Trade Dress May Not Differentiate A Mark Registered in Standard Character

"two men on a seesaw with a large finger pushing down on one side representing that trade dress cannot prove the absence of confusion when a prior mark is registered in standard character"

Generally, what’s good for the goose is good for gander. Except in certain circumstances when you are dealing with the Trademark Office. Relying on trade dress to distinguish your mark from a prior registered word mark is one of those situations where the rules apply differently if you are the Applicant instead of the Trademark Office.

When filing a trademark application you have the option to submit a stylized drawing of your mark or to claim your mark in a standard character form. When you choose to protect your mark in a standard character form, the trademark rights that result from that application exist in the word or words regardless of stylization. Filing in a standard character form does two things for a trademark owner. First, it provides flexibility for the modernization of a mark. Second, it prevents another party from avoiding the trademark owner’s rights by adopting a sufficiently different stylization for his or her mark.

The general rule is that when analyzing a word mark, the Trademark Office will not look to the trade dress associated with the word or words. The decision must be made on the marks as they appear in the application or registration. However, if you filed an application claiming your mark in a standard character form, the Trademark Office can look at your trade dress to determine if the manner in which you are using your mark creates a similar overall commercial impression with the mark displayed in the registration.

You would link that if the Trademark Office can rely on the real world trade dress to support its case, that the trademark owner should be able to do the same. Unfortunately, it is not the case. Trade dress may not be used to prove the absence of a likelihood of confusion.

For trademark searchers, we need to be aware of this disparity when evaluating the search results. We need to be cautious about clearing trademarks when the record reveals a mark with a logo or stylization similar to the planned designed for our mark. We also need to be cautious about recommending certain stylization or logos as a means to differentiate our mark from a prior mark registered in standard character form.

Who is the Reasonable Person in Trademark Infringement Cases?

"reasonable person average joe's logo"

Who is the reasonable person in trademark infringement cases? When the similarity of the marks is being determined, the Trademark Trial and Appeal Board will sometimes mention that when comparing the marks “the proper test is not a side-by-side comparison of the marks, but instead ‘whether the marks are sufficiently similar in terms of their commercial impression’ such that persons who encounter the marks would be likely to assume a connection between the parties.” The Board will then go on to say “the emphasis must be on the recollection of the average purchaser who normally retains a general, rather than specific, impression of trademarks.” If you are a defendant in a case before the Trademark Trial and Appeal Board and see these paragraphs, it is probably time to brace yourself for a decision that is not going in your favor (that’s assuming you didn’t skip to the end of the decision the minute you received it).

Who is this “average purchaser” that the Trademark Trial and Appeal Board references? In one of its most recent decisions In re Spy Tec International, Inc., the Board never defines who this person is and we must assume that the applicant did not offer any evidence to demonstrate who is this person. The “average purchaser” is a concept that is critical to any trademark dispute, yet more often than not who this person is is assumed without any evidence identifying who is the average purchaser of particular goods and services.

Laura A. Heymann of the College of William & Mary Law School discussed this “reasonable person” or “average purchaser.” Although not of much comfort to those of us dealing with trademarks on a daily basis, Ms. Heymann concludes that the “reasonable person” or “average purchaser” is the whoever the judge decides it is, which is usually a product of the judges own bias. The Trademark Trial Appeal Board has said that the “average purchaser” is the least sophisticated of a particular class of consumers.