In previous posts, we discussed the principles the Trademark Office applies when assessing the similarity of two trademarks and how some of those principles are applied in practice. But we have never discussed the importance of breaking up a trademark when conducting a trademark search. Breaking up a trademark and searching the parts is just as important as searching the entire word. Fortunately, the Trademark Trial and Appeal Board provided us with a decision that highlights this tip.
Applicant Somasundaram Ramkumar filed an intent-to-use trademark application for the mark JIOKIA in connection with, among other services, “electronic mail services, namely, electronic transmission of mail.” The Trademark Office examined and approved the JIOKIA mark for publication. Nokia Corporation timely opposed the registration of the JIOKIA mark alleging prior rights in the NOKIA mark for, among other goods and services, “telecommunication and wireless communication services, namely, electronic mail.”
The services were identical, the service descriptions were unrestricted, and Nokia established its NOKIA mark was strong. Therefore, the critical issue, in this case, was the similarity of the marks confusion factor. The Board found that the JIOKIA and NOKIA marks end with the same four letters: O-K-I-A. This similarity not only caused the two marks not only to look similar but also sound similar. The Board went on to speculate about the impression a consumer would have in the hypothetical scenario where the consumer only heard the ending of each mark. In the end, the Board found that the similarities of the marks outweighed the differences.
For trademark searchers, the important take away is that the Board focused on the similar parts of the two trademarks. This tells us that we need to include the parts of the marks we are searching in our trademark search plan as well.
Some trademark search options on the market profess to have sophisticated algorithms that can find phonetically similar marks to what we are searching. You can see for yourself how helpful this type of algorithm is at the WIPO Global Brand Database. In the text box, enter the word NOKIA, and from the drop-down menu choose “fuzzy” or “phonetic”. Then click search. The JOIKIA application was filed on May 24, 2017 with the USPTO. When you review the search results you will see that the JOIKIA application does not appear.
What this example shows you is that no software application will ever be as precise about breaking up a trademark you are searching than you. That is why BOB gives you the option to break up the trademark you are searching the way you think is most appropriate. You will uncover more potentially problematic marks when you plan your search strategy rather than blindly relying on a software application to do the planning for you.
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.
Years ago it was a successful strategy to avoid a likelihood of confusion by adding a house mark to a proposed mark regardless of whether the shared term was conceptual weak. However, times changed and what used to be a successful strategy now only works under certain circumstances.
According to the Trademark Manual of Examining Procedure, a house mark does not identify particular goods or services, rather a house mark identifies the provider of a wide variety of goods and services. The specific goods or services are often identified by a separate trademark or service mark. Because house marks appear on a wide variety of goods and services, they generally are afforded a broader scope of protection. The theory is that the more goods or services the mark appears on or in connection with, the more exposure consumers have to the mark, and the more recognizable the mark will become.
Smith & Wesson Corp. recently, unsuccessfully attempted to revive the old add the house mark strategy. Smith & Wesson filed an application to register the mark M&P SHIELD (in standard characters) for, among other goods, “knives.” The Trademark Office refused registration of this mark on the ground that is was likely to cause confusion with the prior registered mark SHIELD also for “knives.” Because the identifications of goods descriptions were identical, the Trademark Trial and Appeal Board found that the channels of trade and classes of consumers overlapped.
When it came to the similarity of the marks, the Board stated that the addition of a house mark has been found sufficient to distinguish marks under circumstances where the appropriated matter is highly suggestive, merely descriptive, or has been frequently used or registered by others in the field for the same or related goods or services. The Board found that SHIELD is “slightly suggestive” for knives.
With respect to the frequent use or registration of the term SHIELD, the Board found that Smith & Wesson offered only one third-party registration that included the SHIELD term for a related good. This was far less than the 10 minimum the Board has required in other cases. Therefore, the Board concluded that Smith & Wesson’s inclusion of the M&P house mark was incapable of distinguishing the SHIELD term.
The Trademark Trial and Appeal Board issued another rare reversal this year finding that the LA CHULA & Design (in color) for “preserved, frozen, dried, and cooked fruits” is unlikely to cause confusion with CHULA BRAND (BRAND disclaimed) for “fresh fruits and vegetables, namely, citrus, lemons, avocados, coconuts, papayas, pineapples.”
The Board found that “the applied-for mark and cited mark share the dominant, arbitrary term LA CHULA.” Actually, the only shared term is CHULA. Nevertheless, the Board concluded the marks were similar in terms of sound, appearance, connotation, and commercial impression. The Board also found that the goods at issue are commercially related and that consumers are likely to mistakenly believe they emanate from the same source.
From reading the beginning of the decision, you would think that a decision sustaining the refusal was on its way, but you would be wrong. The Board found that the 13th Du Pont factor outweighed the similarity of the marks and relatedness of the goods or services confusion factors ultimately confusion the applied for mark was unlikely to cause confusion. The 13th Du Pont factor is “any other established fact probative of the effect of use.” This factor is used by the Board and Courts as a catchall in order to decide cases on what they think is happening or likely to happen in the marketplace.
In this case, the Applicants previously registered a similar mark in black and white but for “fruit conserves.” In other words, color was not claimed as a feature of the mark like it was in the Applicants’ applied for mark. And while “fruit conserves” is not an identical description to the applied for goods, the Board found that the goods were closely related. Because the Applicant’s previously registered the same mark in black and while for closely related goods, the Board found there could be no confusion with the colored version fo the logo.
The Board made the right decision, but this case highlights how different trademark examiners examine applications differently.