is entitled to change its trade channels at any time and that trademark owners often expand into new trade channels.

Moreover, because the amended description included “sale to hotels, motels, and temporary stay facilities,” the TTAB inferred a sophisticated consumer. However, this analysis completely ignored the end consumer of the candy, cookies, nuts, etc. from the hotel, motel, or temporary stay facility. This is individual is not sophisticated like the snack food buyer at a hotel, motel, or temporary stay facility and this person needed to be taken into account by the TTAB. The applicable standard of care for a likelihood of confusion analysis is that of the least sophisticated consumer.

Strength Argument Done the Right Way Wins at TTAB

Simpson Industries recently won an appeal before the Trademark Trial and Appeal Board – one of the few reversals that occurred this year – by properly making the strength argument. Because it executed the strength argument well, Simpson Industries was able to narrow the scope of rights in the cited mark, which allowed the differences in the marks to determine the likelihood of confusion test. Here’s how Simpson Industries executed the strength argument.

Simpson Industries applied to register the mark RAINFOREST NUTRITION (in standard characters, NUTRITION disclaimed) for “dietary and nutritional supplements.” The Trademark Office refused registration of this mark on the ground that it was likely to cause confusion with the prior registered mark RAINFORST ANIMALZ (in standard characters) for “nutritional supplements.” The goods were legally identical and did not contain any limitations; therefore, Simpson Industries’ only path to success was to win the similarity of the marks likelihood of confusion factor.

Simpson Industries offered 11 third-party registrations for marks containing RAINFOREST, one registration over the 10 minimum. If there was one flaw in the strength argument it was that not all of the third-party registrations identify nutritional supplements and nothing in the decision addressed the relatedness of the food and beverage products and nutritional supplements. Nevertheless, in this case, the Board gave weight to all 11 third-party registrations.

Simpson Industries also offered evidence of third-party use of the term RAINFOREST on a variety of nutritional supplements. The use evidence included not only trademark use, but also descriptive use. The descriptive use was even more persuasive because of the prior position the owner of the cited mark took during the prosecution of its application. Generally, the Trademark Office takes the position that each application must stand on its own facts and rarely relies on statements made by trademark applicants in other applications.

The 11 third-party registrations, third-party trademark use, descriptive use, and prior statements of the owner of the cited lead to the conclusion that the RAINFORST term is conceptually and commercially weak for “nutritional supplements. Because of this weakness finding, the use of NUTRITION – even though it was disclaimed – was enough to distinguish Simpson Industries mark from the cited RAINFOREST ANIMALZ mark.

Where Font Stylization Stops and Design Begins

Trademark applications for words are generally filed with a standard character drawing. A trademark registration issued with a standard character drawing extends protection in the words to all forms of stylization, size, and color. A standard character drawing does not extend protection to all possible design elements in a mark. A recent Trademark Trial and Appeal Board decision did not help to determine when font stylization stops and design begins.

Anthony Fisher filed a trademark application for bumper stickers and clothing and submitted the following drawing of his trademark:

In his application, Mr. Fisher identified the letters “VF” as the literal element of the mark and described his mark as “two fish hooks connecting in the middle to form the stylized letters ‘VF’.” Mr. Fisher’s trademark application sailed through examination by the Trademark Office and was published for opposition where it was promptly opposed by V.F. Corporation.

V.F. Corporation alleged that Mr. Fisher’s stated “VF” stylized mark was likely to cause confusion with its prior registered VF marks, two of which are for standard character drawings. V.F. Corporation’s registrations were for retail store services featuring apparel, backpacks, and outdoor gear and equipment. The Board found that Mr. Fisher’s clothing was related to V.F. Corporation’s retail store services, but not his bumper stickers. Nevertheless, the salient issue, in this case, was the similarity of the marks.

The Board gave no consideration to the words used by Mr. Fisher when preparing his trademark application. The Board said that it is not the description of the mark but the drawing that depicts the mark for which registration is sought. Against this backdrop, the Board proceeded to tell Mr. Fisher what his mark is. The Board said “we do not discern the letter ‘F’ and it is highly unlikely that prospective consumers would. In fact, consumers likely would not perceive any letters in [Mr. Fisher’s] design mark, but instead may only perceive a stylized checkmark.” As demonstrated by the Board, the question of whether something is stylization or design is subjective.

Under the circumstances, the Board telling Mr. Fisher what his mark is benefitted him, but it highlights a possibly troubling practice. The Board’s precedent is settled that it should not substitute its judgement on confusion for those parties on the firing lines in the marketplace. This rationale should extend to trademark applicants as well. The descriptions offered by the trademark applicant should be given more weight than the treatment the description received in this case.