Multiple Colors Not An Inherently Distinctive Trademark

"Forney Mig Wire multiple color product packaging not an inherently distinctive trademark"

Oberlo blogged about the Color Psychology, which is the important role color plays in how consumers perceive a brand. According the post, color affects our day-to-day decisions including what items to buy. The Drum also wrote about blue being the dominant color used by global industries. Because of its importance in the purchasing decision, more companies should consider protecting colors as trademarks. However, not as many as you think attempt to do this because obtaining a trademark registration for a color – as a non-traditional trademark – can require some effort.

Recently, the Trademark Trial and Appeal Board addressed, for the first time, whether multiple colors applied to product packaging can be an inherently distinctive trademark or if the colors must acquire distinctiveness. Forney Industries, Inc. – manufacturer of welding and abrasives tools, equipment, and accessories – applied to register the colors black, yellow, and red applied to packaging for a variety of welding and abrasives goods. The Trademark Office refused registration of Forney’s mark on the ground that the multiple colors is not an inherently distinctive trademark.

Color applied to product packaging is treated the same as color applied to a product and because color applied to a product can never be an inherently distinctive trademark, color applied to product packaging can never be an inherently distinctive trademark. This does not mean that color can never function as a trademark for a product or its packaging, but that color must acquire distinctiveness. It is not immediately protectable as a trademark. And there is no meaningful distinction between a single color or multiple colors when applying this principle.

This case involved color in the abstract. If Forney had applied the multiple colors applied to well-defined shape, pattern, other distinctive design, then the color applies to that extra matter could be inherently distinctive. But since Forney did not argue in the alternative that its multiple color mark had acquired distinctiveness, the Board affirmed the refusal to register Forney’s multiple color mark.

Confusion Likely by More than One Hometown Pizza

"hometown pizza logo"

Pizza Inn, Inc. filed an application to register the mark AMERICA’S HOMETOWN PIZZA PLACE (standard characters) for “restaurant services; carry-out restaurant services.” The company voluntarily disclaimed PIZZA PLACE; thus, admitting that AMERICA’S HOMETOWN was the dominant portion of its mark. The Trademark Office refused registration of Pizza Inn’s mark on the ground that it was likely to cause confusion with the prior registered mark HOWTOWN PIZZA (standard characters) for “restaurant services.”

This application was facing an uphill battle from the beginning. The services descriptions were identical, so less similarity between the marks is necessary in order for a likelihood of confusion to exist. And the descriptions are not technical or vague, so it would be inappropriate for the Trademark Office to consider any extrinsic evidence of the use of the mark in the marketplace. Finally, the cited mark – HOMETOWN PIZZA – was incorporated in its entirety in Pizza Inn’s proposed mark.

The only chance the Applicant had was to argue that HOMTOWN PIZZA was so conceptually weak that the addition of AMERICA’S and PLACE were sufficient to avoid confusion. Pizza Inn offered eight third-party registrations that were for or included the term HOMETOWN for “restaurant services.” And of those eight third-party registrations, two were dead registrations, which are given no consideration during the examination of a trademark application. So Pizza Inn really only had six, third-party registrations.

Pizza Inn was four registrations shy of the ten mark where the Trademark Office has found a crowded field exists for a particular term. And the Trademark Trial and Appeal Board found that the third-party registration evidence offered by Pizza Inn was insufficient to establish that HOMETOWN PIZZA was conceptual weak; thus, entitled to a narrow scope of protection. What Pizza Inn should have done was offer evidence of third-party use not registrations of HOMETOWN PIZZA. A simple Internet search reveals numerous restaurants called HOMETOWN PIZZA.

No Entitlement to Use Your Name for Your Business

Phil Davis – founder of Tungsten Branding – recently wrote an article for Forbes about why your last name may not be the best choice for the name of your business. The article identifies many problems with adopting your last name as your company name, but the one problem that recently was addressed by the Tradmeark Trial Appeal Board is that your name may be one of many similar last names. There is no right to use your name as a trademark if it is likely to cause confusion with another mark.

Doofood filed an application to register the mark DOOFOOD & Design for made-to-order meal kits. Doo is part of the Applicant’s name DooJin Kim. The Trademark Office refused registration of this mark on the ground that it was likely to cause confusion with a prior registered mark DO FOOD & Design for a prepared meal kit. The Trademark Trial and Appeal Board found that goods and services at issue were related and the design components of the marks at issue would likely be perceived as background to the literal elements of the marks. The use of pot design in the DOOFOOD & Design mark only reinforced the preparation of food.

Doofood did not offer any evidence of the conceptual weakness of the DO FOOD mark. Instead, it attempted to argue that the meanings of the marks were sufficiently different to avoid a likelihood of confusion. Dissimilarity of sound has trumped similarity in the appearance of the marks at issue. And dissimilarity of appearance has trumped similarity in sound before. But rarely if ever has dissimilarity in meaning trumped similarity as to sound and appearance.

Compounding Doofood’s problem was its lack of evidence on the difference in meanings. It appears that Doofood relied only on argument, which the Board held will never make up for a lack of evidence.

This case highlights that even your name needs to be searched before making the decision to adopt it as the name of your business.

ASKBOT Unlikely To Be Confused With ASK

"ASKBOT home page unlikely to cause confusion with ASK search engine"

The Trademark Trial and Appeal Board for the second time this year considered what was happening in the real world marketplace to determine if consumers were likely to confuse the ASKBOT and ASK trademarks. ASKBOT, Spa filed a trademark application to register the mark ASKBOT in connection with software for creating online forms that allow the posting of questions and answers. The ASKBOT software is sold B2B with the users never seeing the registered trademark.

IAC Search & Media, Inc. petitioned to cancel the ASKBOT on the ground that the mark was likely to confusion with its ASK mark for a search engine service. As we have reported time and time again, the Board generally constrains its analysis of the relatedness of goods or services to the descriptions contained in the registration and application at issue. However, when the identification of goods or services descriptions are technical or vague and require clarification, it is appropriate for the Board to consider extrinsic evidence of use to determine the meaning of the identification of goods or services descriptions.

In this case, the Board did not describe what was technical or vague about the descriptions in the registrations at issue. And although it concluded that the consideration of extrinsic evidence was appropriate, it found that the goods at issue were related.

What the Board used the extrinsic evidence for was to identify differences in the channels of trade and classes of consumers. And what the Board found was that IAC Search & Media’s customers and prospective customers were unlikely to encounter the ASKBOT mark because they target consumers whereas ASKBOT, Spa targets businesses.

The nail in the coffin for IAC Search & Media was when ASKBOT, Spa was able to cross the 10 third-party registration threshold by producing 11 third-party registrations for marks containing ASK in connection with services related to online searching. These registrations coupled with the dictionary definition of “ask” were enough for the Board to conclude that the ASK mark was inherently weak and that would be something that IAC Search & Media would be unable to overcome.

LA CHULA UNLikely to Cause Confusion with CHULA BRAND

"La Chula logo unlikely to cause confusion with CHULA BRAND"

The Trademark Trial and Appeal Board issued another rare reversal this year finding that the LA CHULA & Design (in color) for “preserved, frozen, dried, and cooked fruits” is unlikely to cause confusion with CHULA BRAND (BRAND disclaimed) for “fresh fruits and vegetables, namely, citrus, lemons, avocados, coconuts, papayas, pineapples.”

The Board found that “the applied-for mark and cited mark share the dominant, arbitrary term LA CHULA.” Actually, the only shared term is CHULA. Nevertheless, the Board concluded the marks were similar in terms of sound, appearance, connotation, and commercial impression. The Board also found that the goods at issue are commercially related and that consumers are likely to mistakenly believe they emanate from the same source.

From reading the beginning of the decision, you would think that a decision sustaining the refusal was on its way, but you would be wrong. The Board found that the 13th Du Pont factor outweighed the similarity of the marks and relatedness of the goods or services confusion factors ultimately confusion the applied for mark was unlikely to cause confusion. The 13th Du Pont factor is “any other established fact probative of the effect of use.” This factor is used by the Board and Courts as a catchall in order to decide cases on what they think is happening or likely to happen in the marketplace.

In this case, the Applicants previously registered a similar mark in black and white but for “fruit conserves.” In other words, color was not claimed as a feature of the mark like it was in the Applicants’ applied for mark. And while “fruit conserves” is not an identical description to the applied for goods, the Board found that the goods were closely related. Because the Applicant’s previously registered the same mark in black and while for closely related goods, the Board found there could be no confusion with the colored version fo the logo.

The Board made the right decision, but this case highlights how different trademark examiners examine applications differently.

IN-N-STOUT beer: Branding Genius or Branding Mistake

"in-n-stout branding"

Several articles and blog posts have been written about Seven Stills “neapolitan milkshake stout” beer that it called IN-N-STOUT. It was painfully obvious from the artwork for the beer can that Seven Stills was trying to copy the IN-N-OUT fast food restaurant trade dress. Not surprising that when Seven Stills announced the release of its beer that In-N-Out restaurant sent it a letter demanding that Seven Still stop using its trade dress and a confusingly similar name.

What remains unanswered is whether the IN-N-STOUT mark was a clever branding play designed to raise the public awareness of Seven Stills or was the brewery under the mistaken impression that it was okay to use the IN-N-STOUT mark because it was for beer. If it is was the later, it is likely because Seven Stills followed the flawed International Class method for assessing the relatedness of goods and services. “Beer” is classified in International Class 32, whereas “restaurant services” are in International Class 43. But as we have talked about numerous times before, it is relatedness of the goods and services that matter, not class numbers.

If Seven Stills had used BOB to search for IN-N-STOUT, it would have quickly learned that the mark was unavailable because beer and restaurant services are related goods. You can watch BOB conduct this trademark search by clicking HERE.

On the other hand, this may have been a crazy-genius branding play to garner some attention – however fleeting – from getting the attention of a large company like IN-N-OUT. We say crazy-genius because Seven Stills had no way of knowing how In-N-Out would react to the name and trade dress for the beer. Around the Super Bowl, we saw Budweiser creatively respond to a brewery in Minnesota’s release of a DILLY DILLY beer. But In-N-Out has a history of being litigious when it comes to its trademarks. Just looking at the Trademark Trial and Appeal Board proceedings, In-N-Out has been a party in 70 proceedings.

While more trademark owners should take a Budweiser approach to infringement when the situation calls for some diplomacy instead of a hammer, it is risky to roll the dice and hope for the former when the publicity from it is fleeting.

Rare Reversal of SQUEEZE JUICE COMPANY Trademark Refusal

"SQUEEZE JUICE COMPANY mark survived trademark refusal"

Trademark weakness, or dilution, can influence the availability of a potential mark, and can even be the deciding factor. This was the case in a recent, rare reversal of the trademark refusal of the mark SQUEEZE JUICE COMPANY.

Boston Juicery filed a trademark application to register the mark SQUEEZE JUICE COMPANY (Standard Characters) for “fruit juices; vegetable juices; smoothies” and “juice bar services; smoothie bar services; cafe services.” Boston Juicery voluntarily disclaimed the terms JUICE COMPANY in its first office action response; thus, acknowledging that SQUEEZE was the dominant portion of its mark.

The Trademark Office refused registration of the SQUEEZE JUICE COMPANY mark on the ground that it was likely to cause confusion with the prior registered mark SQUEEZE & Design for “bar services; juice bar services.”

We have talked before that when the goods at issue are related (or in this case legally identical because the same description is used by the Boston Juicery and the owner of the cited mark), less similarity between the goods is necessary in order for there to be a likelihood of confusion. We also talked before that marks applied for in standard characters are deemed to seek protection of those words in all forms of stylization.

Just considering the prior discussions we have had, you would think that Boston Juicery’s SQUEEZE JUICE COMPANY application was dead in the water and a trademark refusal was a certainty:

  1. The marks share the dominant element SQUEEZE;
  2. The application share the identical services description “juice bar services”;
  3. Boston Juicery applied for its mark in a standard character form; and
  4. The case law is settled that words dominate designs when assessing mark similarity.

Then out of the blue comes trademark dilution to save the day and overcome the trademark refusal! Boston Juicery offered 12 third-party registrations for marks containing the term SQUEEZE. The majority of the third-party registrations identified “fruit juices.” Only two identified the identical “juice bar services” description and two identified a cafe service. The Board found that these 12 registrations were sufficient to establish the weakness of the SQUEEZE term.

You may be asking yourself that less than a month ago the TTAB found that nine third-party registrations was not enough to establish trademark weakness, and you would be right. And in the Vox Media case, the addition of 2040 was insufficient to distinguish two CODE marks for similar educational services, but Boston Juicery was able to distinguish its mark by adding the generic terms JUICE COMPANY to SQUEEZE.

This case possibly can help us understand that having 12 third-party registrations may be enough to establish trademark weakness or dilution. It also demonstrates how difficult it can be to forecast where the Trademark Office may go with any particular case. So get a trademark professional involved to make the final review about the availability of a proposed mark before sinking a lot of time and money into a new brand.

Hashtag Symbol Incapable of Rescuing Will.I.Am’s Trademark

"Will.I.Am album cover hashtag symbol WILLPOWER"

The hashtag symbol is incapable of distinguishing otherwise confusingly similar trademarks, but that did not stop musical artist Will.I.Am from trying to convince the Trademark Office that it was possible to distinguish marks with a hashtag symbol. i.am.symbolic, llc (company owned by Will.I.Am) applied to register the mark #WILLPOWER for a variety of clothing items. The Trademark Office refused registration of i.am.symbolic’s mark on the ground that it was likely to cause confusion with prior registered mark WILLPOWER WEAR HAVE THE WILL . . . & Design for “hats; jackets; pants; shirts; shoes.”

i.am.symbolic’s principal argument was that the hashtag symbol transformed the meaning conveyed by the word WILLPOWER such that consumers would distinguish the two marks. Instead of conveying “energetic determination,” which is the Merriam-Webster definition of the term, the meaning conveyed by the #WILLPOWER mark is “Will’s power.” Unfortunately for i.am.symbolic, punctuation matters when assessing the meaning of a mark and if it is not present in a mark the Trademark Office will not read punctuation into a mark much like it will not read restrictions into an application that are not present in the identification of goods or services description.

The Trademark Trial and Appeal Board found that a hashtag symbol or the word HASHTAG generally adds little or no source-indicating distinctiveness to a mark. At most, the hashtag symbol simply appears as a social media tool to create a metadata tag.

The fact that the cited mark contained the additional wording HAVE THE WILL and two mountain design was also insufficient to avoid a likelihood of confusion. The Board found that the dominant portion of the marks at issue was the word WILLPOWER, and there was no significant dilution of the term. Finally, i.am.symbollic did not narrow its goods description to narrow the universe of relevant consumers so that its arguments about Will.I.Am being a fashion influencer had a chance of being persuasive.

A couple of things to take away from this case trademark searchers. First, unless dilution is present, if your proposed mark is included in its entirety in a prior registered mark, there is a good chance the Trademark Office will refuse registration of the mark. Second, narrowing the identification of goods or services to overcome a registration refusal is not a bad thing. Too often trademark owners mistakenly believe that if they narrow the identification, then they can’t offer the excluded goods or services. The only impact the limitation has is on your registered rights. It does not prevent the use on other goods or services.

The Signals Given by a Trademark Disclaimer

"woman filling out a life insurance application similar to one offered by Optimum Benefits Package, trademark disclaimer on benefits package"

A trademark disclaimer is  something commonly made by trademark applicants, and they send important signals to trademark searchers. The John M. Fickewirth Associates Insurance Services case is a good example of the consequences trademark owners face when they voluntarily disclaim matter from their trademark applications. Optimum Group Inc. registered the mark OPTIMUM for “underwriting, brokerage and management of all types of life insurance and reinsurance; and actuarial consulting services” in 1996 (i.e., over 20 years ago). Optimum Group renewed the OPTIMUM registration as recent as 2017 for another 10 year term.

John M. Fickewirth Associates Insurance Services filed a services mark application for the virtually identical mark OPTIMUM BENEFITS PACKAGE for “insurance administrative services, insurance brokerage services, insurance underwriting services in the field of life, health, accident, disability and longterm care insurance.” John M. Fickewirth disclaimed the terms BENEFITS PACKAGE.

In this case, John M. Fickewirth’s primary argument was that the Trademark Office improperly dissected its mark and did not consider it in its entirety. A trademark disclaimer is an applicant’s statement that it does claim the exclusive right to, most often, certain terms apart from the mark as a whole. In other words, others are free to use the disclaimed terms for the same goods or services. Most of the time, a trademark disclaimer is made to buy peace with the Trademark Office in order to move a pending application through the examination process. But there is significance trademark searchers need to be aware of beyond the ability to use the disclaimed words.

There is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on a consideration of the marks in their entireties. Disclaimed matter that is descriptive of or generic for a party’s goods or services is typically less significant or less dominant when comparing the marks at issue.

John M. Fickewirth acknowledged that the dominant portion of its mark was OPTIMUM with the trademark disclaimer of the words BENEFIT PACKAGE. Therefore, it was not improper for the Trademark Office to afford more weight to the OPTIMUM term when determining the similarity of the marks. As trademark searchers, we need to pay attention to any trademark disclaimer made by a trademark applicant to determine what the dominant portion of a mark may be.

Consumers Likely to Confuse FREESTYLE Pillows and Comforters

“pillow and comforter likely to confuse”

The Trademark Trial and Appeal Board recently affirmed the Trademark Office’s decision that consumers are likely to confuse the mark FREESTYLE for “comforters, namely, comforters and comforter sets and comforter sets sold in a bag” with a prior registration for the identical mark FREESTYLE for “pillows.” This decision should not shock anyone. Comforters and pillows are clearly used together, and the Trademark Office did not have to look far to find examples of pillows and comforters being sold under the same trademark. Therefore, the possibility that consumers were likely to confuse the marks was highly probable.

It also does not appear from the decision that the Applicant – BCP Home, Inc. – really believed that pillows and comforters are unrelated goods. Instead, BCP Home put all its eggs in the strength of the mark or lack thereof basket. This was an extremely risky strategy because the Trademark Trial and Appeal Board has never set the bar on the type or amount of evidence necessary to establish weakness in a mark, nor will it ever set this bar.  Instead, the Board will continue to use words like “numerous” and “substantial” so that it continues to have the flexibility to assess strength on a case-by-case basis.

In the BCP Home case, however, even if the Board had set a bar, the evidence offered to support weakness was never going to meet the standard. Instead of offering the actual third-party registrations, BCP Home submitted a list of marks that did not include the goods or services descriptions. It is settled law that lists of marks are not probative on the issue of strength.

In addition to the list, BCP Home offered nine third-party registrations for FREESTYLE in Class 20. The Board held that the goods identified in these registrations were for less closely related goods demonstrating again that relying on Class numbers alone is a mistake when analyzing the likelihood of confusion.

The icing on the cake for the Board was the lack of any evidence of use of the nine third-party marks offered by BCP Home. BCP Home lost its wager to prove that because of the weakness of the FREESTYLE mark, the owner of the cited mark’s rights were limited to pillows.