Life is Good Learned the Hard Way that Font Style Matters

"Life is Good logos with different font styles and colors"

The goal of every trademark applicant should be to secure the broadest scope of rights possible. One way to achieve this is to rely on the standard character form drawing when filing a trademark application instead of the particular font style used for the literal portion of the mark. We talked about the standard character form drawing in a prior post. However, sometimes protecting the font style used in a trademark makes business sense to do.

Life is Good used a unique font style for its LIFE IS GOOD logo that resonated with consumers. In fact, the font style became something consumers relied on to distinguish LIFE IS GOOD goods and services from others. In 2015, Life is Good substituted the unique font style for a more traditional typeface. This seemingly small change had a large impact on the brand’s image.

The main purpose of the mark drawing is to provide notice of the nature of the mark sought to be registered.  The drawing of a mark is promptly entered into the automated records of the USPTO and is available to the public through the Trademark Electronic Search System (“TESS”) and the Trademark Status and Document Retrieval (“TSDR”) database on the USPTO website. A special form drawing is required if words, letters, or numerals are presented in a distinctive form that engenders an uncommon or “special” commercial impression that would be altered or lost if the registration issued based on a standard character drawing.

A trademark applicant employing a unique font style that it recognizes consumers rely on to distinguish its goods or services from those of another company should protect both the literal portion of its mark in a standard character form and its stylized form. The reason to protect the stylized form in this circumstance is that it makes a potential enforcement matter more easy if the infringer adopts a similar typeface as well. But if you don’t know if consumers will rely on the typeface to distinguish your goods or services from others, then just stick with the standard character drawing.

The Signals Given by a Trademark Disclaimer

"woman filling out a life insurance application similar to one offered by Optimum Benefits Package, trademark disclaimer on benefits package"

A trademark disclaimer is  something commonly made by trademark applicants, and they send important signals to trademark searchers. The John M. Fickewirth Associates Insurance Services case is a good example of the consequences trademark owners face when they voluntarily disclaim matter from their trademark applications. Optimum Group Inc. registered the mark OPTIMUM for “underwriting, brokerage and management of all types of life insurance and reinsurance; and actuarial consulting services” in 1996 (i.e., over 20 years ago). Optimum Group renewed the OPTIMUM registration as recent as 2017 for another 10 year term.

John M. Fickewirth Associates Insurance Services filed a services mark application for the virtually identical mark OPTIMUM BENEFITS PACKAGE for “insurance administrative services, insurance brokerage services, insurance underwriting services in the field of life, health, accident, disability and longterm care insurance.” John M. Fickewirth disclaimed the terms BENEFITS PACKAGE.

In this case, John M. Fickewirth’s primary argument was that the Trademark Office improperly dissected its mark and did not consider it in its entirety. A trademark disclaimer is an applicant’s statement that it does claim the exclusive right to, most often, certain terms apart from the mark as a whole. In other words, others are free to use the disclaimed terms for the same goods or services. Most of the time, a trademark disclaimer is made to buy peace with the Trademark Office in order to move a pending application through the examination process. But there is significance trademark searchers need to be aware of beyond the ability to use the disclaimed words.

There is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on a consideration of the marks in their entireties. Disclaimed matter that is descriptive of or generic for a party’s goods or services is typically less significant or less dominant when comparing the marks at issue.

John M. Fickewirth acknowledged that the dominant portion of its mark was OPTIMUM with the trademark disclaimer of the words BENEFIT PACKAGE. Therefore, it was not improper for the Trademark Office to afford more weight to the OPTIMUM term when determining the similarity of the marks. As trademark searchers, we need to pay attention to any trademark disclaimer made by a trademark applicant to determine what the dominant portion of a mark may be.

What the Trademark Symbol Tells Trademark Searchers

"Registered Trademark Symbol"

Trademark owners earn the right to use the circle “R” registration trademark symbol, yet too many trademark owners neglect to use this important symbol. Some may decide not to use it because in their opinion it does not fit with the overall design of the composite mark. But so much information is being conveyed in the trademark symbol that it is a mistake not to use it and can result in unintended consequences in the event the trademark owner is forced to enforce its rights.

Trademark designations come in two varieties. The first variety is reserved for common law trademarks. The designation reserved for common law trademark rights is “TM” and the designation reserved for common law service mark rights is “SM.” The second variety is reserved for federally registered trademarks, whether the trademarks or service marks are registered on the Principal or Supplemental Registers.

Regardless of the trademark symbol being used, they all serve the same purpose. That purpose is to put others on actual notice of your trademark or service mark rights. But it is not a requirement that you use a trademark symbol. And that is precisely why as a trademark searcher you should pay attention to marks you uncover in your search that display a trademark symbol. For the most part, trademark owners using a trademark symbol are serious trademark owners, which means they are likely policing the marketplace for confusingly similar marks. If they have not federally registered their mark, the level of seriousness drops. Nevertheless, these are trademark owners that could present a problem to your proposed mark.

As a trademark owner who has earned the right to use the circle “R” trademark symbol, if you do not want benefit from the deterrent effect the symbol can have, then you should want to use it for the following reason. According to the Trademark Act:

In any suit for infringement . . . by such a registrant failing to give such notice of registration, no profits and no damages shall be recovered under the provisions of this chapter unless the defendant had actual notice of the registration.

You earned the right to use the registered trademark symbol, so do not miss out on a remedy for not using it.

What Trademark Searchers Need to Know About Use in Commerce

"woman spooning samples of guacamole showing use in commerce of the Wholely Guacamole trademark"

In the United States, trademark rights are created through use in commerce not registration with the United States Patent and Trademark Office. This is why all new businesses or current businesses launching a new product are advised to pay for comprehensive searches. But even an expensive, comprehensive search is incapable of finding every possible threat to a proposed trademark. And here is why, the amount of use in commerce required to establish trademark rights in the United States, assuming the mark is inherently distinctive, is not as much as the average trademark searcher would think. In fact, the required amount of use in commerce is much lower.

This was an issue the Trademark Trial and Appeal Board addressed recently in Dexas International, Ltd. v. Ideavillage Products Corp. Ideavillage Products applied to register the mark SNACKEEZ DUO for beverageware and food containers. Dexas International opposed the registration of Ideavillage Products’ mark on the ground that it was likely to cause confusion with its common law mark SNACK-DUO for food and drink containers.

Ideavillage Products filed its SNACKEEZ DUO application on December 5, 2014 on an intent-to-use basis. Dexas International made the first sale of its SNACK-DUO food and drink container in January 2015, but claimed its trademark rights began in July 2014 based on the interstate shipment of two samples bearing the SNACK-DUO mark to a retailer.

It is well settled that use of a mark in a manner analogous to technical trademark use may furnish a valid basis for claiming priority and maintaining an opposition. Thus, even before proper trademark use in commerce commences, advertising or similar pre-sale activities may establish priority if they create the necessary association in the mind of the consumer. There is specific percentage or number of consumers required to associate the mark with the goods based on the pre-sale activity. Rather, the United States Court of Appeals has simply said that it must be:

more than insubstantial and more than negligible.

As you can imagine, what this means has been decided on a case-by-case basis, and often times requires a very fact intensive inquiry because priority is critical to bringing and maintaining an infringement lawsuit in District Court or proceeding before the Trademark Trial and Appeal Board.

In the Ideavillage case, the Board found that the two samples served a commercial purpose because the retailer eventually placed several more orders for the product. Therefore, the Board found that the priority date for the SNACKEEZ DUO mark was July 2014.

As a trademark searcher, if you were searching a mark similar to the SNACKEEZ DUO mark in 2014, there is no way you would have found Ideavillage’s mark. While the decision talks about other pre-sales activity Ideavillage engaged in, it does not say when these activities occurred. It is precisely because the level of use in commerce necessary to establish trademark rights is so low, that no trademark search, irrespective of its price, is capable of finding every possible conflict with a proposed mark. But the place a trademark searcher must absolutely search is the United States Patent and Trademark Office.

Trademark Use in Interstate Commerce Sufficient to Avoid Abandonment

"Mombacho cigars trademark use in interstate commerce"

Trademark use in interstate commerce is required to create a basis upon which a federal trademark registration may issue. This requirement naturally raises two questions. First, what use qualifies as trademark use? Second, how much trademark use in interstate commerce is enough?

With respect to the first question, the use of the trademark must be a bona fide use in the ordinary course of trade rather than made merely to reserve a right in the mark. Whether the use was bona fide will depend on the industry. For example, testing or selling samples in one industry such as the software industry is sufficient to satisfy the bona fide use requirement because it is ordinary to engage in beta testing before launching into full commercial-scale production. But selling samples of a t-shirt is not ordinary for the clothing industry before launching into full commercial-scale production. In the case of selling samples in the clothing context, you are much more likely to not satisfy the bona fide trademark use requirement.

Assuming the use qualifies as trademark use, then the focus turns to how much trademark use in interstate commerce is enough.  In other words, was the trademark use merely token use. Recently, the Trademark Trial and Appeal Board had the opportunity to address this issue in the Mombacho Cigars S.A. v. Tropical Tobacco, Inc. case.

Mombacho Cigars petitioned to cancel Tropical Tobacco’s registration for the MOMBACHO mark in connection with “cigars.” Mombacho Cigars that Tropical Tobacco had made nominal use of the MOMBACHO mark for five years – two years longer than the presumptive abandonment period of three years. Tropical Tobacco admitted that it did not market the MOMBACHO brand, but maintained that it continuously sold the cigar from its date of first use to the present even though sales dwindled between 2010 to 2015. In 2012 to 2014, Tropical Tobacco sold between two to four boxes of cigars to one distributor. But in 2015, the sales increased to 24 boxes and then a 300 box order all by the same distributor.

The Board found that while low, this pattern of sale activity was sufficient to establish trademark rights and avoid an abandonment claim.

All Brands are Trademarks, But Not All Trademarks are Brands

"brands trademarks"

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.