Conceptual Weakness Must Focus on Registrant’s Goods

In Entertainment Content, Inc . v. Cooper Holdings, Inc., by change of name from Career Sports & Entertainment, Inc. we saw the Trademark Trial and Appeal Board chip away at the 17 third-party registrations that Cooper Holdings offered to demonstrate the conceptual weakness of the JUSTICE CENTRAL mark. What started as a promising argument quickly deteriorated to a total number of relevant, third-party marks below the 10 mark minimum.

The reason the argument ultimately failed was two-fold. First, Cooper Holdings did not focus on the Registrant’s services as they were described in the registration. Second, Cooper Holdings did not establish the relatedness of the services in most of the third-party registrations to the Registrant’s services.

Cooper Holdings filed an application to register the mark JUSTICE NETWORK (in standard characters) for, among other services, “television programming services” and “the production and distribution of television programs transmitted via various platforms across multiple forms of transmission media and other services.” Registrant had registered the mark JUSTICE CENTRAL for, among other services:

  • television programs in the field of law and courtroom legal proceedings;
  • entertainment programs in the field of law and
    courtroom legal proceedings accessible by cable,
    satellite, television, Internet, wireless devices,
    networks and via various platforms across multiple
    forms of transmission media;
  • providing programs in the field of law and courtroom
    legal proceedings accessible by cable, satellite,
    television, Internet, wireless networks and via various
    platforms across multiple forms of transmission media;
  • production and distribution of television shows.

Registrant’s services were limited to “courtroom legal proceedings” whereas Cooper Holdings’ services were unlimited. Accordingly, the parties’ services were legally identical.

Cooper Holdings offered 17 third-party registrations that contained the term JUSTICE. Five of the 17 third-party registrations were cancelled and one third-party registration was identified in Cooper Holdings’ brief; thus, not properly admitted into evidence. The remaining third-party registrations while identifying some form of entertainment did not identify courtroom legal proceedings as the content type. Cooper Holdings did not establish that the content type identified in the third-party registrations was related to courtroom legal proceedings. Accordingly, the Board chipped away at the 17 third-party registrations until the number was insufficient to establish the conceptual weakness of the JUSTICE CENTRAL mark.

A Deep Dive on the Relatedness of Goods and Services Factor

The relatedness of goods and services factor is very important in the likelihood of confusion analysis. Indeed, the fundamental inquiry mandated by Section 2(d) of the Trademark Act goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks. The Trademark Trial and Appeal Board issued a decision on New Year’s Eve that closely examined the essential characteristics of the goods because the marks at issue were identical.

Costa Farms, LLC applied to register the mark GROW WITH US (in standard characters) for “live flowers and living plants.” The Trademark Office refused registration based on a prior registration for the identical GROW WITH US mark for “distributorship services in the field of wholesale horticulture supplies and accessories.” Costa Farms eventually appealed the registration refusal to the Trademark Trial and Appeal Board primarily arguing that live flowers and living plants are unrelated goods to distributorship services in the horticulture field.

The Trademark Office compares the goods and services set forth in an application and a registration to determine whether they are similar, commercially related, or travel in the same trade channels. Goods and services dealing with or related to those goods can be found to be related. Relatedness will not be found when the goods or services at issue only chare a relationship with a broad category of goods.

In the GROW WITH US case, the Trademark Trial and Appeal Board found that “live flowers and living plants” on the one hand and “distributorship services in the field of wholesale horticulture supplies and accessories” on the other hand share only a relationship with horticulture, which is insufficient to find the goods and services are related. Costa Farms argued and presented evidence that “horticultural supplies” are “hard-good inputs needed in horticultural endeavors” not live plants and flowers. However, Costa Farms’ evidence also included that “horticultural endeavors” include growing live plants and flowers. It seems like hard-good inputs used to grow live plants and flowers have a commercial relationship with living plants and flowers, but apparently not according to the Trademark Trial and Appeal Board.

Trademark Dilution is Deciding Factor In Recent TTAB Case

Trademark dilution is one of three key likelihood of confusion factors that must be evaluated when conducting a trademark search and then re-evaluated if a registration refusal arises. Trademark dilution directly impacts the evaluation of the other likelihood of confusion factors. The weaker the senior user’s mark, the closer the junior user’s mark can come without causing a likelihood of confusion and thereby invading what amounts to its comparatively narrower range of protection.

I H W Management Limited d/b/a The Finchley Group applied to register the mark BLUE INDUSTRY for a variety of clothing items. The Trademark Office examined this application and approved it for publication. Pure & Simple Concepts, Inc. timely opposed the registration of the BLUE INDUSTRY mark.

To establish the strength (i.e., the broad scope of rights) in the INDUSTRY term, Pure & Simple argued it was the owner of a family of INDUSTRY marks for clothing. Generally, the common element in a family of marks is afforded a broad scope of protection, but establishing a family of marks is not easy.

The threshold issue is that the family feature must exist prior to the junior user’s use of its mark. The family feature also must be distinctive (excluding a highly suggestive term). Finally, the trademarks containing the family feature must be promoted together as a family. A mere intention to create a family of marks nor owning several registrations containing the alleged family feature is sufficient by itself to establish a family of marks.

Pure & Simple relied on eight registrations that contained the term INDUSTRY. Pure & Simple also included its licensee’s website, but this website does not promote the INDUSTRY term as a family feature. It simply identifies the brands this company distributes. Therefore, the evidence offered by Pure & Simple did not establish INDUSTRY as a family element.

Additionally, The Finchley Group offered 74 third-party registrations (far in excess of the 10 third-party registration minimum) that included the term INDUSTRY for clothing. This evidence not only further supported that finding that Pure & Simple did not own a family of INDUSTRY marks, but it also demonstrated that the INDUSTRY term was diluted for clothing. “The purpose of a defendant introducing third-party uses is to show that customers have become so conditioned by a plethora of such similar marks that customers have been educated to distinguish between different such marks on the bases of minute distinctions.” As such, The Finchley Group’s addition of the word BLUE was sufficient to distinguish its mark from Pure & Simple’s INDUSTRY marks.

The Trademark Trial and Appeal Board dismissed Pure & Simple’s opposition finding there was no likelihood of confusion. On December 4, 2019, Pure & Simple filed a Notice of Appeal the United States Court of Appeals for the Federal Circuit. This is a curious decision by Pure & Simple because the record on appeal to the Federal Circuit cannot be supplemented whereas an appeal to the United States District Court is reviewed de novo. Seems like in this case it would have been preferable to go the District Court route given all the dilution evidence that was offered.

Infringing LIL’ BEANIES is not Like Taking Candy from a Baby

The Willamette Week reported that a Portland vegan ice cream company changed its name to Little Chickpea after Gerber complained that the company’s proposed LITTLE BEAN name was likely to cause confusion with its registered mark LIL’ BEANIES. Little Chickpea said in the story that Gerber insisted that the company change its name even though it had decided to discontinue the LIL’ BEANIES brand. It is questionable whether this is true, but if it is then Little Chickpea formerly Little Bean made a mistake prosecuting its application.

Nestle – the parent corporation to Gerber – owns a federal trademark registration for LIL’ BEANIES in connection with “bean-based snack foods; grain-based snack foods.” In the article, Mitch Camden said that “when he applied for a trademark he was initially told ‘everything looked good.'” This means that his trademark lawyers did a trademark search and told him LITTLE BEAN mark was available for him to register. The Trademark Office disagreed and issued a registration refusal asserting that the LITTLE BEAN mark was likely to cause confusion with the LIL’ BEANIES prior registration.

We have to assume that Little Chickpea’s attorneys searched for goods identified in the LITTLE BEAN trademark application, which included “processed chickpeas.” A chickpea is a bean, so it is difficult to understand how Little Chickpea’s attorneys would have concluded that chickpeas are unrelated to “bean-based snacks.” Nevertheless, Little Chickpea’s attorneys attempted to overcome the registration refusal and were unsuccessful. In a last-ditch effort to overcome the refusal, it appears that Little Chickpea’s attorneys reached out to Gerber to obtain consent to the registration of the LITTLE BEAN mark and Gerber refused.

Willamette Week also reported that Mr. Camdem was told Gerber has discontinued the LIL’ BEANIES product line and had no intention of doing anything with it. If this is true, then Little Chickpea had a good claim for abandonment. A trademark is abandoned with the use of the mark has discontinued with no intent to resume use of the mark. Abandonment is a ground for cancellation, which would have cleared the way for Little Chickpea to obtain a federal registration for its mark without having to go through what it described as an expensive rebrand.

The old adage that an ounce of prevention is worth a pound of cure is often true for any legal issue but it is especially true in the context of trademark law. A proper and thorough trademark is essential to avoiding costly disputes and rebrands.

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.

Strength Argument Done the Right Way Wins at TTAB

Simpson Industries recently won an appeal before the Trademark Trial and Appeal Board – one of the few reversals that occurred this year – by properly making the strength argument. Because it executed the strength argument well, Simpson Industries was able to narrow the scope of rights in the cited mark, which allowed the differences in the marks to determine the likelihood of confusion test. Here’s how Simpson Industries executed the strength argument.

Simpson Industries applied to register the mark RAINFOREST NUTRITION (in standard characters, NUTRITION disclaimed) for “dietary and nutritional supplements.” The Trademark Office refused registration of this mark on the ground that it was likely to cause confusion with the prior registered mark RAINFORST ANIMALZ (in standard characters) for “nutritional supplements.” The goods were legally identical and did not contain any limitations; therefore, Simpson Industries’ only path to success was to win the similarity of the marks likelihood of confusion factor.

Simpson Industries offered 11 third-party registrations for marks containing RAINFOREST, one registration over the 10 minimum. If there was one flaw in the strength argument it was that not all of the third-party registrations identify nutritional supplements and nothing in the decision addressed the relatedness of the food and beverage products and nutritional supplements. Nevertheless, in this case, the Board gave weight to all 11 third-party registrations.

Simpson Industries also offered evidence of third-party use of the term RAINFOREST on a variety of nutritional supplements. The use evidence included not only trademark use, but also descriptive use. The descriptive use was even more persuasive because of the prior position the owner of the cited mark took during the prosecution of its application. Generally, the Trademark Office takes the position that each application must stand on its own facts and rarely relies on statements made by trademark applicants in other applications.

The 11 third-party registrations, third-party trademark use, descriptive use, and prior statements of the owner of the cited lead to the conclusion that the RAINFORST term is conceptually and commercially weak for “nutritional supplements. Because of this weakness finding, the use of NUTRITION – even though it was disclaimed – was enough to distinguish Simpson Industries mark from the cited RAINFOREST ANIMALZ mark.

Where Font Stylization Stops and Design Begins

Trademark applications for words are generally filed with a standard character drawing. A trademark registration issued with a standard character drawing extends protection in the words to all forms of stylization, size, and color. A standard character drawing does not extend protection to all possible design elements in a mark. A recent Trademark Trial and Appeal Board decision did not help to determine when font stylization stops and design begins.

Anthony Fisher filed a trademark application for bumper stickers and clothing and submitted the following drawing of his trademark:

In his application, Mr. Fisher identified the letters “VF” as the literal element of the mark and described his mark as “two fish hooks connecting in the middle to form the stylized letters ‘VF’.” Mr. Fisher’s trademark application sailed through examination by the Trademark Office and was published for opposition where it was promptly opposed by V.F. Corporation.

V.F. Corporation alleged that Mr. Fisher’s stated “VF” stylized mark was likely to cause confusion with its prior registered VF marks, two of which are for standard character drawings. V.F. Corporation’s registrations were for retail store services featuring apparel, backpacks, and outdoor gear and equipment. The Board found that Mr. Fisher’s clothing was related to V.F. Corporation’s retail store services, but not his bumper stickers. Nevertheless, the salient issue, in this case, was the similarity of the marks.

The Board gave no consideration to the words used by Mr. Fisher when preparing his trademark application. The Board said that it is not the description of the mark but the drawing that depicts the mark for which registration is sought. Against this backdrop, the Board proceeded to tell Mr. Fisher what his mark is. The Board said “we do not discern the letter ‘F’ and it is highly unlikely that prospective consumers would. In fact, consumers likely would not perceive any letters in [Mr. Fisher’s] design mark, but instead may only perceive a stylized checkmark.” As demonstrated by the Board, the question of whether something is stylization or design is subjective.

Under the circumstances, the Board telling Mr. Fisher what his mark is benefitted him, but it highlights a possibly troubling practice. The Board’s precedent is settled that it should not substitute its judgement on confusion for those parties on the firing lines in the marketplace. This rationale should extend to trademark applicants as well. The descriptions offered by the trademark applicant should be given more weight than the treatment the description received in this case.

Smith & Wesson House Mark Can’t Distinguish Shared Terms

Years ago it was a successful strategy to avoid a likelihood of confusion by adding a house mark to a proposed mark regardless of whether the shared term was conceptual weak. However, times changed and what used to be a successful strategy now only works under certain circumstances.

According to the Trademark Manual of Examining Procedure, a house mark does not identify particular goods or services, rather a house mark identifies the provider of a wide variety of goods and services. The specific goods or services are often identified by a separate trademark or service mark. Because house marks appear on a wide variety of goods and services, they generally are afforded a broader scope of protection. The theory is that the more goods or services the mark appears on or in connection with, the more exposure consumers have to the mark, and the more recognizable the mark will become.

Smith & Wesson Corp. recently, unsuccessfully attempted to revive the old add the house mark strategy. Smith & Wesson filed an application to register the mark M&P SHIELD (in standard characters) for, among other goods, “knives.” The Trademark Office refused registration of this mark on the ground that is was likely to cause confusion with the prior registered mark SHIELD also for “knives.” Because the identifications of goods descriptions were identical, the Trademark Trial and Appeal Board found that the channels of trade and classes of consumers overlapped.

When it came to the similarity of the marks, the Board stated that the addition of a house mark has been found sufficient to distinguish marks under circumstances where the appropriated matter is highly suggestive, merely descriptive, or has been frequently used or registered by others in the field for the same or related goods or services. The Board found that SHIELD is “slightly suggestive” for knives.

With respect to the frequent use or registration of the term SHIELD, the Board found that Smith & Wesson offered only one third-party registration that included the SHIELD term for a related good. This was far less than the 10 minimum the Board has required in other cases. Therefore, the Board concluded that Smith & Wesson’s inclusion of the M&P house mark was incapable of distinguishing the SHIELD term.

I Pitty the Fool Who Infringes My Trademark

One person we would never mess with is Mr. T who was the muscle for the A-Team. Leafly – a website that is an online marketplace and information source for cannabis companies – didn’t flinch when it received a demand letter from Mr. T saying its MRT listing infringes his trademark rights. In this case, Leafly may have a basis for not flinching.

Mr. T ultimately sued Leafly for trademark infringement because it lists a cannabis strain called MRT which is the acronym for Mr. Tusk on its website. The MRT flower is sold by third parties, not Leafly. Mr. T is seeking injunctive relief only because he claims any misassociation of his Mr. T mark with a cannabis company will damage his ability to license his mark to other companies.

Online retailers have consistently avoided liability for trademark infringement over the years. This trend started in 2007 when the Second Circuit Court of Appeals ruled in favor of eBay that it did not directly infringe Tiffany’s trademark rights by including listings for Tiffany products (some genuine and some counterfeit) on its website. It continued in 2010 when the Second Circuit Court of Appeals again ruled in favor of eBay that it did not contribute to the direct infringement of Tiffany branded goods. In 2014, Amazon avoided a trademark infringement lawsuit because the Court found that the third-party sellers retain full title to and ownership of the inventory sold by the third party. Based solely on the fact that Leafly is an online marketplace appears to strongly cut against Mr. T’s likelihood of success in this case.

But Mr. T faces another uphill battle when it comes to his lack of enforcement. There are several MR. T marks registered on the USPTO’s Principal Register for a variety of goods including automobile parts, restaurant services, rifle scopes, scrubber device, and handyman services. Notably absent from the list of registered MR. T marks is a registration owned by the man himself, Mr. T.

Trademark owners are not required to take on all potentially infringing uses of a mark. In fact, trademark owners need to be thoughtful when constructing an enforcement strategy. But the more identical marks a trademark owner co-exists with, the more difficult enforcement actions can become. In the case of Mr. T, Leafly should be asking why Mr. T can co-exist with these other identifying marks but not the MRT mark on its website.

Mark Similarity Lesson from Recent TTAB Decision

Mark similarity is often found when a prior registered mark is incorporated in its entirety in a mark that is subject to a pending trademark application. This likelihood of confusion refusal is not always the case even when the goods at issue are identical, which is what we saw in a recent decision from the Trademark Trial and Appeal Board. This case highlights an important lesson for trademark searchers.

Hutchinson and Stengl applied to register the following mark with the USPTO for “beer”:

The wording BREWING COMPANY GOLDEN, COLORADO was disclaimed. This meant that Hutchinson and Stengl voluntarily acknowledged that the dominant literal portion of its mark was CANNONBALL CREEK.

The Trademark Office refused registration of this mark on the ground that it was likely to cause confusion with the prior registered mark CANNONBALL DOUBLE IPA (in standard characters with DOUBLE IPA disclaimed) also for, among other goods, “beer.” The goods were legally identical with no express limitations as to channels of trade or class of consumer. There was also no evidence of conceptual weakness for the CANNONBALL word when used with beer or related goods or services. Therefore, the only likelihood of confusion factor in dispute was the similarity of the marks.

The TTAB began its decision with the tried and true principles for assessing the similarity of the marks:

  1. The similarity or dissimilarity of the marks is assessed in their entities as to appearance, sound, connotation, and commercial impression.
  2. The similarity in any one of the elements in No. 1 may be sufficient to find the marks similar.
  3. When the goods at issue are identical, the degree of similarity between the marks to find a likelihood of confusion need not be as great as where the goods are unrelated.
  4. The proper test is not a side-by-side comparison of the marks, but whether they are similar enough that persons who encounter the marks would likely assume a connection between them.
  5. While the ultimate conclusion of mark similarity must be based on the marks in their entireties, more or less weight can be given to a particular feature of the mark.
  6. Greater weight is often given to the wording in a mark that contains a design element.
  7. Less weight is often given to wording that is descriptive or generic.

The TTAB then critically analyzed Hutchinson and Stengl’s mark. It found that the word CREEK was much larger than the word CANNONBALL, which rendered the term more prominent and dominant over of the word CANNONBALL. The combination of CANNONBALL CREEK also conveyed the name of a particular waterway or stream not the ordinary meaning of the “cannonball” word; namely, “a usually round solid missile made for firing from a cannon.” And this meaning of a waterway or stream was reinforced by the wave design appearing below the word CREEK. Ultimately, the TTAB found that the dissimilarities outweighed the similarities between the marks.

The lesson from this case is that marks that appear to be unavailable may be available if strategic changes are made to the proposed name. This is where naming firms and trademark searchers that are not lawyers should recommend to their clients that they talk to an experienced trademark lawyer because this is where trademark lawyers add value.