Although there seems to be less publicity recently about trademark bullies, that does not mean they have gone away. Trademark bullying is alive and well, and the Associated Press recently published an article pointing the finder at universities as the newest members to this disfavored group. A few examples the article highlighted are:
- Duke University opposed the registration of DUKE’S FOLLY for “wine” and “custom production of wine for others; providing information about wine-making”;
- North Carolina State University objected to the use of WOLFPACK – the nickname for its sports teams – by a convenience store in Raleigh, NC called Wolfpack Mini Mart, and a California brewery’s use of Wolfpack to promote its wolf themed beers; and
- Texas A&M University objected to Erik Nolte’s plans to produce a beer called the 12TH CAN.
The United States Patent and Trademark Office once defined a “trademark bully” as “a trademark owner that uses its trademark rights to harass and intimidate another business beyond what the law might be reasonably interpreted to allow.” Despite this definition, most people believe a trademark bully is any large company that is picking on a smaller company, but this is not always the case. And while most “trademark bullies” do not have a specific intent to harass the other party, they do have an intention to intimidate their opponent.
The problem with bullies is that they cause their opponent to unnecessarily spend money and sometimes money they don’t have. Here are some characteristics to be on the lookout for to avoid a party that is likely a trademark bully:
- Does the person or party own numerous trademark registrations for the same mark?
- Do those marks exist in a crowded field?
- Does the correspondent information at the USPTO for the trademark owner’s marks identify a solo practitioner, small firm, or large firm with a reputation for aggressive litigation tactics? A common problem in the trademark bully area are lawyers that do not have a deep understanding of the likelihood of confusion factors.
- Has the trademark owner been involved in several proceedings before the Trademark Trial and Appeal Board?
It should not come as a shock that the timeline to register a trademark at the United States Patent and Trademark Office is not quick. But understanding the process and how much time it actually takes is important for companies, trademark searchers, and naming firms because it should inform when the naming process should start. The USPTO issued some timelines based on the filing basis of the application, but they are not the easiest diagrams to follow.
When a trademark application is filed with the USPTO regardless of the filing basis, the application will be assigned to an examining attorney to review the application. This assignment will not happen for three months. To the extent an issue exists with the application, the first office action will likely not issue for a couple of weeks after the assignment of the application. If no issue exists with the application, then the Trademark Office will issue the notice of publication.
Already, there is a three-month delay before you will know whether the mark is available. Let’s assume there are no issues with the application and the notice of publication issues. When the application is published for opposition, this starts a 30-day period when anyone that believes he or she will be damaged by the registration of the mark may formally oppose its registration. So now you are a little over four months before you will know your proposed mark will register.
But let’s assume a first office action issues, then a response to the office action is not due for six months from the date it issued. Most parties do not respond to the first office action right away and most wait until the six month response deadline is close. According to the USPTO’s Data Visualization Center, the total pendency of resolving a first office action is 9.7 months from the filing of the application. It is only after this first office action is resolved that the opposition period begins, which would then kick the timing out another month.
The timeline to register a trademark means that you should start the naming process early. If you don’t start the naming process early, then you need to be more conservative during the trademark search process because you may not have the luxury of starting over with a different mark.
Pizza Inn, Inc. filed an application to register the mark AMERICA’S HOMETOWN PIZZA PLACE (standard characters) for “restaurant services; carry-out restaurant services.” The company voluntarily disclaimed PIZZA PLACE; thus, admitting that AMERICA’S HOMETOWN was the dominant portion of its mark. The Trademark Office refused registration of Pizza Inn’s mark on the ground that it was likely to cause confusion with the prior registered mark HOWTOWN PIZZA (standard characters) for “restaurant services.”
This application was facing an uphill battle from the beginning. The services descriptions were identical, so less similarity between the marks is necessary in order for a likelihood of confusion to exist. And the descriptions are not technical or vague, so it would be inappropriate for the Trademark Office to consider any extrinsic evidence of the use of the mark in the marketplace. Finally, the cited mark – HOMETOWN PIZZA – was incorporated in its entirety in Pizza Inn’s proposed mark.
The only chance the Applicant had was to argue that HOMTOWN PIZZA was so conceptually weak that the addition of AMERICA’S and PLACE were sufficient to avoid confusion. Pizza Inn offered eight third-party registrations that were for or included the term HOMETOWN for “restaurant services.” And of those eight third-party registrations, two were dead registrations, which are given no consideration during the examination of a trademark application. So Pizza Inn really only had six, third-party registrations.
Pizza Inn was four registrations shy of the ten mark where the Trademark Office has found a crowded field exists for a particular term. And the Trademark Trial and Appeal Board found that the third-party registration evidence offered by Pizza Inn was insufficient to establish that HOMETOWN PIZZA was conceptual weak; thus, entitled to a narrow scope of protection. What Pizza Inn should have done was offer evidence of third-party use not registrations of HOMETOWN PIZZA. A simple Internet search reveals numerous restaurants called HOMETOWN PIZZA.
Phil Davis – founder of Tungsten Branding – recently wrote an article for Forbes about why your last name may not be the best choice for the name of your business. The article identifies many problems with adopting your last name as your company name, but the one problem that recently was addressed by the Tradmeark Trial Appeal Board is that your name may be one of many similar last names. There is no right to use your name as a trademark if it is likely to cause confusion with another mark.
Doofood filed an application to register the mark DOOFOOD & Design for made-to-order meal kits. Doo is part of the Applicant’s name DooJin Kim. The Trademark Office refused registration of this mark on the ground that it was likely to cause confusion with a prior registered mark DO FOOD & Design for a prepared meal kit. The Trademark Trial and Appeal Board found that goods and services at issue were related and the design components of the marks at issue would likely be perceived as background to the literal elements of the marks. The use of pot design in the DOOFOOD & Design mark only reinforced the preparation of food.
Doofood did not offer any evidence of the conceptual weakness of the DO FOOD mark. Instead, it attempted to argue that the meanings of the marks were sufficiently different to avoid a likelihood of confusion. Dissimilarity of sound has trumped similarity in the appearance of the marks at issue. And dissimilarity of appearance has trumped similarity in sound before. But rarely if ever has dissimilarity in meaning trumped similarity as to sound and appearance.
Compounding Doofood’s problem was its lack of evidence on the difference in meanings. It appears that Doofood relied only on argument, which the Board held will never make up for a lack of evidence.
This case highlights that even your name needs to be searched before making the decision to adopt it as the name of your business.
WPP, the world’s largest advertising agency, reported its second-quarter results that showed weak performance in North America. The Wall Street Journal reported that “[l]ike-for-like net sales – a figure closely watched by analysts to measure the company’s underlying performance – dropped 3.3% in North America.” Some of this decline was attributed to advertisers paying less on traditional ad campaigns, but it was also attributed to advertisers demanding a wider suite of services including new product development. It goes without saying that new project development necessitates the creation of new names.
Not only are companies requirements from firms changing, but the manner in which they pay for those services is also changing. No longer are companies paying large retainers to have an agency of record. Instead, companies now are paying by the project. Small to mid-size companies have likely been paying by the project for some time, but what this article shows is that agencies need to become more efficient to remain profitable as the pricing pressure from companies intensifies.
This problem is not unique to the advertising industry. All service based businesses (e.g., law firms, accounting firms, etc.) are feeling the pricing pressure from companies, and the demands for efficiency.
The way to survive the pricing pressures and to demonstrate a commitment to efficiency is to be an early adopter and user of technology when it makes sense to do so. There are some tasks that are ripe for technological intervention. One of those tasks for agencies is the trademark search function. This is not a task that an agency should be spending its time doing when there are tools available that can do it more quickly and more cost effectively.
BOB is a tool that not only can save agencies time and money, but also demonstrate a commitment to technology to prospective clients to help develop more business. BOB’s patent pending, multi-name search functionality accomplishes this and is easy to use. Just complete the Excel worksheet that is available on the BOB website with the marks you want to search. Select the goods or services you want to search the list of marks in connection with, and then wait for the search results to be delivered to your in-box. You can watch the multi-name search work by clicking HERE.
Keep a quick reference to the spectrum of distinctiveness close when working with trademarks. The spectrum of distinctiveness is the starting point to determining what is protectable trademark subject matter to assessing the similarity between marks or trademark strength. Here are a few pointers for using the spectrum:
- Trademarks that are suggestive, arbitrary, or coined/fanciful starting creating trademark rights the second they are used in commerce. Trademarks that fall in the descriptive category must acquire distinctiveness because they can create trademark rights. The general rule is that descriptive marks acquire distinctiveness after five years of substantially exclusive use in commerce. Although, this five year period can be shortened with the right advertising campaign.
- Generic terms can never function as a trademark. The general saying is “once generic always generic.” The United States Court of Appeals for the Federal Circuit recently held that not only do generic terms exist for a genus of goods but also to a subgenus. In this case, the Court found that the relevant public understands the term ZERO to refer to a subgenus of soda.
- It is possible for a trademark to slide down the left side of the spectrum towards generic. However, trademark attorneys make more about genericide than they should. You would be hard pressed to come up with a recent example of a trademark that has succumb to genericide.
- Trademark markings are helpful, but not required. Nevertheless, it is always a good idea to put others on actual notice of your trademark rights.
- The further to the right your trademark lands on the spectrum of distinctiveness, the more conceptual strength the trademark has. When thinking of a starting point for a new brand, being on the right side of the spectrum has its advantages.
Naming firms may talk about the spectrum of distinctiveness using a slightly different vocabulary, but anyone working in naming or trademarks has the spectrum close to whatever project they are working on.
The Trademark Trial and Appeal Board issued another rare reversal this year finding that the LA CHULA & Design (in color) for “preserved, frozen, dried, and cooked fruits” is unlikely to cause confusion with CHULA BRAND (BRAND disclaimed) for “fresh fruits and vegetables, namely, citrus, lemons, avocados, coconuts, papayas, pineapples.”
The Board found that “the applied-for mark and cited mark share the dominant, arbitrary term LA CHULA.” Actually, the only shared term is CHULA. Nevertheless, the Board concluded the marks were similar in terms of sound, appearance, connotation, and commercial impression. The Board also found that the goods at issue are commercially related and that consumers are likely to mistakenly believe they emanate from the same source.
From reading the beginning of the decision, you would think that a decision sustaining the refusal was on its way, but you would be wrong. The Board found that the 13th Du Pont factor outweighed the similarity of the marks and relatedness of the goods or services confusion factors ultimately confusion the applied for mark was unlikely to cause confusion. The 13th Du Pont factor is “any other established fact probative of the effect of use.” This factor is used by the Board and Courts as a catchall in order to decide cases on what they think is happening or likely to happen in the marketplace.
In this case, the Applicants previously registered a similar mark in black and white but for “fruit conserves.” In other words, color was not claimed as a feature of the mark like it was in the Applicants’ applied for mark. And while “fruit conserves” is not an identical description to the applied for goods, the Board found that the goods were closely related. Because the Applicant’s previously registered the same mark in black and while for closely related goods, the Board found there could be no confusion with the colored version fo the logo.
The Board made the right decision, but this case highlights how different trademark examiners examine applications differently.
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.
The rebranding process is often times easier said than done, but it should not be considered an off-limits concept. Especially for startups who may not have the money to pay for professional naming services, it may be that the name you adopt does not resonate with your customer base. The foolish thing that any business can do is to recognize a bad decision but to stubbornly not make the necessary changes. The smart business decision is to start working on the rebranding process – maybe this time with some professional naming help.
If you find yourself in a situation where the rebranding process is necessary, you don’t have to feel alone. Some of the worlds largest companies went through a rebrand.
Larry Page and Sergey Brin, the founders of Google, originally launched the search engine under the BACKRUB name. After a year of living with BACKRUB, the name was changed to GOOGLE.
Richard Schulze, the founder of Best Buy, opened his first electronics store under the name SOUND OF MUSIC. However, after a tornado forced Mr. Schulze to run a large sale of the damaged merchandize promising “best buys,” which was a huge success, the company’s name was officially changed to BEST BUY.
Steve Case, the founder of AOL, launched the online bulletin board under the name QUANTUM COMPUTER SERVICES. This name stayed with the company while it acquired more than 100,000 members, but was eventually changed to AOL.
Caleb Bradham, the inventor of Pepsi, originally branding the soda BRAD’S DRINK, but about five years later rebranded it Pepsi-Cola. PayPal was originally CONFINITY. Blackberry was originally called RESEARCH IN MOTION. And Yahoo was originally called – take a breath – JERRY AND DAVID’S GUIDE TO THE WORLD WIDE WEB.
There are other examples that could have been included, but the point is that business owners should not be afraid to change course on a name if the name originally chosen is not working. Just make sure you conduct a trademark search on the new name first.
Several articles and blog posts have been written about Seven Stills “neapolitan milkshake stout” beer that it called IN-N-STOUT. It was painfully obvious from the artwork for the beer can that Seven Stills was trying to copy the IN-N-OUT fast food restaurant trade dress. Not surprising that when Seven Stills announced the release of its beer that In-N-Out restaurant sent it a letter demanding that Seven Still stop using its trade dress and a confusingly similar name.
What remains unanswered is whether the IN-N-STOUT mark was a clever branding play designed to raise the public awareness of Seven Stills or was the brewery under the mistaken impression that it was okay to use the IN-N-STOUT mark because it was for beer. If it is was the later, it is likely because Seven Stills followed the flawed International Class method for assessing the relatedness of goods and services. “Beer” is classified in International Class 32, whereas “restaurant services” are in International Class 43. But as we have talked about numerous times before, it is relatedness of the goods and services that matter, not class numbers.
If Seven Stills had used BOB to search for IN-N-STOUT, it would have quickly learned that the mark was unavailable because beer and restaurant services are related goods. You can watch BOB conduct this trademark search by clicking HERE.
On the other hand, this may have been a crazy-genius branding play to garner some attention – however fleeting – from getting the attention of a large company like IN-N-OUT. We say crazy-genius because Seven Stills had no way of knowing how In-N-Out would react to the name and trade dress for the beer. Around the Super Bowl, we saw Budweiser creatively respond to a brewery in Minnesota’s release of a DILLY DILLY beer. But In-N-Out has a history of being litigious when it comes to its trademarks. Just looking at the Trademark Trial and Appeal Board proceedings, In-N-Out has been a party in 70 proceedings.
While more trademark owners should take a Budweiser approach to infringement when the situation calls for some diplomacy instead of a hammer, it is risky to roll the dice and hope for the former when the publicity from it is fleeting.