Connotation is the Deciding Factor in Registration Refusal

The analysis of the similarity of the marks involves the consideration of three factors: (1) visual similarity; (2) sound similarity; and (3) similar connotation. Generally, the visual similarity of the marks factor trumps the other two factors. But for the second time in about three months, the connotation factor has been the dispositive factor.

Don’t Run Out, Inc. applied to register the mark PUBLIC GOODS (in standard characters with GOODS disclaimed) for a variety of goods including “shampoos.” The Trademark Office refused registration of the PUBLIC GOODS mark on the ground that it was likely to cause confusion with the prior registered mark PUBLIX also for “hair shampoo.” With the goods legally identical and the descriptions unrestricted, the registration refusal turned on the similarity of the marks.

The Trademark Office argued that PUBLIX was the plural version of PUBLIC, and with GOODS disclaimed it was appropriate to compare the dominant portion of the marks. While more weight can be given to the dominant portions of the marks at issue, the final decision still needs to be made based on the marks in their entireties. In this case, the Trademark Trial and Appeal Board found that the addition of the term GOODS materially changed the commercial impression of the mark.

“The proper test is not a side-by-side comparison of the marks, but instead ‘whether the marks are sufficiently similar in terms of their commercial impression’ such that persons who encounter the marks would be likely to assume a connection between the parties.” The words PUBLIC GOODS were taken together project the connotation and commercial impression that Don’t Run Out personal care products are available to all consumers due to their affordability, and beneficial to the public because they are environmentally safe. By contrast, the PUBLIX mark has no well-recognized meaning. As a result, when confronted with both marks, prospective consumers are unlikely to assume the respective goods originate from the same source, despite use in part on identical and highly related goods.

Breathable, Waterproof Fabric is Related to Clothing

The Trademark Trial and Appeal Board recently found that breathable, waterproof fabric used to create clothing is related to clothing in general. A general rule for assessing whether goods are related is whether the goods are or can be used together. If the goods can be or are used to together like fabric and clothing, then the goods at issue are related.

Striker Brands LLC filed an application to register the mark HYDRAPORE (in standard characters) for “breathable waterproof fabric sold as an integral component of fishing and hunting apparel, namely, coats, jackets, [etc.]” The Trademark Office refused registration based on a prior registration for HYDRO PORE (in standard characters) in connection with “clothing, namely, tops, bottoms, jackets, headwear, and footwear.”

To demonstrate the relatedness of the goods the Trademark Office offered 20 third-party registrations for marks that identify fabric as a component of clothing, and finished articles of clothing. These third-party registrations demonstrated that consumers expect fabric and finished clothing articles to emanate from the same source. Additionally, although not forcefully made in the opinion, the Board found that consumers could mistakenly believe that the HYDRO PORE clothing was made from the HYDRAPORE fabric.

Striker Brands made the classic mistake of leaving the identification of goods description in the HYDRO PORE mark undisturbed. It should have focused on narrowing the description to exclude a type of fabric along with the hunting and fishing channels of trade before pursuing the appeal.

When it came to the conceptual strength of the HYDRO PORE mark, Striker Brands offered 33 third-party registrations for HYDRO- formative marks in connection with various types of apparel or fabric. The Board noted that none of the third-party registrations contained a second term similar to PORE or for PORE. Moreover, Striker Brands did not offer any evidence of use for the 33 third-party registrations. Nevertheless, although the Board found that HYDRO PORE is a suggestive mark, it was entitled to a slightly narrower scope of protection because of the third-party registrations.

This conceptual strength analysis is similar to the Board’s decision in HULA DELIGHTS, and is even more difficult to square with its decision in the LUNA CYCLE case. In the LUNA CYCLE case, 100 third-party registrations for marks displaying LUNA (like those displaying HYDRO in this case) were offered for some form of apparel (like the various clothing items and fabric in this case). The difference though is that the Board discounted all 100 third-party registrations because they were not for women’s bicycle apparel.

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.

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.