Trademark Dilution is Deciding Factor In Recent TTAB Case

Trademark dilution is one of three key likelihood of confusion factors that must be evaluated when conducting a trademark search and then re-evaluated if a registration refusal arises. Trademark dilution directly impacts the evaluation of the other likelihood of confusion factors. The weaker the senior user’s mark, the closer the junior user’s mark can come …

Infringing LIL’ BEANIES is not Like Taking Candy from a Baby

The Willamette Week reported that a Portland vegan ice cream company changed its name to Little Chickpea after Gerber complained that the company’s proposed LITTLE BEAN name was likely to cause confusion with its registered mark LIL’ BEANIES. Little Chickpea said in the story that Gerber insisted that the company change its name even though …

Connotation is the Deciding Factor in Registration Refusal

The analysis of the similarity of the marks involves the consideration of three factors: (1) visual similarity; (2) sound similarity; and (3) similar connotation. Generally, the visual similarity of the marks factor trumps the other two factors. But for the second time in about three months, the connotation factor has been the dispositive factor. Don’t …

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 …

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 …

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 …

Single Word Defeats Entire Whiskey Distillery Logo

When it came to the similarity of the marks likelihood of confusion factor, a whiskey distillery threw the kitchen sink at the Trademark Office and still lost because of a single word. Unfortunately for the applicant, this was a situation where the Trademark Office should have exercised its discretion to look at the two marks …

Smith & Wesson House Mark Can’t Distinguish Shared Terms

Years ago it was a successful strategy to avoid a likelihood of confusion by adding a house mark to a proposed mark regardless of whether the shared term was conceptual weak. However, times changed and what used to be a successful strategy now only works under certain circumstances. According to the Trademark Manual of Examining …

Breathable, Waterproof Fabric is Related to Clothing

The Trademark Trial and Appeal Board recently found that breathable, waterproof fabric used to create clothing is related to clothing in general. A general rule for assessing whether goods are related is whether the goods are or can be used together. If the goods can be or are used to together like fabric and clothing, …

I Pitty the Fool Who Infringes My Trademark

One person we would never mess with is Mr. T who was the muscle for the A-Team. Leafly – a website that is an online marketplace and information source for cannabis companies – didn’t flinch when it received a demand letter from Mr. T saying its MRT listing infringes his trademark rights. In this case, …