Number 1 Misconception When Searching Trademarks

We talk to a number of naming firms and serial entrepreneurs who conduct their own preliminary trademark searchers each year. And every year we observe the same misconception. Non-lawyers place far too much emphasis on International Class Numbers and ignore the relatedness of the goods. This is also the flaw in every trademark search tool available in the market, with the exception of BOB.

The reason this misconception exists is due to the lack of education on this issue because the legal precedent on this subject is legion. That’s why we focus on the relatedness of goods factor in a significant number of our posts. Our hope is to spread the word and educate non-lawyers about this crucially important factor so that trademark searching becomes more effective. More effective trademark searching should lead to fewer trademark disputes.

The Trademark Trial and Appeal Board recently issued a decision highlighting again the importance of evaluating the relatedness of goods factor and not International Class Numbers. Ernest Everett James filed a trademark application to register the mark LIQUOR SLINGER DISTILLING (standard characters with LIQUOR and DISTILLING disclaimed) for “liquor” in International Class 33. The Trademark Office refused registration of Mr. James’s mark on the ground that it was likely to cause confusion with the prior registered mark SLINGER for “drinking glasses; shot classes” in International Class 21.

The Board found there is an inherent, complementary relationship between the parties’ goods: liquor is served in and drunk from drinking glasses and shot glasses. Indeed, a shot glass is defined as “[a] small glass used for serving liquor.” The Trademark Office also offered Internet evidence showing it is common for distilleries to sell branded glassware. All of this evidence supported the Trademark Office’s argument, which the Board agreed with, that liquor and glassware are related goods.

A person searching trademarks for a liquor brand that focused too heavily or entirely on International Class 33 where the product is classified is sure to a miss a problematic mark in another International Class because of the relatedness of goods factor.

TTAB Hint Into How Similar Wine and Beer Marks Can Co-Exist

"Tempus beer bottles can't co-exist with Tempus Two wine"

The case law is legion at the Trademark Trial and Appeal Board that “wine” and “beer” are related goods. Nevertheless, time and time again, breweries and wineries attempt to persuade the TTAB that wine and beer are different only to meet the same fate over and over again. The story was the same in a recent TTAB decision and so was the fate, but this time the TTAB provided a potential common ground where similar beer and wines marks may be able to co-exist.

Cerveceria Primus, S.A. de C.V. sought to register the mark TEMPUS for “beer.” The Trademark Office refused registration of the TEMPUS mark based on a prior registered mark for TEMPUS TWO for “wines,” and Cerveceria Primus S.A. de C.V. appealed.

Cerveceria Primus lost the conceptual weakness argument by offering only three third-party registrations, seven less than the 10 minimum. The marks were also found to be similar because both shared the TEMPUS term. The central issue was the relatedness of the goods.

Cerveceria Primus started down the right path by attacking the context of the Trademark Office’s evidence. A majority of the Examining Attorney’s third party evidence did not show the same party producing both wine and beer under the same mark. Instead, it showed the same retail outlet selling both wine and beer. However, in this case, as opposed to recent TREK case, the Board discounted the retail store evidence.

Cerveceria Primus then attempted to put into context the remaining evidence by arguing the examples represent .1% of microbreweries in the U.S. With such a small percentage, the evidence did not demonstrate that enough consumers were exposed to wine and beer appearing under the same mark.

However, the goods descriptions in the case contained no limitations. The descriptions remained broadly “beer” and “wine.” Had the descriptions been narrowed to “beer produced by a microbrewery” or a similar limitation on a winery. Had those limitations been made, then Cerveceria Primus’ evidence concerning the small representative sample of microbreweries would have carried more weight.

This is the path breweries and wineries will need to take if they are going to co-exist given that the industry becomes more and more saturated.

How Wild Card Symbols Can Improve Your Searching

"TEABLEE tea strainer would have been found using wild card"

Spend a little time learning how to use wild card symbols and logical operators in your search equations and you will improve the accuracy of your search results. And they really are not that complicated to use. Using truncation symbols is something that could have benefitted Lawrence Charles before he spent what had to be thousands of dollars on his failed attempt to register the TEABLY mark.

Mr. Charles sought to register the mark TEABLY (in standard characters) for “tea-based beverages” in International Class 30. The Trademark Office refused registration of this mark on the ground that it was likely to cause confusion with the prior registered mark TEABLEE for, among other goods, “tea infusers . . . tea strainers . . . tea balls . . . tea caddies . . . tea canisters . . . tea sets” in International Class 21. Mr. Charles never amended his goods description to reflect the actual nature of his tea-based beverage, and as a result it was an easy refusal for the Trademark Trial and Appeal Board to affirm.

Unfortunately for Mr. Charles, this refusal could have been avoided from the beginning with a proper trademark search. It is important to spend time considering the possible variations of a proposed mark. Once you have identified the possible variations, you can bet there is another variation out there that you did not identify. The way we guard against this possibility is through the use of truncation symbols.

Wild card symbols differ by the databases you are using, so it is important to review whatever key is available to explain the wild card symbols for that database. In the case of BOB’s database, the $$ wild card symbol will look for unlimited space and non-space characters. For Mr. Charles’ search, the mark would have looked like TEABL$$. Considering the similarity of the marks only, this search would have retrieved the prior registered TEABLEE mark.

Mr. Charles likely included in his search equation International Class 30 because that is where his tea-based beverage would be classified. This was his second mistake because focusing on International Classes instead of relatedness of goods is wrong. As we saw in his case, goods classified in International Class 21 were found to be related to his tea-based beverage in International Class 30. That’s why BOB focuses on relatedness of the goods not International Classes when it conducts a trademark search.

If the TEABLEE mark was returned as a potential knockout it does not mean that Mr. Charles could not move forward with his TEABLY mark. What it means is that he needs to be prepared for a refusal and start the application on the right foot.

Consumers likely to confuse Complimentary Goods Wine and Cigars

"Alec Bradley Star Insignia cigars complimentary goods to wine"

Joseph Phelps Vineyards, LLC won its appeal before the United States Court of Appeals for the Federal Circuit, and its case was remanded to the Trademark Trial and Appeal Board. This time the Board granted Joseph Phelps Vineyards’ petition for cancellation finding that wine and cigars are complimentary goods.

Fairmont Holdings, Inc. sought to register the mark ALEC BRADLEY STAR INSIGNIA (in standard characters) for, among other goods, “cigars.” The Trademark Office approved the registration of the ALEC BRADLEY STAR INSIGNIA mark and party, including Joseph Phelps Vineyards, opposed the registration of the mark. A little over a year after the mark registered, on May 17, 2013, Joseph Phelps Vineyards petitioned to cancel the ALEC BRADLEY STAR INSIGNIA registration. The proceeding lasted almost 6 years – Yikes!

There is a lesson here for trademark owners. Getting the registration does not mean you are safe. A registration remains vulnerable to a likelihood of confusion claim for five years following the registration date.

With respect to the relatedness of the goods factor, Joseph Phelps Vineyards offered several Web pages that advertise or promote cigar bars, cigars, wine bars, wine stores, and events featuring wine and cigars. It also offered evidence of flavored cigars infused with wine. Because the evidence showed that wine and cigars are used together, the Board found they are complimentary goods. This is consistent with the Board’s prior decision finding cigars and different spirits to be complimentary goods.

Joseph Phelps Vineyards mark consists solely of the word INSIGNIA and while Fairmont Holdings mark was the composite phrase ALEC BRADLEY STAR INSIGNIA it was not limited to any particular presentation and could be depicted with the word INSIGNIA larger than the word STAR. Joseph Phelps Vineyards argued that INSIGNIA in fact appears larger than STAR on the cigar labels and Fairmont Holdings’ specimen of use confirmed this.

INSIGNIA was not descriptive, generic, or diluted. Therefore, Fairmont Holdings could not avoid a likelihood of confusion by adopting Joseph Phelps Vineyards’ entire mark and adding subordinate matter. There is another lesson for trademark searchers. Unless your search reveals that the common element among the marks at issue is diluted, it is best to steer clear of the mark.

Perplexing Trademark Office: Clothespins Related to Scissors

"man getting a haircut with scissors that were found to be related to clothespins"

A recent Trademark Trial and Appeal Board decision where the Board found clothespins related to scissors again demonstrates that relying on International Class numbers in a trademark search rather than prior case decisions involving the relatedness of goods factor will lead to wrong search results. Ing. Monika Norkova filed a request for extension of protection of her International Registration to the United States for the mark ZIPZAP (in standard characters) for “drying racks for laundry; clothes[pins]” in International Class 12. The Trademark Office refused registration of this mark.

The Trademark Office argued that Ms. Norkova’s ZIPZAP mark was likely to cause confusion with a prior registered mark ZIPZAP (also in standard characters) for – are you ready – “scissors, in particular hair cutting scissors, manicure scissors, sheet-metal scissors, poultry shears, cable scissors; tree pruning shears; nippers, nail nippers, cuticle nippers; files; utility knives and pliers” in International Class 8.  While it is true that when the marks at issue are identical, less similarity is necessary in order for a likelihood of confusion to exist, one would like to think that hair cutting scissors or tree pruning shears are sufficiently different from drying racks and clothespins that confusion is unlikely.

Despite citing the rule that the words “in particular” clarify and narrow overly broad goods or services descriptions, none of the used based evidence offered by the Trademark Office involve any of the specific types of goods identified in the cited registration. Nevertheless, the Board found that because some scissors are marketed under the same brand as a laundry drying rack, then all scissors must be related in the minds of consumers to laundry drying racks and clothespins.

And what’s even more important is that it does not matter if you agree with the decision or not. In fact, we guess that most people reading this post disagree with the decision. But it’s a decision that is not going to be overturned and that could produce a negative outcome for a naming decision if you are focused on International Class Numbers and not prior case decisions involving relatedness of goods or services findings. In fact, the USPTO does not identify International Class 12 as a Coordinated Class to International Class 8.

Electric Bicycles and Bicycle Apparel Confusable as to Source

"Luna Cycle electric bicycle related to women's bicycle apparel"

Luna Cycle filed a trademark application to register the mark LUNACYCLE in standard character form for electric bicycles and replacement parts for electric bikes. The United States Patent and Trademark Office refused registration of Luna Cycle’s mark on the ground that it was likely to cause confusion with the prior registered mark LUNA & Design for women’s bicycle apparel and accessories.

When it comes to assessing the relatedness of the goods, the issue is not whether purchasers would confuse the goods, but rather whether there is a likelihood of confusion as to the source of these goods. Electric bicycles are human-powered bicycles with integrated electric motors to provide a cyclist with additional power and speed. They are marketed towards recreational cyclists.

The Trademark Office offered evidence from brick-and-morter and online retail bicycle stores offering for sale electric bicycles and women’s bicycle apparel. These retailers are not big box retailers but speciality bicycles stores, which the Board found persuasive evidence to conclude that the goods at issue were complimentary.

With respect to the similarity of the marks, Luna Cycle argued that its mark is a telescoped word LUNACYCLE composed of LUNACY and CYCLE. The Trademark Manual of Examining Procedure defines a telescoped word as one that comprises two or more words that share letters (e.g., SUPERINSE or HAMERICAN). And while the Board found that the LUNACYCLE mark is likely to be perceived as a telescoped form it nonetheless found that consumers would treat it like compound word comprising LUNA and CYCLE. The Board hypothesized a scenario where Luna Cycle emphasized the letter “L” in Luna and letter “C” in Cycle because standard character drawing was claimed, and then backed it up with Luna Cycle’s own specimen of use that showed very emphasis the Board assumed could happen. Because the dominant portion of the marks was LUNA, the Board found the marks created overall similar commercial impressions.

Maybe, Luna Cycle would be able to salvage a win by demonstrating the prior registered LUNA & Design mark was weak; thus, entitled to a narrow scope of protection because of the numerous third-party registrations for LUNA. Luna Cycle submitted 100 third-party registrations for marks displaying the LUNA term in International Class 25 for some form of apparel. Several of these third-party registration were for women’s clothing. But because none of these registrations were for women’s bicycle apparel, the Board discounted all of the 100 third-party registrations, which seems like a harsh result.

Handbags and Jewelry Related In The Confusion Analysis

"Mansur Gavriel handbag related to Phillip Gavriel jewelry"

Mansur Gavriel is a luxury handbag brand that sells in store like Neiman Marcus for $395 to $1,295. In 2013, a trademark application was filed for MANSUR GAVRIEL in connection with “handbags; tote bags; purses; wallets.” Except for some minor issues, the MANSUR GAVRIEL application sailed through the examination phase of the registration process and was published for opposition.

Royal Chain, Inc. filed a Notice of Opposition against the registration of the MANSUR GAVRIEL mark on the ground that it was likely to cause confusion with its prior registered mark PHILLIP GAVRIEL for “diamonds; jewelry; precious and semi-precious stones; precious metals and their alloys; precious metals, namely, gold, silver, platinum; real and imitation jewelry; synthetic diamonds; synthetic precious stones.” Phillip Gavriel pieces sell for  about $100 to under $10,000, but not in high-end department stores like Neiman Marcus.

During the pendency of the dispute, Royal Chain neglected to maintain the PHILLIP GAVRIEL registration by filing the required Section 8 Declaration of Continuous Use. The PHILLIP GAVRIEL registration was canceled and the Trademark Trial and Appeal Board gave consideration only to PHILLIP GAVRIEL’s common law rights. Royal Chain failed to produce competent evidence of its date of first use; therefore, its opposition was dismissed because it did not satisfy its burden to prove priority. But for completeness, the Board addressed the likelihood of confusion factors.

The Board found that jewelry and handbags are “accessories to a woman’s fashion ensemble;” thus, the goods are complimentary. The evidence of record also demonstrated that the same brand is used to sell both jewelry and handbags. This evidence reinforced the Board’s finding that jewelry and handbags are related goods.

Although the retail channels for the MANSUR GAVRIEL handbags and PHILLIP GAVRIEL jewelry are different, those differences were not reflected in the identification of goods descriptions. Therefore, the Board was forced to find that the channels of trade and classes of consumers overlap.

Nevertheless, the Board found that because it is common for fashion brands to use surnames, prospective purchasers would be able to distinguish MANSUR GAVRIEL from PHILLIP GAVRIEL.

ASKBOT Unlikely To Be Confused With ASK

"ASKBOT home page unlikely to cause confusion with ASK search engine"

The Trademark Trial and Appeal Board for the second time this year considered what was happening in the real world marketplace to determine if consumers were likely to confuse the ASKBOT and ASK trademarks. ASKBOT, Spa filed a trademark application to register the mark ASKBOT in connection with software for creating online forms that allow the posting of questions and answers. The ASKBOT software is sold B2B with the users never seeing the registered trademark.

IAC Search & Media, Inc. petitioned to cancel the ASKBOT on the ground that the mark was likely to confusion with its ASK mark for a search engine service. As we have reported time and time again, the Board generally constrains its analysis of the relatedness of goods or services to the descriptions contained in the registration and application at issue. However, when the identification of goods or services descriptions are technical or vague and require clarification, it is appropriate for the Board to consider extrinsic evidence of use to determine the meaning of the identification of goods or services descriptions.

In this case, the Board did not describe what was technical or vague about the descriptions in the registrations at issue. And although it concluded that the consideration of extrinsic evidence was appropriate, it found that the goods at issue were related.

What the Board used the extrinsic evidence for was to identify differences in the channels of trade and classes of consumers. And what the Board found was that IAC Search & Media’s customers and prospective customers were unlikely to encounter the ASKBOT mark because they target consumers whereas ASKBOT, Spa targets businesses.

The nail in the coffin for IAC Search & Media was when ASKBOT, Spa was able to cross the 10 third-party registration threshold by producing 11 third-party registrations for marks containing ASK in connection with services related to online searching. These registrations coupled with the dictionary definition of “ask” were enough for the Board to conclude that the ASK mark was inherently weak and that would be something that IAC Search & Media would be unable to overcome.

IN-N-STOUT beer: Branding Genius or Branding Mistake

"in-n-stout branding"

Several articles and blog posts have been written about Seven Stills “neapolitan milkshake stout” beer that it called IN-N-STOUT. It was painfully obvious from the artwork for the beer can that Seven Stills was trying to copy the IN-N-OUT fast food restaurant trade dress. Not surprising that when Seven Stills announced the release of its beer that In-N-Out restaurant sent it a letter demanding that Seven Still stop using its trade dress and a confusingly similar name.

What remains unanswered is whether the IN-N-STOUT mark was a clever branding play designed to raise the public awareness of Seven Stills or was the brewery under the mistaken impression that it was okay to use the IN-N-STOUT mark because it was for beer. If it is was the later, it is likely because Seven Stills followed the flawed International Class method for assessing the relatedness of goods and services. “Beer” is classified in International Class 32, whereas “restaurant services” are in International Class 43. But as we have talked about numerous times before, it is relatedness of the goods and services that matter, not class numbers.

If Seven Stills had used BOB to search for IN-N-STOUT, it would have quickly learned that the mark was unavailable because beer and restaurant services are related goods. You can watch BOB conduct this trademark search by clicking HERE.

On the other hand, this may have been a crazy-genius branding play to garner some attention – however fleeting – from getting the attention of a large company like IN-N-OUT. We say crazy-genius because Seven Stills had no way of knowing how In-N-Out would react to the name and trade dress for the beer. Around the Super Bowl, we saw Budweiser creatively respond to a brewery in Minnesota’s release of a DILLY DILLY beer. But In-N-Out has a history of being litigious when it comes to its trademarks. Just looking at the Trademark Trial and Appeal Board proceedings, In-N-Out has been a party in 70 proceedings.

While more trademark owners should take a Budweiser approach to infringement when the situation calls for some diplomacy instead of a hammer, it is risky to roll the dice and hope for the former when the publicity from it is fleeting.

OU Loses When Medical Apparatus Found Unrelated to Education Services

"OU logo where medical apparatus were found to be unrelated to education services"

The University of Oklahoma a/k/a OU lost its opposition proceeding against K-Jump Health Co., Ltd.’s pending application for the mark OUCARE (Stylized) for a variety of medical apparatus. OU’s principal argument when it came to the relatedness of goods likelihood of confusion factor was that its prior registrations for OU contained broad educational services descriptions that covered medical education and that medical apparatus are used in teaching medicine.

Ordinarily, when the goods or services at issue are used together, the Board will find that they are related. In fact, as recent as this February the Board found that cigars and spirits were related goods because they were often consumed together. However, OU’s problem was not with its argument. It’s problem was with the lack of evidence it offered to support its argument. The Board held:

We agree that the services identified in the registration are worded broadly enough to [en]compass educational services in the field of medicine, and that patients, medical staff, and medical students would use many of the medical apparatus identified in the application. However, there is no evidence to support a finding that such goods and services are commercially related.

OU offered only 12 use-based, third-party registrations of marks owned by colleges, universities, and the Mayo Foundation for Medical Education and Research. Third party registrations are generally accepted as evidence that certain goods or services are related. The problem with the third-party registrations offered by OU was that they did not cover both a medical apparatus and educational services. Instead, the third-party registrations covered only medical apparatus.

Although the Board ultimately held that medical apparatus and education services are unrelated, you can see that the Board was ready to make a finding of relatedness if the necessary evidence was presented to them. For trademark owners, this case highlights the importance of establishing the right evidentiary record, which seems elementary, but too often the necessary evidence is never offered to the Board. If you don’t offer the necessary evidence, you are begging for an unrelated finding.

For trademark searchers, this case shows how quickly a relatedness finding can turn. The next case involving medical apparatus and education services may very well be decided the other way, so staying on top of these developments is key when conducting a trademark search. The nice thing about using a trademark search engine like BOB is that when the next decision changes the state of relatedness between two goods or services, that change is reflected in BOB’s database so you don’t have to spend the time mining Board decisions.