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.
BOB wishes everyone a safe and restful Labor Day. Take a minute to stop and smell the roses.
BOB wishes everyone a safe and happy Fourth of July!
Parody is something that seeps into the branding process from time to time. Depending on the good or service, parody of a recognizable music name could be appropriate. Esquire magazine highlighted the ten most memorable music parody brands. Our favorite was DON A HENLEY AND TAKE IT EASY for clothing.
In trademark law, there is nothing illegal about drawing inspiration from something for a name. Where the line is crossed is when the manifestation of that inspiration is likely to cause confusion with another party’s trademark. The Trademark Trial and Appeal Board has found on multiple occasions that the right of the public to use words in the English language in a humorous and parodic manner does not extend to use of such words as trademarks if such use is likely to cause confusion.
What this presumes is that the music name functions as a trademark in the first place, and trademarks cannot exist in a vacuum. Trademarks must attach to a good or service. In the case of music names that most likely means that the band or musician name attaches to primarily entertaining services. This is significant because trademark rights are limited to the goods or services they are used in connection with plus what would be considered a natural zone of expansion.
Unfortunately for DJ Khaled, that means his trademark infringement complaint filed against Curtis Bordenave and Business Moves Consulting Inc. d/b/a Business Consulting over trademark applications filed for DJ Khaled’s 18-month old son’s name ASAHD, ASAHD COUTURE, and A.S.A.H.D. A SON AND HIS DAD for clothing and magazine publishing services will likely fail. DJ Khaled named his son an acronym A.S.A.H.D., which means A SON AND HIS DAD.
This acronym has not been used with any goods or services, so there are no trademark rights associated with the acronym. Moreover, whatever notoriety DJ Khaled has in his name, that does not transfer to his son’s name. What his case demonstrates is that you need to know thy enemy when you select a name, which we have to assume the defendants fully anticipated in this case.
The use of a foreign word to avoid a likelihood of confusion with the English equivalent will generally not work. The doctrine of foreign equivalents is not an absolute rule, but a guide and applies when it is likely that the ordinary American purchaser would stop and translate the foreign word into its English equivalent. The doctrine of foreign equivalents is used to determine similarity of meaning and connotation, and the Trademark Trial and Appeal Board recently addressed the doctrine in In re California Faucets, Inc.
California Faucets sought to register the mark GAVIOTA in connection with luxury bathroom faucets, shower heads, tub spouts, and other plumbing fixtures and fittings. The United States Patent and Trademark Office refused registration of California Faucets GAVIOTA mark on the ground that it was likely to cause confusion with the prior registered mark SEAGULL for “water purification units and parts therefor.”
Turning to the relatedness of goods factor first. The Trademark Trial and Appeal Board found that “water purification units and parts therefor” are related to various bathroom fixtures. The evidence showed that the Registrant’s water purification units were installed for drinking water purposes. But because this limitation was not present in the description of goods for the SEAGULL mark, the TTAB found that the water purification units could be installed in any part of a home including the bathroom.
The Trademark Trial and Appeal Board needs to stop being willfully blind to the realities of the marketplace. No consumer installs water purification units in their bathrooms, nor are these units sold in the same areas of a big box retailer like Home Depot or Lowe’s. But it again highlights the importance of including the relatedness of goods factor in your trademark search process.
With respect to the marks, GAVIOTA means “seagull” in Spanish. It has no definition English. Because the record showed an appreciable number of Americans speak Spanish, the TTAB found it was appropriate to apply the doctrine of foreign equivalents. And while the doctrine of foreign equivalents applies only to the meaning of the mark, the TTAB found it was so strong that it outweighed the dissimilarity of the marks in terms of sight and sound.
As a trademark searcher you should pay attention to foreign words. However, because the foreign equivalent doctrine applies only to prevalent languages spoken in the United States, do not get bogged down searching every possible foreign language. One good resource to use is Google Translate. If you find a foreign word or words for the mark you are trying to register, you can easily incorporate them into your trademark search process by using BOB’s multi-name search functionality.
One data point that must be considered when reviewing trademark name search results is who owns the trademarks revealed in the search results. The importance of this issue is demonstrated in a dispute between The University of Pittsburgh and Voodoo Brewery. Voodoo Brewery received a nasty gram (that’s the legal term for cease and desist letter) from Pitt over its use of the image of the Cathedral of Learning and script H2P lettering on the packaging. The H2P stood for “Hail to Pitt.”
Pitt owns a Supplemental Registration for H2P for “magnets” and “lapel pins.” They also owned a HAIL TO PITT & Cathedral Design registration similar to the design appearing on the beer cans, but Pitt allowed the registration to expire. Beer and magnets or lapel pins are not related goods. So why would Pitt make an issue of H2P for beer?
The unfortunate reality is that some organizations believe they have to be a hammer. And when you are a hammer, everything looks like nail. But the reality is that even if you think you are a hammer, everything does not have to be a nail. The worst advice a trademark owner can get from a trademark attorney is that you have to enforce your rights at all costs or risk losing your rights forever. While trademark rights are dynamic, you do not have to enforce them against anyone and everyone.
In this case, Pitt’s decision to hammer Voodoo Brewery turned into a bit of a PR nightmare because the brewmaster is a University of Pittsburgh alumnae. The beer he created was a tribute to his alma mater. But rather than fight Pitt over the name, Voodoo Brewery rebranded the beer to NON-TRADEMARK INFRINGEMENT ALMA MATER IPA. This was a brilliant way to address the questionable trademark claims made by Pitt.
Another thing to learn from this case is that as a defendant you do not have to fight at all costs either. Voodoo Brewery made a business decision to rebrand rather than fight. Never lose sight of the business decision when dealing with trademark issues. The minute your emotions take over what should be a business decision is the time you will end up spending much more on legal fees than you probably should.
Trademark name search results may reveal trademark owners that deserve more investigation before you can clear the mark.
The use of misspelled trademarks may be waning a little in the wake of the human name trend, but that does not mean it has gone away. For example, there is a new lending company that landed on the mark THRYFT for its business name. Misspelled words may be a way to convey a compelling brand story and it certainly may open up a number of available top-level domain names. Unfortunately, what it will not likely do is avoid a problem with an already registered trademark.
Like reversing words, spelling variations are unlikely to avoid a likelihood of confusion with a prior registered mark. A misspelling is of some importance when evaluating the similarity of the marks factor, but unless the misspelling results in what is essentially a coined term, it is unlikely to avoid confusion. An example of this is a 2016 decision from the Trademark Trial and Appeal Board for the marks INDI and INDY for clothing. In this case, while the Board found the marks are visually and phonetically similar, the spelling of the INDI word rendered it meaningless whereas the INDY word had a distinct auto racing meaning.
Trademark searchers need to be aware of possible misspelled trademarks that could pose a problem the trademarks they are considering adopting. Unless you are a linguist, the possible alternate spellings of word may not be readily apparent to you. One way to determine if a possible alternate spelling exists is to use – what for it – the Alternate Spelling Finder. This tool will identify possible alternate spellings for any word.
The problem with the Alternate Spelling Finder is two fold. First, you need to determine how realistic some of the proposed alternate spellings are. Second, if you conclude the alternate spellings are realistic, it is impracticable to include all of the spelling variations in your trademark search. With a trade search tool like BOB, you could use the multi-name search functionality and search all the possible spelling variations at a reasonable cost. But there is an easier way to do it and a much lower cost.
Use BOB’s Wild Card search functionality and use the $ and ? symbols. These symbols represent any number of space or non-space characters. For example, let’s say you use the Alternate Spelling Finder to search the word “BABY.” You will get about 24 alternate spellings and all but a couple begin with the letter B and end with the letter Y with about 2-3 letters in between. To capture the spelling variations of the word BABY, you enter in the Wild Card Field B???Y. This search will look for words that begin with the letter “B” end with the letter “Y” and have 2-3 letters in between regardless of what those letters may be. And you only pay for 1 search not 24 searches.
The trademark infringement elements are referred to as the “likelihood of confusion factors” and apply differently depending upon the jurisdiction you are in. The United States Patent and Trademark Office applies the trademark infringement elements established by the In re E. I. du Pont de Nemours & Co., 476 F.2d 1357 (CCPA 1973) case, which established 13 factors to consider when deciding whether confusion is likely.
Despite the test containing 13 factors, the United States Patent and Trademark Office has repeatedly said that the two key considerations are the similarities between the marks and the similarities between the goods or services. In fact, the Trademark Trial and Appeal Board has held that these two factors can be dispositive of the likelihood of confusion question.
Not only are the similarity of the marks and similarities between the goods or services the most important factors when before the United States Patent and Trademark Office, but the interplay between these two factors is equally important. Where the goods of the applicant and cited registrant are identical or closely related, the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as would be required with diverse goods.
The Trademark Trial and Appeal Board recently decided a case where this interplay was shown. In In re DPC Pet Specialties LLC, DPC Pet Specialties sought to register the mark SAVORY ROASTERS for “pet food; pet treats.” The USPTO refused registration of this mark on the ground that it was likely to cause confusion with the prior registered mark HEARTY ROASTERS for “pet food.”
The TTAB held that while the terms SAVORY and HEARTY convey different meanings, both terms are descriptive of pet food. Accordingly the dominant term in both marks was ROASTER. And even thought the TTAB is required to evaluate the marks in their entireties, because the goods at issue were identical the small differences in meaning between SAVORY and HEARTY were insufficient to avoid a likelihood of confusion.
Bloomberg recently reported that first names are all the rage with startups, such as CASPER, MARCUS, and OSCAR. According to Steve Manning – founder of the Igor naming agency – “short first names change everything as it’s unexpected, less concerned with sounding corporate and serious, and is inherently more human.” Theoretically, this should allow the brand to make a more personal connection with its target customers.
The benefits of adopting a short, first name as your trademark are more than just theoretical. In a 2012 study published by the Journal of Financial Economics, brands with short, easy to pronounce names were viewed more positively by investors. Reducing name length by just one word can boost book-to-market ratios by 2.53 percent or $3.75 million for a medium-size firm. A 2006 study by marketing professor Adam Alter and psychology professor Daniel Oppenheimer found that stocks with easy to pronounce names and tickers outperform their counterparts.
Selecting first names does not guarantee success, and may even raise the stakes for the brand owner. Selecting a first name could mean that customers expect a personal experience throughout the entire experience with the goods or service. It also does not mean that you will have a trademark.
Whether a name is inherently distinctive (i.e., immediately protectable as a trademark upon being used in commerce) or requires proof of secondary meaning (i.e., evidence that the public recognizes name as a trademark) depends on the primary significance of the mark to the purchasing public. The more common it is for an industry to use personal names as identifiers, the more secondary meaning it will be necessary to show. In these circumstances, the name will not be protectable under trademark law unless secondary meaning has been established.
First names are also evaluated for confusion just like any other mark. This means that as trademark searchers we have to search personal names to make sure they are unlikely to cause confusion with a prior registered mark.
Trademark searching is conducted in two phases. The first phase is the preliminary trademark search followed by the comprehensive trademark search. The reason trademark searching follows this process is solely to manage trademark attorney fees and trademark search company costs. Trademark search companies usually charge about $800 for a comprehensive trademark search. A comprehensive trademark search is a search that looks in various databases for common law or unregistered trademarks. If an attorney reviews the comprehensive trademark search report for you, the total cost of a comprehensive trademark search could be $1,200 to $2,000.
A preliminary trademark search costs less than a comprehensive trademark search. A preliminary search looks in the USPTO’s Trademark Electronic Search System for any registered trademarks. A preliminary trademark search conducted by a trademark attorney will cost $300-$700.
AILPA recently released its 2017 Economic Study, and reported that the median cost of a clearance trademark search is $1,100 in trademark attorney fees. This number is based on an outside law firm performing the search. $1,100 is a lot of money to spend on a trademark clearance search, but as legal salaries continue to rise, so will this median number. The national average salary for a first-year associate in a law firm is about $153,000. In fact, the Milbank, Tweed, Hadley & McCloy law firm recently announced that its starting salaries for first-year attorneys was being raised to a whopping $190,000. The national average of a trademark paralegal is also high at about $55,000. And these numbers do not include other employment expenses like overhead and benefits.
As we discussed before, trademark searching is deceptively complex because of the nuance involved. But a computer can adequately account for the nuance and produce accurate results at a significant discount to the cost of a manual search. This does not mean that computers are here to replace attorneys, paralegals, or other professional trademark searchers. Instead, it is an opportunity to utilize technology to make the trademark clearance process more efficient, and change the way attorneys, paralegals, and professional trademark searchers are used.
Instead of paying hundreds to thousands of dollars in trademark attorney fees and costs from trademark search companies, have BOB conduct the search and the search results interpreted by the outside firm. At $49.99-$14.99 per name, there is no outside firm that can be as cost efficient as BOB.