Trademark strength is an extremely important likelihood of confusion factor even if it is not generally a dispositive factor like the similarity of the marks or relatedness of the good or services factors. When the trademark strength of a particular term used in connection with certain goods or services is improperly assessed it generally leads to unintended consequences. These can include spending unnecessary money prosecuting a trademark application or getting into a dispute with another party. We say the former happen in a recent Trademark Trial and Appeal Board decision.
Gabor Alex Stibinger filed a trademark application to register the mark SNAP FUNNEL (in standard characters with FUNNEL disclaimed) for “funnels; household utensils, namely, specialized funnels with a small diameter inner bottom opening and a larger diameter bottom outer ring specifically adapted to stabilize the utensil to various size bottles that also acts as a pour spout; household utensils, namely, silicone funnels; pouring spouts for household use.” As a preliminary matter, we have to ask why Mr. Stibinger would settle on this description. It does no good to include an extremely broad description like “funnels” along with the narrow description that describes the funnel in detail. A trademark application is not like a patent application. There is no benefit to writing a goods or services description like claims in a patent application.
The Trademark Office refused registration of the SNAP FUNNEL mark based on a prior registration for SNAP & POUR for a “funnel which snaps onto plastic containers, including automotive fluids and household cleaners and detergents.” Mr. Stibinger appealed the Trademark Office’s refusal to the Trademark Trial and Appeal Board.
In his brief, Mr. Stibinger cited 61 third-party registrations that included the SNAP term. However, none of the registrations were for funnels. In fact, the Board found that none of the third-party registrations were for goods related to funnels. Accordingly, none of the third-party registrations established the SNAP term lacked trademark strength when used in connection with funnels.
If Mr. Stibinger was aware of these 61 third-party registrations during the trademark search stage and a proper trademark strength assessment was made, then maybe a decision could have been made to avoid the refusal based on the SNAP & POUR mark. We know that when a term lacks trademark strength, adding another weak or even generic term like FUNNEL could be enough to avoid a conflict. But when there is no conceptual weakness, then adding a more distinctive term is necessary to avoid a conflict.
Most companies that have been using a federally registered trademark for ten years or more often mistakenly assume that the mark is famous. Long periods of use is a factor in the ultimate fame determination, but fame for dilution purposes is much different than fame for likelihood of confusion purposes. In fact, trademark owners would be better offer not using the word “fame” in the context of a likelihood of confusion. Recently, we saw this mistake play out in a case before the Trademark Trial and Appeal Board.
OTG Experience, LLC filed applications to register the mark PETER PIPER and PETER PIPER SMARTRUCK (in standard characters) for a variety of mobile food related services. OTG Experience’s applications were published for opposition and Peter Piper, Inc. opposed their registration relying on its prior registrations for PETER PIPER PIZZA (in standard characters with PIZZA disclaimed) in connection with “pizza” and “restaurant services.”
Peter Piper Pizza was founded in Arizona in 1973, and has used the PETER PIPER PIZZA mark for over 40 years. The company generates about $300 million in annual revenue across about 143 locations (although 43 are in Mexico) and spends about $20 million annually in advertising. While these numbers are significant, they were not enough to establish the fame of the PETER PIPER PIZZA mark.
The Trademark Trial and Appeal Board held that it is the burden of the party asserting fame to clearly prove it. In other words, fame needs to be proven by clear and convincing evidence. This standard requires the evidence presented must be highly and substantially more probable to be true than not and the trier of fact must have a firm belief or conviction in its factuality.
What this means for trademark owners is that offering numbers alone is highly unlikely to result in a fame finding. What a trademark owner needs to do is offer context for the raw statistics to demonstrate the general reputation the mark was with the public. Unfortunately, more often than not, trademark owners fail to provide the necessary context and the fame assertion fails because of it. That is what to Peter Piper Pizza.
Nevertheless, the raw statistics were enough for the Board to find that the PETER PIPER PIZZA mark was on overall strong mark entitled to a broad scope of protection. OTG Experience tried to counteract the strength evidence by relying on third-party use. Unfortunately, OTG Experience could only find three examples, well below the 10 minimum it appears is required to establish the weakness of a mark.
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.
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.
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:
- 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;
- Saturated markets with few members require more distinctive changes. Stay away from adding descriptive terms; and
- 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.
The dilution analysis requires evaluating search results for more than just trademarks sharing a similar element. It requires finding similar trademarks. This issue was on display in a recent Trademark Trial and Appeal Board decision.
Don Vintache Inc. filed a trademark application to register the mark DIAMONDS ON THE ROCKS (in standard characters) for “jewelry, namely, diamond jewelry.” The Trademark Office refused registration of Don Vintache’s mark on the ground that it was likely to cause confusion with the prior registered mark SILVER ON THE ROCKS (in standard characters) for “jewelry made in whole or significant part of silver.”
It was easy for the Board to find that the goods at issue were related. “Diamond jewelry” was broad enough to include silver settings. When it came to the similarity of the marks, the Board found, without identifying much, if any, support, that ON THE ROCKS was a unitary phrase. A unitary phrase has observable characteristics that render the elements inseparable. This finding would prove to be the downfall for Don Vintache’s dilution argument.
Don Vintache identified several third-party registrations that contained the term ROCKS for various jewelry items. However, the Board found that in all the examples offered, the meaning of “rocks” was different from the meaning of “on the rocks.” The clear meaning in the third-party registrations was “to be extremely enjoyable, pleasing, or effective.” The meaning of “on the rocks” is “served undiluted and with ice cubes; experiencing difficulties and likely to fail.” These different meanings rendered the third-party registrations and unitary phrase ON THE ROCKS dissimilar. Therefore, because the dilution analysis requires similar marks the Board gave no weight to the third-party registrations offered by Don Vintache.
In addition to the third-party registrations, Don Vintache offered five third-party online jewelry store websites that use ON THE ROCKS. Unfortunately, this was five examples short of the ten example minimum generally required by the Board. Accordingly, Don Vintache’s dilution argument failed, and the Board found that DIAMONDS ON THE ROCKS and SILVER ON THE ROCKS are similar trademarks.
We previously discussed how much dilution is required to prove a word is conceptually weak. But a recent decision from the TTAB may have zeroed in on a number.
The TTAB recently reversed the Trademark Office’s refusal to register the mark I’M SMOKING HOT for, among other goods, cosmetics based on a prior registered mark SMOKING HOT SHOW TIME also for cosmetics. The facts of this case seemed eerily similar to the facts of the SQUEEZE JUICE COMPANY decision we discussed just five days ago.
In the I’M SMOKING HOT case, the goods at issue were identical, so the relatedness of goods factor weighed in favor of the refusal as did the overlapping channels of trade and target consumer factors. The case law is legion that when the goods at issue are identical, less similarity is required between the marks at issue for a likelihood of confusion to exist.
In the SQUEEZE JUICE COMPANY case, 12 examples of third-party use of a mark similar to SQUEEZE were offered as evidence to demonstrate the conceptual weakness of the cited mark. The Board accepted these 12 examples as sufficient to establish the weakness of the SQUEEZE term for juice bar services. And about a month ago, the TTAB held that nine examples of third-party use was insufficient to establish the conceptual weakness of the term CODE for some type of educational service.
FabFitFun, Inc. – the owner of record for the I’M SMOKING HOT application – offered 10 examples of third-party use of the terms SMOKING HOT for cosmetics. And in this case, the Trademark Trial and Appeal Board found that the 10 examples were sufficient to establish the conceptual weakness of the SMOKING HOT terms for cosmetics.
In addition to the 10 examples of third-party use, FabFitFun offered the definition of “smoking hot” from the MacMillan Dictionary, which is an open dictionary. The definition of “smoking hot” was submitted by Shahbaz Shahin from Bangladesh on August 31, 2015. This definition is not representative of how an American consumer defines or understands “smoking hot,” and should not have been considered by the Trademark Trial and Appeal Board.
Based on its weakness the finding, the TTAB concluded that the addition of SHOW TIME was sufficient to distinguish the cited mark from the I’M SMOKING HOT mark.
Trademark weakness, or dilution, can influence the availability of a potential mark, and can even be the deciding factor. This was the case in a recent, rare reversal of the trademark refusal of the mark SQUEEZE JUICE COMPANY.
Boston Juicery filed a trademark application to register the mark SQUEEZE JUICE COMPANY (Standard Characters) for “fruit juices; vegetable juices; smoothies” and “juice bar services; smoothie bar services; cafe services.” Boston Juicery voluntarily disclaimed the terms JUICE COMPANY in its first office action response; thus, acknowledging that SQUEEZE was the dominant portion of its mark.
The Trademark Office refused registration of the SQUEEZE JUICE COMPANY mark on the ground that it was likely to cause confusion with the prior registered mark SQUEEZE & Design for “bar services; juice bar services.”
We have talked before that when the goods at issue are related (or in this case legally identical because the same description is used by the Boston Juicery and the owner of the cited mark), less similarity between the goods is necessary in order for there to be a likelihood of confusion. We also talked before that marks applied for in standard characters are deemed to seek protection of those words in all forms of stylization.
Just considering the prior discussions we have had, you would think that Boston Juicery’s SQUEEZE JUICE COMPANY application was dead in the water and a trademark refusal was a certainty:
- The marks share the dominant element SQUEEZE;
- The application share the identical services description “juice bar services”;
- Boston Juicery applied for its mark in a standard character form; and
- The case law is settled that words dominate designs when assessing mark similarity.
Then out of the blue comes trademark dilution to save the day and overcome the trademark refusal! Boston Juicery offered 12 third-party registrations for marks containing the term SQUEEZE. The majority of the third-party registrations identified “fruit juices.” Only two identified the identical “juice bar services” description and two identified a cafe service. The Board found that these 12 registrations were sufficient to establish the weakness of the SQUEEZE term.
You may be asking yourself that less than a month ago the TTAB found that nine third-party registrations was not enough to establish trademark weakness, and you would be right. And in the Vox Media case, the addition of 2040 was insufficient to distinguish two CODE marks for similar educational services, but Boston Juicery was able to distinguish its mark by adding the generic terms JUICE COMPANY to SQUEEZE.
This case possibly can help us understand that having 12 third-party registrations may be enough to establish trademark weakness or dilution. It also demonstrates how difficult it can be to forecast where the Trademark Office may go with any particular case. So get a trademark professional involved to make the final review about the availability of a proposed mark before sinking a lot of time and money into a new brand.
Although creatives and trademark lawyers deal in the same subject matter, they often think of concepts in a similar, but different way. An example of this can be in the way dilution is understood. The Brand Marketing Blog posted about What is Brand Dilution? In the post, Colin Finkle make an interesting observation that brand dilution can occur through over extending a brand through line extensions if the extended product fails to live up to the quality of the original product.
Trademark lawyers, on the other hand, love to see brand extensions and to see those extensions reflected in multiple trademark applications filed with the United States Patent and Trademark Office. When a trademark is used in connection with multiple goods and services, the law presumes that consumers have more opportunities to interact with the mark. The more opportunities consumers have to interact with a mark, the more conceptual strength the mark is deemed to have. Trademark dilution has the opposite effect of lessening conceptual strength.
Trademark lawyers are also concerned with the quality of any licensed goods for a different reason than brand dilution. Any trademark license that does not include quality control language or in situations where the licensor does not exercise actual quality control, the licensor risks losing its trademark rights all together because of naked licensing. Abandonment occurs because the trademark loses its ability to indicate a single source of the relevant goods or services. The trademark owner has a legal obligation to ensure that any licensed goods or services maintain a consistent level of quality.
Where there is agreement between creatives and trademark lawyers when it comes to dilution is the negative effect of allowing similar marks owned by unrelated parties to co-exist in the marketplace. Brand managers and trademark lawyers alike need to actively police the marketplace to limit the amount of dilution any brand may experience.