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.

Trademark Registration Process and Trademark Cost

"trademark application used in the trademark registration process and trademark cost"

Most people do not understand the trademark registration process nor the trademark cost to register a mark. And while a lot of attention is given to the cost of litigation and the cost to rebrand, the trademark cost to register a mark should not be overlooked.

The first decision a trademark owner must make to begin the trademark registration process is to decide whether to file on a use basis or on an intent-to-use basis. Sometimes the decision will be made for you because you are filing a trademark application before you have a product or service to sell. Filing on a use basis as opposed to an intent-to-use basis could end up saving the trademark owner in the long run.

There are three options when filing a trademark application. A TEAS Plus application costs $225 per International Class of Goods or Services, requires all communication to be conducted through e-mail, and requires the trademark application to select a goods or services description from the Manual of Acceptable Identifications. A TEAS RF application costs $275 per International Class of Goods or Services, requires all communication to be conducted through e-mail, and allows the trademark applicant to submit a custom goods or services description. A TEAS Regular application costs $400 per International Class of Goods or Services and can be filed on paper, but this option will soon be phased out. The costs identified in this paragraph do not include attorney’s fees, which can be the total cost to file a trademark application to $500-$1,000 per International Class of Goods or Services.

After the trademark application is filed, it will be assigned to an examining attorney within 3 months. Once assigned, the Examining Attorney will examine the application for any registrability issues. Most trademark applications receive some form of refusal from the Trademark Office. If a refusal issues, the trademark applicant has 6 months to respond to the refusal.

A formal refusal represents minor issues such as:  a disclaimer requirement, clarification to the description of goods or services, clarification to a description of the mark, etc. The cost to address a formal refusal is about $200-$400. A substantive refusal represents a significant issue with the application. The substantive refusals are those found in Section 2 of the Trademark Act with the most prevalent substantive refusal being likelihood of confusion. The cost to overcome a likelihood of confusion refusal can be in the thousands of dollars because it may take multiple rounds of responses and even an appeal to overcome the refusal.

Assuming no registration refusal issues or a registration refusal is overcome, the trademark application will be published for opposition in the Official Gazette. The publication date starts a 30-day period where another party can object to the registration of your proposed mark. And if an opposition proceeding does commence because a mark is too close to someone else’s, then you are looking at litigation type costs to defend yourself.

If no opposition proceeding is filed, then if you filed the application on a use basis, then the certificate of registration will issue. On the other hand, if you filed on an intent-to-use basis, then the notice of allowance will issue. Before the certificate of registration issues, you will need to file a Statement of Use. the cost to file a Statement of Use is $100. If you are not ready to file the Statement of Use within in 6 months after it issues, then you can file a request for an extension of time up to 5 times following the Notice of Allowance date. However, each extension of time will cost you $150. None of these costs include attorney’s fees.

The trademark cost while not on par with litigation cost is nevertheless money that can be saved by conducting a trademark search first. Probably more important is the time lost due to the trademark registration process. Once you file the trademark application, it will be at least 5 months before a certificate of registration issues.

All Brands are Trademarks, But Not All Trademarks are Brands

What comes first the trademarks or the brands? These words are not synonymous, and understanding the difference is important. Vocabulary in general is critically important to understanding new topics and being able to converse intelligently about them.

The Federal Trademark Act defines what constitutes a trademark very broadly. “A ‘trademark‘ includes any word, name, symbol, or device, or any combination thereof – used by a person – to identify and distinguish his or her goods . . . from those manufactured or sold by others and to indicate the source of the goods, even if that source if unknown.”

Traditionally, a trademark is thought of as words and designs, but it can include smells, tastes, colors, shapes, touch, and sounds. What determines if any of this matter can function as a trademark is whether consumers rely on it when making purchasing decisions. Consumers come to rely on any matter when making purchasing decisions by having experiences with the matter. Those experiences can be good or bad, but those experiences are embodied in the trademark and the trademark starts to represent and stand for those collective experiences. The collective experiences embodied in a trademark is referred to as the goodwill associated with the trademark.

When someone mentions the word brand they are referring to “the sum total fo the thoughts, opinions, associations, and experiences people have with your company.” Brand is more synonymous with goodwill than it is the word trademark. And because a brand requires consumer experiences, all brands are trademarks but not all trademarks are brands.

A company can do a lot to influence the experiences consumers have with the trademark. For example, you can have attractive packaging and marketing collateral, and have excellent customer service. All these things positively reflect on the company and create a quality expectation by consumers every time they encounter the trademark. When this expectation is created, you then have a brand.

The path from trademark to brand depends in part from the selection of your starting point. Select matter that consumers immediately recognize as a trademark, and your path will be shorter than if you select matter that takes time for consumers to recognize is a trademark in the first place.

Concert Speakers and Consumer Speakers are Related

"Guardian Audio concert speakers and consumer speakers"

Have you ever noticed or even pay attention to the brand name of the concert speakers? No, us either. But according to the Trademark Trial and Appeal Board, most consumers must pay attention to and could be confused by a similar trademark used on a concert speakers and consumer speakers. The astonishing aspect of this case was the level of detail the applicant – David Mottinger – included in its identification of goods description in order to avoid the issue the Trademark Office had with his application.

In In re David Mottinger the Trademark Trial and Appeal Board had to decide whether GUARDIAN AUDIO for – take a breath – “audio equipment for use in commercial entertainment systems for use in large public venues, namely, amplifiers, speakers, receivers; all of the foregoing sold only to sound contractors for commercial installation, and to sound production companies, and none of which are targeted to or designed for use by the general consuming public” was confusingly similar to EGUARDIAN for, among other goods, the broadly worded audio products that could include consumer speakers and concert speakers.

This case was no exception to the tried and true statement made by the Trademark Trial and Appeal Board that the relatedness of goods determination must be made based on the descriptions contained in the application and registration at issue. With respect to Mr. Mottinger’s GUARDIAN AUDIO application, there is not much more detail he could have included to avoid the issue the Trademark Office had with his application. But because the EGUARDIAN registration broadly described its audio goods, the Board found there was overlap; thus, the relatedness factor favored a likelihood of confusion.

Moreover, it is high time the Trademark Trial and Appeal Board stop with this policy of only considering what is described in the application and registration. In this case, Acceptto Corporation – the owner of the EGUARDIAN registration – uses the mark only as the name of a driver. But because it only had to show use on 1 of the goods described in the then application it was able to register the mark for the entire goods description if it was willing to the risk on a fraud claim most likely because the Trademark Trial and Appeal Board has been so milk toast on fraud claims since the Bose decision. All the Board’s policy is doing is pushing more people to file partial cancellation actions, which will further clog the TTAB docket.

Trademark searchers need to pay attention to how marks are actually being used if a mark appears problematic from the search results.

Red Hen Protest Shows the Importance of Selecting Unique Marks

The owner of the Red Hen restaurant in Lexington, VA asked White House Press Secretary Sarah Huckabee Sanders asked her to leave her restaurant a couple of nights ago, and then proceeded to arrange a protest of Mrs. Huckabee Sanders family as they dined across the street at another restaurant not affiliated with her restaurant. The events of that night received and continues to receive a lot of attention in the press.

However, the issue with the Red Hen has not been confined to Lexington, VA. Unfortunately, the Washington Post reported that other Red Hen restaurants that are not affiliated with the restaurant in Lexington, VA are feeling the backlash. The owner of the Red Hen restaurant in Washington, D.C. trying to be proactive to avoid a mistaken connection with the Lexington, VA restaurant took to Twitter to explain the difference. Instead of receiving a sympathetic ear, the Twitter mob turned its attention to the post flooding the Washington, D.C. Red Hen with 4,400 tweets – some supportive but some disparaging.

Red Hen restaurants in Swedesboro, N.J., and Old Saybrook, Conn. received similar treatment to the Red Hen in Washington, D.C. However, in addition to the Tweets, these restaurants suffered lower Yelp scores at the hand of the Internet mob.

If you didn’t believe it before, you should now, that a trademark embodies the goodwill or reputation of a business. This case also highlights the importance of selecting trademarks that are sufficiently different from other parties’ marks and protecting the mark you choose from other parties that may choose a confusingly similar mark. And while this situation may be unique, it demonstrates how quickly a reputation can be damages.

In a matter of hours, the Yelp ratings for the Red Hen restaurants were negatively impacted all over a misunderstanding. Yelp has become a trusted source for many people looking to have dinner out. With ratings now in the threes instead of the fives, who knows how much business these Red Hen restaurants will lose over this situation.

Make sure to search your trademark before adopting it. While not on such a public stage, trademark disputes involving similar marks happen all the time and are avoidable if the proper search is conducted.

TailGate Beer Boulevard Brewing Crossroad of Images and Words

"tailgate beer boulevard brewing"

TailGate Beer is a craft brewery in Nashville, TN. Obviously, the name of the brewery is TAILGATE and some of their beers show the design of the backend of a pickup truck with the tailgate down. According to their website, their beer is available in Middle Tennessee only. Tailgate Beer sued Boulevard Brewing Co. over its use of an image of a pickup truck with the tailgate down.

Boulevard Brewing Co. was founded in 1989 and is headquartered in Kansas City, MO. They claim to be the largest specialty brewer in the Midwest and according to their website sell beer in Tennessee. However, again according to their website, do not sell the Pale Ale in Tennessee that is the subject of TailGate Beer’s lawsuit.

This case raises interesting questions for trademark searches; namely, when will an image prevent the registration of word and should images be included in a trademark search for a word. With respect to an image preventing the registration of word, this occurrence is rare because the word needs to be the exact term for the image. For example, if you attempt to register the mark RAILROAD for beer and another brewery has the picture of RailRoad tracks on its beer label, there may be an argument that consumers could confuse the source of the word and image.

However, vary the mark even slightly so that it is not essentially the identical word for the image, and you avoid the likelihood of confusion issue. For example, add to the mark PALE ALE so the mark reach RAILROAD PALE ALE. The terms PALE ALE are clearly generic for the type of beer, but even generic terms are considered when assessing the overall commercial impression of a mark in the likelihood of confusion analysis. This also means that you have varied the word enough to avoid an issue with an image that the word describes.

Boulevard Brewing Co.’s image is not just of a tailgate, it is the image of an entire truck with the tailgate down. So the likelihood of Tailgate Brewing winning on the word/image confusion factor is low. It is also unlikely that they win on the image of truck with its tailgate down being recognized by consumers as their exclusive trademark. Beer and the act of tailgating with a pickup truck is ubiquitous.

But more importantly, on the trademark claims, there is no basis to bring the lawsuit unless Tailgate Beer knows of Boulevard Brewing Co.’s plans to sell its PALE ALE beer in Tennessee. Until that exists, Dawn Donut would prevent the suit from going forward on the trademark claims. This is a good example that not every potential trademark action needs to be pursued and how some trademark attorneys can convince trademark owners to sue out cases that do not deserve to be sued out. As a trademark owner, make sure you interview prospective trademark counsel for their philosophy on enforcement before agreeing to engage them. And you don’t have to use the trademark attorney that works in your corporate attorney’s office. Make sure you find a trademark attorney that understands the business objectives of being a trademark owner.

As trademarks searchers, it is generally unnecessary to include designs in the trademark search. The only time it makes sense to include designs is when the client is contemplating using only a common word in an uncommon way.

Toy Figures and Plush Toys are Similar Goods

"Pint Size Heroes toy figures and plush toys similar goods"

Intuitively, toy figures and plush toys appear to be similar goods. Whether they are in fact similar goods is what the Trademark Trial and Appeal Board had to decide. The similar goods likelihood of confusion factor was the deciding factor in the In re Funko, LLC case. In disputes before the Trademark Office, the 13 factor DuPont test is applied. The Trademark Office will consider each DuPont factor for which there is evidence or argument. However, it is important to highlight that of the 13 DuPont factors, only two are considered to be dispositive of the likelihood of confusion finding. Those two DuPont factors are:  (1) the similarity of the marks; and (2) the similarity of the goods or services. Because these two factors can be dispositive, it is imperative that both are included in a trademark search.

Funko, LLC applied to register the mark PINT SIZE HEROES (Stylized) for “collectable toy figures.” The Trademark Office refused registration of this mark on the ground that it was likely to cause confusion with the prior registered mark PINT SIZE PRODUCTIONS & Design for “plush toys; stuffed and plush toys; stuffed toy animals.” The Trademark Trial and Appeal Board had to decide the marks were being used in connection with similar goods. Pint Size Productions does not sell a branded stuffed animal. Instead, it is an online retailer that sells stuffed animals associated with the Boynton children’s book series.  It does not sell any brand of toy figure.

The Trademark Trial and Appeal Board focused on the evidence in the record that showed toy manufacturers selling both a plush toy and toy figure under the same mark. What was lacking from the record was any evidence that online or brick and mortar retailers not only sell other branded plush toys and toy figures, but also plush toys and toy figures branded with the store’s name. And it does not appear that Funko made this argument.

Instead, the Trademark Office went back to the well for its standard line that the determination of relatedness must be based on the descriptions contained in the application and registration at issue. Where the goods in an application or registration are broadly described, they are deemed to encompass all the goods of the nature and type described therein. In this case, the Board found that “collectable toy figures” can encompass plush toys. Therefore, all the Board waded into the real world marketplace waters, its decision was based on the tried and true presumptions that apply to broad identification of goods descriptions.

Who is the Reasonable Person in Trademark Infringement Cases?

"reasonable person average joe's logo"

Who is the reasonable person in trademark infringement cases? When the similarity of the marks is being determined, the Trademark Trial and Appeal Board will sometimes mention that when comparing the marks “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 Board will then go on to say “the emphasis must be on the recollection of the average purchaser who normally retains a general, rather than specific, impression of trademarks.” If you are a defendant in a case before the Trademark Trial and Appeal Board and see these paragraphs, it is probably time to brace yourself for a decision that is not going in your favor (that’s assuming you didn’t skip to the end of the decision the minute you received it).

Who is this “average purchaser” that the Trademark Trial and Appeal Board references? In one of its most recent decisions In re Spy Tec International, Inc., the Board never defines who this person is and we must assume that the applicant did not offer any evidence to demonstrate who is this person. The “average purchaser” is a concept that is critical to any trademark dispute, yet more often than not who this person is is assumed without any evidence identifying who is the average purchaser of particular goods and services.

Laura A. Heymann of the College of William & Mary Law School discussed this “reasonable person” or “average purchaser.” Although not of much comfort to those of us dealing with trademarks on a daily basis, Ms. Heymann concludes that the “reasonable person” or “average purchaser” is the whoever the judge decides it is, which is usually a product of the judges own bias. The Trademark Trial Appeal Board has said that the “average purchaser” is the least sophisticated of a particular class of consumers.

5 Good Record Keeping Tips when Searching Trademarks

"computer screen with cursor over new file for record keeping"

Good record keeping practices should be followed when searching trademarks, and there are a few reasons why this is the case. The first reason is simple and self-interested. As a trademark searcher for others, you want a CYA (i.e., cover-your-ass) file in the event a trademark dispute occurs. And you especially want this CYA file in the event your client choses a name that has a questionable, clearance report. As an aside, under no circumstances should a naming firm or trademark searcher indemnify a client for trademark infringement. You are not a trademark lawyer, and should not put yourself in the position as insurance company for your clients.

But we digress. The second reason to follow good record keeping practices is because plausible deniability is not going to be a defendant’s friend in a trademark dispute. The lack of documentation surrounding a defendant’s trademark search always get’s the plaintiff’s attorneys worked up. Any testimony given about the search including its details is always met with arguments of bias and self-interest. As a trademark searcher, if your documents and notes as a lay person corroborate the trademark attorney’s legal review, then you remove one distraction a plaintiff’s attorney can make to a jury.

The third reason is for historical reference. As a trademark owner, you hope to be in business for a long time, maybe even generations. Invariably, your brand will have to modernize over time. Having a record of why the trademark was selected in the first place and what existed at the time is helpful information to have when deciding how to rebrand. Not too often when more information was unhelpful.

Here are some practices to follow when searching trademarks:

  1. Save your search equations, including those that you ultimately did not use;
  2. Save your search results. If you use a trademark search engine like BOB, you can download your search results in a PDF or Word format. If you are manually searching the USPTO database, print the TESS search results and any notable individual records;
  3. Save any additional investigation taken on a particular individual mark;
  4. Save any notes taken about the search or about the mark in terms of the meaning or inspiration for the mark; and
  5. Save the ultimate, lay opinion on the availability of the mark.

Keep in mind that all of these documents are discoverable in a lawsuit and will not be protected by the attorney client privilege. Keep this in mind as you preparing any documents, but don’t let that discourage you from employing good record keeping practices.