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.

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.

Visual Similarity Sinks SEXIFIT Trademark Application

"Sexifit logo refused primarily because of visual similarity"

SEXIFIT is the name of a workout program primarily directed at women that focuses on strength and core. The workout was developed by a former NFL and NBA dancer. The name is a composite word comprised of a spelling variation of SEXY (i.e., SEXI) and FIT to form the unitary mark SEXIFIT. Unfortunately, the Board’s primary focus on visual similarity would lead to the downfall of a trademark application that included this term.

Procheer Fitness and Dance filed an application to register the mark THE OFFICIAL SEXIFIT & Design mark in connection with “providing fitness instruction services in the field of dance, and physical fitness.” The United States Patent and Trademark Office examined the application and finding no likelihood of confusion issue, published the mark for opposition.

During the 30 day opposition period, ICON Health & Fitness, Inc. opposed the registration of Procheer’s mark alleging it was likely to cause confusion with its prior registrations for IFIT. ICON Health & Fitness owns several fitness brands: Nordictrack, Freemotion, Proform, and iFit. The iFit brand is a mobile application combined with a virtual personal trainer. Although in the fitness or exercise field, a fitness class is different than personal training and definitely appeal to different classes of consumers.

Nevertheless, none of these limitations appeared in THE OFFICIAL SEXIFIT & Design application nor in any of the IFIT registrations. Accordingly, because the Trademark Trial and Appeal Board was forced to compare fitness and exercise with fitness and exercise, it had to conclude the services at issue were related. However, what was abnormal was the Board conclusion that ICON’s IFIT mark was famous for fitness instruction services when all the evidence presented demonstrated that IFIT may be famous for fitness equipment. Fame is not transferable this way.

When it came to the similarity of the marks, the Board gave no consideration to the difference in meaning between the THE OFFICIAL SEXIFIT & Design mark and IFIT mark. Likewise, it gave no consideration to the phonetic dissimilarity between SEXIFIT and IFIT. For trademark searchers, this is an example that visual similarity between two marks is generally the most important consideration when evaluating two marks.

The Board also ignored the design elements in the SEXIFIT & Design mark stating that the literal element is the most important because consumers use words to order and refer to goods and services. Focusing on the literal portion of the mark, the Board found that ICON’s entire IFIT mark was incorporated into the SEXIFIT portion of Procheer’s mark. This is another example for trademark searchers to pay attention to. If a prior registered mark is subsumed in its entirety in the mark you are searching and you can’t find dilution or have credible argument about the unrelatedness of the goods or services at issue, then the mark likely is unavailable.

Accordingly, primarily focusing on visual similarity, the Board granted ICON’s opposition and denied registration of Procheer’s THE OFFICIAL SEXIFIT & Design mark.

Lesson on Distinguishing Identical Words With Designs

"Abby hippopotamus incapable of distinguishing identical words"

It is a well settled principle that in the case of composite marks containing both words and a design, the verbal portion of the mark is the one most likely to indicate the origin of the goods. But that does not mean that a design is incapable of distinguishing two trademarks that use identical words. Whether the capability exists depends on how the design is used.

ChuChu TV Studios a/k/a ChuChu TV filed an application register the mark ABBY and a design of a hippopotamus in connection with various clothing items and plush toys. The Trademark Office refused registration of ChuChu TV’s mark on the ground that it was likely to cause confusion with the prior registered mark ABBY (in standard characters) for a variety of dolls. The Trademark Office found that dolls and plush toys are related, much like it found plush toys and toy figures were related about four months ago.

Despite the relatedness of the goods, ChuChu TV argued that its hippopotamus design that dominated the word ABBY by a large margin was sufficient to distinguish its mark from the prior registration for just the word. Unfortunately, the Board disagreed.

For a design to distinguish the use of identical words, it is helpful that the words are difficult to distinguish from the design. In such a case, the design is more likely to be perceived by consumers as dominating the words. In ChuChu TV’s case, the ABBY term was clearly separate from the hippopotamus design. In fact, the term ABBY appeared directly below the design.

As trademark searchers it is important to understand when a design is capable of distinguishing the use of two identical words. When reviewing trademark search results, we may be able to justify recommending to a client an otherwise problematic word mark.

Similar Trademarks Matter In The Dilution Analysis

"diamond ring in a silver setting demonstrates similar trademarks in dilution analysis"

The dilution analysis requires evaluating  search results for more than just trademarks sharing a similar element. It requires finding similar trademarks. This issue was on display in a recent Trademark Trial and Appeal Board decision.

Don Vintache Inc. filed a trademark application to register the mark DIAMONDS ON THE ROCKS (in standard characters) for “jewelry, namely, diamond jewelry.” The Trademark Office refused registration of Don Vintache’s mark on the ground that it was likely to cause confusion with the prior registered mark SILVER ON THE ROCKS (in standard characters) for “jewelry made in whole or significant part of silver.”

It was easy for the Board to find that the goods at issue were related. “Diamond jewelry” was broad enough to include silver settings. When it came to the similarity of the marks, the Board found, without identifying much, if any, support, that ON THE ROCKS was a unitary phrase. A unitary phrase has observable characteristics that render the elements inseparable. This finding would prove to be the downfall for Don Vintache’s dilution argument.

Don Vintache identified several third-party registrations that contained the term ROCKS for various jewelry items. However, the Board found that in all the examples offered, the meaning of “rocks” was different from the meaning of “on the rocks.” The clear meaning in the third-party registrations was “to be extremely enjoyable, pleasing, or effective.” The meaning of “on the rocks” is “served undiluted and with ice cubes; experiencing difficulties and likely to fail.” These different meanings rendered the third-party registrations and unitary phrase ON THE ROCKS dissimilar. Therefore, because the dilution analysis requires similar marks the Board gave no weight to the third-party registrations offered by Don Vintache.

In addition to the third-party registrations, Don Vintache offered five third-party online jewelry store websites that use ON THE ROCKS. Unfortunately, this was five examples short of the ten example minimum generally required by the Board. Accordingly, Don Vintache’s dilution argument failed, and the Board found that DIAMONDS ON THE ROCKS and SILVER ON THE ROCKS are similar trademarks.

Trade Dress May Not Differentiate A Mark Registered in Standard Character

Generally, what’s good for the goose is good for gander. Except in certain circumstances when you are dealing with the Trademark Office. Relying on trade dress to distinguish your mark from a prior registered word mark is one of those situations where the rules apply differently if you are the Applicant instead of the Trademark Office.

When filing a trademark application you have the option to submit a stylized drawing of your mark or to claim your mark in a standard character form. When you choose to protect your mark in a standard character form, the trademark rights that result from that application exist in the word or words regardless of stylization. Filing in a standard character form does two things for a trademark owner. First, it provides flexibility for the modernization of a mark. Second, it prevents another party from avoiding the trademark owner’s rights by adopting a sufficiently different stylization for his or her mark.

The general rule is that when analyzing a word mark, the Trademark Office will not look to the trade dress associated with the word or words. The decision must be made on the marks as they appear in the application or registration. However, if you filed an application claiming your mark in a standard character form, the Trademark Office can look at your trade dress to determine if the manner in which you are using your mark creates a similar overall commercial impression with the mark displayed in the registration.

You would link that if the Trademark Office can rely on the real world trade dress to support its case, that the trademark owner should be able to do the same. Unfortunately, it is not the case. Trade dress may not be used to prove the absence of a likelihood of confusion.

For trademark searchers, we need to be aware of this disparity when evaluating the search results. We need to be cautious about clearing trademarks when the record reveals a mark with a logo or stylization similar to the planned designed for our mark. We also need to be cautious about recommending certain stylization or logos as a means to differentiate our mark from a prior mark registered in standard character form.

Major League Zombie Hunter Too Close for Major League Baseball

"major league baseball logo next to major league zombie hunter logo"

Despite the numerous MAJOR LEAGUE formative marks that use a blue, white, red color scheme including several variations involving zombie hunting, Major League Baseball thought Christopher Webb’s MAJOR LEAGUE ZOMBIE HUNTER was the one that crossed the line. Major League Baseball petitioned to cancel Mr. Webb’s supplemental registration for MAJOR LEAGUE ZOMBIE HUNTER & Design for “clothing, namely, short and long sleeve t-shirts, sweatshirts, jackets, baseball hats, and beanies” in International Class 25. Major League Baseball alleged, among other things, that this mark was likely to cause confusion with its prior registered MLB Logo.

The Trademark Trial and Appeal Board first considered the strength of the Major League Baseball mark. In determining strength, the Board considers its inherent strength based on the nature of the mark itself, and its commercial strength based on the marketplace recognition of the mark. Surprisingly, the terms MAJOR LEAGUE BASEBALL were found to be arbitrary when used in connection with clothing. Not surprising was the finding that the MAJOR LEAGUE BASEBALL mark is commercially strong. Accordingly, MLB’s trademarks are entitled to a broad scope of protection.

With respect to the similarity of the marks, the Board found that both marks consist of off-center, white silhouetted males from the torso up, facing left, wearing baseball caps or helmets, and posed for action inside a shaded, rectangular border, albeit engaged in different activities. According to the Board the dissimilarities (i.e., baseball bat vs. shotgun, backward cap vs. batting helmet, and the words MAJOR LEAGUE ZOMBIE HUNTER) were not sufficient to overcome the similarities.

The Board also cited with approval prior Board decisions that held it can take judicial notice of a common fact that licensing of commercial trademarks on collateral products has become a part of everyday life. Accordingly, the Board held that consumers are likely to mistakenly believe that MLB is associated with Mr. Webb’s t-shirts.

While licensing the use of a trademark on collateral goods is common, what is uncommon is for the trademark licensor to allow a licensee to mutilate its mark into something different. Additionally, the Board stated that it may take into account the trade dress of packages or labels that demonstrate the trademark projects a confusing similar commercial impression. But this is contrary to other cases where the Board has said its decision on similarity must be made on the drawings in the applications and registrations only. The Board again based its decision on certain presumptions that do not reflect marketplace reality.