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.

Ezekiel Elliott to the USPTO: Don’t You Know Who I Am?

Ezekiel Elliott is the running back for the Dallas Cowboys. In his rookie season in 2016, he rushed for 1,631 making him the top rusher in the National Football League. Because of his successful rookie season, Ezekiel Elliot was selected as a First-Team All-Pro and made his first Pro Bowl. Due to a suspension based on off the field conduct, Ezekiel Elliott’s 2017 season was far less successful than his rookie season.

Ezekiel Elliott attended the Ohio State University where he majored in marketing, so he understands the importance of a trademark registration. On August 7, 2015, he filed an intent-to-use trademark application for the mark ZEKE in connection with a variety of clothing articles. The USPTO refused registration of Ezekiel Elliot’s application on the ground that it was likely to cause confusion with two prior registered marks:  ZEKE’S SMOKEHOUSE (SMOKEHOUSE disclaimed) and ZEKE’S COFFEE & Design (COFFEE disclaimed) both for clothing.

The goods at issue in this case were legally identical because they were clothing. That meant, absent an express restriction in the identification of goods descriptions, the goods at issue were deemed to travel in the same channels of trade and appeal to the same classes of consumers. So from the start, Ezekiel Elliott was starting three likelihood of confusion factors down to the USPTO.

Ezekiel made the conceptual weakness argument, but it does not appear that Ezekiel understood how to make this argument. He offered no third-party registrations beyond the two cited marks and then argued that these marks are used in limited geographic areas. Giving context to the use of a mark is key to a strength argument, but in Ezekiel’s case you want to the use to be widespread. Pointing out the limited use could only hurt his case, and put him down four likelihood of confusion factors to the USPTO.

Ezekiel Elliott’s ZEKE mark was also incorporated in its entirety in the cited marks, but he put an interesting spin on the “meaning” aspect of the similarity of the marks factor. He claimed to be a well know football player and that consumers would recognize ZEKE as his nickname. However, the USPTO found that the evidence did not demonstrate Ezekiel Elliot was a well-known football player or that consumers would recognize ZEKE as his nickname.

The evidence establishing his popularity may not have been in the record, or it could be that the USPTO being located near Washington, DC means they don’t like the Dallas Cowboys given the rivalry with the Washington Redskins.