Evidentiary Mistakes Haunt NABOSO Application

"NABOSO product packaging"

Naboso Technology, LLC filed a trademark application to register the mark NABOSO (in standard characters) for “orthotics for feet,” rubber flooring, and “yoga mats.” Naboso Technology identified in its application that the English translation of NABOSO is BAREFOOT. The Trademark Office refused registration of Naboso Technology’s mark on the ground that it was likely to cause confusion with prior registrations for the mark BAREFOOT in connection with orthotics, rubber flooring, and yoga mats.

Naboso Technology did not attempt to narrow its goods descriptions and make a corresponding amendment to the descriptions in the cited registrations. Therefore the goods were deemed to be related, travel in the same channels of trade, and appeal to the same class of consumer. Not a good start for Naboso Technology.

Naboso Technology decided to make the conceptual weakness argument, and was on the right path because it submitted 11 third-registrations for marks containing the term BAREFOOT. However, there was a cloud over what appeared to be sufficient evidence because Naboso Technology did not properly introduce its evidence.

To make third-party registrations of record, that status and title copy of the registration must be introduced. Offering the registration certificate is insufficient. Additionally, lists of third-party registrations are also insufficient. Nevertheless, Naboso Technology made both mistakes. The only reason any of its third-party registration evidence was considered was because the Examining Attorney did not object to it.

When it came to commercial strength, the Board did not give many of the third-party registrations any weight because Naboso Technology did not introduce evidence of use for most of these marks. This was a costly mistake because instead of having 11 third-party registrations to rely on the number dropped to four, which was well below the 10 minimum.

The Board next considered the third-party registrations with respect to the conceptual strength of BAREFOOT mark. The lack of use evidence negatively impacted the conceptual strength argument as well brining the number of third-party registrations below 10. The Board also found that the third-party registrations demonstrated that BAREFOOT was a suggestive. Overall, the Board found that the BAREFOOT mark was not weak.

Finally, the Board turned to the similarity of the marks. Applying the doctrine of foreign equivalents, the Board found the the marks were confusingly similar. The outcome may have been different if the strength factor had come out in favor of Naboso Technology because Czechoslovakian is not a common language in the U.S.

GRAY DUCK Vodka Application Flies By GREY GOOSE

"Gray duck vodka logo similar to grey goose vodka mark"

Last year, the Minnesota Vikings started a national debate after celebrating a touchdown against the Chicago Bears by playing a quick game of Duck Duck Gray Duck, or is it Duck Duck Goose? ESPN reported that Minnesota is the only state in the union that calls the game duck duck gray duck.  Well one group of Minnesotans decided to capitalize on this distinction and produced a gluten-free vodka called GRAY DUCK vodka.

When we hear Chad Greenway – former Minnesota Viking linebacker – promoting GRAY DUCK vodka on The Power Trip morning show our initial reaction was that this brand is going to be short lived. Grey Goose vodka would certainly object to this mark. The goods are identical, so less similarity between the marks is necessary for a likelihood of confusion to exist. The different spelling of GRAY versus GREY is a small difference that is unlikely to overcome the identical nature of the goods and so is the substitution of DUCK for GOOSE.

The one saving grace for the GRAY DUCK mark would be in the dilution that GREY GOOSE has allowed to creep into the market. The GREY GOOSE brand peacefully co-exists with GRAY WHALE vodka, GREY WHALE vodka, and GRAYCLIFF vodka. GRAY DUCK thought it belongs on this list as well and so it filed a trademark application for its mark.

Surprisingly, the GRAY DUCK application sailed through the examination phase and did not receive a single Office Action from the Trademark Office. On June 26, 2018, the GRAY DUCK application was published for opposition. Bacardi & Company Limited did not oppose the registration of the GRAY DUCK application and on August 21, 2018 the Trademark Office issued the Notice of Allowance, which starts a six month period to submit evidence of use of the GRAY DUCK mark to the Trademark Office. Once this evidence is submitted, the registration certificate will issue.

This does not mean that GRAY DUCK vodka is out of the woods. The brand is vulnerable to a cancellation proceeding for five years after the registration certificate issues.

Trademark Office Continues Fight Over FUCT Mark

"FUCT logo on a hat is scandalous according to the Trademark Office"

The United States Trademark Office is fighting for its decision to refuse registration of the mark FUCT for “Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps; Children’s and infant’s apparel, namely, jumpers, overall sleepwear, pajamas, rompers and one-piece garments” on the ground that the mark is vulgar; thus, scandalous. Recently, the USPTO filed a Petition for Writ of Certiorari with the United States Supreme Court asking that it review the decision of the United States Court of Appeals for the Federal Circuit that held registration refusals on the ground of scandalousness violates the free speech right of the First Amendment to the U.S. Constitution.

We previously discussed the timing of the recent decisions involving Section 2(a) of the Trademark Act and the impact Federal Circuit’s decision would have on trademark searching if the decision stands. And the reason we discussed in that prior post is the argument the Trademark Office is making in its Petition to the Supreme Court. Section 2(a) will not prevent trademark owners from using immoral or scandalous terms as trademarks, it will simply prevent the trademark owner from receiving certain benefits from the Trademark Office that are afforded to registered trademarks.

When the In re Tam decision resulted in disparaging words no longer being off-limits for trademark registrations, we did not see a rash of new applications for disparaging marks. Similarly, it seems like the only person who took advantage of the Federal Circuit’s decision on immoral and scandalous terms was Erik Brunetti himself who filed five new trademark applications for or containing FUCT.

It is hard to imagine that the Supreme Court is going to make a meaningful distinction between disparaging terms and immoral or scandalous terms. Nevertheless, if the Trademark Office is successful, the concern about having to consider scandalous or immoral terms in a trademark search will remain.

The 411 On The Timeline to Register a Trademark

"chalk board with now or later written on it and later with a checked box representing the timeline to register a trademark"

It should not come as a shock that the timeline to register a trademark at the United States Patent and Trademark Office is not quick. But understanding the process and how much time it actually takes is important for companies, trademark searchers, and naming firms because it should inform when the naming process should start. The USPTO issued some timelines based on the filing basis of the application, but they are not the easiest diagrams to follow.

When a trademark application is filed with the USPTO regardless of the filing basis, the application will be assigned to an examining attorney to review the application. This assignment will not happen for three months. To the extent an issue exists with the application, the first office action will likely not issue for a couple of weeks after the assignment of the application. If no issue exists with the application, then the Trademark Office will issue the notice of publication.

Already, there is a three-month delay before you will know whether the mark is available. Let’s assume there are no issues with the application and the notice of publication issues. When the application is published for opposition, this starts a 30-day period when anyone that believes he or she will be damaged by the registration of the mark may formally oppose its registration. So now you are a little over four months before you will know your proposed mark will register.

But let’s assume a first office action issues, then a response to the office action is not due for six months from the date it issued. Most parties do not respond to the first office action right away and most wait until the six month response deadline is close. According to the USPTO’s Data Visualization Center, the total pendency of resolving a first office action is 9.7 months from the filing of the application. It is only after this first office action is resolved that the opposition period begins, which would then kick the timing out another month.

The timeline to register a trademark means that you should start the naming process early. If you don’t start the naming process early, then you need to be more conservative during the trademark search process because you may not have the luxury of starting over with a different mark.