Trademark Fame Lacking Admissible Evidence

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 …

How to Win the Relatedness of Goods Argument

Once again we see a trademark applicant trying to win the relatedness of goods argument without first narrowing the descriptions, and trying to win the conceptual weakness argument by not hitting the 10 third-party registration threshold. If you intend to make a real world marketplace argument, then the identifications of goods and services must reflect …

A Crowded Field + Identical Services Requires a Distinctive Term

Twenty two third-party trademark registrations was too much for the Trademark Trial and Appeal Board to ignore even though it tried to downplay some of the registrations offered by 8415927 Canada, Inc. Despite the conceptual weakness, the Board affirmed the refusal to register the DIVE PRIME SEAFOOD (in standard characters) and with a Design marks …

Confusion Exists Despite 20 Years of Trademark Coexistence

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 …

10 Mark Threshold Met: Weak Trademark Found

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 …

How to Standout When the Search Reveals a Saturated Market

As trademark searchers, one thing we need to be on the look out for is a saturated market. In a trademark context, a┬ásaturated market exists when multiple trademarks share the same element for related goods or services. We know this is important because it tells us that either the entire mark or a portion of …

American Airlines Sues Expedia 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 …

Hard Rock Should Not Have to Pay Startup Attorney Fees

Hard Rock Cafe Inc. does not think it’s fair to pay the attorney fees of a startup after suing the young company for trademark infringement. Hard Rock Cafe is a chain of theme restaurants founded in 1971 that has expanded to include casinos, hotels, a park, and sports stadium. RockStar Hotels launched in January 2017, …

Reinforcement that Trademark Classes are Irrelevant

The Trademark Trial and Appeal Board has said before that trademark classes are irrelevant to determining likelihood of confusion. A recent decision involving the SWISS certification mark reinforces this point. Pearl 9 Group, LLC filed a trademark application to register the mark I.W. SUISSE for “clocks and watches; parts for watches; watch bands and straps; …