In In re Heritage Distilling Company, Inc., the Trademark Trial and Appeal Board found that “distilled spirits” are unrelated to “brewpub services; taproom services; taproom services featuring beer brewed on the premises.” There is no per se rule that certain goods and services are related. And in the case of restaurant services, more is required to prove relatedness than the simple fact that restaurants sell food and beverages. “[D]iversity and expansion of businesses in a modern economy is not, in and of itself, sufficient to support an inference that purchasers are apt to believe that disparate products or services emanate from the same source.”
The examining attorney offered a few third-party registrations where the same mark was used for taproom services and distilled spirits, and some third-party websites showing taprooms selling distilled spirits. Although, the Board took issue with the lack of evidence of the branding on the distilled spirits offered at the taprooms.
The Applicant – Heritage Distilling Company – took issue with the context of of the third-party websites, arguing that the few submitted by the examining attorney was not a representative sample of the industry. Because the Board found the evidence lacking of an overlap between distilled spirits and taproom services, it found that the services are unrelated.
When considering the likelihood of confusion, mark similarity is more involved than two marks sharing similar visual elements. Marks are evaluated in terms of sight, sound, and meaning so that a conclusion can be made on the overall commercial impressions of two marks. Sight and sound can be simple to assess. On the other hand, meaning may not be so obvious.
On the spectrum of distinctiveness, the marks that are immediately protectable are suggestive, arbitrary, and fanciful marks. Suggestive marks are ordinary words that suggest, rather than immediately describe a feature, function, or characteristic of a goods or service. Arbitrary marks are ordinary words used in extraordinary way. Finally, fanciful marks are coined terms. Every mark has a meaning, even coined terms have a meaning. Whether there is any substance to the meaning is a separate question, but everything has a meaning.
So the inquiry of mark similarity does not end necessarily if the marks at issue are similar in terms of sight and sound. Assessing the meaning of the marks is important and something that could sway the overall finding that the marks at issue are dissimilar.
Like the Secretary of State issuing your business a corporate name, the issuance of an assumed name does not grant any trademark rights to you. States require a business to disclose the name they are doing business under if that name is different from their corporate name. Why? So people can find your business for any reason but primarily to sue you.
Most Secretary of State websites have a business entity search option that includes assumed names filings. But a Secretary of State website should be searched only after the United States Patent and Trademark Office has been searched. If there is a senior registrant that owns a confusingly similar mark, that trademark registration will an assumed name filing.
In Durrset Amigos, Ltd. d/b/a Amigos Foods v. Amigos Meat Distributors, L.P., The Trademark Trial and Appeal Board granted a petition for cancellation involving the registered mark AMIGOS FOODS for “wholesale distributorships featuring meat products” and a common law mark AMIGOS FOODS for “prepared tortillas, taco sauce, picante sauce, and taco shells” and “manufacturing and packaging food to the order and specification of others.” The parties focused on the services not the goods description for tortillas, taco sauce, etc.
With respect to the relatedness of goods or services, confusion factor, the Board said it is well settled that the services of the parties need not be identical or competitive, or even be offered through the same channels of trade, to support a holding of likelihood of confusion.” The respective services need only be “related in some manner and/or if the
circumstances surrounding their marketing are such that they could give rise to the
mistaken belief that [the goods and/or services] emanate from the same source.”
The Board found that manufacturing and packaging of food products, and their distribution, are part and parcel of the process of getting food from producers to the grocery store. “A grocery store purchasing agent, when ordering food to be produced and packaged from Petitioner under the mark AMIGOS FOODS, will be likely to mistakenly believe, upon encountering Respondent’s distribution services of meat products under the mark AMIGOS FOODS, that the services are rendered by the same entity or that there is some affiliation or connection between them.”
It is not obvious to think that a meat product is the same as a packaged food product that contains meat. Yet, because of the broad way the Board looks at the relatedness of goods and services factor, it was able to rationalize a scenario where one narrow class of consumer could possibly be confused. Just another example why it is important to consider the relatedness of goods factor, not international class numbers when conducting a trademark search.
The American Marketing Association (“AMA”) defines a “brand” as “a name, term, design, symbol, or any other feature that identifies one seller’s good or service as distinct from those of other sellers.” This definition is close to how the Lanham Act defines a trademark, which is “any word, name, symbol, or device, or any combination thereof – (1) used by a person . . . to identify and distinguish his or her goods . . . from those manufactured or sold by others and to indicate the source of the goods, even if the source is unknown.” A key distinction between the AMA’s definition and the Lanham Act is that a word, or example, does more than just distinguish goods or services in the market place, it is an indicator of source.
“Branding” is defined by Kotler & Keller as “endowing products and services with the power of the brand.” This is a vague definition, but it suggests that a word needs to evolve to an indicator of source, not that it automatically, in some cases, is recognized as one by consumers. Regardless of which definition is right about a word being an indicator of source, both definitions recognize that the word needs to be able to distinguish the goods and services of others. And the only way to know if the word you are considering is capable of distinguishing, is by conducting a search. Because if the word you are considering is incapable of distinguishing, then you do not have a brand and building a strong brand is key to success in the marketplace.
Ideally, a company will conduct a trademark search before the first use of the mark, but there is value in searching even after you have used a mark in commerce. If you adopt a mark in a remote geographic area without knowledge of a senior user’s rights or before the filing date of a senior filer’s registered mark, you are a good faith junior user. And conducting a search after you started using a mark will not change your status as a good faith junior user.
Instead, a search after you use a mark will do some things for you. It will alert you to any problems you may have. You may learn that because of a registered trademark, you are limited to a certain geographic area.
You may also learn of a problematic, registered trademark that you still have an opportunity to remedy if you are the senior user. A registered trademark is vulnerable to a challenge from a senior user of a confusingly similar mark for 5 years after the date of registration. You may decide to bring a cancellation proceeding to prevent being geographically limited.
The search could reveal that there is no problem and no other party has attempted to register a confusingly similar mark. This will give you the opportunity to file an application. There is no time limit for filing a trademark application.
Worst case scenario is you learn of a registered mark by a senior user and the filing date of the registered mark predates your first use date. In this case, you can make a reasoned business decision about whether to rebrand now or roll the dice and hope that the other party does not learn of your use. In other words, fly under the radar for as long as you can.
It is better to know what the landscape of the marketplace looks like than to stick your head in the sand.
Type “rebranding” into Google and you will find a plethora of articles discussing when it is appropriate to rebrand a business or product line and how about doing it. Most of these articles will talk about creating the right brand identity so that it is consistent with what was done in the past but with a new twist or direction. Brand identity involves commonality across all marketing mediums: website, social media, marketing collateral, and even business cards to ensure a consistent look and feel. Having a consistent brand identity may be essential to creating a strong brand, but trademark law takes a more simplistic view of what is dominant when it comes to a mark.
Most goods or services are purchased by name in some way, shape, or form. Where a mark consists of words and a design element, the Trademark Trial and Appeal Board has found there is a greater emphasis on the words of the mark. In re Viterra Inc., 101 U.S.P.Q.2d 1905, 1911 (Fed. Cir. 2012). Consumers rely on the words in order to request, discuss, and purchase the products. Joel Gott Wines, LLC v. Rehoboth Van Gatt, Inc., 107 U.S.P.Q.2d 1424, 1431 (T.T.A.B. 2013).
Changing the words of a mark should not be done without a careful consideration of reason for making the change. And because the words are the most memorable portion of a mark from a trademark law perspective, a proper trademark search should be conducted to ensure the words are available.
As 2017 starts to close and companies are putting together their 2018 budgets, we thought it was a good time to pause and look back at the 2017 trademark year. Year to date, 594,107 new applications were filed, which represents a 12% increase from this time in 2016. There have also been 327,314 new registrations issued, bringing the total number of live registrations in the USPTO database to 2,293,802. The majority of the registrations issued in 2017 were on a domestic basis, followed by a foreign basis, and finally based on the Madrid Protocol.
The increased number of applications filed in 2017 is not surprising since companies generally invest in expanding portfolios when the economy is doing well instead of trying to protect what they have. Given the improving nature of our economy, 2018 is likely to surpass 2017 in total number of new applications.
There is no one-size-fits-all to a branding budget. They will vary by the size of the company and overall marketing strategy. But for anyone investigating what an appropriate branding budget is, here are the guideposts identified by the authors of Branding for Dummies, 2d Edition:
Task Low-End High End
Name Development $10,000 $75,000
Logo Creation $3,500 $150,000
Advertising $10,000 Millions annually
Website/Marketing materials $10,000 $250,000+
Signage, vehicles, packaging $20,000 $250,000+ annually
What is interesting about the guideposts is that there is no line item for “Trademark Clearance.” Assuming you spent the low-end of the range, that means a company will spend about $53,500 to develop a new brand and create the material necessary to let customers know about it.
BOB conducts a thorough, single-name trademark search for $49.99. That is less than 1% of the low-end, average branding budget. The decision could not be more clear to have a proper trademark search conducted before investing money in building a new brand. And BOB is the lowest cost option for a proper trademark search in the market.