Trademark weakness, or dilution, can influence the availability of a potential mark, and can even be the deciding factor. This was the case in a recent, rare reversal of the trademark refusal of the mark SQUEEZE JUICE COMPANY.
Boston Juicery filed a trademark application to register the mark SQUEEZE JUICE COMPANY (Standard Characters) for “fruit juices; vegetable juices; smoothies” and “juice bar services; smoothie bar services; cafe services.” Boston Juicery voluntarily disclaimed the terms JUICE COMPANY in its first office action response; thus, acknowledging that SQUEEZE was the dominant portion of its mark.
The Trademark Office refused registration of the SQUEEZE JUICE COMPANY mark on the ground that it was likely to cause confusion with the prior registered mark SQUEEZE & Design for “bar services; juice bar services.”
We have talked before that when the goods at issue are related (or in this case legally identical because the same description is used by the Boston Juicery and the owner of the cited mark), less similarity between the goods is necessary in order for there to be a likelihood of confusion. We also talked before that marks applied for in standard characters are deemed to seek protection of those words in all forms of stylization.
Just considering the prior discussions we have had, you would think that Boston Juicery’s SQUEEZE JUICE COMPANY application was dead in the water and a trademark refusal was a certainty:
- The marks share the dominant element SQUEEZE;
- The application share the identical services description “juice bar services”;
- Boston Juicery applied for its mark in a standard character form; and
- The case law is settled that words dominate designs when assessing mark similarity.
Then out of the blue comes trademark dilution to save the day and overcome the trademark refusal! Boston Juicery offered 12 third-party registrations for marks containing the term SQUEEZE. The majority of the third-party registrations identified “fruit juices.” Only two identified the identical “juice bar services” description and two identified a cafe service. The Board found that these 12 registrations were sufficient to establish the weakness of the SQUEEZE term.
You may be asking yourself that less than a month ago the TTAB found that nine third-party registrations was not enough to establish trademark weakness, and you would be right. And in the Vox Media case, the addition of 2040 was insufficient to distinguish two CODE marks for similar educational services, but Boston Juicery was able to distinguish its mark by adding the generic terms JUICE COMPANY to SQUEEZE.
This case possibly can help us understand that having 12 third-party registrations may be enough to establish trademark weakness or dilution. It also demonstrates how difficult it can be to forecast where the Trademark Office may go with any particular case. So get a trademark professional involved to make the final review about the availability of a proposed mark before sinking a lot of time and money into a new brand.