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.

USPTO’s Strength Decision Supported by Substantial Evidence

The United States Court of Appeals for the Federal Circuit recently held that the USPTO’s strength finding was supported by substantial evidence when only 8 third-party registrations with no evidence of use were offered by the trademark applicant. The USPTO refused registration of JS ADL LLC’s ARTISAN NY & Design mark in connection with a variety of clothing items and accessories on the ground that it was likely to cause confusion with a prior registered mark for ARTESANO NEW YORK also for a variety of clothing items. The USPTO found that “artesano” is Spanish for “artisan” and JS ADL did not dispute this finding. In doing so, JS ADL’s primary argument was that the words ARTISAN and NEW YORK are so weak that its use of the Spanish word “artesano” and Design element was sufficient to avoid a likelihood of confusion.

To support its argument, in its Office Action response, JS ADL submitted 8 third-party registrations for marks containing the term ARTISAN for various clothing items and accessories. JS ADL actually submitted a total of 10 third-party registrations, but 2 were surnames. JS ADL did not submit any evidence of use for any of these third-party registrations.

The USPTO maintained the registration refusal despite JS ADL’s weakness argument and evidence. Curiously, JS ADL did not submit a Request for Reconsideration and instead chose to simply appeal the USPTO’s decision. To forego a Request for Reconsideration is a gutsy call because the record on appeal is frozen. In other words, all the trademark applicant’s evidence – save for some limited exceptions – must be submitted to during the prosecution of the application. To JS ADL’s credit, the TTAB has not been consistent on whether evidence of use is required in order to establish trademark weakness. Just two months ago, the Board found trademark weakness relying only on third-party registrations, no evidence of use. In this case, it turned out to be a mistake for JS ADL not to submit a Request for Reconsideration.

The Trademark Trial and Appeal Board affirmed the USPTO’s registration refusal and JS ADL appealed that decision to the United States Court of Appeals for the Federal Circuit. The Federal Circuit reviews the TTAB’s factual findings for substantial evidence. Where there is adequate
and substantial evidence to support either of two contrary
findings of fact, the one chosen by the TTAB is binding on
the Federal Circuit regardless of how the Court might have decided the issue if it had been raised de novo. This makes a reversal on appeal very difficult because the benefit of the doubt favors the Board.

The Federal Circuit agreed with the USPTO that JS ADL’s evidence did not establish that ARTESANO NEW YORK is a weak mark. First, the Court held that evidence purporting to show that the individual components of a composite mark are weak does not necessitate a finding that the combined terms also form a weak mark. Second, JS ADL did not offer any evidence of use for the marks displayed in the third-party registrations. Accordingly, the Federal Circuit affirmed that USPTO’s finding on strength.

Minimum Third-Party Registration Trend Bites The 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.

Improper Strength Analysis Sinks Another Trademark Applicant

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.

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

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.

The Board Throws Another Curveball on the Strength Factor

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.

Trademark Strength is the Most Misapplied Factor

The two most talked about likelihood of confusion factors are the: (1) similarity of the marks; and (2) relatedness of the goods or services. While these factors possess their own intricacies, trademark applicants seem to misapply the trademark strength factor the most. The misapplication of this factor then leads trademark applicants to make poor filing and prosecution decisions.

Two recent Trademark Trial and Appeal Board decisions demonstrate the problem when misapplying the trademark strength factor. Ming’s Mark Inc. applied to register the mark POWER TECHON for, among other goods, “electrical power extension cords.” Gehr Industries, Inc. opposed the registration of Ming’s Mark on the ground that it was likely to cause confusion with its prior registration for POWER TECH in connection with “electric extension cords for use with portable electric hand tools . . . .”

Ming’s Mark argued that Gehr Industries’ POWER TECH mark was weak and attempted to prove it the following ways:

  1. Offering the dictionary definitions of POWER and TECH. Unfortunately, Gehr Industries’ POWER TECH mark was registered on the Principal Register so under Section 7(b) of the Trademark Act the mark was presumed valid. And since the registration was not based on Section 2(f) of the Trademark Act (i.e., acquired distinctiveness), the mark was at least suggestive.
  2. Offering TESS listing of 100 third-party pending applications and registered marks for or including the POWER term in International Classes 9 and 2. Offering the same TESS listing for the TECH term. First, listing from the Trademark Office database is not evidence. A trademark applicant must submit title and status copies of each registration. Second, don’t waste your time with applications, the Board will not consider them. Third, make sure the third party registrations correspond to the mark you are claiming is weak. In this case, third-party registrations for POWER TECH needed to be offered. Fourth, don’t focus on the class numbers. the focus of the third-party registrations needs to be on identical or related goods.
  3. Offering the fact that other Examining Attorneys registered marks for or containing POWER TECH without issue. Prior decisions by Examining Attorneys do not bind subsequent Examining Attorneys. Each trademark application must be decided on its own merits and you will be reminded of this time and time again if you try to make this argument.

None of Ming’s Mark’s strength arguments persuaded the Board; therefore, the opposition was sustained.

Here for the Girls, Inc. sought to register the mark HERE FOR THE GIRLS for providing emotional support services for young women affected by breast cancer. The Trademark Office refused registration of this mark on the ground that is was likely to cause confusion with the prior registered mark FOR THE GIRLS in connection with promoting public awareness of breast cancer.

Here for the Girls argued that THE GIRLS was weak by offering Google search results. Google search results are ineffective strength evidence because they provide little context with respect to the use of the mark. To make Internet evidence of record and persuasive on the strength factor, you need to offer pages from the website and some context for how many consumers likely encountered the website. Here for the Girls did none of this; therefore, the Board concluded it had no evidence to support its weakness argument.

Getting the strength analysis right is critical and something that must be assessed during the trademark search process, and certainly when a registration refusal is made or an enforcement proceeding is threatened or commenced.

Brand is Not Just a Marketing Expense, It’s a Company Opportunity

Brand is commonly thought of as the marketing department’s responsibility. And if the marketing expense is high, that should translate into a high brand valuation. But brand is not just a marketing responsibility.

Truly Inc. published a podcast with Tracy Chong – co-founder of Strata Insights – about a brand method she helped create called Brand Economics. According to Ms. Chong, Brand Economics differs from Brand Valuation or Brand Evaluation because it considers all aspects of a business (human resources, operations, marketing, finance). These factors are then used to assign a financial qualification to the brand.

Brand drives revenue. In fact, according to a 2017 Strata Insights study, brand contributed to 34%-74% of the S&P 500’s value. Therefore, it is important to understand the brand’s ability to attract customers. According to Strata Insights, brand is not a marketing expense, it is an organizational opportunity.

As an organizational opportunity, a brand economics valuation looks at: the businesses customers, sales channels, distributors, product or service, pricing in each channel, partners, and the market at large. All aspects of the business can and does contribute to the customer’s experience with a brand.

A couple areas may be missing from Strata Insight’s model – although, Ms. Chong may not have disclosed every consideration during the podcast. The first is starting with the right name. If the theory of brand economics is a brand’s ability to attract customers, having the right name is a crucial starting point. Not only does the name have to be appealing, but it also has to standout from the crowd. Another reason why working with a naming professional is important for every business.

The second consideration focuses on the legal department and the enforcement of rights against unauthorized use of confusing similar trademarks. Ms. Chong explained that it is important to consider the entire business because any department can negatively impact the customer experience with a brand. One example she gave was the IT department designing a website to have three separate logins, which frustrates customers and creates a bad experience with the brand.

One reason to enforce trademark rights against confusingly similar marks is to prevent any negative experiences to be misattributed to your brand. This does not mean that a trademark owner needs to take on all comers, although bad trademark attorneys will say that you do. Enforcement needs to be strategic and thoughtful, but it is something that every brand owner should do because it could be the case that the brand economics assessment indicates that your business is doing all the right things to produce a high brand economic value, but the acts of another party is depressing the value of the brand.

Evidentiary Mistakes Haunt NABOSO Application

Naboso Technology, LLC filed a trademark application to register the mark NABOSO (in standard characters) for “orthotics for feet,” rubber flooring, and “yoga mats.” Naboso Technology identified in its application that the English translation of NABOSO is BAREFOOT. The Trademark Office refused registration of Naboso Technology’s mark on the ground that it was likely to cause confusion with prior registrations for the mark BAREFOOT in connection with orthotics, rubber flooring, and yoga mats.

Naboso Technology did not attempt to narrow its goods descriptions and make a corresponding amendment to the descriptions in the cited registrations. Therefore the goods were deemed to be related, travel in the same channels of trade, and appeal to the same class of consumer. Not a good start for Naboso Technology.

Naboso Technology decided to make the conceptual weakness argument, and was on the right path because it submitted 11 third-registrations for marks containing the term BAREFOOT. However, there was a cloud over what appeared to be sufficient evidence because Naboso Technology did not properly introduce its evidence.

To make third-party registrations of record, that status and title copy of the registration must be introduced. Offering the registration certificate is insufficient. Additionally, lists of third-party registrations are also insufficient. Nevertheless, Naboso Technology made both mistakes. The only reason any of its third-party registration evidence was considered was because the Examining Attorney did not object to it.

When it came to commercial strength, the Board did not give many of the third-party registrations any weight because Naboso Technology did not introduce evidence of use for most of these marks. This was a costly mistake because instead of having 11 third-party registrations to rely on the number dropped to four, which was well below the 10 minimum.

The Board next considered the third-party registrations with respect to the conceptual strength of BAREFOOT mark. The lack of use evidence negatively impacted the conceptual strength argument as well brining the number of third-party registrations below 10. The Board also found that the third-party registrations demonstrated that BAREFOOT was a suggestive. Overall, the Board found that the BAREFOOT mark was not weak.

Finally, the Board turned to the similarity of the marks. Applying the doctrine of foreign equivalents, the Board found the the marks were confusingly similar. The outcome may have been different if the strength factor had come out in favor of Naboso Technology because Czechoslovakian is not a common language in the U.S.

2018 Trademark Weakness Trend Carries Over to 2019

In 2018, we wrote frequently on the strength trend we saw emerging from the Trademark Trial and Appeal Board decisions. The emerging trend was that in order to demonstrate conceptual weakness a trademark applicant had to be able to introduce a minimum of 10 third-party registrations for marks: (1) sharing the same term; and (2) registered for identical or related goods or services. The ability to meet this minimum threshold had a direct bearing on the success of one of the more common arguments made by trademark applicants to overcome a registration refusal.

In 2019, we have seen the first TTAB case to carry over this trend. Morganti Flavio Innovaciones Gastronomicas, S.L. applied to register the mark PINKCOW & Design for, among other goods, “soft drinks.” Anticipating a potential issue with Red Bull GmbH, Morganti voluntarily excluded “energy drinks” from its entire goods description in International Class 32. The Trademark Office found no issue with Morganti’s PINKCOW & Design mark and published the mark for opposition.

Red Bull, on the other hand, had an issue with Morganti’s application and opposed the registration of its mark. Red Bull alleged that the PINCOW & Design mark was likely to cause confusion with its prior registered marks RED BULL for, among other goods, “soft drinks.”

Morganti unsuccessfully argued that Red Bull’s product was an energy drink not a soft drink. Therefore, the goods descriptions at issue were legally identical because they both included the phrase “soft drinks” and the evidence showed that Red Bull’s product satisfies the ordinary definition of an “energy drink” and “soft drink.”

Red Bull was able to demonstrate that its RED BULL was commercially strong. Consequently, Morganti had to demonstrate the conceptual weakness of the RED BULL mark to counteract Red Bull’s evidence. Unfortunately, Morganti fell two short of the minimum number of the third-party marks target with a showing of eight.

Because the Board found that Red Bull’s mark was strong and the goods at issue were legally idential, Red Bull’s mark was entitled to a broad scope of rights. Those rights extended to Marganti’s PINKCOW mark, and so the TTAB granted Red Bull’s opposition.