Reinforcement that Trademark Classes are Irrelevant

"woman putting postits on a wall showing that trademark classes are irrelevant"

The Trademark Trial and Appeal Board has said before that trademark classes are irrelevant to determining likelihood of confusion. A recent decision involving the SWISS certification mark reinforces this point. Pearl 9 Group, LLC filed a trademark application to register the mark I.W. SUISSE for “clocks and watches; parts for watches; watch bands and straps; ***; timepiece dial faces, and parts for timepieces ***” in International Class 14. The Trademark Office refused registration of Pearl 9’s mark on the ground that it was likely to cause confusion with the prior registered certification mark SWISS for “horological and chronometric instruments, namely, watches, clocks and their component parts and fittings thereof” in Class A.

The Board held that the classification as a certification mark has very little effect on our determination as to whether or not there is a likelihood of confusion. Because the certification mark owner does not itself use the mark, the question of whether there is a likelihood of confusion is based on a comparison of the mark as applied to the goods or services of the certification mark users.

Using trademark classes in a trademark search only helps to narrow the universe of marks that trademark searchers need to evaluate. From there, the trademark searcher is left to sift through the results using only intuition to determine whether anyone of those marks is likely to prevent the registration of the proposed mark being searched.

And any software program that includes only the similarity of the marks and irrelevant International Class numbers yet provides a “score” for the search results begs the question of what that score represents. If all the search is telling is that there are similar marks registered with the United States Patent and Trademark Office, that information is largely unhelpful and something you can discover by yourself and for free.

And over reliance on trademark classes will result in overlooked trademarks that may be consequential marks in the likelihood of confusion analysis. That may have been the case in the Pearl 9 case. Focusing solely on International Class 14 where jewelry and watches are classified, would have resulted in missing the SWISS certification mark in Class A.

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.

Perplexing Trademark Office: Clothespins Related to Scissors

"man getting a haircut with scissors that were found to be related to clothespins"

A recent Trademark Trial and Appeal Board decision where the Board found clothespins related to scissors again demonstrates that relying on International Class numbers in a trademark search rather than prior case decisions involving the relatedness of goods factor will lead to wrong search results. Ing. Monika Norkova filed a request for extension of protection of her International Registration to the United States for the mark ZIPZAP (in standard characters) for “drying racks for laundry; clothes[pins]” in International Class 12. The Trademark Office refused registration of this mark.

The Trademark Office argued that Ms. Norkova’s ZIPZAP mark was likely to cause confusion with a prior registered mark ZIPZAP (also in standard characters) for – are you ready – “scissors, in particular hair cutting scissors, manicure scissors, sheet-metal scissors, poultry shears, cable scissors; tree pruning shears; nippers, nail nippers, cuticle nippers; files; utility knives and pliers” in International Class 8.  While it is true that when the marks at issue are identical, less similarity is necessary in order for a likelihood of confusion to exist, one would like to think that hair cutting scissors or tree pruning shears are sufficiently different from drying racks and clothespins that confusion is unlikely.

Despite citing the rule that the words “in particular” clarify and narrow overly broad goods or services descriptions, none of the used based evidence offered by the Trademark Office involve any of the specific types of goods identified in the cited registration. Nevertheless, the Board found that because some scissors are marketed under the same brand as a laundry drying rack, then all scissors must be related in the minds of consumers to laundry drying racks and clothespins.

And what’s even more important is that it does not matter if you agree with the decision or not. In fact, we guess that most people reading this post disagree with the decision. But it’s a decision that is not going to be overturned and that could produce a negative outcome for a naming decision if you are focused on International Class Numbers and not prior case decisions involving relatedness of goods or services findings. In fact, the USPTO does not identify International Class 12 as a Coordinated Class to International Class 8.

Toys R Us Comeback Cites Brands as Valuable Collateral

"Toys R Us storefront"

In September 2017, Toys R Us representatives announced that the company was filing for bankruptcy protection. The company closed and sold all 735 stores in the United States and shutdown its website. What remained was to auction off its intellectual property. But that plan was abruptly put to an end on Monday when the controlling lenders ended the auction.

The lenders determined that any bids they would receive in the auction for – primarily – the brands, would be significantly less than the value they could create by leveraging the brands themselves. The reorganization plan contemplates a new Toys R Us and Babies R Us branding company that will maintain its global licenses and can invent in or create new, domestic retail operating businesses.

This is a great story about the power and value a brand possesses. Too often, trademarks take a back seat to patents and copyrights. Businesses, especially startups, see value in the patent and not the trademark. Patents are not appropriate for every type of business, but every business has a brand. Every business has something consumers rely on to distinguish it from other goods or services in the marketplace.

This is why selecting a strong trademark to begin with is so important, and why working with a naming company could be some of the best money a business can spend. It is also why making sure the name you choose is protectable by doing a trademark search is so important.

Finally, this is why protecting the scope of your trademark rights is important. The more capable a trademark is of identifying the owner as the source of goods and services, the more valuable it becomes. Having a thoughtful enforcement strategy will directly increase in the value of a brand. The money spent should be thought of as an investment instead of a cost.

TACOLAND Live Music Concerts Are Related to Restaurants

"TACOLAND sign where live music was found to be related to restaurants"

If you read enough decisions from the Trademark Trial and Appeal Board involving restaurant services, you would get the impression that restaurants do everything. A recent decision from the TTAB stayed with this trend. TacoLand Holdings, LLC d/b/a TacoLand (standard characters) filed a service mark application for TACOLAND in connection with “entertainment, namely, live music concerts” in International Class 41 and “bar and cocktail lounge services” in International Class 43.

The Trademark Office refused registration of the TACOLAND mark based on a prior registered mark for TACO TIERRA & Design for “restaurant services ” in International Class 43. TACO TIERRA is a traditional Mexican-American restaurant and does not advertise any live entertainment.

The Trademark Office offered three, third-party websites for establishments that served food and advertised live music, and several use-based third-party registrations for live music entertainment and restaurant services. In all the examples offered by the Trademark Office, the live musical performances are ancillary to the restaurant aspect of the establishments. In the case of TACOLAND, the live musical entertainment is the primary business and any food service is ancillary to this main business. Nevertheless, because the Trademark Office does not consider the marketplace reality, it found that the services at issue were related.

Which raises two important issues. First, if you were focusing only on Class Numbers when doing a trademark search, you would have missed that live musical concerts are related to restaurants. This why focusing on related goods instead of class numbers is so critical when doing a trademark search.

Second, when dealing with goods or services that could be offered at a restaurant, it is critical to focus a trademark search or response to an office action on what the restaurants are known for. If the evidence shows that something is merely offered at the restaurant, that needs to be your focal point because that is where you will have the best chance at overcoming a refusal.

With the services being related and TIERRA being the Spanish word for LAND, TacoLand had to make the conceptual weakness argument. Unfortunately for TacoLand, it was only capable of producing three TACO-formative third-party registrations, which is seven less than the magic number 10 we believe needs to be hit before the Board will conclude a crowded field exists.

Dunkin’ Donuts Drops DONUTS Says Call Us Dunkin

"Dunkin Donuts restaurant with new Dunkin logo"

On the heels of the Weight Watchers’ rebrand to the acronym WW, Dunkin’ Donuts announced that it is dropping the term DONUTS from its mark. Starting in January, the doughnut shop will roll out a new logo, store signage, and advertising, but will keep its orange and pink color scheme. But the change is not sitting well with all Dunkin patrons who have a connection to the misspelled DONUT, which is created when the brand launched in 1950.

Ordinarily, deleting non-distinct matter from a composite trademark does not affect the overall commercial impression of the mark. In fact, the Trademark Manual of Examining Procedures states that non-distinct matter should be excluded from a trademark drawing when an application is filed. But something is being lost in the DUNKIN’ DONUTS case because over the years consumers have come to recognize the misspelled word as indicating Dunkin’ Donuts as the source of goods or services displaying that term. And consumers are capable of identifying the same source through more than one trademark. So it seems like Dunkin’ Donuts is losing something by dropping the misspelled DONUTS from its mark.

Dunkin’ Donuts said the reason for dropping DONUTS is to highlight a wider array of menu items and appear to a younger generation. Vox reported what it perceives as a trend for established brands to rebrand to something more “vague.” In the case of an established brand dropping a non-distinctive term like in the case of JO-ANN FABRICS rebranding to just JOANN, the mark is not getting more vague. It retains the distinctive portion that consumers rely on to identify the source of the goods or services.

A trademark is not supposed to say everything about a company’s business. That is what advertising copy is for. The trademark is supposed to represent the reputation of the company, and serve as an indicator of the quality of the goods or services. In other words, when consumers see DUNKIN’ they don’t need to immediately know that the company sells doughnuts, coffee, sandwiches, salads, etc. When they see the term DUNKIN on, for example, a rice cake, they will presume the rice cake is delicious because of their positive experience with the DUNKIN brand.

Does an Acronym Make a Good Name and Trademark

"Weight Watchers' new logo the acronym WW Wellness that Works"

Weight Watchers announced its rebranding to WW and the launch of a new tagline Wellness that Works, which set off the debate about whether this was a wise move. Weight Watchers was founded in 1963 and currently operates in about 30 countries around the world. The company’s mission was to help participants lose weight by forming helpful habits, eating smarter, getting more exercise, and providing support.

In March of this year, Weight Watchers announced that it intended to enter the competitive meal kit market with the likes of Blue Apron. It was reported that this step was part of CEO Mindy Grossman’s vision of rebranding the company as healthy lifestyle brand. The move to WW that stands for Wellness that Works instead of Weight Watchers is another move in the rebranding plan. But if the decision was made to move entirely away from the brand that has been used for over 50 years, moving to an acronym may not have been the best choice.

Whether you are moving to a similar acronym or an entirely new word or phrase, you will have to spend some significant money to educate the market about your new name. Distinctiveness is an important characteristic of any new name. In the naming context, distinctiveness lets you stand out from the crowd. And in the legal context, distinctiveness provides broader protectable rights.

Accordingly Acronym Finder, there are 81 different WW acronyms. There are also 202 registered trademarks for WW in the United States Patent and Trademark Office database. Not all of these registrations are in the healthy lifestyle space, but it demonstrates that consumers are exposed to a lot of WW acronyms. As a new acronym just starting out, that mean a lot of effort educate the market what your WW stands for.

Acronyms also do not solve conflicts with prior registered marks, which could be increased because of the sheer number of acronyms that are registered. Time will tell whether it was a smart move to walk away from 50 years of prior use of Weight Watchers in favor a new WW acronym or if it could have been possible to create new brand messaging using the well-known Weight Watchers mark.

Trademark Office Continues Fight Over FUCT Mark

"FUCT logo on a hat is scandalous according to the Trademark Office"

The United States Trademark Office is fighting for its decision to refuse registration of the mark FUCT for “Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps; Children’s and infant’s apparel, namely, jumpers, overall sleepwear, pajamas, rompers and one-piece garments” on the ground that the mark is vulgar; thus, scandalous. Recently, the USPTO filed a Petition for Writ of Certiorari with the United States Supreme Court asking that it review the decision of the United States Court of Appeals for the Federal Circuit that held registration refusals on the ground of scandalousness violates the free speech right of the First Amendment to the U.S. Constitution.

We previously discussed the timing of the recent decisions involving Section 2(a) of the Trademark Act and the impact Federal Circuit’s decision would have on trademark searching if the decision stands. And the reason we discussed in that prior post is the argument the Trademark Office is making in its Petition to the Supreme Court. Section 2(a) will not prevent trademark owners from using immoral or scandalous terms as trademarks, it will simply prevent the trademark owner from receiving certain benefits from the Trademark Office that are afforded to registered trademarks.

When the In re Tam decision resulted in disparaging words no longer being off-limits for trademark registrations, we did not see a rash of new applications for disparaging marks. Similarly, it seems like the only person who took advantage of the Federal Circuit’s decision on immoral and scandalous terms was Erik Brunetti himself who filed five new trademark applications for or containing FUCT.

It is hard to imagine that the Supreme Court is going to make a meaningful distinction between disparaging terms and immoral or scandalous terms. Nevertheless, if the Trademark Office is successful, the concern about having to consider scandalous or immoral terms in a trademark search will remain.

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.

Companies Looking for Efficiency from Advertising Agencies

"WPP advertising agencies name plate"

WPP, the world’s largest advertising agency, reported its second-quarter results that showed weak performance in North America. The Wall Street Journal reported that “[l]ike-for-like net sales – a figure closely watched by analysts to measure the company’s underlying performance – dropped 3.3% in North America.” Some of this decline was attributed to advertisers paying less on traditional ad campaigns, but it was also attributed to advertisers demanding a wider suite of services including new product development. It goes without saying that new project development necessitates the creation of new names.

Not only are companies requirements from firms changing, but the manner in which they pay for those services is also changing. No longer are companies paying large retainers to have an agency of record. Instead, companies now are paying by the project. Small to mid-size companies have likely been paying by the project for some time, but what this article shows is that agencies need to become more efficient to remain profitable as the pricing pressure from companies intensifies.

This problem is not unique to the advertising industry. All service based businesses (e.g., law firms, accounting firms, etc.) are feeling the pricing pressure from companies, and the demands for efficiency.

The way to survive the pricing pressures and to demonstrate a commitment to efficiency is to be an early adopter and user of technology when it makes sense to do so. There are some tasks that are ripe for technological intervention. One of those tasks for agencies is the trademark search function. This is not a task that an agency should be spending its time doing when there are tools available that can do it more quickly and more cost effectively.

BOB is a tool that not only can save agencies time and money, but also demonstrate a commitment to technology to prospective clients to help develop more business. BOB’s patent pending, multi-name search functionality accomplishes this and is easy to use. Just complete the Excel worksheet that is available on the BOB website with the marks you want to search. Select the goods or services you want to search the list of marks in connection with, and then wait for the search results to be delivered to your in-box. You can watch the multi-name search work by clicking HERE.