4 Tips Every Person Naming Something Must Know

Unlike the naming process, which is a creative process, the trademark search process is scientific, and the evaluation of the trademark search results follows certain rules. Learn the process and the rules and you will be conducting trademark searches like a pro. Follow the tips in this post while conducting a trademark search and interpreting the results, and you will develop a list of names that you or your client will be able to use. So, print this post and keep it nearby. Do enough trademark searching and eventually, you will not have to refer to this post during the naming process because these tips will become second nature.

  1. Break up the name you are searching before worrying about different spellings. The Trademark Office is more likely to refuse to register a name because it shares a common element with a prior registered mark than because the marks sound the same. Additionally, breaking up a name and using the right Wildcard symbols (see Tip No. 2) will more often than not return different spellings of the name you are searching for. However, if you are aware of alternate spellings of the name you are searching, then include them in your trademark search plan. Breaking up a name and searching similar spellings are not mutually exclusive.
  2. If you are using BOB to conduct your trademark search (and you should) use the $$ and OR Wildcard symbols frequently. After breaking up the name you are searching place the double dollar sign ($$) on either side of each name part in Column D in BOB’s Trademark Search Worksheet and the OR symbol in between each name part. For example, if the name you are searching is CALIBURGER use the Wildcard symbols like this:  $$CALI$$ OR $$BURGER$$. Follow this format for all the names you search during the naming process, and you will find all the potentially problematic marks that you need to consider.
  3. The relatedness of goods or services matter, not International Class Numbers. There are opportunities for similar trademarks to exist within the same International Class Number. Don’t reject a name just because there is a similar name in the same International Class Number. Conversely, a similar mark in a different International Class Number can be problematic if the goods or services are related. Here is how to tell if goods or services are related:
    • If the goods or services are competitive, then they are related.
    • If the goods or services are not competitive, then they are related if:  (A) the goods or services are complementary; (B) the goods or services are marketed under the same or similar conditions to the same general class(es) of purchasers; or (C) the goods or services are the types that could reasonably be licensed by the prior trademark owner.
  4. Multiple trademark owners using the same term for the same or similar goods or services means you can use it too. PROVIDED you combine it with another term that is different than the term another trademark owner is using. For example, there are multiple trademark owners using the term BERRY for yogurt:  PINKBERRY, YOGIBERRY, SWIRLBERRY, TRUBERRY, FUNKIBERRY, BRRRBERRY, CHERRYBERRY, and COWBERRY. This means you can use BERRY too if it is combined with something that is different than what has already been attached to BERRY. Psst – this one reason why we break up the mark when we search.

Break Up a Trademark when Searching for Better Results

In previous posts, we discussed the principles the Trademark Office applies when assessing the similarity of two trademarks and how some of those principles are applied in practice. But we have never discussed the importance of breaking up a trademark when conducting a trademark search. Breaking up a trademark and searching the parts is just as important as searching the entire word. Fortunately, the Trademark Trial and Appeal Board provided us with a decision that highlights this tip.

Applicant Somasundaram Ramkumar filed an intent-to-use trademark application for the mark JIOKIA in connection with, among other services, “electronic mail services, namely, electronic transmission of mail.” The Trademark Office examined and approved the JIOKIA mark for publication. Nokia Corporation timely opposed the registration of the JIOKIA mark alleging prior rights in the NOKIA mark for, among other goods and services, “telecommunication and wireless communication services, namely, electronic mail.”

The services were identical, the service descriptions were unrestricted, and Nokia established its NOKIA mark was strong. Therefore, the critical issue, in this case, was the similarity of the marks confusion factor. The Board found that the JIOKIA and NOKIA marks end with the same four letters: O-K-I-A. This similarity not only caused the two marks not only to look similar but also sound similar. The Board went on to speculate about the impression a consumer would have in the hypothetical scenario where the consumer only heard the ending of each mark. In the end, the Board found that the similarities of the marks outweighed the differences.

For trademark searchers, the important take away is that the Board focused on the similar parts of the two trademarks. This tells us that we need to include the parts of the marks we are searching in our trademark search plan as well.

Some trademark search options on the market profess to have sophisticated algorithms that can find phonetically similar marks to what we are searching. You can see for yourself how helpful this type of algorithm is at the WIPO Global Brand Database. In the text box, enter the word NOKIA, and from the drop-down menu choose “fuzzy” or “phonetic”. Then click search. The JOIKIA application was filed on May 24, 2017 with the USPTO. When you review the search results you will see that the JOIKIA application does not appear.

What this example shows you is that no software application will ever be as precise about breaking up a trademark you are searching than you. That is why BOB gives you the option to break up the trademark you are searching the way you think is most appropriate. You will uncover more potentially problematic marks when you plan your search strategy rather than blindly relying on a software application to do the planning for you.

The Factual Situation When Trademark Design Trumps Words

Greater weight is often given to words over designs when evaluating the similarity of two trademarks because purchasers use words to request or refer to goods or services. The United States Court of Appeals for the Federal Circuit, however, has said there is no general rule that words trump design in the likelihood of confusion analysis. Therefore, there are some situations where the use of similar designs is likely to cause consumer confusion even when the design is combined with words.

The Trademark Trial and Appeal Board recently decided in In re Information Builders Inc. a case and identified one of those factual situations where designs will trump words. Information Builders Inc. filed a multiclass, trademark application to register the following mark in connection with computer software in International Class 9 and computer system design services in International Class 42:

The Trademark Office refused registration of this mark on the ground that it was likely to cause confusion with the following prior registered mark also for computer software in International Class 9 and design services in International Class 42:

The TTAB found that the goods and services at issue were legally identical in part, which meant that less similarity between the marks was required in order for a likelihood of confusion to exist, the goods and services were presumed to travel in the same channels, and appeal to the same class of consumers. Finally, Information Builders Inc. only submitted seven, third-party registrations containing similar designs, which was three shy of the apparent 10 third party registration minimum needed to establish conceptual weakness.

Information Builders Inc. was facing an uphill battle when the TTAB turned to the mark similarity likelihood of confusion factor. The Trademark Office required a disclaimer of the words INFORMATION and BUILDERS, and Information Builders Inc. voluntarily agreed to the disclaimer requirement. In making the voluntary disclaimer, Information Builders acknowledged that the design element in its mark was dominant.

Additionally, the design element was not separate but integrated into the word INFORMATION, unlike the ABBY decision a couple of years ago. When a consumer reads the word INFORMATION it would be impossible not to encounter the design. When the design is a dominant element and is integrated into the literal portion of the composite mark, then the general proposition that words trump design is inapplicable. Therefore, the TTAB found the marks are similar and sustained the registration refusal.

Appealing a TTAB Decision? Ties Go To the USPTO

The United States Court of Appeals for the Federal Circuit is the primary reviewing Court for a TTAB decision. Certain standards of review apply when the case involves the likelihood of confusion test, which is the same test trademark searchers apply when evaluating the potential for a conflict with a prior trademark. Understanding how the Trademark Trial and Appeal Board must support its factual findings on the likelihood of confusion factors helps us as trademark searchers understand how the examining attorneys at the United States Patent and Trademark Office will support their conclusions on the same likelihood of confusion factors.

In Stratus Networks, Inc. v. UBTA-UBET Communications Inc., the Federal Circuit addressed the standard of review applied to the factual findings of the likelihood of confusion factors from a TTAB decision. The Board’s findings of fact are reviewed for substantial evidence. If the factual findings are supported by substantial evidence in the record, then the Federal Circuit will not disturb the Board’s finding.

At first blush, substantial evidence seems like a high burden. In reality, it’s pretty low. According to the Federal Circuit, substantial evidence is more than a mere scintilla and is such relevant evidence as a reasonable mind would accept as adequate to support a conclusion. Where two different conclusions may be warranted based on the evidence of record, the Board’s decision to favor one conclusion over the other is the decision that the Federal Circuit must sustain.

This substantial evidence standard of review helps to explain the trend where the Board will find a conceptually weak mark when the number of relevant third-party registrations is 10 or more. Anything less may not satisfy the substantial evidence standard of review. It also helps us understand that having good facts in favor of registering a trademark is not good enough if there are also good facts against registering a trademark.

This does not mean that as trademark searchers we need to be overly cautious evaluating the similarity of the marks or relatedness of goods likelihood of confusion factors. It also does not mean that trademark owners need to ensure a mark is 100% in the clear before adopting a particular mark.

What it means is that all involved parties need to understand that ties go to USPTO, which means there should be a plan “B.” In close cases, too often are all of a trademark owner’s eggs put in one basket. When the preferred mark is considered to be a close call, it’s worth having a backup ready if the worst should happen.

Conceptual Weakness Must Focus on Registrant’s Goods

In Entertainment Content, Inc . v. Cooper Holdings, Inc., by change of name from Career Sports & Entertainment, Inc. we saw the Trademark Trial and Appeal Board chip away at the 17 third-party registrations that Cooper Holdings offered to demonstrate the conceptual weakness of the JUSTICE CENTRAL mark. What started as a promising argument quickly deteriorated to a total number of relevant, third-party marks below the 10 mark minimum.

The reason the argument ultimately failed was two-fold. First, Cooper Holdings did not focus on the Registrant’s services as they were described in the registration. Second, Cooper Holdings did not establish the relatedness of the services in most of the third-party registrations to the Registrant’s services.

Cooper Holdings filed an application to register the mark JUSTICE NETWORK (in standard characters) for, among other services, “television programming services” and “the production and distribution of television programs transmitted via various platforms across multiple forms of transmission media and other services.” Registrant had registered the mark JUSTICE CENTRAL for, among other services:

  • television programs in the field of law and courtroom legal proceedings;
  • entertainment programs in the field of law and
    courtroom legal proceedings accessible by cable,
    satellite, television, Internet, wireless devices,
    networks and via various platforms across multiple
    forms of transmission media;
  • providing programs in the field of law and courtroom
    legal proceedings accessible by cable, satellite,
    television, Internet, wireless networks and via various
    platforms across multiple forms of transmission media;
  • production and distribution of television shows.

Registrant’s services were limited to “courtroom legal proceedings” whereas Cooper Holdings’ services were unlimited. Accordingly, the parties’ services were legally identical.

Cooper Holdings offered 17 third-party registrations that contained the term JUSTICE. Five of the 17 third-party registrations were cancelled and one third-party registration was identified in Cooper Holdings’ brief; thus, not properly admitted into evidence. The remaining third-party registrations while identifying some form of entertainment did not identify courtroom legal proceedings as the content type. Cooper Holdings did not establish that the content type identified in the third-party registrations was related to courtroom legal proceedings. Accordingly, the Board chipped away at the 17 third-party registrations until the number was insufficient to establish the conceptual weakness of the JUSTICE CENTRAL mark.

A Deep Dive on the Relatedness of Goods and Services Factor

The relatedness of goods and services factor is very important in the likelihood of confusion analysis. Indeed, the fundamental inquiry mandated by Section 2(d) of the Trademark Act goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks. The Trademark Trial and Appeal Board issued a decision on New Year’s Eve that closely examined the essential characteristics of the goods because the marks at issue were identical.

Costa Farms, LLC applied to register the mark GROW WITH US (in standard characters) for “live flowers and living plants.” The Trademark Office refused registration based on a prior registration for the identical GROW WITH US mark for “distributorship services in the field of wholesale horticulture supplies and accessories.” Costa Farms eventually appealed the registration refusal to the Trademark Trial and Appeal Board primarily arguing that live flowers and living plants are unrelated goods to distributorship services in the horticulture field.

The Trademark Office compares the goods and services set forth in an application and a registration to determine whether they are similar, commercially related, or travel in the same trade channels. Goods and services dealing with or related to those goods can be found to be related. Relatedness will not be found when the goods or services at issue only chare a relationship with a broad category of goods.

In the GROW WITH US case, the Trademark Trial and Appeal Board found that “live flowers and living plants” on the one hand and “distributorship services in the field of wholesale horticulture supplies and accessories” on the other hand share only a relationship with horticulture, which is insufficient to find the goods and services are related. Costa Farms argued and presented evidence that “horticultural supplies” are “hard-good inputs needed in horticultural endeavors” not live plants and flowers. However, Costa Farms’ evidence also included that “horticultural endeavors” include growing live plants and flowers. It seems like hard-good inputs used to grow live plants and flowers have a commercial relationship with living plants and flowers, but apparently not according to the Trademark Trial and Appeal Board.

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 without causing a likelihood of confusion and thereby invading what amounts to its comparatively narrower range of protection.

I H W Management Limited d/b/a The Finchley Group applied to register the mark BLUE INDUSTRY for a variety of clothing items. The Trademark Office examined this application and approved it for publication. Pure & Simple Concepts, Inc. timely opposed the registration of the BLUE INDUSTRY mark.

To establish the strength (i.e., the broad scope of rights) in the INDUSTRY term, Pure & Simple argued it was the owner of a family of INDUSTRY marks for clothing. Generally, the common element in a family of marks is afforded a broad scope of protection, but establishing a family of marks is not easy.

The threshold issue is that the family feature must exist prior to the junior user’s use of its mark. The family feature also must be distinctive (excluding a highly suggestive term). Finally, the trademarks containing the family feature must be promoted together as a family. A mere intention to create a family of marks nor owning several registrations containing the alleged family feature is sufficient by itself to establish a family of marks.

Pure & Simple relied on eight registrations that contained the term INDUSTRY. Pure & Simple also included its licensee’s website, but this website does not promote the INDUSTRY term as a family feature. It simply identifies the brands this company distributes. Therefore, the evidence offered by Pure & Simple did not establish INDUSTRY as a family element.

Additionally, The Finchley Group offered 74 third-party registrations (far in excess of the 10 third-party registration minimum) that included the term INDUSTRY for clothing. This evidence not only further supported that finding that Pure & Simple did not own a family of INDUSTRY marks, but it also demonstrated that the INDUSTRY term was diluted for clothing. “The purpose of a defendant introducing third-party uses is to show that customers have become so conditioned by a plethora of such similar marks that customers have been educated to distinguish between different such marks on the bases of minute distinctions.” As such, The Finchley Group’s addition of the word BLUE was sufficient to distinguish its mark from Pure & Simple’s INDUSTRY marks.

The Trademark Trial and Appeal Board dismissed Pure & Simple’s opposition finding there was no likelihood of confusion. On December 4, 2019, Pure & Simple filed a Notice of Appeal the United States Court of Appeals for the Federal Circuit. This is a curious decision by Pure & Simple because the record on appeal to the Federal Circuit cannot be supplemented whereas an appeal to the United States District Court is reviewed de novo. Seems like in this case it would have been preferable to go the District Court route given all the dilution evidence that was offered.

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 it had decided to discontinue the LIL’ BEANIES brand. It is questionable whether this is true, but if it is then Little Chickpea formerly Little Bean made a mistake prosecuting its application.

Nestle – the parent corporation to Gerber – owns a federal trademark registration for LIL’ BEANIES in connection with “bean-based snack foods; grain-based snack foods.” In the article, Mitch Camden said that “when he applied for a trademark he was initially told ‘everything looked good.'” This means that his trademark lawyers did a trademark search and told him LITTLE BEAN mark was available for him to register. The Trademark Office disagreed and issued a registration refusal asserting that the LITTLE BEAN mark was likely to cause confusion with the LIL’ BEANIES prior registration.

We have to assume that Little Chickpea’s attorneys searched for goods identified in the LITTLE BEAN trademark application, which included “processed chickpeas.” A chickpea is a bean, so it is difficult to understand how Little Chickpea’s attorneys would have concluded that chickpeas are unrelated to “bean-based snacks.” Nevertheless, Little Chickpea’s attorneys attempted to overcome the registration refusal and were unsuccessful. In a last-ditch effort to overcome the refusal, it appears that Little Chickpea’s attorneys reached out to Gerber to obtain consent to the registration of the LITTLE BEAN mark and Gerber refused.

Willamette Week also reported that Mr. Camdem was told Gerber has discontinued the LIL’ BEANIES product line and had no intention of doing anything with it. If this is true, then Little Chickpea had a good claim for abandonment. A trademark is abandoned with the use of the mark has discontinued with no intent to resume use of the mark. Abandonment is a ground for cancellation, which would have cleared the way for Little Chickpea to obtain a federal registration for its mark without having to go through what it described as an expensive rebrand.

The old adage that an ounce of prevention is worth a pound of cure is often true for any legal issue but it is especially true in the context of trademark law. A proper and thorough trademark is essential to avoiding costly disputes and rebrands.

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 Run Out, Inc. applied to register the mark PUBLIC GOODS (in standard characters with GOODS disclaimed) for a variety of goods including “shampoos.” The Trademark Office refused registration of the PUBLIC GOODS mark on the ground that it was likely to cause confusion with the prior registered mark PUBLIX also for “hair shampoo.” With the goods legally identical and the descriptions unrestricted, the registration refusal turned on the similarity of the marks.

The Trademark Office argued that PUBLIX was the plural version of PUBLIC, and with GOODS disclaimed it was appropriate to compare the dominant portion of the marks. While more weight can be given to the dominant portions of the marks at issue, the final decision still needs to be made based on the marks in their entireties. In this case, the Trademark Trial and Appeal Board found that the addition of the term GOODS materially changed the commercial impression of the mark.

“The proper test is not a side-by-side comparison of the marks, but instead ‘whether the marks are sufficiently similar in terms of their commercial impression’ such that persons who encounter the marks would be likely to assume a connection between the parties.” The words PUBLIC GOODS were taken together project the connotation and commercial impression that Don’t Run Out personal care products are available to all consumers due to their affordability, and beneficial to the public because they are environmentally safe. By contrast, the PUBLIX mark has no well-recognized meaning. As a result, when confronted with both marks, prospective consumers are unlikely to assume the respective goods originate from the same source, despite use in part on identical and highly related goods.

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.