Study Shows Correlation Between A Trademark Filing And Growth

"working paper title about the benefits of a trademark filing"

When dealing with intangible property, it is often hard for a business owner to understand why money should be spent on, for example, a trademark filing. Obtaining a trademark registration can be expensive depending on the path the business owner chooses when starting the trademark registration journey. And the effects of that decision to make a trademark filing my go unnoticed or the positive effects of that decision may be misattributed to something else in the business.

A working paper titled An Anatomy of U.S. Firms Seeking Trademark Registration was recently published by the National Bureau of Economic Research, and it may provide the clarity and understanding business owners need to see that a trademark filing makes a business money. The working paper was also released in perfect timing with the U.S. Senate’s Resolution to Increase Trademark Protection Awareness.

The study created a new dataset by combining the USPTO trademark filing data with firm characteristics, performance, and dynamics in the United States as reported by the U.S. Census Bureau. The paper then provided a first look at the connection between a trademark filing and the broader measures of firm outcomes.

The study found that a trademark filing is highly correlated with the ultimate success of an early entrepreneurship activity including employment and revenue growth. Firms that do not apply for a trademark registration in their initial years are unlikely to do so unless they experience employment growth. However, difference-in-differences analysis suggests sizable treatment effects, with firms making a trademark filing having substantially higher employment and greater revenue in the period following the first trademark filing.

Hopefully, this paper will be peer-reviewed and ultimately validated because, if accurate, it provides businesses with the most valuable justification for protecting a trademark: namely, that it likely will make you money.  More businesses need to recognize the importance of filing trademark applications and the data suggests that too few businesses understand this. According to the Kauffman Startup Index in 2017 there were about 540,000 new business owners each month during the year. That means for the entire year there were about 6.5 million new business owners in 2017. However, through the third quarter of 2018, there are only 480,111 new trademark applications that have been filed in 2018.

Every business, whether a startup or established enterprise, should pursue trademark protection for not only its business name, but also the names of its goods or services. But if you are going to spend the money to protect your brand, you might as well do it wisely. Engage a naming firm to help with the design of a new name and conduct a trademark search to make sure the name is available.

Multiple Colors Not An Inherently Distinctive Trademark

"Forney Mig Wire multiple color product packaging not an inherently distinctive trademark"

Oberlo blogged about the Color Psychology, which is the important role color plays in how consumers perceive a brand. According the post, color affects our day-to-day decisions including what items to buy. The Drum also wrote about blue being the dominant color used by global industries. Because of its importance in the purchasing decision, more companies should consider protecting colors as trademarks. However, not as many as you think attempt to do this because obtaining a trademark registration for a color – as a non-traditional trademark – can require some effort.

Recently, the Trademark Trial and Appeal Board addressed, for the first time, whether multiple colors applied to product packaging can be an inherently distinctive trademark or if the colors must acquire distinctiveness. Forney Industries, Inc. – manufacturer of welding and abrasives tools, equipment, and accessories – applied to register the colors black, yellow, and red applied to packaging for a variety of welding and abrasives goods. The Trademark Office refused registration of Forney’s mark on the ground that the multiple colors is not an inherently distinctive trademark.

Color applied to product packaging is treated the same as color applied to a product and because color applied to a product can never be an inherently distinctive trademark, color applied to product packaging can never be an inherently distinctive trademark. This does not mean that color can never function as a trademark for a product or its packaging, but that color must acquire distinctiveness. It is not immediately protectable as a trademark. And there is no meaningful distinction between a single color or multiple colors when applying this principle.

This case involved color in the abstract. If Forney had applied the multiple colors applied to well-defined shape, pattern, other distinctive design, then the color applies to that extra matter could be inherently distinctive. But since Forney did not argue in the alternative that its multiple color mark had acquired distinctiveness, the Board affirmed the refusal to register Forney’s multiple color mark.

4 Characteristics Trademark Bullies Generally Have in Common

"cartoon about trademark bullies"

Although there seems to be less publicity recently about trademark bullies, that does not mean they have gone away. Trademark bullying is alive and well, and the Associated Press recently published an article pointing the finder at universities as the newest members to this disfavored group. A few examples the article highlighted are:

  • Duke University opposed the registration of DUKE’S FOLLY for “wine” and “custom production of wine for others; providing information about wine-making”;
  • North Carolina State University objected to the use of WOLFPACK – the nickname for its sports teams – by a convenience store in Raleigh, NC called Wolfpack Mini Mart, and a California brewery’s use of Wolfpack to promote its wolf themed beers; and
  • Texas A&M University objected to Erik Nolte’s plans to produce a beer called the 12TH CAN.

The United States Patent and Trademark Office once defined a “trademark bully” as “a trademark owner that uses its trademark rights to harass and intimidate another business beyond what the law might be reasonably interpreted to allow.” Despite this definition, most people believe a trademark bully is any large company that is picking on a smaller company, but this is not always the case.  And while most “trademark bullies” do not have a specific intent to harass the other party, they do have an intention to intimidate their opponent.

The problem with bullies is that they cause their opponent to unnecessarily spend money and sometimes money they don’t have. Here are some characteristics to be on the lookout for to avoid a party that is likely a trademark bully:

  1. Does the person or party own numerous trademark registrations for the same mark?
  2. Do those marks exist in a crowded field?
  3. Does the correspondent information at the USPTO for the trademark owner’s marks identify a solo practitioner, small firm, or large firm with a reputation for aggressive litigation tactics? A common problem in the trademark bully area are lawyers that do not have a deep understanding of the likelihood of confusion factors.
  4. Has the trademark owner been involved in several proceedings before the Trademark Trial and Appeal Board?

The 411 On The Timeline to Register a Trademark

"chalk board with now or later written on it and later with a checked box representing the timeline to register a trademark"

It should not come as a shock that the timeline to register a trademark at the United States Patent and Trademark Office is not quick. But understanding the process and how much time it actually takes is important for companies, trademark searchers, and naming firms because it should inform when the naming process should start. The USPTO issued some timelines based on the filing basis of the application, but they are not the easiest diagrams to follow.

When a trademark application is filed with the USPTO regardless of the filing basis, the application will be assigned to an examining attorney to review the application. This assignment will not happen for three months. To the extent an issue exists with the application, the first office action will likely not issue for a couple of weeks after the assignment of the application. If no issue exists with the application, then the Trademark Office will issue the notice of publication.

Already, there is a three-month delay before you will know whether the mark is available. Let’s assume there are no issues with the application and the notice of publication issues. When the application is published for opposition, this starts a 30-day period when anyone that believes he or she will be damaged by the registration of the mark may formally oppose its registration. So now you are a little over four months before you will know your proposed mark will register.

But let’s assume a first office action issues, then a response to the office action is not due for six months from the date it issued. Most parties do not respond to the first office action right away and most wait until the six month response deadline is close. According to the USPTO’s Data Visualization Center, the total pendency of resolving a first office action is 9.7 months from the filing of the application. It is only after this first office action is resolved that the opposition period begins, which would then kick the timing out another month.

The timeline to register a trademark means that you should start the naming process early. If you don’t start the naming process early, then you need to be more conservative during the trademark search process because you may not have the luxury of starting over with a different mark.

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.

No Entitlement to Use Your Name for Your Business

Phil Davis – founder of Tungsten Branding – recently wrote an article for Forbes about why your last name may not be the best choice for the name of your business. The article identifies many problems with adopting your last name as your company name, but the one problem that recently was addressed by the Tradmeark Trial Appeal Board is that your name may be one of many similar last names. There is no right to use your name as a trademark if it is likely to cause confusion with another mark.

Doofood filed an application to register the mark DOOFOOD & Design for made-to-order meal kits. Doo is part of the Applicant’s name DooJin Kim. The Trademark Office refused registration of this mark on the ground that it was likely to cause confusion with a prior registered mark DO FOOD & Design for a prepared meal kit. The Trademark Trial and Appeal Board found that goods and services at issue were related and the design components of the marks at issue would likely be perceived as background to the literal elements of the marks. The use of pot design in the DOOFOOD & Design mark only reinforced the preparation of food.

Doofood did not offer any evidence of the conceptual weakness of the DO FOOD mark. Instead, it attempted to argue that the meanings of the marks were sufficiently different to avoid a likelihood of confusion. Dissimilarity of sound has trumped similarity in the appearance of the marks at issue. And dissimilarity of appearance has trumped similarity in sound before. But rarely if ever has dissimilarity in meaning trumped similarity as to sound and appearance.

Compounding Doofood’s problem was its lack of evidence on the difference in meanings. It appears that Doofood relied only on argument, which the Board held will never make up for a lack of evidence.

This case highlights that even your name needs to be searched before making the decision to adopt it as the name of your business.

ASKBOT Unlikely To Be Confused With ASK

"ASKBOT home page unlikely to cause confusion with ASK search engine"

The Trademark Trial and Appeal Board for the second time this year considered what was happening in the real world marketplace to determine if consumers were likely to confuse the ASKBOT and ASK trademarks. ASKBOT, Spa filed a trademark application to register the mark ASKBOT in connection with software for creating online forms that allow the posting of questions and answers. The ASKBOT software is sold B2B with the users never seeing the registered trademark.

IAC Search & Media, Inc. petitioned to cancel the ASKBOT on the ground that the mark was likely to confusion with its ASK mark for a search engine service. As we have reported time and time again, the Board generally constrains its analysis of the relatedness of goods or services to the descriptions contained in the registration and application at issue. However, when the identification of goods or services descriptions are technical or vague and require clarification, it is appropriate for the Board to consider extrinsic evidence of use to determine the meaning of the identification of goods or services descriptions.

In this case, the Board did not describe what was technical or vague about the descriptions in the registrations at issue. And although it concluded that the consideration of extrinsic evidence was appropriate, it found that the goods at issue were related.

What the Board used the extrinsic evidence for was to identify differences in the channels of trade and classes of consumers. And what the Board found was that IAC Search & Media’s customers and prospective customers were unlikely to encounter the ASKBOT mark because they target consumers whereas ASKBOT, Spa targets businesses.

The nail in the coffin for IAC Search & Media was when ASKBOT, Spa was able to cross the 10 third-party registration threshold by producing 11 third-party registrations for marks containing ASK in connection with services related to online searching. These registrations coupled with the dictionary definition of “ask” were enough for the Board to conclude that the ASK mark was inherently weak and that would be something that IAC Search & Media would be unable to overcome.

Did The TTAB Set the Conceptual Weakness Standard at 10?

"Smoking Hot Show Time mascara conceptually weak"

We previously discussed how much dilution is required to prove a word is conceptually weak. But a recent decision from the TTAB may have zeroed in on a number.

The TTAB recently reversed the Trademark Office’s refusal to register the mark I’M SMOKING HOT for, among other goods, cosmetics based on a prior registered mark SMOKING HOT SHOW TIME also for cosmetics. The facts of this case seemed eerily similar to the facts of the SQUEEZE JUICE COMPANY decision we discussed just five days ago.

In the I’M SMOKING HOT case, the goods at issue were identical, so the relatedness of goods factor weighed in favor of the refusal as did the overlapping channels of trade and target consumer factors. The case law is legion that when the goods at issue are identical, less similarity is required between the marks at issue for a likelihood of confusion to exist.

In the SQUEEZE JUICE COMPANY case, 12 examples of third-party use of a mark similar to SQUEEZE were offered as evidence to demonstrate the conceptual weakness of the cited mark. The Board accepted these 12 examples as sufficient to establish the weakness of the SQUEEZE term for juice bar services. And about a month ago, the TTAB held that nine examples of third-party use was insufficient to establish the conceptual weakness of the term CODE for some type of educational service.

FabFitFun, Inc. – the owner of record for the I’M SMOKING HOT application – offered 10 examples of third-party use of the terms SMOKING HOT for cosmetics. And in this case, the Trademark Trial and Appeal Board found that the 10 examples were sufficient to establish the conceptual weakness of the SMOKING HOT terms for cosmetics.

In addition to the 10 examples of third-party use, FabFitFun offered the definition of “smoking hot” from the MacMillan Dictionary, which is an open dictionary. The definition of “smoking hot” was submitted by Shahbaz Shahin from Bangladesh on August 31, 2015. This definition is not representative of how an American consumer defines or understands “smoking hot,” and should not have been considered by the Trademark Trial and Appeal Board.

Based on its weakness the finding, the TTAB concluded that the addition of SHOW TIME was sufficient to distinguish the cited mark from the I’M SMOKING HOT mark.

Rare Reversal of SQUEEZE JUICE COMPANY Trademark Refusal

"SQUEEZE JUICE COMPANY mark survived trademark refusal"

Trademark weakness, or dilution, can influence the availability of a potential mark, and can even be the deciding factor. This was the case in a recent, rare reversal of the trademark refusal of the mark SQUEEZE JUICE COMPANY.

Boston Juicery filed a trademark application to register the mark SQUEEZE JUICE COMPANY (Standard Characters) for “fruit juices; vegetable juices; smoothies” and “juice bar services; smoothie bar services; cafe services.” Boston Juicery voluntarily disclaimed the terms JUICE COMPANY in its first office action response; thus, acknowledging that SQUEEZE was the dominant portion of its mark.

The Trademark Office refused registration of the SQUEEZE JUICE COMPANY mark on the ground that it was likely to cause confusion with the prior registered mark SQUEEZE & Design for “bar services; juice bar services.”

We have talked before that when the goods at issue are related (or in this case legally identical because the same description is used by the Boston Juicery and the owner of the cited mark), less similarity between the goods is necessary in order for there to be a likelihood of confusion. We also talked before that marks applied for in standard characters are deemed to seek protection of those words in all forms of stylization.

Just considering the prior discussions we have had, you would think that Boston Juicery’s SQUEEZE JUICE COMPANY application was dead in the water and a trademark refusal was a certainty:

  1. The marks share the dominant element SQUEEZE;
  2. The application share the identical services description “juice bar services”;
  3. Boston Juicery applied for its mark in a standard character form; and
  4. The case law is settled that words dominate designs when assessing mark similarity.

Then out of the blue comes trademark dilution to save the day and overcome the trademark refusal! Boston Juicery offered 12 third-party registrations for marks containing the term SQUEEZE. The majority of the third-party registrations identified “fruit juices.” Only two identified the identical “juice bar services” description and two identified a cafe service. The Board found that these 12 registrations were sufficient to establish the weakness of the SQUEEZE term.

You may be asking yourself that less than a month ago the TTAB found that nine third-party registrations was not enough to establish trademark weakness, and you would be right. And in the Vox Media case, the addition of 2040 was insufficient to distinguish two CODE marks for similar educational services, but Boston Juicery was able to distinguish its mark by adding the generic terms JUICE COMPANY to SQUEEZE.

This case possibly can help us understand that having 12 third-party registrations may be enough to establish trademark weakness or dilution. It also demonstrates how difficult it can be to forecast where the Trademark Office may go with any particular case. So get a trademark professional involved to make the final review about the availability of a proposed mark before sinking a lot of time and money into a new brand.

PROMISES MADE PROMISES KEPT Campaign Slogan Problems

"New York Mayor Bill de Blasio Promises Made Promises Kept similar to President Trump's campaign slogan, which is not copyright protected"

New York City Mayor Bill de Blasio gave a speech at the site of what will be a new school in Brooklyn. His podium was placed in front of a sign with the campaign slogan PROMISES MADE PROMISES KEPT, which also appeared on a nameplate directly below the microphone. President Trump Tweeted his reaction to the speech by accusing Mayor de Blasio of stealing his campaign slogan and saying he has no “imagination.”

Unfortunately for President Trump, there is no such thing as campaign slogan misappropriation, and he has not sought to protect the PROMISES MADE PROMISES KEPT slogan has his trademark. The dispute between President Trump and May de Blasio is like the Seinfeld episode involving George Costanza and the name Seven. But this is an important principle for others to be aware of when having brainstorming sessions or casual conversations with others about potential names.

A slogan like PROMISES MADE PROMISES KEPT can be protected as a trademark if:  (1) it is attached to a good or service; (2) is capable of distinguishing the goods or services of others; and (3) is used in interstate commerce. Once these elements are satisfied, then the slogan owner has some legal recourse against another party that may use a confusingly similar slogan to deceive consumers. But if these elements are not met, then there is no actionable claim for trademark infringement or unfair competition.

In the case of copyrights, copyright protection does not extend to titles, names, slogans, or short phrases. Copyright protects original works of authorship including literary, dramatic, musical, and artistic works such as poetry, novels, movies, songs, software, and architecture. There is no copyright protection available for the PROMISES MADE PROMISES KEPT slogan.

What you need to do to protect your naming ideas is to treat them as a trade secret or other proprietary information. If you are in the business of naming, this means having Non-Disclosure Agreements with clients or including confidentiality terms in service contracts that requires the other party to acknowledge your exclusive ownership of the name and to refrain from using the names not chosen from the short list.

If you are an entrepreneur kicking around names over a couple beers or cups of coffee with friends, advisors, or anyone that will listen to you, having a signed agreement first is not going to happen. What you need to do is exercise some discipline about what information you disclose. Or at least make sure you can trust the people you are sharing the names with will not try to usurp the name for their own venture.