Wine Spectator Sues Weed Spectator Claiming Confusion

"woman drinking wine dispute between wine spectator and weed spectator"

Cannabis is undoubtedly a polarizing subject. Some people like Anheuser Busch heir Adolphus Busch V are jumping in head first starting cannabis companies. Other companies want nothing to do with plant and will fight to ensure prospective purchasers do not mistakenly associate it with any type of cannabis company.  M. Shanken Communications Inc., the publisher of Wine Spectator magazine, is on the later side of the cannabis spectrum, and sued Modern Wellness Inc. for using the mark WEED SPECTATOR for a website that provides information about cannabis and cannabis-based products.

Wine Spectator alleged in the lawsuit that Weed Spectator not only adopted a confusingly similar trademark, but that it also copied its 100-point rating system. In fact, Wine Spectator alleged that this was a “classic case of passing off.” In addition, Wine Spectator filed a letter of protest against Modern Wellness’ pending applications for WEED SPECTATOR in connection with “providing on-line digital publications in the nature of education in the field of cannabis via the Internet.”

A letter of protest is a way to object to a pending application before the application is published for opposition. The party submitting the letter of protest is not allowed to make any arguments about the registrability of the pending mark. You are only allowed to submit evidence the party believes supports a refusal to register the pending mark. If accepted, that evidence will be used as a basis to refuse registration of the applied for mark. Letters of protest are not always accepted though.

This case raises an interesting point for trademark searchers. We have talked a lot about the importance of the relatedness of goods factor and that prior case law is the best indicator for assessing whether certain goods or services are related. But what do you do when there is not a lot of case law to turn to? Cannabis is still a banned substance federally, but has recently been legalized in some states. There has not been an opportunity for a court to decide the issue of whether wine and weed are related goods.

In these situations, trademark searchers need to look to other context to see what other type of products have been found to be related. The context of the Weed Spectator website is to inform individuals about something they could use in a social setting much like alcoholic beverages are used in a social setting. Therefore, it would be reasonable to compare how the Trademark Office has treated alcoholic beverages and cigars, for example, to assess how the relatedness of goods factor will shake out. However, overtime, a body of case law will develop around cannabis and cannabis-based products.

ASKBOT Unlikely To Be Confused With ASK

"ASKBOT home page unlikely to cause confusion with ASK search engine"

The Trademark Trial and Appeal Board for the second time this year considered what was happening in the real world marketplace to determine if consumers were likely to confuse the ASKBOT and ASK trademarks. ASKBOT, Spa filed a trademark application to register the mark ASKBOT in connection with software for creating online forms that allow the posting of questions and answers. The ASKBOT software is sold B2B with the users never seeing the registered trademark.

IAC Search & Media, Inc. petitioned to cancel the ASKBOT on the ground that the mark was likely to confusion with its ASK mark for a search engine service. As we have reported time and time again, the Board generally constrains its analysis of the relatedness of goods or services to the descriptions contained in the registration and application at issue. However, when the identification of goods or services descriptions are technical or vague and require clarification, it is appropriate for the Board to consider extrinsic evidence of use to determine the meaning of the identification of goods or services descriptions.

In this case, the Board did not describe what was technical or vague about the descriptions in the registrations at issue. And although it concluded that the consideration of extrinsic evidence was appropriate, it found that the goods at issue were related.

What the Board used the extrinsic evidence for was to identify differences in the channels of trade and classes of consumers. And what the Board found was that IAC Search & Media’s customers and prospective customers were unlikely to encounter the ASKBOT mark because they target consumers whereas ASKBOT, Spa targets businesses.

The nail in the coffin for IAC Search & Media was when ASKBOT, Spa was able to cross the 10 third-party registration threshold by producing 11 third-party registrations for marks containing ASK in connection with services related to online searching. These registrations coupled with the dictionary definition of “ask” were enough for the Board to conclude that the ASK mark was inherently weak and that would be something that IAC Search & Media would be unable to overcome.

Consumers Likely to Confuse FREESTYLE Pillows and Comforters

“pillow and comforter likely to confuse”

The Trademark Trial and Appeal Board recently affirmed the Trademark Office’s decision that consumers are likely to confuse the mark FREESTYLE for “comforters, namely, comforters and comforter sets and comforter sets sold in a bag” with a prior registration for the identical mark FREESTYLE for “pillows.” This decision should not shock anyone. Comforters and pillows are clearly used together, and the Trademark Office did not have to look far to find examples of pillows and comforters being sold under the same trademark. Therefore, the possibility that consumers were likely to confuse the marks was highly probable.

It also does not appear from the decision that the Applicant – BCP Home, Inc. – really believed that pillows and comforters are unrelated goods. Instead, BCP Home put all its eggs in the strength of the mark or lack thereof basket. This was an extremely risky strategy because the Trademark Trial and Appeal Board has never set the bar on the type or amount of evidence necessary to establish weakness in a mark, nor will it ever set this bar.  Instead, the Board will continue to use words like “numerous” and “substantial” so that it continues to have the flexibility to assess strength on a case-by-case basis.

In the BCP Home case, however, even if the Board had set a bar, the evidence offered to support weakness was never going to meet the standard. Instead of offering the actual third-party registrations, BCP Home submitted a list of marks that did not include the goods or services descriptions. It is settled law that lists of marks are not probative on the issue of strength.

In addition to the list, BCP Home offered nine third-party registrations for FREESTYLE in Class 20. The Board held that the goods identified in these registrations were for less closely related goods demonstrating again that relying on Class numbers alone is a mistake when analyzing the likelihood of confusion.

The icing on the cake for the Board was the lack of any evidence of use of the nine third-party marks offered by BCP Home. BCP Home lost its wager to prove that because of the weakness of the FREESTYLE mark, the owner of the cited mark’s rights were limited to pillows.

KARUNA Fruit Infused Water is Related to Nutritional Supplements

"KARUNA fruit infused water"

Fulfill Food and Beverages, LLC’ s attempt to convince the Trademark Trial and Appeal Board that its KARUNA fruit infused water is unrelated to nutritional supplements when the marks at issue share an element fell flat. Fulfill’s failed attempt demonstrates once again that relying on intuition when evaluating the relatedness of goods and services factor can be a dangerous game.

FulFill sought to register the mark KARUNA THE ROOT OF GOOD HEALTH & Design for “a fruit infused plant-based drink, namely, filtered water infused with a fruit flavoring and plant-based ingredients,” which is a trademark attorney way of saying “fruit infused water.” The Trademark Office refused registration of FulFill’s mark on the ground that it was likely to cause confusion with a prior registration for KARUNA in connection with “nutritional supplements.” With respect to the similarity of the marks, the Board found that the dominant term in FulFill’s mark was KARUNA because the phrase THE ROOT OF GOOD HEALTH would be perceived by consumers as a slogan or motto and words are given more weight than designs. It is interesting that the Board found a slogan has less source identifying significance than a single word. Obviously some slogans, such as Nike’s Just Do It, have as much if not more source identifying significance than the single word.

Likewise, the Board too often give too little weight to the significance of designs. While it is true that a human has to physically say words to place an order, designs play a critical role in bringing the customer in to place that order in the first place.

The Board began its discussion of the relatedness of goods factor by reciting its standard policy.

When considering the similarity or dissimilarity of the goods, we note that goods need not be identical or even competitive in order to support a finding of likelihood of confusion. Rather, it is enough that the goods are related in some manner or that some circumstances surrounding their marketing are such that they would be likely to be seen by the same persons under circumstances which could give rise, because of the marks used or intended to be used therewith, to a mistaken belief that they originate from or are in some way associated with the same producer or that there is an association between the producers of the parties’ goods or services.

Based on the evidence submitted by the Examining Attorney, the Board found that fruit infused water can include or perform the same function as nutritional supplements. The Board ignored FulFill’s evidence of the actual nature of the KARUNA nutritional supplements. Because “nutritional supplements” is such a broad description, the Board said its hands are tied by precedent and it can’t consider the real world marketplace.

Airline Entertainment Equipment Is Unrelated to Broadcasting Services

"Delta airline entertainment equipment, like P.G.A. Electronic's CARAT system, that allows broadcasting services providers to deliver content"

P.G.A. Electronic wins a rare reversal from the Trademark Trial and Appeal Board for its CARAT application. Given the surprises the Trademark Office delivers from time to time, it is possible that airline entertainment equipment could be related to television and radio broadcasting services. These goods and services could be related because they are both involved in the delivery of content to consumers. The Trademark Office has held in prior cases that when the goods or services are ingredients in or compliments to the other good or service, that is an indication of relatedness.

In In re P.G.A. Electronic, the Trademark Trial and Appeal Board decided whether airline entertainment equipment is related to television and radio broadcasting services. P.G.A. Electronic filed a request for extension of protection of an international registration for the mark CARAT (in stylized form) through the Madrid Protocol. P.G.A. Electronic filed the CARAT application in connection with airline entertainment equipment. The Trademark Office refused registration of the mark on the ground that it was likely to cause confusion with a prior registered mark CARAT for radio and television broadcasting services.

The central issue in this case was the relatedness of the goods or services because the marks were virtually identical. The only difference was the stylization of the CARAT word used by P.G.A. Electronic. When the marks at issue are identical, less similarity between the goods or services at issue is required for a likelihood of confusion to exist.

The Examining Attorney offered third-party registrations for marks that covered broadcasting services and some form of content transmission.  Because of the transmission aspect of these third-party registrations did not exclude transmitting in airplanes, the Examining Attorney argued this was evidence that the goods and services at issue in the case were related.

The Trademark Trial and Appeal Board agreed, but held that the Examining Attorney failed to prove that P.G.A. Electronic’s customers were airline passengers and not the technicians who install the CARAT equipment in the airplanes. Accordingly, the Trademark Trial and Appeal Board held that airline entertainment equipment is unrelated to radio and television broadcasting services.

Concert Speakers and Consumer Speakers are Related

"Guardian Audio concert speakers and consumer speakers"

Have you ever noticed or even pay attention to the brand name of the concert speakers? No, us either. But according to the Trademark Trial and Appeal Board, most consumers must pay attention to and could be confused by a similar trademark used on a concert speakers and consumer speakers. The astonishing aspect of this case was the level of detail the applicant – David Mottinger – included in its identification of goods description in order to avoid the issue the Trademark Office had with his application.

In In re David Mottinger the Trademark Trial and Appeal Board had to decide whether GUARDIAN AUDIO for – take a breath – “audio equipment for use in commercial entertainment systems for use in large public venues, namely, amplifiers, speakers, receivers; all of the foregoing sold only to sound contractors for commercial installation, and to sound production companies, and none of which are targeted to or designed for use by the general consuming public” was confusingly similar to EGUARDIAN for, among other goods, the broadly worded audio products that could include consumer speakers and concert speakers.

This case was no exception to the tried and true statement made by the Trademark Trial and Appeal Board that the relatedness of goods determination must be made based on the descriptions contained in the application and registration at issue. With respect to Mr. Mottinger’s GUARDIAN AUDIO application, there is not much more detail he could have included to avoid the issue the Trademark Office had with his application. But because the EGUARDIAN registration broadly described its audio goods, the Board found there was overlap; thus, the relatedness factor favored a likelihood of confusion.

Moreover, it is high time the Trademark Trial and Appeal Board stop with this policy of only considering what is described in the application and registration. In this case, Acceptto Corporation – the owner of the EGUARDIAN registration – uses the mark only as the name of a driver. But because it only had to show use on 1 of the goods described in the then application it was able to register the mark for the entire goods description if it was willing to the risk on a fraud claim most likely because the Trademark Trial and Appeal Board has been so milk toast on fraud claims since the Bose decision. All the Board’s policy is doing is pushing more people to file partial cancellation actions, which will further clog the TTAB docket.

Trademark searchers need to pay attention to how marks are actually being used if a mark appears problematic from the search results.

Toy Figures and Plush Toys are Similar Goods

"Pint Size Heroes toy figures and plush toys similar goods"

Intuitively, toy figures and plush toys appear to be similar goods. Whether they are in fact similar goods is what the Trademark Trial and Appeal Board had to decide. The similar goods likelihood of confusion factor was the deciding factor in the In re Funko, LLC case. In disputes before the Trademark Office, the 13 factor DuPont test is applied. The Trademark Office will consider each DuPont factor for which there is evidence or argument. However, it is important to highlight that of the 13 DuPont factors, only two are considered to be dispositive of the likelihood of confusion finding. Those two DuPont factors are:  (1) the similarity of the marks; and (2) the similarity of the goods or services. Because these two factors can be dispositive, it is imperative that both are included in a trademark search.

Funko, LLC applied to register the mark PINT SIZE HEROES (Stylized) for “collectable toy figures.” The Trademark Office refused registration of this mark on the ground that it was likely to cause confusion with the prior registered mark PINT SIZE PRODUCTIONS & Design for “plush toys; stuffed and plush toys; stuffed toy animals.” The Trademark Trial and Appeal Board had to decide the marks were being used in connection with similar goods. Pint Size Productions does not sell a branded stuffed animal. Instead, it is an online retailer that sells stuffed animals associated with the Boynton children’s book series.  It does not sell any brand of toy figure.

The Trademark Trial and Appeal Board focused on the evidence in the record that showed toy manufacturers selling both a plush toy and toy figure under the same mark. What was lacking from the record was any evidence that online or brick and mortar retailers not only sell other branded plush toys and toy figures, but also plush toys and toy figures branded with the store’s name. And it does not appear that Funko made this argument.

Instead, the Trademark Office went back to the well for its standard line that the determination of relatedness must be based on the descriptions contained in the application and registration at issue. Where the goods in an application or registration are broadly described, they are deemed to encompass all the goods of the nature and type described therein. In this case, the Board found that “collectable toy figures” can encompass plush toys. Therefore, all the Board waded into the real world marketplace waters, its decision was based on the tried and true presumptions that apply to broad identification of goods descriptions.