Pillow Pods’ Counterclaim Against Pillow Paws: Right Idea, Wrong Proposal

DML Marketing Group successfully registered the mark PILLOW PODS in standard characters for “socks” on February 26, 2013. DML Marketing Group is also the owner of a registration for the mark PILLOW SOLE also for “socks.” This registration issued on December 30, 2008 (spoiler alert, what are the odds that DML Marketing Group renews this registration on December 30th of this year now?) The PILLOW PODS application sailed through the examination process requiring only minor clarifications. The goods description “socks” is a description found in the Trademark ID Manual.

This is a good example of why it is worth starting with a broad identification of goods description when the application is filed. The Trademark Office did not find a conflicting mark during its examination and Principle Business Enterprises, Inc., who ultimately petitioned to cancel, was asleep at the wheel and did not file an opposition against the PILLOW PODS mark. The cancellation procedure is a second bite at the apple if the trademark owner misses the opposition period, but if five years go by without a cancellation proceeding being filed, then the trademark owner is for the most part home free (save for some limited cancellation grounds and any infringement action).

However, as a trademark owner, you need to appreciate that this strategy may require you to narrow the broad description at a later date, and you should be thinking about what the narrow description may be, and be prepared to make it.

Principle Business Enterprises, Inc. is the owner of a prior registration for PILLOW PAWS in connection with “slipper socks; slippers; socks,” and it petitioned to cancel the PILLOW PODS registration. The descriptions of goods in the marks at issue both identified “socks.” Because the goods descriptions were identical, less similarity between the marks was necessary to create a likelihood of confusion. In this case, the Trademark Trial and Appeal Board found that PODS and PAWS were too similar under the circumstances.

DML Marketing Group did the right thing though by not sticking to it’s overly broad “socks” description. It counterclaimed to narrow not only its goods description but also the description in Principle Business Enterprises’ registration. The downfall to the proposed amendment was that it narrowed the description in Principle Business Enterprises’ registration to a nonslip sock and excluded nonslip socks from its goods description.

The proposed amendment was unhelpful because the parties’ goods could still be sold and marketed in the same channels to the same consumers. DML Marketing Group should have gone deeper to differentiate the goods. For example, PILLOW PAWS are designed primarily for medical patients. This could have been the basis of a successful amendment.

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