Addition of House Mark Did Not Eliminate Confusion

"Sealy house mark does not distinguish COCOON trademark"

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

"Misel Disel preshave liquid too similar to Diesel despite no trademark fame finding"

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

"jar of Sonia Soni Life is a Recipe spices which won the relatedness of goods factor against Mexican sauces"

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

"Dive Coastal Cuisine logo was weak but confusion likely with another DIVE mark because to distinctive terms were used"

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.

Confusion Exists Despite 20 Years of Trademark Coexistence

"bottle of CARDITONE trademark coexistence with CARDIO TONE"

Generally, long periods of trademark coexistence between two marks weighs in favor of finding no likelihood of confusion. Unfortunately for MDR Fitness Corp., the Trademark Trial and Appeal Board found that the lack of actual confusion evidence after 20 years of trademark coexistence did not outweigh the other likelihood of confusion factors in favor of finding a likelihood of confusion existed.

MDR owns a federal registration for the mark CARDIO TONE (standard characters) for “dietary and nutritional supplements.” MDR disclaimed the word CARDIO. MDR filed its application for the CARDIO TONE mark on April 1, 2013 and the trademark registration issued on May 20, 2014. The claimed dates of first use of the trademark were November 1, 1997.

Ayush Herbs, Inc. filed a petition to cancel the CARDIO TONE mark on May 21, 2015. Ayush alleged that the CARDIO TONE mark was likely to cause confusion with its prior registered mark CARDITONE (standard characters) for “dietary supplements.”

As we have seen in many cases before, the Board found that the channels of trade and class of consumer overlapped because the identification of goods descriptions were unrestricted. MDR should have petitioned to partially cancel the CARDITONE registration to conform it to the marketplace reality.

The Board also found the CARDIO TONE and CARDITONE marks were similar. MDR offered 70 third-party registrations for marks using CARDIO for dietary supplements and other related goods and services. However, only 1 of the 70 third-party registrations was for the mark CARDI, which is far less that than the 10 registration minimum. Accordingly, the trademark coexistence of the other 69 third-party registrations did not establish a week mark. MDR should have included a dictionary definition that shows CARDI- is a known prefix for a number of heart related words including CARDIO. This would have helped all 70 third-party registrations become persuasive.

When it came to the lack of evidence of actual confusion despite 20 years of trademark coexistence, the Board said that it must examine this factor in connection with the actual marketplace to determine the opportunity for confusion to occur. It also noted how this factor is at odds with the presumptions it must find regarding overlapping channels of trademark and classes of consumers when the goods and services descriptions are unrelated. Nevertheless, because the Board found that the actual trade channels for CARDIO TONE and CARDITONE do not significantly overlap, the fact that there was no evidence of actual even though there was 20 years of trademark coexistence was not surprising. Therefore, the Board found that this lack of evidence was insufficient to outweigh the other factors in favor of finding a likelihood of confusion exists.

This is a good lesson on the importance of filing trademark applications early.

Lesson on Distinguishing Identical Words With Designs

"Abby hippopotamus incapable of distinguishing identical words"

It is a well settled principle that in the case of composite marks containing both words and a design, the verbal portion of the mark is the one most likely to indicate the origin of the goods. But that does not mean that a design is incapable of distinguishing two trademarks that use identical words. Whether the capability exists depends on how the design is used.

ChuChu TV Studios a/k/a ChuChu TV filed an application register the mark ABBY and a design of a hippopotamus in connection with various clothing items and plush toys. The Trademark Office refused registration of ChuChu TV’s mark on the ground that it was likely to cause confusion with the prior registered mark ABBY (in standard characters) for a variety of dolls. The Trademark Office found that dolls and plush toys are related, much like it found plush toys and toy figures were related about four months ago.

Despite the relatedness of the goods, ChuChu TV argued that its hippopotamus design that dominated the word ABBY by a large margin was sufficient to distinguish its mark from the prior registration for just the word. Unfortunately, the Board disagreed.

For a design to distinguish the use of identical words, it is helpful that the words are difficult to distinguish from the design. In such a case, the design is more likely to be perceived by consumers as dominating the words. In ChuChu TV’s case, the ABBY term was clearly separate from the hippopotamus design. In fact, the term ABBY appeared directly below the design.

As trademark searchers it is important to understand when a design is capable of distinguishing the use of two identical words. When reviewing trademark search results, we may be able to justify recommending to a client an otherwise problematic word mark.

10 Mark Threshold Met: Weak Trademark Found

"unfished house ready for U-CORE insulation that was found to be a weak trademark"

MCNS Polyurethanes USA, Inc. offered enough third-party registrations to cross what we suggest is the 10 Mark threshold and it was rewarded with a weak trademark finding. MCNS applied to register the mark SUPERCORE (in standard characters) for, among other goods, polyurethane foam used as insulation. When the SUPERCORE mark was published for opposition by the Trademark Office, WFI Global, LLC filed a notice of opposition.

WFI alleged that MCNS’ SUPERCORE mark was likely to cause confusion with its prior registered mark U-CORE (in standard characters) also for polyurethane foam used as insulation. MCNS denied WFI’s allegations and asserted the affirmative defense that there was no likelihood of confusion between the marks.

MCNS offered 15 third-party registrations that included -CORE as a suffix for some type of insulation. Only one of the third-party registrations specifically mentions a foam insulation product and six of the third-party registrations are specifically for acoustic insulation not building insulation like the goods identified in the SUPERCORE application and U-CORE registration. Nevertheless, the Trademark Trial and Appeal Board found that the goods were close enough that it would give consideration to the six acoustic insulation registrations when assessing whether U-CORE was a weak trademark.

This is a much different approach than what the Board took in the LUNA case less than a month ago. In that case, the Board refused to give any consideration to numerous third-party registrations because the registrations did not identify the goods at issue; namely, women’s bicycle apparel. Instead, the third-party registrations identified only women’s apparel. Women’s apparel and women’s bicycle apparel were not close enough.

The Board found that the third-party registrations were sufficient to show  that the term CORE when used with insulation products have been “extensively adopted and registered . . . .” It then found the term CORE “has significance in the insulation industry which makes its [sic] suggestive [sic] of these types of insulation products.” Extensive use and suggestive are generally not terms used in the same sentence. Extensive use generally demonstrates the existence of descriptive not suggestive term.

Nevertheless, the Board correctly held that strength for likelihood of confusion purposes is not an all or nothing proposition. Instead, it exists on a sliding scale. While CORE may be a suggestive term when used in connection with insulation products, it exists in a crowded field, which lowers its conceptual strength.

Ultimately, the Board found that WFI’s U-CORE mark was a weak trademark. This finding paved the way for the Board’s ultimate finding of no likelihood of confusion between the two marks.

How to Standout When the Search Reveals a Saturated Market

"mascot sitting in crowded stands showing a saturated market"

As trademark searchers, one thing we need to be on the look out for is a saturated market. In a trademark context, a saturated market exists when multiple trademarks share the same element for related goods or services. We know this is important because it tells us that either the entire mark or a portion of it is conceptually weak and that consumers are likely to rely on something else to distinguish between goods or services.

Unfortunately, the Trademark Trial and Appeal Board and the District Courts have not given much guidance on what changes are sufficient to avoid a likelihood of confusion with one of the marks in the saturated market. Nevertheless, that does not stop trademark owners from asking the question and expecting a firm answer about what changes they can make to avoid a dispute with another member of the saturated market.

As a trademark searcher, you should never tell a trademark owner that if they make a change that no harm will come to them because there is no such thing as a perfect trademark search. Additionally, litigation in general is unpredictable and you cannot forecast with any real certainty how another member of the field will react to the trademark. But if the trademark owner asks the question, you can’t refuse to answer. Here are some things to consider when formulating your answer:

  1. There are degrees to the saturated market, and not all saturated markets are the same. First assess whether the saturated market as a few or numerous members;
  2. Saturated markets with few members require more distinctive changes. Stay away from adding descriptive terms; and
  3. Saturated markets with numerous members generally require less distinctive changes. It may be possible to add a descriptive term to distinguish the mark from the others in the market. However, adding a distinctive term is always the safer bet.

As always, if the possibility of a rebrand within at least the first five years of using the trademark would result is big setback for the trademark owner’s business, then avoid the saturated market all together and choose a new name.

American Airlines Sues Expedia Over ADD ON ADVANTAGE Mark

"Expedia sued by American Airlines over ADD ON ADVANTAGE mark"

The stereotypical trademark bullying case is the big company picking on the small company. But as we saw yesterday, a big company suing a smaller company for trademark infringement does not necessarily mean the big company is a bully. And what we will talk about today demonstrates that trademark bullying can occur between equally sized companies.

American Airlines sued Expedia for trademark infringement because of its ADD ON ADVANTAGE program. Expedia’s program allows users to add on a discounted hotel booking after using the site to book airfare or a rental car. It is descriptive of a feature of its program. American Airlines alleged that this mark is likely to cause confusion with its AADVANTAGE mark for its customer loyalty program.

ADVANTAGE is a highly diluted mark when used in connection with a customer loyalty program. Click HERE to see BOB search for the ADVANTAGE mark “customer loyalty programs” and HERE for “frequent flyer services.“ The TROP ADVANTAGE mark is in the same travel industry as the AADVANTAGE mark and so are several other ADVANTAGE marks. Yet, American Airlines is willing to co-exist with these other marks.

Trademark bullying occurs when one party attempts to assert rights in a trademark beyond what it is reasonably entitled to assert. When a trademark owner, regardless of its size, attempts to assert broader rights, the trademark bully label is appropriate. Unfortunately, the label is in name only given there is no legal consequence to being a trademark bully.

American Airlines attempts to justify its trademark infringement claim by characterizing Expedia’s service as a bundling program similar to what American Airline’s offers under its AADVANTAGE program. Although the law is unsettled, some Courts have held that harm is to be presumed when a likelihood of confusion finding is made. American Airlines should hope that Texas is one of those courts because it is highly unlikely that it will suffer any actual harm from Expedia’s use of the AD ON ADVANTAGE mark.

Hard Rock Should Not Have to Pay Startup Attorney Fees

"Startup RockStar Hotels advertisement asking for attorney fees"

Hard Rock Cafe Inc. does not think it’s fair to pay the attorney fees of a startup after suing the young company for trademark infringement. Hard Rock Cafe is a chain of theme restaurants founded in 1971 that has expanded to include casinos, hotels, a park, and sports stadium.

RockStar Hotels launched in January 2017, but includes a healthy portfolio of properties. The meaning behind the RockStar name is not to convey a party atmosphere, but that the guests will be treated like celebrities. This distinct difference in meaning resonated with the United States District Court for the Southern District of Florida and Hard Rock’s motion for a preliminary injunction was denied. Now, RockStar Hotels is asking the Court to order Hard Rock Cafe to pay $462,000 to reimbursement the startup for its attorney fees.

Under the Trademark Act, attorney fees are recoverable by a party when the case is exceptional. Whether a case is exceptional depends on the totality of the circumstances, which considers the respective merits of the parties’ case and the manner in which a case is litigated. Because the Trademark Act does not allow the prevailing party to recover its attorney fees, an exceptional case finding is the only way a party that is being bullied by a trademark owner can recover the costs to defend itself.

In response to RockStar Hotel’s attorney fees petition, Hard Rock argued that it did the right thing and dropped its lawsuit after the court denied its request for a preliminary injunction. We are guessing it was hard for Hard Rock’s attorneys to say that with a straight face. However, without knowing all the details, it is hard to say Hard Rock’s lawsuit was completely without merit. The Hard Rock mark is used on hotels and on restaurants, which are related to hotel services.

The better question that Hard Rock should have asked itself is whether RockStar Hotels will either take business away from them or will harm its reputation such that it loses business from the negative association. Obviously, the answer to these two questions was no otherwise it would not have dropped the lawsuit. Losing at the preliminary judgment stage does not mean you are prevented from ultimately winning at trial.

Just because a lawsuit is unwise does not mean the plaintiff is a bully just because it is bigger than the defendant. What is more suspect is startup RockStar Hotel’s attorney fees petition for $462,000 when the case is only at the preliminary judgment stage. By the time a preliminary judgment motion is filed, not much has happened in the case, and responding to a preliminary motion is not a hundreds of thousands of dollars event.