Trademark Dilution is Deciding Factor In Recent TTAB Case

Trademark dilution is one of three key likelihood of confusion factors that must be evaluated when conducting a trademark search and then re-evaluated if a registration refusal arises. Trademark dilution directly impacts the evaluation of the other likelihood of confusion factors. The weaker the senior user’s mark, the closer the junior user’s mark can come without causing a likelihood of confusion and thereby invading what amounts to its comparatively narrower range of protection.

I H W Management Limited d/b/a The Finchley Group applied to register the mark BLUE INDUSTRY for a variety of clothing items. The Trademark Office examined this application and approved it for publication. Pure & Simple Concepts, Inc. timely opposed the registration of the BLUE INDUSTRY mark.

To establish the strength (i.e., the broad scope of rights) in the INDUSTRY term, Pure & Simple argued it was the owner of a family of INDUSTRY marks for clothing. Generally, the common element in a family of marks is afforded a broad scope of protection, but establishing a family of marks is not easy.

The threshold issue is that the family feature must exist prior to the junior user’s use of its mark. The family feature also must be distinctive (excluding a highly suggestive term). Finally, the trademarks containing the family feature must be promoted together as a family. A mere intention to create a family of marks nor owning several registrations containing the alleged family feature is sufficient by itself to establish a family of marks.

Pure & Simple relied on eight registrations that contained the term INDUSTRY. Pure & Simple also included its licensee’s website, but this website does not promote the INDUSTRY term as a family feature. It simply identifies the brands this company distributes. Therefore, the evidence offered by Pure & Simple did not establish INDUSTRY as a family element.

Additionally, The Finchley Group offered 74 third-party registrations (far in excess of the 10 third-party registration minimum) that included the term INDUSTRY for clothing. This evidence not only further supported that finding that Pure & Simple did not own a family of INDUSTRY marks, but it also demonstrated that the INDUSTRY term was diluted for clothing. “The purpose of a defendant introducing third-party uses is to show that customers have become so conditioned by a plethora of such similar marks that customers have been educated to distinguish between different such marks on the bases of minute distinctions.” As such, The Finchley Group’s addition of the word BLUE was sufficient to distinguish its mark from Pure & Simple’s INDUSTRY marks.

The Trademark Trial and Appeal Board dismissed Pure & Simple’s opposition finding there was no likelihood of confusion. On December 4, 2019, Pure & Simple filed a Notice of Appeal the United States Court of Appeals for the Federal Circuit. This is a curious decision by Pure & Simple because the record on appeal to the Federal Circuit cannot be supplemented whereas an appeal to the United States District Court is reviewed de novo. Seems like in this case it would have been preferable to go the District Court route given all the dilution evidence that was offered.

Service Mark Strength Can’t Be Established By A Strong Trademark

Trademark strength for likelihood of confusion purposes is often misunderstood for fame in the context of dilution. The two concepts are different with fame for dilution being difficult to achieve. The common mistake service mark owners make is to assume that because their rights are strong for particular goods or services that this strength transfers to other goods or services. Trademark strength in the likelihood of confusion context does not transfer this way, which is a lesson Sunkist Growers, Inc. learned too late.

Sunkissed Families sought to register the service mark SUNKISSED FAMILIES (in standard characters with FAMILIES disclaimed) for “information in the field of parenting concerning the health of children” in International Class 44. The Trademark Office approved the mark for publication and Sunkist Growers, Inc. opposed.

Sunkist Growers plead numerous registrations for marks containing SUNKIST in connection with a wide variety of goods and services. However, because Sunkist Growers did not plead a family of SUNKIST marks, the Board focused on the registration with the most relevant description; namely, SUNKIST KIDS (Stylized) for “education and entertainment services, namely, providing a website featuring games, quizzes, experiments, educational lesson plans for teachers and educators, and related multimedia materials all in the field of food, health, and diet for the benefit of children” in Class 41. All trademark searchers should note that the Board looked for related services descriptions not overlapping International Class numbers.

Sunkist Growers argued that its mark was commercially strong entitling it to a broad scope of rights. The Board found that while Sunkist Growers provided evidence of its strength in the fruit field it provided no evidence of the strength of the SUNKIST KIDS mark in the education and entertainment services field. Therefore, the Board held that the SUNKIST KIDS mark was entitled to a normal scope of protection afforded to inherently distinctive marks. Sunkissed Families was only able to must 9 instances of third-party use of the SUNKIST mark, which was less than the 10 third-party registrations or use needed to establish conceptual weakness.

The Heavy Burden of Proving Fame for Dilution Purposes

Most companies that have been using a federally registered trademark for ten years or more often mistakenly assume that the mark is famous. Long periods of use is a factor in the ultimate fame determination, but fame for dilution purposes is much different than fame for likelihood of confusion purposes. In fact, trademark owners would be better offer not using the word “fame” in the context of a likelihood of confusion. Recently, we saw this mistake play out in a case before the Trademark Trial and Appeal Board.

OTG Experience, LLC filed applications to register the mark PETER PIPER and PETER PIPER SMARTRUCK (in standard characters) for a variety of mobile food related services. OTG Experience’s applications were published for opposition and Peter Piper, Inc. opposed their registration relying on its prior registrations for PETER PIPER PIZZA (in standard characters with PIZZA disclaimed) in connection with “pizza” and “restaurant services.”

Peter Piper Pizza was founded in Arizona in 1973, and has used the PETER PIPER PIZZA mark for over 40 years. The company generates about $300 million in annual revenue across about 143 locations (although 43 are in Mexico) and spends about $20 million annually in advertising. While these numbers are significant, they were not enough to establish the fame of the PETER PIPER PIZZA mark.

The Trademark Trial and Appeal Board held that it is the burden of the party asserting fame to clearly prove it. In other words, fame needs to be proven by clear and convincing evidence. This standard requires the evidence presented must be highly and substantially more probable to be true than not and the trier of fact must have a firm belief or conviction in its factuality.

What this means for trademark owners is that offering numbers alone is highly unlikely to result in a fame finding. What a trademark owner needs to do is offer context for the raw statistics to demonstrate the general reputation the mark was with the public. Unfortunately, more often than not, trademark owners fail to provide the necessary context and the fame assertion fails because of it. That is what to Peter Piper Pizza.

Nevertheless, the raw statistics were enough for the Board to find that the PETER PIPER PIZZA mark was on overall strong mark entitled to a broad scope of protection. OTG Experience tried to counteract the strength evidence by relying on third-party use. Unfortunately, OTG Experience could only find three examples, well below the 10 minimum it appears is required to establish the weakness of a mark.

Similar Trademarks Matter In The Dilution Analysis

The dilution analysis requires evaluating  search results for more than just trademarks sharing a similar element. It requires finding similar trademarks. This issue was on display in a recent Trademark Trial and Appeal Board decision.

Don Vintache Inc. filed a trademark application to register the mark DIAMONDS ON THE ROCKS (in standard characters) for “jewelry, namely, diamond jewelry.” The Trademark Office refused registration of Don Vintache’s mark on the ground that it was likely to cause confusion with the prior registered mark SILVER ON THE ROCKS (in standard characters) for “jewelry made in whole or significant part of silver.”

It was easy for the Board to find that the goods at issue were related. “Diamond jewelry” was broad enough to include silver settings. When it came to the similarity of the marks, the Board found, without identifying much, if any, support, that ON THE ROCKS was a unitary phrase. A unitary phrase has observable characteristics that render the elements inseparable. This finding would prove to be the downfall for Don Vintache’s dilution argument.

Don Vintache identified several third-party registrations that contained the term ROCKS for various jewelry items. However, the Board found that in all the examples offered, the meaning of “rocks” was different from the meaning of “on the rocks.” The clear meaning in the third-party registrations was “to be extremely enjoyable, pleasing, or effective.” The meaning of “on the rocks” is “served undiluted and with ice cubes; experiencing difficulties and likely to fail.” These different meanings rendered the third-party registrations and unitary phrase ON THE ROCKS dissimilar. Therefore, because the dilution analysis requires similar marks the Board gave no weight to the third-party registrations offered by Don Vintache.

In addition to the third-party registrations, Don Vintache offered five third-party online jewelry store websites that use ON THE ROCKS. Unfortunately, this was five examples short of the ten example minimum generally required by the Board. Accordingly, Don Vintache’s dilution argument failed, and the Board found that DIAMONDS ON THE ROCKS and SILVER ON THE ROCKS are similar trademarks.

Did The TTAB Set the Conceptual Weakness Standard at 10?

We previously discussed how much dilution is required to prove a word is conceptually weak. But a recent decision from the TTAB may have zeroed in on a number.

The TTAB recently reversed the Trademark Office’s refusal to register the mark I’M SMOKING HOT for, among other goods, cosmetics based on a prior registered mark SMOKING HOT SHOW TIME also for cosmetics. The facts of this case seemed eerily similar to the facts of the SQUEEZE JUICE COMPANY decision we discussed just five days ago.

In the I’M SMOKING HOT case, the goods at issue were identical, so the relatedness of goods factor weighed in favor of the refusal as did the overlapping channels of trade and target consumer factors. The case law is legion that when the goods at issue are identical, less similarity is required between the marks at issue for a likelihood of confusion to exist.

In the SQUEEZE JUICE COMPANY case, 12 examples of third-party use of a mark similar to SQUEEZE were offered as evidence to demonstrate the conceptual weakness of the cited mark. The Board accepted these 12 examples as sufficient to establish the weakness of the SQUEEZE term for juice bar services. And about a month ago, the TTAB held that nine examples of third-party use was insufficient to establish the conceptual weakness of the term CODE for some type of educational service.

FabFitFun, Inc. – the owner of record for the I’M SMOKING HOT application – offered 10 examples of third-party use of the terms SMOKING HOT for cosmetics. And in this case, the Trademark Trial and Appeal Board found that the 10 examples were sufficient to establish the conceptual weakness of the SMOKING HOT terms for cosmetics.

In addition to the 10 examples of third-party use, FabFitFun offered the definition of “smoking hot” from the MacMillan Dictionary, which is an open dictionary. The definition of “smoking hot” was submitted by Shahbaz Shahin from Bangladesh on August 31, 2015. This definition is not representative of how an American consumer defines or understands “smoking hot,” and should not have been considered by the Trademark Trial and Appeal Board.

Based on its weakness the finding, the TTAB concluded that the addition of SHOW TIME was sufficient to distinguish the cited mark from the I’M SMOKING HOT mark.

Rare Reversal of SQUEEZE JUICE COMPANY Trademark Refusal

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:

  1. The marks share the dominant element SQUEEZE;
  2. The application share the identical services description “juice bar services”;
  3. Boston Juicery applied for its mark in a standard character form; and
  4. 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.

How Many Third Party Registrations Equal Trademark Weakness?

One thing trademark searchers review any search results for is dilution or weakness. And the trademark weakness does not need to affect the entire mark. Trademark weakness may affect only a portion of the entire mark. When a trademark searcher finds weakness, it tells him or her that the mark being searched may be able to co-exist with the other marks registered or pending with the United States Patent and Trademark Office.

One common way to prove conceptual weakness is to find the co-existence of third party registrations that share a common element. But it is not enough that the marks share a common element. The marks also need to be registered in connection with related goods or services. This is something that is overlooked frequently when making a weakness argument.

In most appeals to the Trademark Trial and Appeal Board, the Applicant will argue that the extensive trademark dilution allows its mark to also peacefully co-exist with the other marks. Assuming the Applicant has found some third party registrations that share a common element and are for related goods or services, how many does it take to support a finding of trademark weakness? The Trademark Trial and Appeal Board recently gave us some insight into this question in the In re Vox Media, Inc. case.

Vox Media applied to register the mark CODE in connection with educational services in, among other fields, technology, business, and entrepreneurship. The Trademark Office refused registration of Vox Media’s mark on the ground that it was likely to cause confusion with the prior registered CODE2040 for educational services in, among other fields, technology, business, and entrepreneurship.

The Board found that the educational services at issue were legally identical because they identified the same educational fields. The fact that different fields were also identified by the applicant and registrant was irrelevant. The Board also found the marks were similar because the entirety of Vox Media’s mark appeared in the registrant’s mark.

Faced with the likelihood that the two dispositive factors – similarity of the marks and relatedness of the goods – would go against it, Vox Media turned to the trademark weakness argument in an attempt to argue that the rights in CODE2040 were limited to another identical mark. To support this argument, Vox Media offered nine third party registrations that contained CODE for some type of educational service.

Unfortunately for Vox Media, nine is not the magic number for trademark weakness. Extensive evidence of third party use and registrations is powerful on its face, even where the specific extent and impact of the usage has not been established, but when the Trademark Trial and Appeal Board previously made this finding, there were 26 relevant, third party registrations in the record. Not only did Vox Media have too few third party registrations, but the third party registrations it did offer had relevancy problems.