An often overlooked but important consideration in almost every trademark decision is context. When trademark owners consider potential trademark issues in a vacuum, they loose the forest for the trees. Said another way, when a trademark owner sees him or herself as a hammer, then everything looks like a nail.
The importance of context is most evident when considering the impact of third-party registrations on the availability of a prospective mark. Generally, the existence of third-party registrations cannot justify the registration of another mark that is so similar to a previously registered mark as to create a likelihood of confusion, or to cause mistake, or to deceive. E.g., In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1272 (TTAB 2009). However, third-party registrations may be relevant to show that a mark or a portion of a mark is descriptive, suggestive, or so commonly used that the public will look to other elements to distinguish the source of the goods or services. See, e.g., In re Hartz Hotel Servs., Inc., 102 USPQ2d 1150, 1153-54 (TTAB 2012).
But the existence of a registration alone is insufficient to establish how the public may perceive a portion of the mark. The registrations must be backed up by evidence of use. Evidence of third-party use falls under the sixth du Pont factor – the “number and nature of similar marks in use on similar goods.” In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). If the evidence establishes that the consuming public is exposed to third-party use of similar marks on similar goods, it “is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection.” Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373-74, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005).
Moreover, it is important that the context of the use evidence support how the public may perceive the mark. Using the restaurant industry as an example, if the use evidence consists of a hand full of single-location restaurants, then it makes it more difficult to conclude how the public may perceive the mark. Similar problems exist when websites are offered without any supporting traffic data.
As searchers, we should always keep our eyes on context when reviewing search results.