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.
The strength analysis trend of a 10 third-party registration minimum to establish the conceptual weakness of a trademark rolls on. In the most recent Trademark Trial and Appeal Board case, seven third-party registrations were insufficient, and so were the statements of one trademark owner.
Shin-Kyu Choi applied to register the mark PRINCE KONG (in standard characters) for a variety of toys, games, sporting goods, and sporting good equipment. The Trademark Office refused registration of the PRINCE KONG mark on the ground that it was likely to cause confusion with two prior registered marks for KING KONG (stylized) in connection with toys, games, sporting goods, and sporting good equipment. Because Shin-Kyu Choi did not attempt to narrow the descriptions in the PRINCE KONG application or the KING KONG registrations, the Board concluded that the goods at issue were legally related.
With the goods at issue legally related, Applicant’s primary argument to focus on the strength analysis; namely, that the KING KONG registrations were conceptually weak and entitled to a narrow scope of rights. To support this argument Shin-Kyu Choi offered seven third-party registrations for KING KONG or contained the KONG term. There were issues with the relevance of the third-party registrations offered by Shin-Kyu Choi but the Board found that even giving the Applicant the benefit of the doubt, seven third-party registrations were too few to establish conceptual weakness.
Shin-Kyu Choi also offered the prior statements of one KING KONG trademark owner where during the prosecution of the application the trademark owner made the statement that KING KONG was a weak mark. The Board stated that a trademark owner’s contrary position during the prosecution of the application cannot substitute for the Board’s reaching its own conclusion on the record before it. The Board went on to say that such prior statements may be received in evidence “as merely illuminative of shade and tone in the total picture confronting the decision maker.”
This is an interesting position taken by the Board that prior statements are not given more weight. The second rule in the Trademark Trial and Appeal Board Manual of Procedure says that the rules of evidence for proceedings before the Board are the Federal Rules of Evidence. Federal Rule of Evidence 804 governs statements against interest, which is a statement statement made by a person which places them in a less advantageous position than if they had not made the statement and is as a consequence deemed credible as evidence. Finally, the Board’s precedent is clear that the Trademark Office’s opinion for what theoretically is happening in the marketplace should not displace the opinion of those in the marketplace.
Trademark attorneys are generally very careful about the positions are taken during the prosecution of an application for this very reason. And we should want trademark applicants to have consistent positions. Facts and circumstances change all the time when it comes to analyzing a trademark, but the burden should be on the party to demonstrate the change in circumstances, not that the Board simply gives prior statements little weight even in an ex parte situation.