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.

Number 1 Misconception When Searching Trademarks

We talk to a number of naming firms and serial entrepreneurs who conduct their own preliminary trademark searchers each year. And every year we observe the same misconception. Non-lawyers place far too much emphasis on International Class Numbers and ignore the relatedness of the goods. This is also the flaw in every trademark search tool available in the market, with the exception of BOB.

The reason this misconception exists is due to the lack of education on this issue because the legal precedent on this subject is legion. That’s why we focus on the relatedness of goods factor in a significant number of our posts. Our hope is to spread the word and educate non-lawyers about this crucially important factor so that trademark searching becomes more effective. More effective trademark searching should lead to fewer trademark disputes.

The Trademark Trial and Appeal Board recently issued a decision highlighting again the importance of evaluating the relatedness of goods factor and not International Class Numbers. Ernest Everett James filed a trademark application to register the mark LIQUOR SLINGER DISTILLING (standard characters with LIQUOR and DISTILLING disclaimed) for “liquor” in International Class 33. The Trademark Office refused registration of Mr. James’s mark on the ground that it was likely to cause confusion with the prior registered mark SLINGER for “drinking glasses; shot classes” in International Class 21.

The Board found there is an inherent, complementary relationship between the parties’ goods: liquor is served in and drunk from drinking glasses and shot glasses. Indeed, a shot glass is defined as “[a] small glass used for serving liquor.” The Trademark Office also offered Internet evidence showing it is common for distilleries to sell branded glassware. All of this evidence supported the Trademark Office’s argument, which the Board agreed with, that liquor and glassware are related goods.

A person searching trademarks for a liquor brand that focused too heavily or entirely on International Class 33 where the product is classified is sure to a miss a problematic mark in another International Class because of the relatedness of goods factor.

Minimum Third-Party Registration Trend Bites The Trademark Office

"ferret with mouth open symbolic of third-party registration trend biting trademark office"

It’s not often, but sometimes the Trademark Office relies on the trademark weakness argument to support a decision to refuse registration of a mark. In 2018, we talked about the emergence of a trend requiring a trademark applicant to offer at least 10 relevant, third-party registrations in order to demonstrate conceptual weakness. This trend carried over to 2019 and for the first time, we saw the trend applied to the Trademark Office.

Morgenstern Center for Orbital and Facial Plastic Surgery Inc. – that’s a mouthful so we will just use “Applicant” going forward – applied to register the mark MAIN LINE REFRESH (“MAIN LINE” disclaimed) for “medical consultations; medical services; cosmetic and plastic surgery.” The Trademark Office refused registration of Applicant’s mark on the ground that it was likely to cause confusion with three prior registered marks owned by two different entities:

(1) MAIN LINE HEALTH (standard characters, “HEALTH” disclaimed) for, among other services, “medical services”;

(2) MAIN LINE HEALTH & Design (“HEALTH” disclaimed) for, among other services, “medical services”; and

(3) MAIN LINE PLATIC SURGERY & Design for, among other services, “cosmetic and plastic surgery.”

Neither Applicant’s mark nor any of the cited marks contained limitations in the descriptions of the services. Accordingly, the services were deemed to be legally related, traveled in the same channels of trade, and appealed to all classes of consumers. It also meant that less similarity between the marks was necessary for a likelihood of confusion to exist.

Applicant successfully demonstrated that MAIN LINE was a weak term. Not only is the term geographically descriptive of a place in Pennsylvania, but it is also used by 110 medical clinics, physicians, and surgeons located in Pennsylvania. Accordingly, Applicant argued that the addition of the suggestive term REFRESH was sufficient to distinguish its MAIN LINE mark from the other MAIN LINE marks.

The Trademark Office attempted to demonstrate that REFRESH was conceptually weak and even descriptive of Applicant’s services by offered seven third-party registrations. This showing was three less than what the Trademark Trial and Appeal Board required in prior cases, so the Board held that REFRESH was suggestive of Applicant’s services. Because of this finding, the Board reversed the Trademark Office’s registration refusal.

Video Conferencing is a Related Service to E-mail

"INFOCUS MARKETING e-mail service was a related service to video conferencing"

The Trademark Trial and Appeal Board relied on evidence in the real world marketplace to conclude that video conferencing is a related service to the electronic transition of messages like e-mail. This decision is a good reminder that intuition about whether certain goods or services are related can lead to wrong decisions.

InFocus Corporation filed a service mark application to register the mark INFOCUS (Stylized) for “video conferencing services, namely, providing cloud-based telecommunications connections between video conferencing systems for video calling” in International Class 38. The Trademark Office refused registration of the mark on the ground that it was likely to cause confusion with a prior registered mark for INFOCUS MARKETING (in standard characters with MARKETING disclaimed) for direct mail and e-mail marketing services.

The Trademark Trial and Appeal Board found the marks at issue were similar to both contained the dominant word INFOCUS and the rights in the cited mark extended to all forms of stylization of the word INFOCUS. The similarity of marks factor favored a finding of confusion.

As for the relatedness of the services, the Trademark Office offered 15 third-party websites that promoted video conferencing and some type of electronic messaging such as e-mail, text, or instant messaging. In a majority of these websites, the messaging feature is ancillary to the primary services, which is video conferencing. Nevertheless, because InFocus Corporation made the mistake of not petitioning to partially cancel the INFOCUS MARKETING registration to narrow the identification of services description to e-mail as part of a marketing campaign, the Board considered all forms of electronic messaging whether ancillary to a primary service or not.

When the marks at issue are identical, trademark searchers need to take a closer look at goods or services their intuition is telling them may not be related. We know that when marks are identical, less relatedness between the goods or services at issue is required in order to create a likelihood of confusion. Looking at prior decisions and paying attention to what any competitors are offering should be considered.

TTAB Hint Into How Similar Wine and Beer Marks Can Co-Exist

"Tempus beer bottles can't co-exist with Tempus Two wine"

The case law is legion at the Trademark Trial and Appeal Board that “wine” and “beer” are related goods. Nevertheless, time and time again, breweries and wineries attempt to persuade the TTAB that wine and beer are different only to meet the same fate over and over again. The story was the same in a recent TTAB decision and so was the fate, but this time the TTAB provided a potential common ground where similar beer and wines marks may be able to co-exist.

Cerveceria Primus, S.A. de C.V. sought to register the mark TEMPUS for “beer.” The Trademark Office refused registration of the TEMPUS mark based on a prior registered mark for TEMPUS TWO for “wines,” and Cerveceria Primus S.A. de C.V. appealed.

Cerveceria Primus lost the conceptual weakness argument by offering only three third-party registrations, seven less than the 10 minimum. The marks were also found to be similar because both shared the TEMPUS term. The central issue was the relatedness of the goods.

Cerveceria Primus started down the right path by attacking the context of the Trademark Office’s evidence. A majority of the Examining Attorney’s third party evidence did not show the same party producing both wine and beer under the same mark. Instead, it showed the same retail outlet selling both wine and beer. However, in this case, as opposed to recent TREK case, the Board discounted the retail store evidence.

Cerveceria Primus then attempted to put into context the remaining evidence by arguing the examples represent .1% of microbreweries in the U.S. With such a small percentage, the evidence did not demonstrate that enough consumers were exposed to wine and beer appearing under the same mark.

However, the goods descriptions in the case contained no limitations. The descriptions remained broadly “beer” and “wine.” Had the descriptions been narrowed to “beer produced by a microbrewery” or a similar limitation on a winery. Had those limitations been made, then Cerveceria Primus’ evidence concerning the small representative sample of microbreweries would have carried more weight.

This is the path breweries and wineries will need to take if they are going to co-exist given that the industry becomes more and more saturated.

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.