Bicycles and Snack Bars Related Because Some Retailers Sell Both

"TREK snack bar packaging related to bicycles"

Most bicycle manufacturers do not make bicycles and snack foods. In fact, in a recent Trademark Trial and Appeal Board decision there was no evidence presented of a bicycle manufacturer also owning a federal trademark registration for the same mark in connection with any type of snack food. Nevertheless, the Trademark Trial and Appeal Board held that bicycles and snack bars are related goods.

Natural Balance Foods Limited sought to register the mark TREK for a variety of snack bars. The Trademark Office approved the TREK mark for opposition and Trek Bicycle Corporation (“Trek”) timely opposed the registration of Natural Balance Foods’ mark. Trek alleged that the TREK mark for snack bars was likely to cause confusion with its prior registered marks for TREK in connection with bicycles, online retail store services, and powders used in the preparation of sports drinks and energy drinks.

Based on the goods descriptions alone, snack bars, bicycles, online retail store services, and sport drink powders are different goods. However, when no restrictions are identified in the goods or services descriptions, these different goods are deemed to travel in all normal channels of trade and appeal to all classes of consumers. Natural Balance Foods made it easy for Trek to win its case.

Trek offered several third-party websites that sold bicycles and snack bars. The snack bars sold by the retailers were a different brand owner from both the retailer and bicycle manufacturer. But the fact that these goods were sold by the same retailer was enough for the Board to conclude that the channels of trade overlapped. And because the marks were identical, this overlap was enough for the Board to conclude that a likelihood of confusion was likely.

This decision highlights the challenge for trademark searchers. It is not enough to rely on the good or services descriptions because on their face these descriptions may lead to an incorrect analysis. It is imperative to consider past decisions to determine whether a relatedness finding had been found.

Consumers Likely to Confuse Coffee and Energy Drinks

"Kick Ass coffee can related to energy drinks"

In a second case this year the Trademark Trial and Appeal Board looked beyond the identifications of goods descriptions to determine whether two goods were related. David John Critchley registered the mark KICK ASS (in standard characters) for, among other goods, energy drinks. Kicking Horse Coffee Co. Ltd. petitioned to cancel Mr. Critchley’s registration based on its prior rights in KICK ASS for coffee.

The Trademark Trial and Appeal Board found that the marks were similar and Mr. Critchley failed to produce more than 10 third-party registrations for coffee or goods related to coffee to establish that Kick Ass Coffee’s rights in KICK ASS were limited to coffee. The disputed factor was the relatedness of the goods.

The Board stated as it always does that the relatedness of goods is determined based on the goods or services as described in the application or registration. In this case, coffee and energy drinks are not technical goods in nature, nor are these words vague. An “energy drink” is defined as “any of various types of beverage that are considered a source of energy, especially a soft drink containing a high percentage of sugar and/or caffeine or other stimulant.” It is common knowledge that coffee contains caffeine and is consumed for a source of energy.

Coffee falls squarely within the definition of an “energy drink.” Nevertheless, the Board considered evidence of the real world marketplace to determine if identical marks were used on coffee and on energy drinks. Because there were numerous examples showing this, the Board concluded that coffee and energy drinks are related.

On May 5, 2006, David John Critchley filed a trademark application for KICK ASS in connection with, among other goods, energy drinks. Then for 8 years Mr. Critchley battled to acquire his registration going all the way through an ex parte appeal. His KICK ASS application was published for opposition on April 8, 2014 and matured into a registration on June 24, 2014. Then, shortly after his registration issued, on September 10, 2014 Kicking Horse Coffee Co. Ltd. petitioned to cancel his registration.

What is amazing about this prosecution history is that the application was filed on intended use of the mark in the United States. Why someone would fight for 12 years over a mark that is not even being used in the United States is peculiar. The amount of money spent by the applicant is simply not justified.

2018 Trademark Weakness Trend Carries Over to 2019

"bmx biker landing on RED BULL branded ramp which does not have conceptual weakness"

In 2018, we wrote frequently on the strength trend we saw emerging from the Trademark Trial and Appeal Board decisions. The emerging trend was that in order to demonstrate conceptual weakness a trademark applicant had to be able to introduce a minimum of 10 third-party registrations for marks: (1) sharing the same term; and (2) registered for identical or related goods or services. The ability to meet this minimum threshold had a direct bearing on the success of one of the more common arguments made by trademark applicants to overcome a registration refusal.

In 2019, we have seen the first TTAB case to carry over this trend. Morganti Flavio Innovaciones Gastronomicas, S.L. applied to register the mark PINKCOW & Design for, among other goods, “soft drinks.” Anticipating a potential issue with Red Bull GmbH, Morganti voluntarily excluded “energy drinks” from its entire goods description in International Class 32. The Trademark Office found no issue with Morganti’s PINKCOW & Design mark and published the mark for opposition.

Red Bull, on the other hand, had an issue with Morganti’s application and opposed the registration of its mark. Red Bull alleged that the PINCOW & Design mark was likely to cause confusion with its prior registered marks RED BULL for, among other goods, “soft drinks.”

Morganti unsuccessfully argued that Red Bull’s product was an energy drink not a soft drink. Therefore, the goods descriptions at issue were legally identical because they both included the phrase “soft drinks” and the evidence showed that Red Bull’s product satisfies the ordinary definition of an “energy drink” and “soft drink.”

Red Bull was able to demonstrate that its RED BULL was commercially strong. Consequently, Morganti had to demonstrate the conceptual weakness of the RED BULL mark to counteract Red Bull’s evidence. Unfortunately, Morganti fell two short of the minimum number of the third-party marks target with a showing of eight.

Because the Board found that Red Bull’s mark was strong and the goods at issue were legally idential, Red Bull’s mark was entitled to a broad scope of rights. Those rights extended to Marganti’s PINKCOW mark, and so the TTAB granted Red Bull’s opposition.

A New Trend for the Relatedness of Goods or Services Factor?

"White Horse Auto dealership related goods or services to car washes"

A recent Trademark Trial and Appeal Board decision involving car dealerships and car washes may signal a change in how the Board will assess the relatedness of goods or services likelihood of confusion factor. White Horse Auto, LLC filed a service mark application to register the mark WHITE HORSE AUTO (in standard characters) for “automobile dealerships.” White Horse Wash, LLC opposed the registration of White Horse Auto’s application on the ground of priority and likelihood of confusion.

Not surprisingly, the Board found that the marks were virtually identical. And White Horse Auto failed to demonstrate that the WHITE HORSE phrase was diluted for automobile related goods and services. Ultimately, this case came down to whether the services at issue were sufficiently related to likely cause confusion.

The Board held that providing automobile-related services by the parties was not enough by itself to establish the services at issue were related. “A finding that the goods are similar is not based on whether a general term or overarching relationship can be found to encompass them both.” This a departure from cases the TTAB decided as early as last year. For example, in the SONIA SONI LIFE IS A RECIPE, the broad description “spices” was enough for the Board to conclude that the applicant’s goods covered the registrant’s goods. The only time the Board departed from this interpretation was when the goods or services descriptions at issue were vague or involved technical goods.

In the present case, there is nothing vague nor technical about “automobile dealerships” or “car washes,” nor is either description vague. Nevertheless, the Board looked at the real world marketplace to determine what the actual services were. And based on the similarities the Board found in the circumstances surrounding the marketing of the two marks, the Board concluded the services at issue were related. Unfortunately for White Horse Auto, its application was denied registration. But if at first you don’t succeed, it’s okay to try again.

More importantly for trademark searchers, could we be seeing a change in how the Board assesses the relatedness of the goods and services factor? This is definitely an issue to watch in 2019 as the Board decides more cases because the relatedness of goods or services factor is critical to not only conducting trademark searches but also assessing whether a likelihood of confusion exists between two marks.

Visual Similarity Sinks SEXIFIT Trademark Application

"Sexifit logo refused primarily because of visual similarity"

SEXIFIT is the name of a workout program primarily directed at women that focuses on strength and core. The workout was developed by a former NFL and NBA dancer. The name is a composite word comprised of a spelling variation of SEXY (i.e., SEXI) and FIT to form the unitary mark SEXIFIT. Unfortunately, the Board’s primary focus on visual similarity would lead to the downfall of a trademark application that included this term.

Procheer Fitness and Dance filed an application to register the mark THE OFFICIAL SEXIFIT & Design mark in connection with “providing fitness instruction services in the field of dance, and physical fitness.” The United States Patent and Trademark Office examined the application and finding no likelihood of confusion issue, published the mark for opposition.

During the 30 day opposition period, ICON Health & Fitness, Inc. opposed the registration of Procheer’s mark alleging it was likely to cause confusion with its prior registrations for IFIT. ICON Health & Fitness owns several fitness brands: Nordictrack, Freemotion, Proform, and iFit. The iFit brand is a mobile application combined with a virtual personal trainer. Although in the fitness or exercise field, a fitness class is different than personal training and definitely appeal to different classes of consumers.

Nevertheless, none of these limitations appeared in THE OFFICIAL SEXIFIT & Design application nor in any of the IFIT registrations. Accordingly, because the Trademark Trial and Appeal Board was forced to compare fitness and exercise with fitness and exercise, it had to conclude the services at issue were related. However, what was abnormal was the Board conclusion that ICON’s IFIT mark was famous for fitness instruction services when all the evidence presented demonstrated that IFIT may be famous for fitness equipment. Fame is not transferable this way.

When it came to the similarity of the marks, the Board gave no consideration to the difference in meaning between the THE OFFICIAL SEXIFIT & Design mark and IFIT mark. Likewise, it gave no consideration to the phonetic dissimilarity between SEXIFIT and IFIT. For trademark searchers, this is an example that visual similarity between two marks is generally the most important consideration when evaluating two marks.

The Board also ignored the design elements in the SEXIFIT & Design mark stating that the literal element is the most important because consumers use words to order and refer to goods and services. Focusing on the literal portion of the mark, the Board found that ICON’s entire IFIT mark was incorporated into the SEXIFIT portion of Procheer’s mark. This is another example for trademark searchers to pay attention to. If a prior registered mark is subsumed in its entirety in the mark you are searching and you can’t find dilution or have credible argument about the unrelatedness of the goods or services at issue, then the mark likely is unavailable.

Accordingly, primarily focusing on visual similarity, the Board granted ICON’s opposition and denied registration of Procheer’s THE OFFICIAL SEXIFIT & Design mark.

How Wild Card Symbols Can Improve Your Searching

"TEABLEE tea strainer would have been found using wild card"

Spend a little time learning how to use wild card symbols and logical operators in your search equations and you will improve the accuracy of your search results. And they really are not that complicated to use. Using truncation symbols is something that could have benefitted Lawrence Charles before he spent what had to be thousands of dollars on his failed attempt to register the TEABLY mark.

Mr. Charles sought to register the mark TEABLY (in standard characters) for “tea-based beverages” in International Class 30. The Trademark Office refused registration of this mark on the ground that it was likely to cause confusion with the prior registered mark TEABLEE for, among other goods, “tea infusers . . . tea strainers . . . tea balls . . . tea caddies . . . tea canisters . . . tea sets” in International Class 21. Mr. Charles never amended his goods description to reflect the actual nature of his tea-based beverage, and as a result it was an easy refusal for the Trademark Trial and Appeal Board to affirm.

Unfortunately for Mr. Charles, this refusal could have been avoided from the beginning with a proper trademark search. It is important to spend time considering the possible variations of a proposed mark. Once you have identified the possible variations, you can bet there is another variation out there that you did not identify. The way we guard against this possibility is through the use of truncation symbols.

Wild card symbols differ by the databases you are using, so it is important to review whatever key is available to explain the wild card symbols for that database. In the case of BOB’s database, the $$ wild card symbol will look for unlimited space and non-space characters. For Mr. Charles’ search, the mark would have looked like TEABL$$. Considering the similarity of the marks only, this search would have retrieved the prior registered TEABLEE mark.

Mr. Charles likely included in his search equation International Class 30 because that is where his tea-based beverage would be classified. This was his second mistake because focusing on International Classes instead of relatedness of goods is wrong. As we saw in his case, goods classified in International Class 21 were found to be related to his tea-based beverage in International Class 30. That’s why BOB focuses on relatedness of the goods not International Classes when it conducts a trademark search.

If the TEABLEE mark was returned as a potential knockout it does not mean that Mr. Charles could not move forward with his TEABLY mark. What it means is that he needs to be prepared for a refusal and start the application on the right foot.

Consumers likely to confuse Complimentary Goods Wine and Cigars

"Alec Bradley Star Insignia cigars complimentary goods to wine"

Joseph Phelps Vineyards, LLC won its appeal before the United States Court of Appeals for the Federal Circuit, and its case was remanded to the Trademark Trial and Appeal Board. This time the Board granted Joseph Phelps Vineyards’ petition for cancellation finding that wine and cigars are complimentary goods.

Fairmont Holdings, Inc. sought to register the mark ALEC BRADLEY STAR INSIGNIA (in standard characters) for, among other goods, “cigars.” The Trademark Office approved the registration of the ALEC BRADLEY STAR INSIGNIA mark and party, including Joseph Phelps Vineyards, opposed the registration of the mark. A little over a year after the mark registered, on May 17, 2013, Joseph Phelps Vineyards petitioned to cancel the ALEC BRADLEY STAR INSIGNIA registration. The proceeding lasted almost 6 years – Yikes!

There is a lesson here for trademark owners. Getting the registration does not mean you are safe. A registration remains vulnerable to a likelihood of confusion claim for five years following the registration date.

With respect to the relatedness of the goods factor, Joseph Phelps Vineyards offered several Web pages that advertise or promote cigar bars, cigars, wine bars, wine stores, and events featuring wine and cigars. It also offered evidence of flavored cigars infused with wine. Because the evidence showed that wine and cigars are used together, the Board found they are complimentary goods. This is consistent with the Board’s prior decision finding cigars and different spirits to be complimentary goods.

Joseph Phelps Vineyards mark consists solely of the word INSIGNIA and while Fairmont Holdings mark was the composite phrase ALEC BRADLEY STAR INSIGNIA it was not limited to any particular presentation and could be depicted with the word INSIGNIA larger than the word STAR. Joseph Phelps Vineyards argued that INSIGNIA in fact appears larger than STAR on the cigar labels and Fairmont Holdings’ specimen of use confirmed this.

INSIGNIA was not descriptive, generic, or diluted. Therefore, Fairmont Holdings could not avoid a likelihood of confusion by adopting Joseph Phelps Vineyards’ entire mark and adding subordinate matter. There is another lesson for trademark searchers. Unless your search reveals that the common element among the marks at issue is diluted, it is best to steer clear of the mark.

Limitations in Goods Descriptions Must be Meaningful to be Effective

"Richard Rawlings' Garage goods descriptions limitation was not meaningful"

You do not have to look far to find a Trademark Trial and Appeal Board decision that says the Board will not read a limitation into a goods descriptions where an express limitation does not exist. In fact, we have several blog posts this past year that touch on or directly address this principle. By now, readers of this blog know that broad goods descriptions cannot stand in the wake of a dispute with another mark. In order to succeed, the goods descriptions in the marks at issue must conform to the market place reality of the goods being offered.

The Board recently reiterated the importance of making meaningful limitations in goods and services descriptions in order to avoid potential disputes. Richard Rawlings’ Garage, LLC applied to register the mark RICHARD RAWLINGS’ GARAGE (in standard characters) for “headgear, namely, hats, caps, bandanas and beanies; hooded pullovers; hooded sweatshirts; jackets; pullovers; sweatshirts; t-shirts; tank tops; socks; underwear; all of the aforementioned goods bearing ornamental designs that associate the goods with the persona of Richard Rawlings or his business.”

The Trademark Office refused registration of this mark on the ground that it was likely to cause confusion with the prior registered mark RAWLINGS for various sports-related apparel. Richard Rawlings Garage’s primary argument against the refusal was that the limitation included in its application sufficiently distinguished its clothing from the sports-related clothing offered under the cited RAWLINGS mark. The Trademark Trial and Appeal Board disagreed.

Nothing in Richard Rawlings Garage’s identification stated that its goods cannot, or will not be sold, or worn as sporting apparel. Further, even though some of the owner of the cited mark’s goods were clearly for athletic purposes, not all of the goods were specifically sports-related. The Board must consider separately each item listed in an identification of goods. The fact that some of the  goods may be sports related by their nature does not limit other goods which are of more general use.

Additionally, the restriction had no bearing on the nature of the goods, classes of consumers, or channels of trade. The restriction simply restated what the applied for RICHARD RAWLINGS’ GARAGE mark was going to do, which was to indicate that Richard Rawlings Garage, LLC is the source of the identified goods. Because the restriction did not add a meaningful limitation to the goods description (not to mention the failure of not having a corresponding limitation in the cited marks), the Board affirm the registration refusal.

How to Win the Relatedness of Goods Argument

"jar of Sonia Soni Life is a Recipe spices which won the relatedness of goods factor against Mexican sauces"

Once again we see a trademark applicant trying to win the relatedness of goods argument without first narrowing the descriptions, and trying to win the conceptual weakness argument by not hitting the 10 third-party registration threshold. If you intend to make a real world marketplace argument, then the identifications of goods and services must reflect the real world. Unfortunately, this was a lesson Productos Verde Valle, S.A. de C.V. learned the hard way.

Productos Verde Valle applied to register the mark SONIA (in standard characters) for “sauces; chili sauce; hot sauce.” The Trademark Office refused registration of this mark on the ground that it was likely to cause confusion with the prior registered mark SONIA SONI LIFE IS A RECIPE (in standard characters) for, in relevant part, “spices, spice blends; spice rubs.”

The Trademark Office offered evidence showing the same mark being used for both sauces and spices. This evidence was sufficient to put the Tradmark Office in the first position to win the relatedness of goods argument. Productos Verde Valle argued the goods are unrelated because its sauces are sold as a Mexican food product whereas the SONIA SONI LIFE IS A RECIPE spices were sold as an Indian food product. However, the identification of goods descriptions were unrestricted as to a type of cuisine and an applicant may not restrict the scope of its goods or the scope of the goods covered in the cited registration by extrinsic argument or evidence.

The Trademark Trial and Appeal Board also noted that certain spices may be used in both Mexican and Indian cuisine. What this last sentence tells is the level of detail that may be required in order to differentiate the goods. In this case, for example, it would have been sufficient to say “Mexican sauces” and “Indian spices.” To win the relatedness of goods argument, it may be necessary to get very detailed about the real world marketplace. This requires examining the goods and services at issue in detail including not only the nature of the goods, but where they are marketed and who the target consumers are.

When it came to the conceptual weakness factor, Productos Verde Valle did not find any SONIA mark only marks that shared the letters “S”, “O”, “N”, and “A.” Unlike what happened in the CARDITONE case a few days ago where the Board refused to give any weight to the 69 CARDIO third-party registrations because the mark at it issue was CARDI, the Board gave some weight to the third-party registrations offered by Productos Verde Valle. Nevertheless, Productos Verde Valle was only able to find four third-party registrations to support its conceptual weakness argument. Accordingly, the Board did not find that the SONIA mark was weak.

Even if it was found to be a weak term, Productos Verde Valle’s mark was incorporated in its entirety in the SONIA SONI LIFE IS A RECIPE mark. If you are going to make the conceptual weakness argument, you must have something to point to that distinguishes your mark from the other mark that shares the weak term. Therefore, the Board affirmed the registration refusal.

Reinforcement that Trademark Classes are Irrelevant

"woman putting postits on a wall showing that trademark classes are irrelevant"

The Trademark Trial and Appeal Board has said before that trademark classes are irrelevant to determining likelihood of confusion. A recent decision involving the SWISS certification mark reinforces this point. Pearl 9 Group, LLC filed a trademark application to register the mark I.W. SUISSE for “clocks and watches; parts for watches; watch bands and straps; ***; timepiece dial faces, and parts for timepieces ***” in International Class 14. The Trademark Office refused registration of Pearl 9’s mark on the ground that it was likely to cause confusion with the prior registered certification mark SWISS for “horological and chronometric instruments, namely, watches, clocks and their component parts and fittings thereof” in Class A.

The Board held that the classification as a certification mark has very little effect on our determination as to whether or not there is a likelihood of confusion. Because the certification mark owner does not itself use the mark, the question of whether there is a likelihood of confusion is based on a comparison of the mark as applied to the goods or services of the certification mark users.

Using trademark classes in a trademark search only helps to narrow the universe of marks that trademark searchers need to evaluate. From there, the trademark searcher is left to sift through the results using only intuition to determine whether anyone of those marks is likely to prevent the registration of the proposed mark being searched.

And any software program that includes only the similarity of the marks and irrelevant International Class numbers yet provides a “score” for the search results begs the question of what that score represents. If all the search is telling is that there are similar marks registered with the United States Patent and Trademark Office, that information is largely unhelpful and something you can discover by yourself and for free.

And over reliance on trademark classes will result in overlooked trademarks that may be consequential marks in the likelihood of confusion analysis. That may have been the case in the Pearl 9 case. Focusing solely on International Class 14 where jewelry and watches are classified, would have resulted in missing the SWISS certification mark in Class A.