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.