To add or not to add the house mark, that is the question. This is a good question because the Trademark Trial and Appeal Board has gone both ways on the question. In some cases, the Board has found that the addition of a house mark is sufficient to avoid confusion, and in others the Board has found that it aggravates the likelihood of confusion. In a recent decision involving the COCOON BY SEALY mark, the Board gave us some guidance on when to add the house mark.
Cocoon International Sales, LLC filed an application to register the mark COCOON BY SEALY (in standard characters) for “mattresses; pillows.” The Trademark Office refused registration of this mark on the ground that it was likely to cause confusion with the prior registered mark SLEEP COCOON (in standard characters) for “mattresses; pillows.”
The Trademark Office found the goods are identical and because the descriptions are unrestricted the channels of trade and class of consumers factor overlap. Cocoon International Sales tried the conceptual weakness argument but was only able to offer 4 third-party registrations (but in reality only two because three of the four were owned by the same entity), a number well below the 10 minimum we have posited is required.
Facing an uphill battle, Cocoon International Sales tried to distinguish its mark by arguing the addition of the famous SEALY house mark was enough to tip the mark similarity factor in its favor along with the ultimate finding of no likelihood of confusion. In finding that it did not adequately distinguish the COCOON marks, the Board identified when a house mark can distinguish two marks:
- When there are recognizable differences between the marks, then adding a house mark may help.
- When the marks are highly suggestive or merely descriptive, then adding a house mark may help.
- When the marks are conceptually weak, then adding a house mark may help.
- When the house mark precedes instead of follows the mark, adding it may help.
Unfortunately for Cocoon International Sales the Board found that COCOON was “mildly suggestive” of mattresses and pillows. Therefore, adding SEALY to the mark was not enough to avoid a likelihood of confusion finding.
Twenty two third-party trademark registrations was too much for the Trademark Trial and Appeal Board to ignore even though it tried to downplay some of the registrations offered by 8415927 Canada, Inc. Despite the conceptual weakness, the Board affirmed the refusal to register the DIVE PRIME SEAFOOD (in standard characters) and with a Design marks because no distinctive term was used.
8415927 Canada, Inc. applied to register the mark DIVE PRIME SEAFOOD in connection with “bar services; restaurant services; take-out restaurant services.” The Trademark Office refused registration on the ground that the marks were likely to cause confusion with the prior registered mark DIVE COASTAL CUISINE & Design for “restaurant services.
8415927 Canada argued that DIVE was a diluted term and afforded a very narrow scope of protection. 8415927 Canada offered 22 third-party registrations for marks containing the term DIVE for restaurant and related services. The Board tried to undermine the third-party registrations noting that no evidence of use was offered, and that none were for DIVE by itself. According to the Board, the fact that some of the third-party registrations had other terms changed the meaning of the term DIVE.
Nevertheless, 22 was too much for the Board to ignore and well above the 10 we speculate is required to prove trademark weakness. Therefore, the Board concluded that the DIVE COASTAL CUISINE & Design mark was conceptually weak. While it is normally a good sign for the trademark applicant, it was not enough to overcome the other likelihood of confusion factors.
In particular, the Board was handcuffed by the unrestricted identification of services descriptions. The marks at issue identified “restaurant services,” consequently the Board was required to find that the class of consumers and trade channels overlapped. Less similarity between the marks was also required in order to find a likelihood of confusion.
The lesson learned in this case is that when there is a crowded field concerning a certain term and the goods or services at issue are identical, then the addition of descriptive terms is not enough to distinguish the marks. A distinctive term needs to be incorporated in the proposed mark.
It is a well settled principle that in the case of composite marks containing both words and a design, the verbal portion of the mark is the one most likely to indicate the origin of the goods. But that does not mean that a design is incapable of distinguishing two trademarks that use identical words. Whether the capability exists depends on how the design is used.
ChuChu TV Studios a/k/a ChuChu TV filed an application register the mark ABBY and a design of a hippopotamus in connection with various clothing items and plush toys. The Trademark Office refused registration of ChuChu TV’s mark on the ground that it was likely to cause confusion with the prior registered mark ABBY (in standard characters) for a variety of dolls. The Trademark Office found that dolls and plush toys are related, much like it found plush toys and toy figures were related about four months ago.
Despite the relatedness of the goods, ChuChu TV argued that its hippopotamus design that dominated the word ABBY by a large margin was sufficient to distinguish its mark from the prior registration for just the word. Unfortunately, the Board disagreed.
For a design to distinguish the use of identical words, it is helpful that the words are difficult to distinguish from the design. In such a case, the design is more likely to be perceived by consumers as dominating the words. In ChuChu TV’s case, the ABBY term was clearly separate from the hippopotamus design. In fact, the term ABBY appeared directly below the design.
As trademark searchers it is important to understand when a design is capable of distinguishing the use of two identical words. When reviewing trademark search results, we may be able to justify recommending to a client an otherwise problematic word mark.
Ezekiel Elliott is the running back for the Dallas Cowboys. In his rookie season in 2016, he rushed for 1,631 making him the top rusher in the National Football League. Because of his successful rookie season, Ezekiel Elliot was selected as a First-Team All-Pro and made his first Pro Bowl. Due to a suspension based on off the field conduct, Ezekiel Elliott’s 2017 season was far less successful than his rookie season.
Ezekiel Elliott attended the Ohio State University where he majored in marketing, so he understands the importance of a trademark registration. On August 7, 2015, he filed an intent-to-use trademark application for the mark ZEKE in connection with a variety of clothing articles. The USPTO refused registration of Ezekiel Elliot’s application on the ground that it was likely to cause confusion with two prior registered marks: ZEKE’S SMOKEHOUSE (SMOKEHOUSE disclaimed) and ZEKE’S COFFEE & Design (COFFEE disclaimed) both for clothing.
The goods at issue in this case were legally identical because they were clothing. That meant, absent an express restriction in the identification of goods descriptions, the goods at issue were deemed to travel in the same channels of trade and appeal to the same classes of consumers. So from the start, Ezekiel Elliott was starting three likelihood of confusion factors down to the USPTO.
Ezekiel made the conceptual weakness argument, but it does not appear that Ezekiel understood how to make this argument. He offered no third-party registrations beyond the two cited marks and then argued that these marks are used in limited geographic areas. Giving context to the use of a mark is key to a strength argument, but in Ezekiel’s case you want to the use to be widespread. Pointing out the limited use could only hurt his case, and put him down four likelihood of confusion factors to the USPTO.
Ezekiel Elliott’s ZEKE mark was also incorporated in its entirety in the cited marks, but he put an interesting spin on the “meaning” aspect of the similarity of the marks factor. He claimed to be a well know football player and that consumers would recognize ZEKE as his nickname. However, the USPTO found that the evidence did not demonstrate Ezekiel Elliot was a well-known football player or that consumers would recognize ZEKE as his nickname.
The evidence establishing his popularity may not have been in the record, or it could be that the USPTO being located near Washington, DC means they don’t like the Dallas Cowboys given the rivalry with the Washington Redskins.
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? 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.