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.

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.

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.

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.

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 Appeal Board decision did not help to determine when font stylization stops and design begins.

Anthony Fisher filed a trademark application for bumper stickers and clothing and submitted the following drawing of his trademark:

In his application, Mr. Fisher identified the letters “VF” as the literal element of the mark and described his mark as “two fish hooks connecting in the middle to form the stylized letters ‘VF’.” Mr. Fisher’s trademark application sailed through examination by the Trademark Office and was published for opposition where it was promptly opposed by V.F. Corporation.

V.F. Corporation alleged that Mr. Fisher’s stated “VF” stylized mark was likely to cause confusion with its prior registered VF marks, two of which are for standard character drawings. V.F. Corporation’s registrations were for retail store services featuring apparel, backpacks, and outdoor gear and equipment. The Board found that Mr. Fisher’s clothing was related to V.F. Corporation’s retail store services, but not his bumper stickers. Nevertheless, the salient issue, in this case, was the similarity of the marks.

The Board gave no consideration to the words used by Mr. Fisher when preparing his trademark application. The Board said that it is not the description of the mark but the drawing that depicts the mark for which registration is sought. Against this backdrop, the Board proceeded to tell Mr. Fisher what his mark is. The Board said “we do not discern the letter ‘F’ and it is highly unlikely that prospective consumers would. In fact, consumers likely would not perceive any letters in [Mr. Fisher’s] design mark, but instead may only perceive a stylized checkmark.” As demonstrated by the Board, the question of whether something is stylization or design is subjective.

Under the circumstances, the Board telling Mr. Fisher what his mark is benefitted him, but it highlights a possibly troubling practice. The Board’s precedent is settled that it should not substitute its judgement on confusion for those parties on the firing lines in the marketplace. This rationale should extend to trademark applicants as well. The descriptions offered by the trademark applicant should be given more weight than the treatment the description received in this case.

Single Word Defeats Entire Whiskey Distillery Logo

"whiskey in a glass"

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 in the real world marketplace to determine if a likelihood of confusion exists. The Trademark Trial and Appeal Board has time and time again stated that the literal portion of a mark is entitled to more weight in the analysis of the marks than any designs. But should a single word – absent a showing of fame – be afforded so much weight that it can bring down an entire logo?

Mystic Mountain Distillery LLC filed a trademark application to register its logo on the Principal Register for “whiskey”:

The Trademark Office refused registration of Mystic Mountain’s mark on the ground that it was likely to cause confusion with the prior registered mark OUTLAW (in standard characters) for “alcoholic beverages.” Because of the identical nature of the goods, less similarity between the marks is necessary for a likelihood of confusion exists. Mystic Mountain did nothing to narrow the goods descriptions and failed to demonstrate that the OUTLAW term was weak.

Without a doubt, there were significant headwinds to Mystic Mountain’s trademark application. About a year ago, the Board in Major League Baseball Properties, Inc. v. Christopher Webb stated that it may take into account the real-world use of the marks to determine if they create confusingly similar impressions. The unanswered question is when will the Board take into consideration the real-world use of the mark and the answer may be that as a party you have to ask for it. If the Board would have considered the specimens and real-world use of the OUTLAW mark, it would have seen that the overall commercial impression is different than the impression given by Mystic Mountain’s logo.

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 Procedure, a house mark does not identify particular goods or services, rather a house mark identifies the provider of a wide variety of goods and services. The specific goods or services are often identified by a separate trademark or service mark. Because house marks appear on a wide variety of goods and services, they generally are afforded a broader scope of protection. The theory is that the more goods or services the mark appears on or in connection with, the more exposure consumers have to the mark, and the more recognizable the mark will become.

Smith & Wesson Corp. recently, unsuccessfully attempted to revive the old add the house mark strategy. Smith & Wesson filed an application to register the mark M&P SHIELD (in standard characters) for, among other goods, “knives.” The Trademark Office refused registration of this mark on the ground that is was likely to cause confusion with the prior registered mark SHIELD also for “knives.” Because the identifications of goods descriptions were identical, the Trademark Trial and Appeal Board found that the channels of trade and classes of consumers overlapped.

When it came to the similarity of the marks, the Board stated that the addition of a house mark has been found sufficient to distinguish marks under circumstances where the appropriated matter is highly suggestive, merely descriptive, or has been frequently used or registered by others in the field for the same or related goods or services. The Board found that SHIELD is “slightly suggestive” for knives.

With respect to the frequent use or registration of the term SHIELD, the Board found that Smith & Wesson offered only one third-party registration that included the SHIELD term for a related good. This was far less than the 10 minimum the Board has required in other cases. Therefore, the Board concluded that Smith & Wesson’s inclusion of the M&P house mark was incapable of distinguishing the SHIELD term.

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, then the goods at issue are related.

Striker Brands LLC filed an application to register the mark HYDRAPORE (in standard characters) for “breathable waterproof fabric sold as an integral component of fishing and hunting apparel, namely, coats, jackets, [etc.]” The Trademark Office refused registration based on a prior registration for HYDRO PORE (in standard characters) in connection with “clothing, namely, tops, bottoms, jackets, headwear, and footwear.”

To demonstrate the relatedness of the goods the Trademark Office offered 20 third-party registrations for marks that identify fabric as a component of clothing, and finished articles of clothing. These third-party registrations demonstrated that consumers expect fabric and finished clothing articles to emanate from the same source. Additionally, although not forcefully made in the opinion, the Board found that consumers could mistakenly believe that the HYDRO PORE clothing was made from the HYDRAPORE fabric.

Striker Brands made the classic mistake of leaving the identification of goods description in the HYDRO PORE mark undisturbed. It should have focused on narrowing the description to exclude a type of fabric along with the hunting and fishing channels of trade before pursuing the appeal.

When it came to the conceptual strength of the HYDRO PORE mark, Striker Brands offered 33 third-party registrations for HYDRO- formative marks in connection with various types of apparel or fabric. The Board noted that none of the third-party registrations contained a second term similar to PORE or for PORE. Moreover, Striker Brands did not offer any evidence of use for the 33 third-party registrations. Nevertheless, although the Board found that HYDRO PORE is a suggestive mark, it was entitled to a slightly narrower scope of protection because of the third-party registrations.

This conceptual strength analysis is similar to the Board’s decision in HULA DELIGHTS, and is even more difficult to square with its decision in the LUNA CYCLE case. In the LUNA CYCLE case, 100 third-party registrations for marks displaying LUNA (like those displaying HYDRO in this case) were offered for some form of apparel (like the various clothing items and fabric in this case). The difference though is that the Board discounted all 100 third-party registrations because they were not for women’s bicycle apparel.

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, Leafly may have a basis for not flinching.

Mr. T ultimately sued Leafly for trademark infringement because it lists a cannabis strain called MRT which is the acronym for Mr. Tusk on its website. The MRT flower is sold by third parties, not Leafly. Mr. T is seeking injunctive relief only because he claims any misassociation of his Mr. T mark with a cannabis company will damage his ability to license his mark to other companies.

Online retailers have consistently avoided liability for trademark infringement over the years. This trend started in 2007 when the Second Circuit Court of Appeals ruled in favor of eBay that it did not directly infringe Tiffany’s trademark rights by including listings for Tiffany products (some genuine and some counterfeit) on its website. It continued in 2010 when the Second Circuit Court of Appeals again ruled in favor of eBay that it did not contribute to the direct infringement of Tiffany branded goods. In 2014, Amazon avoided a trademark infringement lawsuit because the Court found that the third-party sellers retain full title to and ownership of the inventory sold by the third party. Based solely on the fact that Leafly is an online marketplace appears to strongly cut against Mr. T’s likelihood of success in this case.

But Mr. T faces another uphill battle when it comes to his lack of enforcement. There are several MR. T marks registered on the USPTO’s Principal Register for a variety of goods including automobile parts, restaurant services, rifle scopes, scrubber device, and handyman services. Notably absent from the list of registered MR. T marks is a registration owned by the man himself, Mr. T.

Trademark owners are not required to take on all potentially infringing uses of a mark. In fact, trademark owners need to be thoughtful when constructing an enforcement strategy. But the more identical marks a trademark owner co-exists with, the more difficult enforcement actions can become. In the case of Mr. T, Leafly should be asking why Mr. T can co-exist with these other identifying marks but not the MRT mark on its website.