Conceptual Weakness Must Focus on Registrant’s Goods

In Entertainment Content, Inc . v. Cooper Holdings, Inc., by change of name from Career Sports & Entertainment, Inc. we saw the Trademark Trial and Appeal Board chip away at the 17 third-party registrations that Cooper Holdings offered to demonstrate the conceptual weakness of the JUSTICE CENTRAL mark. What started as a promising argument quickly deteriorated to a total number of relevant, third-party marks below the 10 mark minimum.

The reason the argument ultimately failed was two-fold. First, Cooper Holdings did not focus on the Registrant’s services as they were described in the registration. Second, Cooper Holdings did not establish the relatedness of the services in most of the third-party registrations to the Registrant’s services.

Cooper Holdings filed an application to register the mark JUSTICE NETWORK (in standard characters) for, among other services, “television programming services” and “the production and distribution of television programs transmitted via various platforms across multiple forms of transmission media and other services.” Registrant had registered the mark JUSTICE CENTRAL for, among other services:

  • television programs in the field of law and courtroom legal proceedings;
  • entertainment programs in the field of law and
    courtroom legal proceedings accessible by cable,
    satellite, television, Internet, wireless devices,
    networks and via various platforms across multiple
    forms of transmission media;
  • providing programs in the field of law and courtroom
    legal proceedings accessible by cable, satellite,
    television, Internet, wireless networks and via various
    platforms across multiple forms of transmission media;
  • production and distribution of television shows.

Registrant’s services were limited to “courtroom legal proceedings” whereas Cooper Holdings’ services were unlimited. Accordingly, the parties’ services were legally identical.

Cooper Holdings offered 17 third-party registrations that contained the term JUSTICE. Five of the 17 third-party registrations were cancelled and one third-party registration was identified in Cooper Holdings’ brief; thus, not properly admitted into evidence. The remaining third-party registrations while identifying some form of entertainment did not identify courtroom legal proceedings as the content type. Cooper Holdings did not establish that the content type identified in the third-party registrations was related to courtroom legal proceedings. Accordingly, the Board chipped away at the 17 third-party registrations until the number was insufficient to establish the conceptual weakness of the JUSTICE CENTRAL mark.

Infringing LIL’ BEANIES is not Like Taking Candy from a Baby

The Willamette Week reported that a Portland vegan ice cream company changed its name to Little Chickpea after Gerber complained that the company’s proposed LITTLE BEAN name was likely to cause confusion with its registered mark LIL’ BEANIES. Little Chickpea said in the story that Gerber insisted that the company change its name even though it had decided to discontinue the LIL’ BEANIES brand. It is questionable whether this is true, but if it is then Little Chickpea formerly Little Bean made a mistake prosecuting its application.

Nestle – the parent corporation to Gerber – owns a federal trademark registration for LIL’ BEANIES in connection with “bean-based snack foods; grain-based snack foods.” In the article, Mitch Camden said that “when he applied for a trademark he was initially told ‘everything looked good.'” This means that his trademark lawyers did a trademark search and told him LITTLE BEAN mark was available for him to register. The Trademark Office disagreed and issued a registration refusal asserting that the LITTLE BEAN mark was likely to cause confusion with the LIL’ BEANIES prior registration.

We have to assume that Little Chickpea’s attorneys searched for goods identified in the LITTLE BEAN trademark application, which included “processed chickpeas.” A chickpea is a bean, so it is difficult to understand how Little Chickpea’s attorneys would have concluded that chickpeas are unrelated to “bean-based snacks.” Nevertheless, Little Chickpea’s attorneys attempted to overcome the registration refusal and were unsuccessful. In a last-ditch effort to overcome the refusal, it appears that Little Chickpea’s attorneys reached out to Gerber to obtain consent to the registration of the LITTLE BEAN mark and Gerber refused.

Willamette Week also reported that Mr. Camdem was told Gerber has discontinued the LIL’ BEANIES product line and had no intention of doing anything with it. If this is true, then Little Chickpea had a good claim for abandonment. A trademark is abandoned with the use of the mark has discontinued with no intent to resume use of the mark. Abandonment is a ground for cancellation, which would have cleared the way for Little Chickpea to obtain a federal registration for its mark without having to go through what it described as an expensive rebrand.

The old adage that an ounce of prevention is worth a pound of cure is often true for any legal issue but it is especially true in the context of trademark law. A proper and thorough trademark is essential to avoiding costly disputes and rebrands.

TTAB Sides Heavily with the USPTO on Confusion in 2018

John Welch – author of The TTABlog – reviewed the Trademark Trial and Appeal Board decisions in 2018 that involved a likelihood of confusion refusal. He counted 219 decisions that involved a likelihood of confusion refusal. Two hundred of the 219 likelihood of confusion refusals were affirmed by the Trademark Trial and Appeal Board. Only 19 were reversed for an affirmance rate of 91.3%. He also reported that the 2018 affirmance percentage was slightly higher than the 2017 affirmance percentage.

It goes without saying that these are really bad odds for any trademark applicant contemplating an appeal of a likelihood of confusion refusal. However, it could be that the cases reaching the Trademark Trial and Appeal Board could and should have been prosecuted differently by the trademark applicant.

For example, in 2018, several trademark applicants attempted to win their argument that no likelihood of confusion existed by offering a meager number of third-party marks sharing an identical or similar term. Not being able to establish the conceptual weakness of a cited mark materially undermines that argument that the marks at issue are sufficiently dissimilar. Likewise, several trademark applicants attempted to show the goods or services at issue were unrelated without first narrowing the goods or services descriptions at issue. This is a losing argument 100% of the time unless the goods or services at issue are technical in nature or the goods or services description is vague.

What is important about the 91.3% affirmance rate is that there are things that can be done at the front end to avoid a likelihood of confusion refusal in the first place. This starts with conducting a preliminary trademark search that focuses on what is important: (1) mark similarity; (2) relatedness of the goods; and (3) dilution. A proper assessment of the search results will then lead to the preparation of a trademark application that has a good chance of avoiding a likelihood of confusion refusal.

How to Win the Relatedness of Goods Argument

Once again we see a trademark applicant trying to win the relatedness of goods argument without first narrowing the descriptions, and trying to win the conceptual weakness argument by not hitting the 10 third-party registration threshold. If you intend to make a real world marketplace argument, then the identifications of goods and services must reflect the real world. Unfortunately, this was a lesson Productos Verde Valle, S.A. de C.V. learned the hard way.

Productos Verde Valle applied to register the mark SONIA (in standard characters) for “sauces; chili sauce; hot sauce.” The Trademark Office refused registration of this mark on the ground that it was likely to cause confusion with the prior registered mark SONIA SONI LIFE IS A RECIPE (in standard characters) for, in relevant part, “spices, spice blends; spice rubs.”

The Trademark Office offered evidence showing the same mark being used for both sauces and spices. This evidence was sufficient to put the Tradmark Office in the first position to win the relatedness of goods argument. Productos Verde Valle argued the goods are unrelated because its sauces are sold as a Mexican food product whereas the SONIA SONI LIFE IS A RECIPE spices were sold as an Indian food product. However, the identification of goods descriptions were unrestricted as to a type of cuisine and an applicant may not restrict the scope of its goods or the scope of the goods covered in the cited registration by extrinsic argument or evidence.

The Trademark Trial and Appeal Board also noted that certain spices may be used in both Mexican and Indian cuisine. What this last sentence tells is the level of detail that may be required in order to differentiate the goods. In this case, for example, it would have been sufficient to say “Mexican sauces” and “Indian spices.” To win the relatedness of goods argument, it may be necessary to get very detailed about the real world marketplace. This requires examining the goods and services at issue in detail including not only the nature of the goods, but where they are marketed and who the target consumers are.

When it came to the conceptual weakness factor, Productos Verde Valle did not find any SONIA mark only marks that shared the letters “S”, “O”, “N”, and “A.” Unlike what happened in the CARDITONE case a few days ago where the Board refused to give any weight to the 69 CARDIO third-party registrations because the mark at it issue was CARDI, the Board gave some weight to the third-party registrations offered by Productos Verde Valle. Nevertheless, Productos Verde Valle was only able to find four third-party registrations to support its conceptual weakness argument. Accordingly, the Board did not find that the SONIA mark was weak.

Even if it was found to be a weak term, Productos Verde Valle’s mark was incorporated in its entirety in the SONIA SONI LIFE IS A RECIPE mark. If you are going to make the conceptual weakness argument, you must have something to point to that distinguishes your mark from the other mark that shares the weak term. Therefore, the Board affirmed the registration refusal.

Ezekiel Elliott to the USPTO: Don’t You Know Who I Am?

Ezekiel Elliott is the running back for the Dallas Cowboys. In his rookie season in 2016, he rushed for 1,631 making him the top rusher in the National Football League. Because of his successful rookie season, Ezekiel Elliot was selected as a First-Team All-Pro and made his first Pro Bowl. Due to a suspension based on off the field conduct, Ezekiel Elliott’s 2017 season was far less successful than his rookie season.

Ezekiel Elliott attended the Ohio State University where he majored in marketing, so he understands the importance of a trademark registration. On August 7, 2015, he filed an intent-to-use trademark application for the mark ZEKE in connection with a variety of clothing articles. The USPTO refused registration of Ezekiel Elliot’s application on the ground that it was likely to cause confusion with two prior registered marks:  ZEKE’S SMOKEHOUSE (SMOKEHOUSE disclaimed) and ZEKE’S COFFEE & Design (COFFEE disclaimed) both for clothing.

The goods at issue in this case were legally identical because they were clothing. That meant, absent an express restriction in the identification of goods descriptions, the goods at issue were deemed to travel in the same channels of trade and appeal to the same classes of consumers. So from the start, Ezekiel Elliott was starting three likelihood of confusion factors down to the USPTO.

Ezekiel made the conceptual weakness argument, but it does not appear that Ezekiel understood how to make this argument. He offered no third-party registrations beyond the two cited marks and then argued that these marks are used in limited geographic areas. Giving context to the use of a mark is key to a strength argument, but in Ezekiel’s case you want to the use to be widespread. Pointing out the limited use could only hurt his case, and put him down four likelihood of confusion factors to the USPTO.

Ezekiel Elliott’s ZEKE mark was also incorporated in its entirety in the cited marks, but he put an interesting spin on the “meaning” aspect of the similarity of the marks factor. He claimed to be a well know football player and that consumers would recognize ZEKE as his nickname. However, the USPTO found that the evidence did not demonstrate Ezekiel Elliot was a well-known football player or that consumers would recognize ZEKE as his nickname.

The evidence establishing his popularity may not have been in the record, or it could be that the USPTO being located near Washington, DC means they don’t like the Dallas Cowboys given the rivalry with the Washington Redskins.

Confusion Likely by More than One Hometown Pizza

Pizza Inn, Inc. filed an application to register the mark AMERICA’S HOMETOWN PIZZA PLACE (standard characters) for “restaurant services; carry-out restaurant services.” The company voluntarily disclaimed PIZZA PLACE; thus, admitting that AMERICA’S HOMETOWN was the dominant portion of its mark. The Trademark Office refused registration of Pizza Inn’s mark on the ground that it was likely to cause confusion with the prior registered mark HOWTOWN PIZZA (standard characters) for “restaurant services.”

This application was facing an uphill battle from the beginning. The services descriptions were identical, so less similarity between the marks is necessary in order for a likelihood of confusion to exist. And the descriptions are not technical or vague, so it would be inappropriate for the Trademark Office to consider any extrinsic evidence of the use of the mark in the marketplace. Finally, the cited mark – HOMETOWN PIZZA – was incorporated in its entirety in Pizza Inn’s proposed mark.

The only chance the Applicant had was to argue that HOMTOWN PIZZA was so conceptually weak that the addition of AMERICA’S and PLACE were sufficient to avoid confusion. Pizza Inn offered eight third-party registrations that were for or included the term HOMETOWN for “restaurant services.” And of those eight third-party registrations, two were dead registrations, which are given no consideration during the examination of a trademark application. So Pizza Inn really only had six, third-party registrations.

Pizza Inn was four registrations shy of the ten mark where the Trademark Office has found a crowded field exists for a particular term. And the Trademark Trial and Appeal Board found that the third-party registration evidence offered by Pizza Inn was insufficient to establish that HOMETOWN PIZZA was conceptual weak; thus, entitled to a narrow scope of protection. What Pizza Inn should have done was offer evidence of third-party use not registrations of HOMETOWN PIZZA. A simple Internet search reveals numerous restaurants called HOMETOWN PIZZA.