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? 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.
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:
- Save your search equations, including those that you ultimately did not use;
- 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;
- Save any additional investigation taken on a particular individual mark;
- Save any notes taken about the search or about the mark in terms of the meaning or inspiration for the mark; and
- 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.
The use of a foreign word to avoid a likelihood of confusion with the English equivalent will generally not work. The doctrine of foreign equivalents is not an absolute rule, but a guide and applies when it is likely that the ordinary American purchaser would stop and translate the foreign word into its English equivalent. The doctrine of foreign equivalents is used to determine similarity of meaning and connotation, and the Trademark Trial and Appeal Board recently addressed the doctrine in In re California Faucets, Inc.
California Faucets sought to register the mark GAVIOTA in connection with luxury bathroom faucets, shower heads, tub spouts, and other plumbing fixtures and fittings. The United States Patent and Trademark Office refused registration of California Faucets GAVIOTA mark on the ground that it was likely to cause confusion with the prior registered mark SEAGULL for “water purification units and parts therefor.”
Turning to the relatedness of goods factor first. The Trademark Trial and Appeal Board found that “water purification units and parts therefor” are related to various bathroom fixtures. The evidence showed that the Registrant’s water purification units were installed for drinking water purposes. But because this limitation was not present in the description of goods for the SEAGULL mark, the TTAB found that the water purification units could be installed in any part of a home including the bathroom.
The Trademark Trial and Appeal Board needs to stop being willfully blind to the realities of the marketplace. No consumer installs water purification units in their bathrooms, nor are these units sold in the same areas of a big box retailer like Home Depot or Lowe’s. But it again highlights the importance of including the relatedness of goods factor in your trademark search process.
With respect to the marks, GAVIOTA means “seagull” in Spanish. It has no definition English. Because the record showed an appreciable number of Americans speak Spanish, the TTAB found it was appropriate to apply the doctrine of foreign equivalents. And while the doctrine of foreign equivalents applies only to the meaning of the mark, the TTAB found it was so strong that it outweighed the dissimilarity of the marks in terms of sight and sound.
As a trademark searcher you should pay attention to foreign words. However, because the foreign equivalent doctrine applies only to prevalent languages spoken in the United States, do not get bogged down searching every possible foreign language. One good resource to use is Google Translate. If you find a foreign word or words for the mark you are trying to register, you can easily incorporate them into your trademark search process by using BOB’s multi-name search functionality.
One data point that must be considered when reviewing trademark name search results is who owns the trademarks revealed in the search results. The importance of this issue is demonstrated in a dispute between The University of Pittsburgh and Voodoo Brewery. Voodoo Brewery received a nasty gram (that’s the legal term for cease and desist letter) from Pitt over its use of the image of the Cathedral of Learning and script H2P lettering on the packaging. The H2P stood for “Hail to Pitt.”
Pitt owns a Supplemental Registration for H2P for “magnets” and “lapel pins.” They also owned a HAIL TO PITT & Cathedral Design registration similar to the design appearing on the beer cans, but Pitt allowed the registration to expire. Beer and magnets or lapel pins are not related goods. So why would Pitt make an issue of H2P for beer?
The unfortunate reality is that some organizations believe they have to be a hammer. And when you are a hammer, everything looks like nail. But the reality is that even if you think you are a hammer, everything does not have to be a nail. The worst advice a trademark owner can get from a trademark attorney is that you have to enforce your rights at all costs or risk losing your rights forever. While trademark rights are dynamic, you do not have to enforce them against anyone and everyone.
In this case, Pitt’s decision to hammer Voodoo Brewery turned into a bit of a PR nightmare because the brewmaster is a University of Pittsburgh alumnae. The beer he created was a tribute to his alma mater. But rather than fight Pitt over the name, Voodoo Brewery rebranded the beer to NON-TRADEMARK INFRINGEMENT ALMA MATER IPA. This was a brilliant way to address the questionable trademark claims made by Pitt.
Another thing to learn from this case is that as a defendant you do not have to fight at all costs either. Voodoo Brewery made a business decision to rebrand rather than fight. Never lose sight of the business decision when dealing with trademark issues. The minute your emotions take over what should be a business decision is the time you will end up spending much more on legal fees than you probably should.
Trademark name search results may reveal trademark owners that deserve more investigation before you can clear the mark.
The use of misspelled trademarks may be waning a little in the wake of the human name trend, but that does not mean it has gone away. For example, there is a new lending company that landed on the mark THRYFT for its business name. Misspelled words may be a way to convey a compelling brand story and it certainly may open up a number of available top-level domain names. Unfortunately, what it will not likely do is avoid a problem with an already registered trademark.
Like reversing words, spelling variations are unlikely to avoid a likelihood of confusion with a prior registered mark. A misspelling is of some importance when evaluating the similarity of the marks factor, but unless the misspelling results in what is essentially a coined term, it is unlikely to avoid confusion. An example of this is a 2016 decision from the Trademark Trial and Appeal Board for the marks INDI and INDY for clothing. In this case, while the Board found the marks are visually and phonetically similar, the spelling of the INDI word rendered it meaningless whereas the INDY word had a distinct auto racing meaning.
Trademark searchers need to be aware of possible misspelled trademarks that could pose a problem the trademarks they are considering adopting. Unless you are a linguist, the possible alternate spellings of word may not be readily apparent to you. One way to determine if a possible alternate spelling exists is to use – what for it – the Alternate Spelling Finder. This tool will identify possible alternate spellings for any word.
The problem with the Alternate Spelling Finder is two fold. First, you need to determine how realistic some of the proposed alternate spellings are. Second, if you conclude the alternate spellings are realistic, it is impracticable to include all of the spelling variations in your trademark search. With a trade search tool like BOB, you could use the multi-name search functionality and search all the possible spelling variations at a reasonable cost. But there is an easier way to do it and a much lower cost.
Use BOB’s Wild Card search functionality and use the $ and ? symbols. These symbols represent any number of space or non-space characters. For example, let’s say you use the Alternate Spelling Finder to search the word “BABY.” You will get about 24 alternate spellings and all but a couple begin with the letter B and end with the letter Y with about 2-3 letters in between. To capture the spelling variations of the word BABY, you enter in the Wild Card Field B???Y. This search will look for words that begin with the letter “B” end with the letter “Y” and have 2-3 letters in between regardless of what those letters may be. And you only pay for 1 search not 24 searches.
The trademark infringement elements are referred to as the “likelihood of confusion factors” and apply differently depending upon the jurisdiction you are in. The United States Patent and Trademark Office applies the trademark infringement elements established by the In re E. I. du Pont de Nemours & Co., 476 F.2d 1357 (CCPA 1973) case, which established 13 factors to consider when deciding whether confusion is likely.
Despite the test containing 13 factors, the United States Patent and Trademark Office has repeatedly said that the two key considerations are the similarities between the marks and the similarities between the goods or services. In fact, the Trademark Trial and Appeal Board has held that these two factors can be dispositive of the likelihood of confusion question.
Not only are the similarity of the marks and similarities between the goods or services the most important factors when before the United States Patent and Trademark Office, but the interplay between these two factors is equally important. Where the goods of the applicant and cited registrant are identical or closely related, the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as would be required with diverse goods.
The Trademark Trial and Appeal Board recently decided a case where this interplay was shown. In In re DPC Pet Specialties LLC, DPC Pet Specialties sought to register the mark SAVORY ROASTERS for “pet food; pet treats.” The USPTO refused registration of this mark on the ground that it was likely to cause confusion with the prior registered mark HEARTY ROASTERS for “pet food.”
The TTAB held that while the terms SAVORY and HEARTY convey different meanings, both terms are descriptive of pet food. Accordingly the dominant term in both marks was ROASTER. And even thought the TTAB is required to evaluate the marks in their entireties, because the goods at issue were identical the small differences in meaning between SAVORY and HEARTY were insufficient to avoid a likelihood of confusion.
Bloomberg recently reported that first names are all the rage with startups, such as CASPER, MARCUS, and OSCAR. According to Steve Manning – founder of the Igor naming agency – “short first names change everything as it’s unexpected, less concerned with sounding corporate and serious, and is inherently more human.” Theoretically, this should allow the brand to make a more personal connection with its target customers.
The benefits of adopting a short, first name as your trademark are more than just theoretical. In a 2012 study published by the Journal of Financial Economics, brands with short, easy to pronounce names were viewed more positively by investors. Reducing name length by just one word can boost book-to-market ratios by 2.53 percent or $3.75 million for a medium-size firm. A 2006 study by marketing professor Adam Alter and psychology professor Daniel Oppenheimer found that stocks with easy to pronounce names and tickers outperform their counterparts.
Selecting first names does not guarantee success, and may even raise the stakes for the brand owner. Selecting a first name could mean that customers expect a personal experience throughout the entire experience with the goods or service. It also does not mean that you will have a trademark.
Whether a name is inherently distinctive (i.e., immediately protectable as a trademark upon being used in commerce) or requires proof of secondary meaning (i.e., evidence that the public recognizes name as a trademark) depends on the primary significance of the mark to the purchasing public. The more common it is for an industry to use personal names as identifiers, the more secondary meaning it will be necessary to show. In these circumstances, the name will not be protectable under trademark law unless secondary meaning has been established.
First names are also evaluated for confusion just like any other mark. This means that as trademark searchers we have to search personal names to make sure they are unlikely to cause confusion with a prior registered mark.
The Trademark Trial and Appeal Board had to decide whether Restaurant Services and Nightclub Services are related services. In In re Thomas William Brewer and Mary M. Brewer, Mr. and Mrs. Brewer sought to register the mark THE TROPICS for “providing foods and drinks; providing of food and drink via a mobile truck; restaurant; catering services.” The Trademark Office refused registration of THE TROPICS mark on the ground that it was likely to cause confusion with the registered mark TROPIXX for “nightclub services.”
The likelihood of confusion determination is based on an analysis of all probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion. In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods or services.
With respect to the related services inquiry, it is settled that it is not necessary that the respective services be identical or even competitive in order to find that they are related. It is sufficient if the respective services are related in some manner and/or if the circumstances surrounding their marketing be such that they could give rise to the mistaken belief that services emanate from the same source. The issue is not whether purchasers would confuse the services, but rather whether there is a likelihood of confusion as to the source of these services.
The Trademark Office offered evidence showing that there are nightclubs that offer food and restaurants that offer music and dancing. Mr. and Mrs. Brewer did not put forward a persuasive argument regarding why the restaurant services and nightclub services are not related services. Unfortunately, the Trademark Trial and Appeal Board is limited by the evidence and arguments submitted, but that does not mean that judges’ independent observations do not influence a decision. Apparently those observations did not have an impact on this case.
Trademark searching is conducted in two phases. The first phase is the preliminary trademark search followed by the comprehensive trademark search. The reason trademark searching follows this process is solely to manage trademark attorney fees and trademark search company costs. Trademark search companies usually charge about $800 for a comprehensive trademark search. A comprehensive trademark search is a search that looks in various databases for common law or unregistered trademarks. If an attorney reviews the comprehensive trademark search report for you, the total cost of a comprehensive trademark search could be $1,200 to $2,000.
A preliminary trademark search costs less than a comprehensive trademark search. A preliminary search looks in the USPTO’s Trademark Electronic Search System for any registered trademarks. A preliminary trademark search conducted by a trademark attorney will cost $300-$700.
AILPA recently released its 2017 Economic Study, and reported that the median cost of a clearance trademark search is $1,100 in trademark attorney fees. This number is based on an outside law firm performing the search. $1,100 is a lot of money to spend on a trademark clearance search, but as legal salaries continue to rise, so will this median number. The national average salary for a first-year associate in a law firm is about $153,000. In fact, the Milbank, Tweed, Hadley & McCloy law firm recently announced that its starting salaries for first-year attorneys was being raised to a whopping $190,000. The national average of a trademark paralegal is also high at about $55,000. And these numbers do not include other employment expenses like overhead and benefits.
As we discussed before, trademark searching is deceptively complex because of the nuance involved. But a computer can adequately account for the nuance and produce accurate results at a significant discount to the cost of a manual search. This does not mean that computers are here to replace attorneys, paralegals, or other professional trademark searchers. Instead, it is an opportunity to utilize technology to make the trademark clearance process more efficient, and change the way attorneys, paralegals, and professional trademark searchers are used.
Instead of paying hundreds to thousands of dollars in trademark attorney fees and costs from trademark search companies, have BOB conduct the search and the search results interpreted by the outside firm. At $49.99-$14.99 per name, there is no outside firm that can be as cost efficient as BOB.