Smith & Wesson House Mark Can’t Distinguish Shared Terms

Years ago it was a successful strategy to avoid a likelihood of confusion by adding a house mark to a proposed mark regardless of whether the shared term was conceptual weak. However, times changed and what used to be a successful strategy now only works under certain circumstances.

According to the Trademark Manual of Examining Procedure, a house mark does not identify particular goods or services, rather a house mark identifies the provider of a wide variety of goods and services. The specific goods or services are often identified by a separate trademark or service mark. Because house marks appear on a wide variety of goods and services, they generally are afforded a broader scope of protection. The theory is that the more goods or services the mark appears on or in connection with, the more exposure consumers have to the mark, and the more recognizable the mark will become.

Smith & Wesson Corp. recently, unsuccessfully attempted to revive the old add the house mark strategy. Smith & Wesson filed an application to register the mark M&P SHIELD (in standard characters) for, among other goods, “knives.” The Trademark Office refused registration of this mark on the ground that is was likely to cause confusion with the prior registered mark SHIELD also for “knives.” Because the identifications of goods descriptions were identical, the Trademark Trial and Appeal Board found that the channels of trade and classes of consumers overlapped.

When it came to the similarity of the marks, the Board stated that the addition of a house mark has been found sufficient to distinguish marks under circumstances where the appropriated matter is highly suggestive, merely descriptive, or has been frequently used or registered by others in the field for the same or related goods or services. The Board found that SHIELD is “slightly suggestive” for knives.

With respect to the frequent use or registration of the term SHIELD, the Board found that Smith & Wesson offered only one third-party registration that included the SHIELD term for a related good. This was far less than the 10 minimum the Board has required in other cases. Therefore, the Board concluded that Smith & Wesson’s inclusion of the M&P house mark was incapable of distinguishing the SHIELD term.

Mark Similarity Lesson from Recent TTAB Decision

Mark similarity is often found when a prior registered mark is incorporated in its entirety in a mark that is subject to a pending trademark application. This likelihood of confusion refusal is not always the case even when the goods at issue are identical, which is what we saw in a recent decision from the Trademark Trial and Appeal Board. This case highlights an important lesson for trademark searchers.

Hutchinson and Stengl applied to register the following mark with the USPTO for “beer”:

The wording BREWING COMPANY GOLDEN, COLORADO was disclaimed. This meant that Hutchinson and Stengl voluntarily acknowledged that the dominant literal portion of its mark was CANNONBALL CREEK.

The Trademark Office refused registration of this mark on the ground that it was likely to cause confusion with the prior registered mark CANNONBALL DOUBLE IPA (in standard characters with DOUBLE IPA disclaimed) also for, among other goods, “beer.” The goods were legally identical with no express limitations as to channels of trade or class of consumer. There was also no evidence of conceptual weakness for the CANNONBALL word when used with beer or related goods or services. Therefore, the only likelihood of confusion factor in dispute was the similarity of the marks.

The TTAB began its decision with the tried and true principles for assessing the similarity of the marks:

  1. The similarity or dissimilarity of the marks is assessed in their entities as to appearance, sound, connotation, and commercial impression.
  2. The similarity in any one of the elements in No. 1 may be sufficient to find the marks similar.
  3. When the goods at issue are identical, the degree of similarity between the marks to find a likelihood of confusion need not be as great as where the goods are unrelated.
  4. The proper test is not a side-by-side comparison of the marks, but whether they are similar enough that persons who encounter the marks would likely assume a connection between them.
  5. While the ultimate conclusion of mark similarity must be based on the marks in their entireties, more or less weight can be given to a particular feature of the mark.
  6. Greater weight is often given to the wording in a mark that contains a design element.
  7. Less weight is often given to wording that is descriptive or generic.

The TTAB then critically analyzed Hutchinson and Stengl’s mark. It found that the word CREEK was much larger than the word CANNONBALL, which rendered the term more prominent and dominant over of the word CANNONBALL. The combination of CANNONBALL CREEK also conveyed the name of a particular waterway or stream not the ordinary meaning of the “cannonball” word; namely, “a usually round solid missile made for firing from a cannon.” And this meaning of a waterway or stream was reinforced by the wave design appearing below the word CREEK. Ultimately, the TTAB found that the dissimilarities outweighed the similarities between the marks.

The lesson from this case is that marks that appear to be unavailable may be available if strategic changes are made to the proposed name. This is where naming firms and trademark searchers that are not lawyers should recommend to their clients that they talk to an experienced trademark lawyer because this is where trademark lawyers add value.

Pharma Case Provides Lesson for Searching A Fanciful Mark

"picture of three white pills displaying a fanciful mark"

A recent TTAB decision is instructive on how to break up a fanciful mark when conducting a trademark search. When faced with a fanciful mark, it may be tempting to search only for the entire coined term. But it is important to break up the fanciful mark and search the parts even if the parts themselves are not known words.

AbbVie Biotechnology Ltd. applied to register the mark SKYRIZI (in standard character form) for pharmaceutical preparations and substances. The Trademark Office found no issue with AbbVie’s application and published it for opposition. However, Novartis AG had an issue with AbbVie’s SKYRIZI application and filed a Notice of Opposition against the registration of AbbVie’s mark. Novartis claimed rights in a prior registration for IZIRIZE (in standard character form) also for pharmaceutical preparations.

The parties agreed to use the Board’s Accelerated Case Resolution procedure through with the parties stipulated that the goods were related, the channels of trade were overlapping, and the parties targeted the same class of consumer. The two factors that remained in dispute were: (1) similarity of the marks; and (2) strength of the IZIRIZE mark.

AbbVie argued that RIZ was a conceptually weak term when used in connection with pharmaceutical goods. Regardless of the industry, the 10 third-party registration minimum trend we saw emerge in 2018 applies. To support its argument AbbVie offered 19 third-party registrations for marks that contained the letter string RIZ for pharmaceutical products. For example, ACARIZAX; BACTRIZOLE; RIZIMO; and ORIZON. Despite the evidentiary issues with the admission of the third-party registrations, the TTAB found that the 19 third-party registrations established the RIZ word string was conceptually weak for pharmaceutical products.

The weakness finding is instructive of the importance to break up even fanciful marks into any logical components and include those parts in any preliminary trademark search. In this case, the Board did not find that RIZ was a known word, acronym, or abbreviation. Nevertheless, the Board focused on it to determine whether it was a weak term, and the strength of a mark has a direct impact on the similarity of the marks analysis. Having found that RIZ was weak, the Board found that the use of SKY as opposed to IZI was sufficient to distinguish the marks at issue. And these two factors where enough to outweigh the stipulated factors that favored a finding of confusion. Therefore, the Board dismissed the opposition proceeding.

Not breaking up a fanciful mark and searching any logical components could result in a missed record that could be a knockout.

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.

Acronym, Nickname & Abbreviation Rebrands Top 2018 Worst List

"picture of an acronym, nickname, and abbreviation"

AdAge ended 2018 with its list of the worst rebrands of 2018. The unremarkable list included:

  • XANDER – short for Alexander Graham Bell – AT&T’s advertising unit
  • DUNKIN’ – abbreviation of DUNKIN’ DONUTS
  • FIG – abbreviation of FIGLIULO & PARTNERS
  • CAPRI HOLDINGS – new name for Michael Kors Holdings
  • M/H VCCP – acronym for agency Muhtayzik Hoffer
  • RTW RETAILWINDS – new name for New York & Co. Inc.
  • REFINITIV – Blackstone’s financial and risk business
  • KONTOOR BRANDS – VF Corp’s jean brands and outlet business
  • VMLY&R – name of merged entity comprising VML and Y&R
  • WW – acronym for Weight Watchers
  • Tribune Publishing – reversal of acronym TRONC, which stood for TRIBUNE ONLINE CONTENT

About 64% of the rebrands on the list involve an acronym, nickname, or abbreviation. Generally, naming professionals will say that a name should be easy to read, say, and spell. You would think that an acronym, nickname, or abbreviation would check all the boxes for a good name, but as you can see that it not always the case and why working with a professional is important.

Whether you are moving to a similar acronym or an entirely new word or phrase, you will have to spend some significant money to educate the market about your new name. Distinctiveness is an important characteristic of any new name. In the naming context, distinctiveness lets you stand out from the crowd. And in the legal context, distinctiveness provides broader protectable rights.

Consideration of an abbreviation, nickname, or acronym is a must when assessing the similarity of the marks confusion factor. And to adopt an abbreviation, nickname, or acronym of the long form for an otherwise problematic mark is not an acceptable work around. The Trademark Trial and Appeal Board has held on more than one occasion that “the users of language have a universal habit of shortening full names – from haste or laziness or just economy of words.” In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 219 (C.C.P.A. 1978).

Interworking of the Similarity of the Marks Factor

"Cartier watch and two rings are jewelry that was the subject of a case involving similarity of the marks"

A recent Trademark Trial and Appeal Board decision is a good example of how the similarity of the marks, relatedness of the goods or services, and strength factors work together. Tai Fook Jewellery Company Limited sought to register the mark T MARK (in standard characters) for, among other goods, jewelry. The Trademark Office refused registration of Chow’s trademark application on the ground that its mark was likely to cause confusion with a prior registered mark TJ MARC & Design also for jewelry. .

Chow made the same losing argument about the sophistication of the consumers claiming that jewelry is personal; therefore, consumers will exercise care when making a purchasing decision. However, the Trademark Trial and Appeal Board said what it was said numerous times before that if the restriction does not appear in the goods or service description, then it will not read a limitation in to the description. Accordingly, the Board found the goods are legally related.

When goods or services are legally related, the channels of trade and classes of consumers are deemed to overlap. Moreover, less similarity between the marks at issue is required in order for a likelihood of confusion to exist.

Chow also made the common losing argument about the strength factor. Chow introduced a table of six third-party registrations – four shy of the 10 we believe is the minimum required to establish a weak mark – and then only one third-party registration containing the letters TJ and covering jewelry. Therefore, the rights in the TJ MARC & Design were not limited to a close representation of its mark.

When it came to the similarity of the marks factor, the Board stated that marks must be considered in light of the fallibility of memory. The proper focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks.

Because the goods were legally identical, the fact that the marks began with the letter “T” and ended with the word MARK or MARC made the marks more similar than dissimilar. The crown design element and use of TJ instead of just the letter “T” were insufficient to distinguish the two marks because the TJ MARC & Design trademark was not weak, and consumer focus on the literal elements of a trademark before any design element (although this is debatable).

Using Sans-Serif Font Makes a Bland not a Brand

"Brandless website showing sans serif brand"

A recent Fast Company article identified displaying a trademark in sans-serif font as the hottest branding trend in 2018. If you were part of this trend, the article labeled your trademark a bland not a brand. According to the article, blanding occurs when the trademark lacks any meaningful differentiation from its competitors. Even a coined trademark is incapable of being a brand if it is not accompanied by something that makes is visually pop. The author says “[t]he point is differentiation; by definition, that’s what branding is.”

We have the large tech companies:  Apple, Google, Aribnb, and Uber, to thank for this trend. Because of the nature of their businesses and market status, just the word in sans-serif font functions as a brand not a bland. Their success has spawned a legion of imitators who can’t do the same thing. “The problem is that the blands haven’t earned the branding they ape.”

The article alludes to differentiation occurring through more than just sight, which is absolutely true. All the messaging done through advertising and public relations ultimately is embodied in the trademark, and that is what consumers recognize when they see a trademark even if it is just the word. If your brand strategy is to use the trademark in a sans-serif font, that is perfectly okay so long as you are using other collateral to differentiate your business and to tell your brand story. The experience consumers have with your business will influence the differentiation in the marketplace more than any visual cues your trademark may possess.

For example, look at the evolution of the Google trademark. The color placement and font style has changed over the years, but that is pretty much it. Starting out, the GOOGLE trademark could have been considered a bland not a brand by the article’s standard. Over time, Google has clearly become a well-known brand that consumers trust regardless of how the GOOGLE term is presented.

The question for young companies is whether you need eye-catching branding to begin with or if can build the differentiation you need other ways. What is important for young companies to keep in mind is that it takes time to build a brand and is something that can’t be rushed. Patience is key and so is the commitment to sticking with the brand strategy.

Addition of House Mark Did Not Eliminate Confusion

"Sealy house mark does not distinguish COCOON trademark"

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:

  1. When there are recognizable differences between the marks, then adding a house mark may help.
  2. When the marks are highly suggestive or merely descriptive, then adding a house mark may help.
  3. When the marks are conceptually weak, then adding a house mark may help.
  4. 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.

A Crowded Field + Identical Services Requires a Distinctive Term

"Dive Coastal Cuisine logo was weak but confusion likely with another DIVE mark because to distinctive terms were used"

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.

Lesson on Distinguishing Identical Words With Designs

"Abby hippopotamus incapable of distinguishing identical words"

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.