Years ago it was a successful strategy to avoid a likelihood of confusion by adding a house mark to a proposed mark regardless of whether the shared term was conceptual weak. However, times changed and what used to be a successful strategy now only works under certain circumstances.
According to the Trademark Manual of Examining Procedure, a house mark does not identify particular goods or services, rather a house mark identifies the provider of a wide variety of goods and services. The specific goods or services are often identified by a separate trademark or service mark. Because house marks appear on a wide variety of goods and services, they generally are afforded a broader scope of protection. The theory is that the more goods or services the mark appears on or in connection with, the more exposure consumers have to the mark, and the more recognizable the mark will become.
Smith & Wesson Corp. recently, unsuccessfully attempted to revive the old add the house mark strategy. Smith & Wesson filed an application to register the mark M&P SHIELD (in standard characters) for, among other goods, “knives.” The Trademark Office refused registration of this mark on the ground that is was likely to cause confusion with the prior registered mark SHIELD also for “knives.” Because the identifications of goods descriptions were identical, the Trademark Trial and Appeal Board found that the channels of trade and classes of consumers overlapped.
When it came to the similarity of the marks, the Board stated that the addition of a house mark has been found sufficient to distinguish marks under circumstances where the appropriated matter is highly suggestive, merely descriptive, or has been frequently used or registered by others in the field for the same or related goods or services. The Board found that SHIELD is “slightly suggestive” for knives.
With respect to the frequent use or registration of the term SHIELD, the Board found that Smith & Wesson offered only one third-party registration that included the SHIELD term for a related good. This was far less than the 10 minimum the Board has required in other cases. Therefore, the Board concluded that Smith & Wesson’s inclusion of the M&P house mark was incapable of distinguishing the SHIELD term.