Addition of House Mark Did Not Eliminate Confusion

"Sealy house mark does not distinguish COCOON trademark"

To add or not to add the house mark, that is the question. This is a good question because the Trademark Trial and Appeal Board has gone both ways on the question. In some cases, the Board has found that the addition of a house mark is sufficient to avoid confusion, and in others the Board has found that it aggravates the likelihood of confusion. In a recent decision involving the COCOON BY SEALY mark, the Board gave us some guidance on when to add the house mark.

Cocoon International Sales, LLC filed an application to register the mark COCOON BY SEALY (in standard characters) for “mattresses; pillows.” The Trademark Office refused registration of this mark on the ground that it was likely to cause confusion with the prior registered mark SLEEP COCOON (in standard characters) for “mattresses; pillows.”

The Trademark Office found the goods are identical and because the descriptions are unrestricted the channels of trade and class of consumers factor overlap. Cocoon International Sales tried the conceptual weakness argument but was only able to offer 4 third-party registrations (but in reality only two because three of the four were owned by the same entity), a number well below the 10 minimum we have posited is required.

Facing an uphill battle, Cocoon International Sales tried to distinguish its mark by arguing the addition of the famous SEALY house mark was enough to tip the mark similarity factor in its favor along with the ultimate finding of no likelihood of confusion. In finding that it did not adequately distinguish the COCOON marks, the Board identified when a house mark can distinguish two marks:

  1. When there are recognizable differences between the marks, then adding a house mark may help.
  2. When the marks are highly suggestive or merely descriptive, then adding a house mark may help.
  3. When the marks are conceptually weak, then adding a house mark may help.
  4. When the house mark precedes instead of follows the mark, adding it may help.

Unfortunately for Cocoon International Sales the Board found that COCOON was “mildly suggestive” of mattresses and pillows. Therefore, adding SEALY to the mark was not enough to avoid a likelihood of confusion finding.

Trademark Fame Lacking Admissible Evidence

"Misel Disel preshave liquid too similar to Diesel despite no trademark fame finding"

Plaintiffs arguing trademark fame for purposes of the likelihood of confusion analysis is about as common as defendants arguing the plaintiff’s trademark is conceptually weak. Plaintiffs want to establish trademark fame because strong marks are entitled to a broad scope of protection. For the record, trademark fame for likelihood of confusion purposes is different from fame for trademark dilution purposes.

More often than not, a trademark fame argument fails not because the evidence of fame does not exist, but because the plaintiff fails to properly admit the evidence to the Trademark Trial and Appeal Board. During the discovery period it is easy to get fixated on obtaining the evidence the party needs and not on the admissibility of the evidence being acquired. This was the problem Diesel S.p.A. encountered in its recent case before the Trademark Trial and Appeal Board.

Misel Disel, LLC filed an application seeking registration on the Principal Register of the mark MISEL DISEL (in standard characters) for “smooth shave enhancer, namely, pre-shave liquid.” The Trademark Office reviewed the application and found no conflicting marks that would bar registration under Trademark Act Section 2(d). The MISEL DISEL mark was published for opposition and Diesel S.p.A. opposed the registration of the mark.

Diesel was the owner of several prior registrations for DIESEL (in standard characters) and DIESEL formative marks, but the Trademark Trial and Appeal Board focused on one:  DIESEL (in standard characters) for, among other goods, “pre- and after shave creams and lotions.” The Board found that the MISEL DISEL and DIESEL marks were similar, the goods closely related, and there was no weakness based on the co-existence of third-party registrations. Misel only came up with three registrations for DIESEL and none were for goods remotely close to pre- and after shave creams and lotions.

Diesel argued that its DIESEL mark was famous for likelihood of confusion purposes. To support this argument, it relied on documents only. It offered no testimony, which was Disel’s fatal mistake.

Financial information is key to establishing trademark fame, but this information must be offered through testimony. It is not self-authenticating evidence. Web pages can be self-authenticating, but the Web pages are admissible of what they show on their face only, not to prove the truth of any matter asserted in the them.

Documents produced in response to a Document Request are also inadmissible unless other authenticated through a Request for Admission.

Because Diesel did not give any consideration to admissibility, it was left with minimal evidence on trademark fame and the Board was unable to find that the DIESEL was famous for likelihood of confusion purposes.

How to Win the Relatedness of Goods Argument

"jar of Sonia Soni Life is a Recipe spices which won the relatedness of goods factor against Mexican sauces"

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.

Reinforcement that Trademark Classes are Irrelevant

"woman putting postits on a wall showing that trademark classes are irrelevant"

The Trademark Trial and Appeal Board has said before that trademark classes are irrelevant to determining likelihood of confusion. A recent decision involving the SWISS certification mark reinforces this point. Pearl 9 Group, LLC filed a trademark application to register the mark I.W. SUISSE for “clocks and watches; parts for watches; watch bands and straps; ***; timepiece dial faces, and parts for timepieces ***” in International Class 14. The Trademark Office refused registration of Pearl 9’s mark on the ground that it was likely to cause confusion with the prior registered certification mark SWISS for “horological and chronometric instruments, namely, watches, clocks and their component parts and fittings thereof” in Class A.

The Board held that the classification as a certification mark has very little effect on our determination as to whether or not there is a likelihood of confusion. Because the certification mark owner does not itself use the mark, the question of whether there is a likelihood of confusion is based on a comparison of the mark as applied to the goods or services of the certification mark users.

Using trademark classes in a trademark search only helps to narrow the universe of marks that trademark searchers need to evaluate. From there, the trademark searcher is left to sift through the results using only intuition to determine whether anyone of those marks is likely to prevent the registration of the proposed mark being searched.

And any software program that includes only the similarity of the marks and irrelevant International Class numbers yet provides a “score” for the search results begs the question of what that score represents. If all the search is telling is that there are similar marks registered with the United States Patent and Trademark Office, that information is largely unhelpful and something you can discover by yourself and for free.

And over reliance on trademark classes will result in overlooked trademarks that may be consequential marks in the likelihood of confusion analysis. That may have been the case in the Pearl 9 case. Focusing solely on International Class 14 where jewelry and watches are classified, would have resulted in missing the SWISS certification mark in Class A.

Confusion Likely by More than One Hometown Pizza

"hometown pizza logo"

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.

Consumers Likely to Confuse MASTERMIND Beer with MASTERMIND Vodka

"mastermind vodka bottle"

The craft beer and spirits markets continue to grow at an astonishing rate. According to a Bloomberg article, there are eight times as many breweries in the U.S. as there were a decade ago, and seven times as many distilleries. This rapid growth is leading to the problem the Trademark Trial and Appeal Board recently dealt with in the In re Fiddlehead Brewing Company, LLC case.

Fiddlehead Brewing Company filed an application to register the mark MASTERMIND for “beer.” The Trademark Office refused registration on the ground that Fiddlehead Brewing’s mark was likely to cause confusion with the prior registered mark MASTERMIND VODKA for “spirits.”

The marks at issue were virtually identical, so the salient issue was whether beer is a related good to spirits, but more specifically vodka. The Board could not have more clearly stated that International Class Numbers are irrelevant when it comes to the relatedness of goods determination when it said:

The fact that the USPTO classifies Applicant’s beer in Class 32 and Registrant’s spirits in Class 33 does not establish that those goods are unrelated under § 2(d). *** The determination concerning the proper classification of goods or services is a purely administrative determination unrelated to the determination of likelihood of confusion.

If you are a trademark searcher and are looking at the International Class Numbers, STOP DOING IT. You need to dig deeper and look at the relatedness of goods and services, but we digress.

The Examining Attorney offered several websites of businesses operating a brewery and distillery under the same brand, and news articles discussing breweries that are also producing distilled spirits. The Board also cite prior decision after prior decision that held beer and other alcoholic beverages including wine are related goods. Accordingly, it is no surprise that the Board found Fiddlehead Brewing’s beer to be related to the owner of the cited mark’s “spirits.”

Despite the saturated nature of the alcoholic beverage market and numerous decisions from the Board on relatedness, breweries, distilleries, and wineries continue to hold a false hope that their case will be the one that does not get caught in the relatedness of goods trap. But the better strategy is to find an available mark. And the only way to do that is to pay attention to the relatedness factor, which is something BOB does for you.

2018 State of Branding: Sound Similarity Key to Determining Similar Names

“Google home mini virtual assistant 2018 State of Branding importance of sound similarity to determine similar names”

Sound similarity between two trademarks may be growing in importance to determine similar names after the report released by Bynder and OnBrand. Bynder and OnBrand released the 2018 State of Branding Report and  GoodHands added to the report with their own comments on the state of branding. According to the report, 40% of respondents were investing in voice assistant technology for marketing purposes.  This means that sound similarity between marks may need to be scrutinized more closely when conducting trademark searches.

The similarity of the marks is one of two potentially dispositive likelihood of confusion factors to determine is similar names exist. The other dispositive factor is the relatedness of the goods or services factor. The similarity of the marks factor broken down into three sub-factors:  (1) visual similarity; (2) sound similarity; and (3) similar meanings. The analysis of these three sub-factors leads to a conclusion regarding the overall commercial impression of the marks and ultimately determining if they are similar names.

For the most part, visual similarity has dominated the other two sub-factors by receiving the most weight in the similarity of marks analysis. This is because consumers place more emphasis on things they can see. But sound similarity has been a close second to visual similarity. The reason sound similarity has not historically been on even par with visual similarity is because this sub-factor is more important in markets where goods or services are ordered or purchased by name. A good example of where sound similarity is important in the bar or restaurant market where orders are taken orally as opposed to a retail environment where consumers browse shelves or racks of product.

The rise of Internet shopping and increase use of Amazon’s Alexa and Google Home, are increasing the importance of sound similarity, which is being noticed by marketers according to the 2018 State of Branding report. As trademark searchers, we need to pay attention to this trend and when a mark may be visually different from other marks in the search results but sound similar we may need to raise the warning flag whereas in the past we could stand down.

Using a Hashtag as a Trademark Requires a Trademark Search First

"hashtag in lights"

A hashtag is a word or phrase preceded by a hash or pound sign (#) and used to identify messages on a specific topic. Sharing content on a specific topic can be accomplished by adding the hashtag topic to the message. Others searching for that topic can search for that hashtag topic to find other messages on the same social media platform. Hashtags have become such a prominent part of our society that the word was added to the Oxford dictionary in 2010 and to the Scrabble dictionary in 2014.

Given its popularity, naturally there is a tendency to want to trademark a particular hashtag. The motivation to get trademark protection usually stems from someone’s desire to control a certain phrase. However, there are a few requirements that must be met in order for a hashtag to be protected as a trademark.

Like domain names, a hashtag at its core is no different from a street sign. It functions to direct people to relevant content in cyberspace. If its status as a cyberspace street sign does not change, then it cannot be protected as a trademark because consumers do not recognize it as an indicator of source nor rely on it to distinguish goods or services.

If you start to use the hashtag in a trademark sense, then you may start to develop trademark rights in the phrase following the #. In most cases, the Trademark Office will require that you disclaim the use of the # because it is functional. A disclaimer is merely an acknowledge to the world that you will not claim exclusive rights in the disclaimed matter apart from your mark as a whole. In other words, other people can use the #.

Whether you can protect the phrase following the # depends on whether it is registrable just like any other word for the applied for goods or services. That means surviving a likelihood of confusion inquiry.

As trademark searchers, we should not concern ourselves with generic, descriptive, or purely functional matter when we construct our search equations. We don’t concern ourselves with this matter because it can only muddy our search results with irrelevant results. Instead, we should focus on the phrase separate from the #.

For example, it does not make much sense to search for FIRST BANK in connection with “banking services.” BANK is generic of banking services and no one would be able to tell another bank that they can use the word bank in their trademark. Instead, the focus should be on FIRST. The same strategy applies when asked to search a hashtag.

Handling Difficult Conversations About Trademark Search Results

"couple having difficult conversations"

If you are conducting a trademark search for someone else, difficult conversations about one of the trademarks being searched is going to happen. As of July 2, 2018, there are 312,339 pending trademark applications and 2,386,268 live registrations in the United States Patent and Trademark Office TESS database. That is almost 2,700,000 records that need to be considered when selecting a trademark and it only takes 1 record to prevent the registration of a proposed mark.

Inc. published an article about The No. 1 Mistake People Make When Handling Tough Conversations. According to the author John Hall – CEO & co-founder of Influence & Co. – the No. 1 mistake leaders make is worrying about their own performance instead of the team. Some of Mr. Hall’s tips are transferable to a client relationship, but there is one tip that makes a big difference in the client context. You can avoid difficult conversations if you demonstrate you are invested in and care about your client by adding value about the search results beyond just the results. In other words, show the client that you tried to find ways to make sure the name they fall in love with is available for their use.

To add this value requires a more critical analysis of the search results. It means that there may be a way around a search result colored red. Or that a small change to a mark may avoid an issue with a search result colored yellow.

If you are a naming firm or professional trademark searcher, here is strategy to employ to demonstrate to your clients that you are invested in their business while using your time and money in the most cost-effective way. First, use a trademark search engine to conduct the preliminary trademark search. When reviewing the search results, sort them by green first, then red, and finally yellow. Set the green marks aside, and turn your attention to the red marks. Review the list of red marks for any you suspect your client would really like. Put those list of red marks in separate list. Then turn your attention to the yellow marks. Similar to the red marks, make a list of the yellow marks you suspect your client would really like.

If you do not have a relationship with a trademark attorney, then you should get one. Send the list of red marks and yellow marks to the trademark attorney along with the relevant search results. Have the trademark attorney reviewing the prosecution history for the marks to determine if he or she sees a potential path to registration for any of the marks on the list. If a path exists, have the trademark attorney provide the patch details.

When you structuring a relationship with a trademark attorney this way, you maximize the value the trademark attorney brings to the clearance process. You are not wasting money on a search, which can be done in a more cost-effective way.

Through this process you will avoid difficult conversations with your client because they will see the extra mile you went to ensure they can use a name they ultimately fall in love with.

Airline Entertainment Equipment Is Unrelated to Broadcasting Services

"Delta airline entertainment equipment, like P.G.A. Electronic's CARAT system, that allows broadcasting services providers to deliver content"

P.G.A. Electronic wins a rare reversal from the Trademark Trial and Appeal Board for its CARAT application. Given the surprises the Trademark Office delivers from time to time, it is possible that airline entertainment equipment could be related to television and radio broadcasting services. These goods and services could be related because they are both involved in the delivery of content to consumers. The Trademark Office has held in prior cases that when the goods or services are ingredients in or compliments to the other good or service, that is an indication of relatedness.

In In re P.G.A. Electronic, the Trademark Trial and Appeal Board decided whether airline entertainment equipment is related to television and radio broadcasting services. P.G.A. Electronic filed a request for extension of protection of an international registration for the mark CARAT (in stylized form) through the Madrid Protocol. P.G.A. Electronic filed the CARAT application in connection with airline entertainment equipment. The Trademark Office refused registration of the mark on the ground that it was likely to cause confusion with a prior registered mark CARAT for radio and television broadcasting services.

The central issue in this case was the relatedness of the goods or services because the marks were virtually identical. The only difference was the stylization of the CARAT word used by P.G.A. Electronic. When the marks at issue are identical, less similarity between the goods or services at issue is required for a likelihood of confusion to exist.

The Examining Attorney offered third-party registrations for marks that covered broadcasting services and some form of content transmission.  Because of the transmission aspect of these third-party registrations did not exclude transmitting in airplanes, the Examining Attorney argued this was evidence that the goods and services at issue in the case were related.

The Trademark Trial and Appeal Board agreed, but held that the Examining Attorney failed to prove that P.G.A. Electronic’s customers were airline passengers and not the technicians who install the CARAT equipment in the airplanes. Accordingly, the Trademark Trial and Appeal Board held that airline entertainment equipment is unrelated to radio and television broadcasting services.