Trademark Fame Lacking Admissible Evidence

"Misel Disel preshave liquid too similar to Diesel despite no trademark fame finding"

Plaintiffs arguing trademark fame for purposes of the likelihood of confusion analysis is about as common as defendants arguing the plaintiff’s trademark is conceptually weak. Plaintiffs want to establish trademark fame because strong marks are entitled to a broad scope of protection. For the record, trademark fame for likelihood of confusion purposes is different from fame for trademark dilution purposes.

More often than not, a trademark fame argument fails not because the evidence of fame does not exist, but because the plaintiff fails to properly admit the evidence to the Trademark Trial and Appeal Board. During the discovery period it is easy to get fixated on obtaining the evidence the party needs and not on the admissibility of the evidence being acquired. This was the problem Diesel S.p.A. encountered in its recent case before the Trademark Trial and Appeal Board.

Misel Disel, LLC filed an application seeking registration on the Principal Register of the mark MISEL DISEL (in standard characters) for “smooth shave enhancer, namely, pre-shave liquid.” The Trademark Office reviewed the application and found no conflicting marks that would bar registration under Trademark Act Section 2(d). The MISEL DISEL mark was published for opposition and Diesel S.p.A. opposed the registration of the mark.

Diesel was the owner of several prior registrations for DIESEL (in standard characters) and DIESEL formative marks, but the Trademark Trial and Appeal Board focused on one:  DIESEL (in standard characters) for, among other goods, “pre- and after shave creams and lotions.” The Board found that the MISEL DISEL and DIESEL marks were similar, the goods closely related, and there was no weakness based on the co-existence of third-party registrations. Misel only came up with three registrations for DIESEL and none were for goods remotely close to pre- and after shave creams and lotions.

Diesel argued that its DIESEL mark was famous for likelihood of confusion purposes. To support this argument, it relied on documents only. It offered no testimony, which was Disel’s fatal mistake.

Financial information is key to establishing trademark fame, but this information must be offered through testimony. It is not self-authenticating evidence. Web pages can be self-authenticating, but the Web pages are admissible of what they show on their face only, not to prove the truth of any matter asserted in the them.

Documents produced in response to a Document Request are also inadmissible unless other authenticated through a Request for Admission.

Because Diesel did not give any consideration to admissibility, it was left with minimal evidence on trademark fame and the Board was unable to find that the DIESEL was famous for likelihood of confusion purposes.

Confusion Exists Despite 20 Years of Trademark Coexistence

"bottle of CARDITONE trademark coexistence with CARDIO TONE"

Generally, long periods of trademark coexistence between two marks weighs in favor of finding no likelihood of confusion. Unfortunately for MDR Fitness Corp., the Trademark Trial and Appeal Board found that the lack of actual confusion evidence after 20 years of trademark coexistence did not outweigh the other likelihood of confusion factors in favor of finding a likelihood of confusion existed.

MDR owns a federal registration for the mark CARDIO TONE (standard characters) for “dietary and nutritional supplements.” MDR disclaimed the word CARDIO. MDR filed its application for the CARDIO TONE mark on April 1, 2013 and the trademark registration issued on May 20, 2014. The claimed dates of first use of the trademark were November 1, 1997.

Ayush Herbs, Inc. filed a petition to cancel the CARDIO TONE mark on May 21, 2015. Ayush alleged that the CARDIO TONE mark was likely to cause confusion with its prior registered mark CARDITONE (standard characters) for “dietary supplements.”

As we have seen in many cases before, the Board found that the channels of trade and class of consumer overlapped because the identification of goods descriptions were unrestricted. MDR should have petitioned to partially cancel the CARDITONE registration to conform it to the marketplace reality.

The Board also found the CARDIO TONE and CARDITONE marks were similar. MDR offered 70 third-party registrations for marks using CARDIO for dietary supplements and other related goods and services. However, only 1 of the 70 third-party registrations was for the mark CARDI, which is far less that than the 10 registration minimum. Accordingly, the trademark coexistence of the other 69 third-party registrations did not establish a week mark. MDR should have included a dictionary definition that shows CARDI- is a known prefix for a number of heart related words including CARDIO. This would have helped all 70 third-party registrations become persuasive.

When it came to the lack of evidence of actual confusion despite 20 years of trademark coexistence, the Board said that it must examine this factor in connection with the actual marketplace to determine the opportunity for confusion to occur. It also noted how this factor is at odds with the presumptions it must find regarding overlapping channels of trademark and classes of consumers when the goods and services descriptions are unrelated. Nevertheless, because the Board found that the actual trade channels for CARDIO TONE and CARDITONE do not significantly overlap, the fact that there was no evidence of actual even though there was 20 years of trademark coexistence was not surprising. Therefore, the Board found that this lack of evidence was insufficient to outweigh the other factors in favor of finding a likelihood of confusion exists.

This is a good lesson on the importance of filing trademark applications early.

10 Mark Threshold Met: Weak Trademark Found

"unfished house ready for U-CORE insulation that was found to be a weak trademark"

MCNS Polyurethanes USA, Inc. offered enough third-party registrations to cross what we suggest is the 10 Mark threshold and it was rewarded with a weak trademark finding. MCNS applied to register the mark SUPERCORE (in standard characters) for, among other goods, polyurethane foam used as insulation. When the SUPERCORE mark was published for opposition by the Trademark Office, WFI Global, LLC filed a notice of opposition.

WFI alleged that MCNS’ SUPERCORE mark was likely to cause confusion with its prior registered mark U-CORE (in standard characters) also for polyurethane foam used as insulation. MCNS denied WFI’s allegations and asserted the affirmative defense that there was no likelihood of confusion between the marks.

MCNS offered 15 third-party registrations that included -CORE as a suffix for some type of insulation. Only one of the third-party registrations specifically mentions a foam insulation product and six of the third-party registrations are specifically for acoustic insulation not building insulation like the goods identified in the SUPERCORE application and U-CORE registration. Nevertheless, the Trademark Trial and Appeal Board found that the goods were close enough that it would give consideration to the six acoustic insulation registrations when assessing whether U-CORE was a weak trademark.

This is a much different approach than what the Board took in the LUNA case less than a month ago. In that case, the Board refused to give any consideration to numerous third-party registrations because the registrations did not identify the goods at issue; namely, women’s bicycle apparel. Instead, the third-party registrations identified only women’s apparel. Women’s apparel and women’s bicycle apparel were not close enough.

The Board found that the third-party registrations were sufficient to show  that the term CORE when used with insulation products have been “extensively adopted and registered . . . .” It then found the term CORE “has significance in the insulation industry which makes its [sic] suggestive [sic] of these types of insulation products.” Extensive use and suggestive are generally not terms used in the same sentence. Extensive use generally demonstrates the existence of descriptive not suggestive term.

Nevertheless, the Board correctly held that strength for likelihood of confusion purposes is not an all or nothing proposition. Instead, it exists on a sliding scale. While CORE may be a suggestive term when used in connection with insulation products, it exists in a crowded field, which lowers its conceptual strength.

Ultimately, the Board found that WFI’s U-CORE mark was a weak trademark. This finding paved the way for the Board’s ultimate finding of no likelihood of confusion between the two marks.

American Airlines Sues Expedia Over ADD ON ADVANTAGE Mark

"Expedia sued by American Airlines over ADD ON ADVANTAGE mark"

The stereotypical trademark bullying case is the big company picking on the small company. But as we saw yesterday, a big company suing a smaller company for trademark infringement does not necessarily mean the big company is a bully. And what we will talk about today demonstrates that trademark bullying can occur between equally sized companies.

American Airlines sued Expedia for trademark infringement because of its ADD ON ADVANTAGE program. Expedia’s program allows users to add on a discounted hotel booking after using the site to book airfare or a rental car. It is descriptive of a feature of its program. American Airlines alleged that this mark is likely to cause confusion with its AADVANTAGE mark for its customer loyalty program.

ADVANTAGE is a highly diluted mark when used in connection with a customer loyalty program. Click HERE to see BOB search for the ADVANTAGE mark “customer loyalty programs” and HERE for “frequent flyer services.“ The TROP ADVANTAGE mark is in the same travel industry as the AADVANTAGE mark and so are several other ADVANTAGE marks. Yet, American Airlines is willing to co-exist with these other marks.

Trademark bullying occurs when one party attempts to assert rights in a trademark beyond what it is reasonably entitled to assert. When a trademark owner, regardless of its size, attempts to assert broader rights, the trademark bully label is appropriate. Unfortunately, the label is in name only given there is no legal consequence to being a trademark bully.

American Airlines attempts to justify its trademark infringement claim by characterizing Expedia’s service as a bundling program similar to what American Airline’s offers under its AADVANTAGE program. Although the law is unsettled, some Courts have held that harm is to be presumed when a likelihood of confusion finding is made. American Airlines should hope that Texas is one of those courts because it is highly unlikely that it will suffer any actual harm from Expedia’s use of the AD ON ADVANTAGE mark.

Heisman Trophy Trust Sues Owners of Hiesman Watch Website

"Heisman watch website with disclaimer not affiliated with Heisman Trophy Trust"

The Heisman Trophy is awarded to the most outstanding player in college football. Unlike other most valuable player awards, the Heisman Trophy winner is spotlighted. ESPN, for example, has the Heisman Watch, but not the MLB, NFL, NBA, or NHL most valuable player tracker.

Chase Leavitt, Joseph Middleton, and Kimball Dean Parker are Utah residents and operate a website at the <heismanwatch.com> and <heismancandidates.com> websites. The website uses a regression model to identify statistical influencers that drive the Heisman votes. For example, it predicted with almost certainty that Baker Mayfield would win the Heisman Trophy in 2017. The website is purely informational.

The Heisman Trophy Trust sued Chase, Joseph, and Kimball in New York for, among other claims, federal trademark infringement. The Trust alleged that it licensed ESPN to use the HEISMAN mark in connection with the Heisman Watch offering on its website, and that the boys from Utah do not have the same authorization. In this case, the Trust has the upper hand, just not in New York.

There is nothing illegal about using another party’s trademark provided that use refers to the trademark owner. In legal terms, this is called nominative fair use. In this case, the boys from Utah could have called their calculator something else, but said that it predicts the likely winner of the Heisman Trophy. In the context, HEISMAN is clearly being used to refer to the Trust. However, the moment the term was included the trademark for the calculator, a line was crossed.

But the Trust will have a difficult time keeping the case in New York. A passive website does not confer personal jurisdiction in every state simply because the website is accessible by people in every state. And the <heismanwatch.com> website is a totally passive website. Its only purpose is to provide information about the Heisman Trophy race. Rather than fighting the battle in New York, Chase, Joseph, and Kimball should make the Heisman Trust fight the battle in Utah.

Perplexing Trademark Office: Clothespins Related to Scissors

"man getting a haircut with scissors that were found to be related to clothespins"

A recent Trademark Trial and Appeal Board decision where the Board found clothespins related to scissors again demonstrates that relying on International Class numbers in a trademark search rather than prior case decisions involving the relatedness of goods factor will lead to wrong search results. Ing. Monika Norkova filed a request for extension of protection of her International Registration to the United States for the mark ZIPZAP (in standard characters) for “drying racks for laundry; clothes[pins]” in International Class 12. The Trademark Office refused registration of this mark.

The Trademark Office argued that Ms. Norkova’s ZIPZAP mark was likely to cause confusion with a prior registered mark ZIPZAP (also in standard characters) for – are you ready – “scissors, in particular hair cutting scissors, manicure scissors, sheet-metal scissors, poultry shears, cable scissors; tree pruning shears; nippers, nail nippers, cuticle nippers; files; utility knives and pliers” in International Class 8.  While it is true that when the marks at issue are identical, less similarity is necessary in order for a likelihood of confusion to exist, one would like to think that hair cutting scissors or tree pruning shears are sufficiently different from drying racks and clothespins that confusion is unlikely.

Despite citing the rule that the words “in particular” clarify and narrow overly broad goods or services descriptions, none of the used based evidence offered by the Trademark Office involve any of the specific types of goods identified in the cited registration. Nevertheless, the Board found that because some scissors are marketed under the same brand as a laundry drying rack, then all scissors must be related in the minds of consumers to laundry drying racks and clothespins.

And what’s even more important is that it does not matter if you agree with the decision or not. In fact, we guess that most people reading this post disagree with the decision. But it’s a decision that is not going to be overturned and that could produce a negative outcome for a naming decision if you are focused on International Class Numbers and not prior case decisions involving relatedness of goods or services findings. In fact, the USPTO does not identify International Class 12 as a Coordinated Class to International Class 8.

TACOLAND Live Music Concerts Are Related to Restaurants

"TACOLAND sign where live music was found to be related to restaurants"

If you read enough decisions from the Trademark Trial and Appeal Board involving restaurant services, you would get the impression that restaurants do everything. A recent decision from the TTAB stayed with this trend. TacoLand Holdings, LLC d/b/a TacoLand (standard characters) filed a service mark application for TACOLAND in connection with “entertainment, namely, live music concerts” in International Class 41 and “bar and cocktail lounge services” in International Class 43.

The Trademark Office refused registration of the TACOLAND mark based on a prior registered mark for TACO TIERRA & Design for “restaurant services ” in International Class 43. TACO TIERRA is a traditional Mexican-American restaurant and does not advertise any live entertainment.

The Trademark Office offered three, third-party websites for establishments that served food and advertised live music, and several use-based third-party registrations for live music entertainment and restaurant services. In all the examples offered by the Trademark Office, the live musical performances are ancillary to the restaurant aspect of the establishments. In the case of TACOLAND, the live musical entertainment is the primary business and any food service is ancillary to this main business. Nevertheless, because the Trademark Office does not consider the marketplace reality, it found that the services at issue were related.

Which raises two important issues. First, if you were focusing only on Class Numbers when doing a trademark search, you would have missed that live musical concerts are related to restaurants. This why focusing on related goods instead of class numbers is so critical when doing a trademark search.

Second, when dealing with goods or services that could be offered at a restaurant, it is critical to focus a trademark search or response to an office action on what the restaurants are known for. If the evidence shows that something is merely offered at the restaurant, that needs to be your focal point because that is where you will have the best chance at overcoming a refusal.

With the services being related and TIERRA being the Spanish word for LAND, TacoLand had to make the conceptual weakness argument. Unfortunately for TacoLand, it was only capable of producing three TACO-formative third-party registrations, which is seven less than the magic number 10 we believe needs to be hit before the Board will conclude a crowded field exists.

Electric Bicycles and Bicycle Apparel Confusable as to Source

"Luna Cycle electric bicycle related to women's bicycle apparel"

Luna Cycle filed a trademark application to register the mark LUNACYCLE in standard character form for electric bicycles and replacement parts for electric bikes. The United States Patent and Trademark Office refused registration of Luna Cycle’s mark on the ground that it was likely to cause confusion with the prior registered mark LUNA & Design for women’s bicycle apparel and accessories.

When it comes to assessing the relatedness of the goods, the issue is not whether purchasers would confuse the goods, but rather whether there is a likelihood of confusion as to the source of these goods. Electric bicycles are human-powered bicycles with integrated electric motors to provide a cyclist with additional power and speed. They are marketed towards recreational cyclists.

The Trademark Office offered evidence from brick-and-morter and online retail bicycle stores offering for sale electric bicycles and women’s bicycle apparel. These retailers are not big box retailers but speciality bicycles stores, which the Board found persuasive evidence to conclude that the goods at issue were complimentary.

With respect to the similarity of the marks, Luna Cycle argued that its mark is a telescoped word LUNACYCLE composed of LUNACY and CYCLE. The Trademark Manual of Examining Procedure defines a telescoped word as one that comprises two or more words that share letters (e.g., SUPERINSE or HAMERICAN). And while the Board found that the LUNACYCLE mark is likely to be perceived as a telescoped form it nonetheless found that consumers would treat it like compound word comprising LUNA and CYCLE. The Board hypothesized a scenario where Luna Cycle emphasized the letter “L” in Luna and letter “C” in Cycle because standard character drawing was claimed, and then backed it up with Luna Cycle’s own specimen of use that showed very emphasis the Board assumed could happen. Because the dominant portion of the marks was LUNA, the Board found the marks created overall similar commercial impressions.

Maybe, Luna Cycle would be able to salvage a win by demonstrating the prior registered LUNA & Design mark was weak; thus, entitled to a narrow scope of protection because of the numerous third-party registrations for LUNA. Luna Cycle submitted 100 third-party registrations for marks displaying the LUNA term in International Class 25 for some form of apparel. Several of these third-party registration were for women’s clothing. But because none of these registrations were for women’s bicycle apparel, the Board discounted all of the 100 third-party registrations, which seems like a harsh result.

Trademark Licenses In Bankruptcy May Be Changing

"Bankruptcy petition may be changing for a trademark license"

When a trademark owner licenses its rights to another then subsequently files for bankruptcy, the bankruptcy trustee has the option to reject the trademark license. To reject, rather than assume, the trademark license means to terminate the license agreement. In this situation, the trademark licensee has no option to continue using the trademark. The trademark license is simply terminated. Generally, trademark licenses are rejected by a bankruptcy trustee when the agreement stands in the way of a restructuring.

This treatment of trademarks in the Bankruptcy Code is different from the other forms of intellectual property. When copyrights, patents, and trade secrets are involved, while the bankruptcy trustee can reject the license agreement, the licensee can elect to continue to use the intellectual property provide the royalty payments and other obligations under the license are followed.

For some Courts, this different treatment of intellectual property rights was wrong, so they treated trademarks like the other forms of intellectual property under the Bankruptcy Code. For other Courts, the language in the Bankruptcy Code was clear and Congress by its words decided to treat trademarks differently from the other forms of intellectual property. Mission Product Holdings, Inc. recently filed a Petition for a Writ of Certiorari in the Supreme Court of the United States to resolve the split among the Courts.

The International Trademark Association filed an Amicus Curiae (i.e., Friend of the Court) brief in favor of the U.S. Supreme Court taking the case. According to INTA, allowing trademark licenses to survive bankruptcy will result in a stronger trademark system that will increase the royalties trademark licensees are willing to pay.

There is no question that it is the trademark licensor’s obligation to ensure a certain level of quality in the licensed goods or services is maintained. In some cases, a trademark licensor can satisfy this obligation by relying on its relationship with the licensee. But the types of relationships that allows for this quality control delegation are few in number. If a trademark licensor fails to engage in actual quality control, the result can be an abandonment of all trademark rights.

The difficult question is whether a debtor trademark licensor should be obligated to incur the expense of engaging in quality control if the trademark licensee wants to continue using the trademark. If the Supreme Court takes the case and decides that trademarks should be treated like other intellectual property, then it may make sense to negotiate in any trademark licenses that the licensee must pay the costs for the debtor trademark licensor to exercise it quality control obligations in addition to any royalties owed.

Handbags and Jewelry Related In The Confusion Analysis

"Mansur Gavriel handbag related to Phillip Gavriel jewelry"

Mansur Gavriel is a luxury handbag brand that sells in store like Neiman Marcus for $395 to $1,295. In 2013, a trademark application was filed for MANSUR GAVRIEL in connection with “handbags; tote bags; purses; wallets.” Except for some minor issues, the MANSUR GAVRIEL application sailed through the examination phase of the registration process and was published for opposition.

Royal Chain, Inc. filed a Notice of Opposition against the registration of the MANSUR GAVRIEL mark on the ground that it was likely to cause confusion with its prior registered mark PHILLIP GAVRIEL for “diamonds; jewelry; precious and semi-precious stones; precious metals and their alloys; precious metals, namely, gold, silver, platinum; real and imitation jewelry; synthetic diamonds; synthetic precious stones.” Phillip Gavriel pieces sell for  about $100 to under $10,000, but not in high-end department stores like Neiman Marcus.

During the pendency of the dispute, Royal Chain neglected to maintain the PHILLIP GAVRIEL registration by filing the required Section 8 Declaration of Continuous Use. The PHILLIP GAVRIEL registration was canceled and the Trademark Trial and Appeal Board gave consideration only to PHILLIP GAVRIEL’s common law rights. Royal Chain failed to produce competent evidence of its date of first use; therefore, its opposition was dismissed because it did not satisfy its burden to prove priority. But for completeness, the Board addressed the likelihood of confusion factors.

The Board found that jewelry and handbags are “accessories to a woman’s fashion ensemble;” thus, the goods are complimentary. The evidence of record also demonstrated that the same brand is used to sell both jewelry and handbags. This evidence reinforced the Board’s finding that jewelry and handbags are related goods.

Although the retail channels for the MANSUR GAVRIEL handbags and PHILLIP GAVRIEL jewelry are different, those differences were not reflected in the identification of goods descriptions. Therefore, the Board was forced to find that the channels of trade and classes of consumers overlap.

Nevertheless, the Board found that because it is common for fashion brands to use surnames, prospective purchasers would be able to distinguish MANSUR GAVRIEL from PHILLIP GAVRIEL.