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.

Loosened Exceptional Case Standard Keeps Expanding

In 2014, the United States Supreme Court loosened the exceptional case standard in patent infringement cases. Because the Patent Act and Trademark Act are similar, often times a decision involving one of these Acts will influence the jurisprudence of the other Act. The loosening of the exceptional case standard is one of those decisions.

It did not take long for the Supreme Court’s decision in Octane Fitness v. Icon Health to start to influence trademark infringement cases. The Court of Appeals for the Sixth Judicial Circuit was the first to apply the loosened exceptional case standard to trademark infringement cases. Since then, the Third, Fourth, Fifth, Ninth, and most recently the Second Circuits along with a smattering of District Courts in the other Judicial Circuits have all held that the Supreme Court’s Octane Fitness decision applies to trademark infringement cases.

The most recent application of the Octane Fitness decision came from the Second Circuit Court of Appeals. 4 Pillar Dynasty LLC and Reflex Performance Resources Inc. (collectively the “Plaintiffs”) sued New York & Company, Inc. and New York & Company Stores, Inc. (collectively the “Defendants”) for trademark infringement. The District Court for the Southern District of New York initially awarded the Plaintiff treble damages in the amount of about $5.6M. However, after post-trial motions, the Court reconsidered its trebling decision and changed the award to the stipulated amount of the Defendants profits, which was $1.8M. The Court did award Plaintiffs its attorneys’ fees.

The Second Circuit Court of Appeals reversed the District Court’s decision not to treble the monetary damage award because the Court failed to applied the loosened exceptional case standard from Octane Fitness. The Octane Fitness standard requires a court to consider the totality of the circumstances in deciding whether a case is exceptional.

The totality of the circumstances standard considers not only the respective merits of the parties cases but also the parties conduct during and even leading up to the commencement of the case. While it is still unlikely that failing to conduct a trademark search will alone warrant a finding that a case is exceptional, it certainly will be a consideration.

Number 1 Misconception When Searching Trademarks

We talk to a number of naming firms and serial entrepreneurs who conduct their own preliminary trademark searchers each year. And every year we observe the same misconception. Non-lawyers place far too much emphasis on International Class Numbers and ignore the relatedness of the goods. This is also the flaw in every trademark search tool available in the market, with the exception of BOB.

The reason this misconception exists is due to the lack of education on this issue because the legal precedent on this subject is legion. That’s why we focus on the relatedness of goods factor in a significant number of our posts. Our hope is to spread the word and educate non-lawyers about this crucially important factor so that trademark searching becomes more effective. More effective trademark searching should lead to fewer trademark disputes.

The Trademark Trial and Appeal Board recently issued a decision highlighting again the importance of evaluating the relatedness of goods factor and not International Class Numbers. Ernest Everett James filed a trademark application to register the mark LIQUOR SLINGER DISTILLING (standard characters with LIQUOR and DISTILLING disclaimed) for “liquor” in International Class 33. The Trademark Office refused registration of Mr. James’s mark on the ground that it was likely to cause confusion with the prior registered mark SLINGER for “drinking glasses; shot classes” in International Class 21.

The Board found there is an inherent, complementary relationship between the parties’ goods: liquor is served in and drunk from drinking glasses and shot glasses. Indeed, a shot glass is defined as “[a] small glass used for serving liquor.” The Trademark Office also offered Internet evidence showing it is common for distilleries to sell branded glassware. All of this evidence supported the Trademark Office’s argument, which the Board agreed with, that liquor and glassware are related goods.

A person searching trademarks for a liquor brand that focused too heavily or entirely on International Class 33 where the product is classified is sure to a miss a problematic mark in another International Class because of the relatedness of goods factor.

Lessons from a Rare Trademark Refusal Reversal

The Trademark Trial and Appeal Board issues a trademark refusal reversal only about 10% of the time. So when a trademark refusal reversal occurs it is worth spending some time figuring out what lead to the reversal.

Soletanche Freyssinet applied to register the mark CMC (in standard characters) for “non-metallic underground columns for land stabilization and reinforcement that are fabricated and installed on-site.” The CMC application began with a broader goods description but was narrowed to the current description following a first Office Action. Two of the descriptions included in the original description were “reinforcement rods not of metal” and “non-metallic materials for building.”

The Trademark Office refused registration of Soletanche Freyssinet’s CMC mark based on a prior registered, identical mark CMC (in standard characters) for “full line of metals in sheet, rod, bar, angle, round, beam, castellated beam, cellular beam, flat beam, joist, strip, tube, plate, billet, square, and wire, form.” There were no limitations in the cited CMC mark and Soletanche Freyssinet did not petition to partially cancel the cited CMC mark to have any limitations imposed on the prior registration.

Instead, Soletanche Freyssinet focused on narrowing its identification to the true nature of its goods. In doing so, it introduced a level technicality that would allow the Board to consider evidence instead of relying solely on the words in the description of the goods to decide the relatedness of goods factor. Soletanche Freyssinet offered the declaration of one of its executives who explained the nature of its goods and how they differed from those goods offered under the cited CMC mark.

The Trademark Office did not offer any evidence only argument and speculation. It appears that the Trademark Office continued to argue the descriptions that Soletanche Freyssinet deleted from its application and not the amended description. For example, the Trademark Trial and Appeal Board quickly dismissed the argument the rods identified by the cited CMC mark could be used for stabilization just like Soletanche Freyssinet’s non-metallic rods. In reality, the “columns” identified in Soletanche Freyssinet’s application could have been made of non-metallic rods, but the Trademark Office did not offer evidence to establish this fact.

The Trademark Office offered evidence that in a general construction context, beams and columns are used to support other structures. But because Soletanche Freyssinet’s description identified that its columns were “fabricated and installed on-site” the general construction context was irrelevant. The Trademark Trial and Appeal Board required the Trademark Office to offer evidence in the relevant context.

Starting broad is still a good filing strategy, but voluntarily narrowing the description if a registration refusal issues is important. When making the amendment, introducing where the goods are sold or services are performed can be helpful. Finally, support the amendment with evidence. The Board, in this case, seemed to look at the declaration from Soletanche Freyssinet to understand why the particular words were used in the amended description.

Louis Vuitton Get’s It Half Right and Loses APOGEE Appeal

"Louis Vuitton store in Paris, France"

Louis Vuitton Malletier appears to employ a common trademark application filing strategy, which is to prepare the trademark application with broad goods descriptions. From there the broad description can be narrowed in an attempt to avoid a registration refusal should the Trademark Office issue an office action. We dare to say that most trademark applicants follow this filing strategy, which is why trademark searches must use broad terms when conducting their trademark searches. But narrowing a goods description alone is no substitute for a proper trademark search and trademark clearance opinion. Louis Vuitton learned this lesson the hard way in a recent case.

Louis Vuitton applied to register the mark APOGEE (in standard characters) for, among other goods, perfumes. The Trademark Office refused registration of this mark on the ground that it was likely to cause confusion with a prior registered mark APHOGEE (in standard characters) for “Hair care lotions; hair conditioners; hair creams; hair mousse; hair oils; hair shampoo; hair sprays; hair styling preparations; non-medicated hair treatment preparations for cosmetic purposes; non-medicated preparations all for the care of skin, hair, and scalp; hair moisturizers.”

Realizing that its description was too broad, Louis Vuitton voluntarily amended its description to narrow the channels of trade and classes of consumers to “non-professional use and sold only within Louis Vuitton Malletier stores, on Louis Vuitton Malletier’s website, and within Louis Vuitton Malletier’s store-within-store partnerships with high-end retail stores within Louis Vuitton Malletier’s exclusive distributor network.” Voluntarily narrowing its description was a must because the evidence of legion that it is common for perfume brands to also offer shampoos and other personal products under the same mark. However, Louis Vuitton’s choice of limitation begs the question of whether pursuing the application as hard as it did was worth it.

The limitation made by Louis Vuitton means that its rights in the APOGEE mark would exist only in the channels where only its products are sold. There is no opportunity for another company’s branded product to appear at the point of sale. Strength is not transferable from one well-known brand to another. And at least according to the Amazon reviews, the APHOGEE brand receives positive reviews. Difficult to see where Louis Vuitton’s hard would emanate from in this case. So while recognizing that an amendment is necessary, it is equally important to ensure that the proposed amendment does not render the resulting registration borderline worthless.

Despite the detailed description volunteered by Louis Vuitton, the company did not seek a corresponding amendment in the APHOGEE registration. Accordingly, the APHOGEE registration remained broad enough to include stores and channels where only Louis Vuitton goods are sold. Moreover, Louis Vuitton did not offer any evidence that APHOGEE was weak in its entirety or partially. Accordingly, the Trademark Trial and Appeal Board affirmed the registration refusal.

Minimum Third-Party Registration Trend Bites The Trademark Office

"ferret with mouth open symbolic of third-party registration trend biting trademark office"

It’s not often, but sometimes the Trademark Office relies on the trademark weakness argument to support a decision to refuse registration of a mark. In 2018, we talked about the emergence of a trend requiring a trademark applicant to offer at least 10 relevant, third-party registrations in order to demonstrate conceptual weakness. This trend carried over to 2019 and for the first time, we saw the trend applied to the Trademark Office.

Morgenstern Center for Orbital and Facial Plastic Surgery Inc. – that’s a mouthful so we will just use “Applicant” going forward – applied to register the mark MAIN LINE REFRESH (“MAIN LINE” disclaimed) for “medical consultations; medical services; cosmetic and plastic surgery.” The Trademark Office refused registration of Applicant’s mark on the ground that it was likely to cause confusion with three prior registered marks owned by two different entities:

(1) MAIN LINE HEALTH (standard characters, “HEALTH” disclaimed) for, among other services, “medical services”;

(2) MAIN LINE HEALTH & Design (“HEALTH” disclaimed) for, among other services, “medical services”; and

(3) MAIN LINE PLATIC SURGERY & Design for, among other services, “cosmetic and plastic surgery.”

Neither Applicant’s mark nor any of the cited marks contained limitations in the descriptions of the services. Accordingly, the services were deemed to be legally related, traveled in the same channels of trade, and appealed to all classes of consumers. It also meant that less similarity between the marks was necessary for a likelihood of confusion to exist.

Applicant successfully demonstrated that MAIN LINE was a weak term. Not only is the term geographically descriptive of a place in Pennsylvania, but it is also used by 110 medical clinics, physicians, and surgeons located in Pennsylvania. Accordingly, Applicant argued that the addition of the suggestive term REFRESH was sufficient to distinguish its MAIN LINE mark from the other MAIN LINE marks.

The Trademark Office attempted to demonstrate that REFRESH was conceptually weak and even descriptive of Applicant’s services by offered seven third-party registrations. This showing was three less than what the Trademark Trial and Appeal Board required in prior cases, so the Board held that REFRESH was suggestive of Applicant’s services. Because of this finding, the Board reversed the Trademark Office’s registration refusal.

Three Tips for Reviewing Search Results with Broad Descriptions

"man in forest holding compass like navigating search results filled with broad descriptions"

The USPTO’s Acceptable Identifications Manual has been a blessing and a curse. It is a blessing because trademark applicants can find pre-approved goods or services description that accurately covers their actual goods or services, which eliminates one potential Office Action (i.e., registration refusal) the Trademark Office could issue against a pending trademark application. However, the Trademark Office has pre-approved some very broad descriptions.

In the software context, two of the broad descriptions are “computer software consultancy” and “downloadable software development kits (SDK).” These descriptions cover many fields for and functionality of the actual software. In the advertising context, there is a description of “advertising services.” This too covers a lot of ground. Nevertheless, trademark applicants routinely use these descriptions. In fact, a majority of trademark attorneys start with a pre-approved description and resort to crafting a manual description only if no legitimate option from the Acceptable Identifications Manual exists.

As trademark searchers, we know that the Trademark Office’s likelihood of confusion analysis is limited to the goods and services descriptions used in the application. And we also know that we need to use broad descriptions when we search even though this strategy may return a significant number of results to review. Here are three tips for reviewing results that include broad descriptions like “advertising services”:

  1. Look at the marks first. If the marks are similar, then look at the goods or services descriptions.
  2. If the goods or services descriptions are broad, then search the Internet to determine what goods or services the trademark owner is actually offering.
  3. If the goods or services the trademark owner is actually offering are similar to what you or your client is offering, put that mark in the “no” column. However, if the actual goods or services are different than what you or your client is offering, then put that mark in the “yes” column with an asterisk. The caveat is that the broad description used by the prior trademark owner may illicit an Office Action from the Trademark Office, but it may be overcome with a petition for partial cancellation to narrow the broad description to the marketplace reality.

Service Mark Strength Can’t Be Established By A Strong Trademark

"orange grove trees where Sunkist has strong trademark rights can't establish service mark strength"

Trademark strength for likelihood of confusion purposes is often misunderstood for fame in the context of dilution. The two concepts are different with fame for dilution being difficult to achieve. The common mistake service mark owners make is to assume that because their rights are strong for particular goods or services that this strength transfers to other goods or services. Trademark strength in the likelihood of confusion context does not transfer this way, which is a lesson Sunkist Growers, Inc. learned too late.

Sunkissed Families sought to register the service mark SUNKISSED FAMILIES (in standard characters with FAMILIES disclaimed) for “information in the field of parenting concerning the health of children” in International Class 44. The Trademark Office approved the mark for publication and Sunkist Growers, Inc. opposed.

Sunkist Growers plead numerous registrations for marks containing SUNKIST in connection with a wide variety of goods and services. However, because Sunkist Growers did not plead a family of SUNKIST marks, the Board focused on the registration with the most relevant description; namely, SUNKIST KIDS (Stylized) for “education and entertainment services, namely, providing a website featuring games, quizzes, experiments, educational lesson plans for teachers and educators, and related multimedia materials all in the field of food, health, and diet for the benefit of children” in Class 41. All trademark searchers should note that the Board looked for related services descriptions not overlapping International Class numbers.

Sunkist Growers argued that its mark was commercially strong entitling it to a broad scope of rights. The Board found that while Sunkist Growers provided evidence of its strength in the fruit field it provided no evidence of the strength of the SUNKIST KIDS mark in the education and entertainment services field. Therefore, the Board held that the SUNKIST KIDS mark was entitled to a normal scope of protection afforded to inherently distinctive marks. Sunkissed Families was only able to must 9 instances of third-party use of the SUNKIST mark, which was less than the 10 third-party registrations or use needed to establish conceptual weakness.

Abusive Trademark Applications Muddy the USPTO Database

Andrei lancu – the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office – recently testified before a Congressional oversight committee that he could use help tackling the problem of abusive trademark applications. From 2013 to 2018, the USPTO reported an 1100% increase in trademark applications from China. The problem, however, with foreign applications is not just with China.

The problem with foreign applications stems from the fact that trademark applications in a foreign applicant’s native country are filed differently than in the U.S. Most countries do not require proof of use before issuing a registration, and some countries will let the applicant apply for every good or service in a particular International Class even if the applied-for mark will not be used with the vast majority of those goods or services.

Given the foreign applicant’s experience in their native country, the problem in the U.S. becomes obvious. Foreign applicant’s file U.S. trademark applications like they file trademark applications in their native country. The USPTO does not currently require a U.S. licensed attorney to file the applications for the foreign applicant. Accordingly, U.S. trademark applications filed by foreign applicants contain broad descriptions of goods that will never be used with the mark.

These foreign applications can cause all sorts of havoc for trademark searchers because of the Trademark Office’s presumptions. When goods or services descriptions are unrestricted the Trademark Office assumes the description covers all goods of a similar nature, travel in all channels of trade, and appeal to all classes of consumers. When a trademark searcher encounters a broad description with a similar mark, you have to assume it could be cited against the registration of your proposed mark. Then you are left with deciding how to respond to the issue. In the case of a foreign applicant, the likely response is a petition to cancel either on the ground of fraud or void ab initio.

Trademark owners should not have to incur this expense. Foreign applicant’s should ensure their applications comply with U.S. filing requirements. Director lancu testified that the agency has ramped up training for trademark examiners to them help spot troublesome applications, escalated a process to cancel fraudulent marks, and started piloting software that can help detect images in applications that have been tampered with on Photoshop. The agency is also considering requiring all foreign applicants to be represented by a licensed U.S. attorney.

The Board Throws Another Curveball on the Strength Factor

"baseball pitcher throwing a curveball like the Board recently did"

The strength factor in the likelihood of confusion analysis is very important, and it’s not easy to establish either way. The strength analysis becomes even more difficult when the Trademark Trial and Appeal Board throws curveballs.

Friedman and Wieder Enterprises Inc. applied to register the mark HULA DELIGHTS (in standard characters) for “gift baskets featuring processed nuts.” The Trademark Office refused registration of the HULA DELIGHTS mark based on a prior registered mark HULA PRINCESS for “shelled nuts and roasted nuts.”

Friedman and Wieder Enterprises attempted to make the weakness argument with respect to the term HULA. In support of its weakness argument, Friedman and Wieder Enterprises submitted 26 third-party registrations for marks containing the HULA word and identifying some type of food product. The applicant was on the right track exceeding the minimum number of third-party registrations generally required to make the weakness argument.

However, Friedman and Wieder Enterprises made the mistake of assuming all food is related. Of the 26 third-party registrations offered, none identified nuts or even gift baskets with nuts. And Friedman and Wieder Enterprises did not offer any evidence or legal precedent to demonstrate that any of the food identified by the third-party registrations was related to nuts. Therefore, despite offering 26 third-party registrations, Friedman and Wieder Enterprises effectively had 0 third-party registrations supporting its weakness argument.

Nevertheless, the Board concluded that even though HULA is arbitrary when applied to shelled and roasted nuts, and there is no evidence of third-party use, there is evidence of third-party registrations for similar marks in connection with a variety of food products. Therefore, the HULA PRINCESS mark was entitled to a narrower scope of protection than what inherently distinctive marks normally enjoy.

Huh? The Board just finished concluding that the 26 third-party registrations were given little probative value. The moral of this story is that any similar mark for a good or service in the same broad category is enough to establish the weakness of a term or mark.

To try and make sense of this case you could chalk it up to simply a bad decision. The problem is that the Board does not reverse itself. So this is a decision that future Examining Attorneys will cite when the situation suits them, and attorneys in inter partes proceedings will cite when the situation suits them. What this case highlights is the importance of starting any legal research with the United States Court of Appeals for the Federal Circuit, and then working your way to the TTAB precedent if necessary.