The Signals Given by a Trademark Disclaimer

"woman filling out a life insurance application similar to one offered by Optimum Benefits Package, trademark disclaimer on benefits package"

A trademark disclaimer is  something commonly made by trademark applicants, and they send important signals to trademark searchers. The John M. Fickewirth Associates Insurance Services case is a good example of the consequences trademark owners face when they voluntarily disclaim matter from their trademark applications. Optimum Group Inc. registered the mark OPTIMUM for “underwriting, brokerage and management of all types of life insurance and reinsurance; and actuarial consulting services” in 1996 (i.e., over 20 years ago). Optimum Group renewed the OPTIMUM registration as recent as 2017 for another 10 year term.

John M. Fickewirth Associates Insurance Services filed a services mark application for the virtually identical mark OPTIMUM BENEFITS PACKAGE for “insurance administrative services, insurance brokerage services, insurance underwriting services in the field of life, health, accident, disability and longterm care insurance.” John M. Fickewirth disclaimed the terms BENEFITS PACKAGE.

In this case, John M. Fickewirth’s primary argument was that the Trademark Office improperly dissected its mark and did not consider it in its entirety. A trademark disclaimer is an applicant’s statement that it does claim the exclusive right to, most often, certain terms apart from the mark as a whole. In other words, others are free to use the disclaimed terms for the same goods or services. Most of the time, a trademark disclaimer is made to buy peace with the Trademark Office in order to move a pending application through the examination process. But there is significance trademark searchers need to be aware of beyond the ability to use the disclaimed words.

There is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on a consideration of the marks in their entireties. Disclaimed matter that is descriptive of or generic for a party’s goods or services is typically less significant or less dominant when comparing the marks at issue.

John M. Fickewirth acknowledged that the dominant portion of its mark was OPTIMUM with the trademark disclaimer of the words BENEFIT PACKAGE. Therefore, it was not improper for the Trademark Office to afford more weight to the OPTIMUM term when determining the similarity of the marks. As trademark searchers, we need to pay attention to any trademark disclaimer made by a trademark applicant to determine what the dominant portion of a mark may be.

Using a Hashtag as a Trademark Requires a Trademark Search First

"hashtag in lights"

A hashtag is a word or phrase preceded by a hash or pound sign (#) and used to identify messages on a specific topic. Sharing content on a specific topic can be accomplished by adding the hashtag topic to the message. Others searching for that topic can search for that hashtag topic to find other messages on the same social media platform. Hashtags have become such a prominent part of our society that the word was added to the Oxford dictionary in 2010 and to the Scrabble dictionary in 2014.

Given its popularity, naturally there is a tendency to want to trademark a particular hashtag. The motivation to get trademark protection usually stems from someone’s desire to control a certain phrase. However, there are a few requirements that must be met in order for a hashtag to be protected as a trademark.

Like domain names, a hashtag at its core is no different from a street sign. It functions to direct people to relevant content in cyberspace. If its status as a cyberspace street sign does not change, then it cannot be protected as a trademark because consumers do not recognize it as an indicator of source nor rely on it to distinguish goods or services.

If you start to use the hashtag in a trademark sense, then you may start to develop trademark rights in the phrase following the #. In most cases, the Trademark Office will require that you disclaim the use of the # because it is functional. A disclaimer is merely an acknowledge to the world that you will not claim exclusive rights in the disclaimed matter apart from your mark as a whole. In other words, other people can use the #.

Whether you can protect the phrase following the # depends on whether it is registrable just like any other word for the applied for goods or services. That means surviving a likelihood of confusion inquiry.

As trademark searchers, we should not concern ourselves with generic, descriptive, or purely functional matter when we construct our search equations. We don’t concern ourselves with this matter because it can only muddy our search results with irrelevant results. Instead, we should focus on the phrase separate from the #.

For example, it does not make much sense to search for FIRST BANK in connection with “banking services.” BANK is generic of banking services and no one would be able to tell another bank that they can use the word bank in their trademark. Instead, the focus should be on FIRST. The same strategy applies when asked to search a hashtag.

Handling Difficult Conversations About Trademark Search Results

"couple having difficult conversations"

If you are conducting a trademark search for someone else, difficult conversations about one of the trademarks being searched is going to happen. As of July 2, 2018, there are 312,339 pending trademark applications and 2,386,268 live registrations in the United States Patent and Trademark Office TESS database. That is almost 2,700,000 records that need to be considered when selecting a trademark and it only takes 1 record to prevent the registration of a proposed mark.

Inc. published an article about The No. 1 Mistake People Make When Handling Tough Conversations. According to the author John Hall – CEO & co-founder of Influence & Co. – the No. 1 mistake leaders make is worrying about their own performance instead of the team. Some of Mr. Hall’s tips are transferable to a client relationship, but there is one tip that makes a big difference in the client context. You can avoid difficult conversations if you demonstrate you are invested in and care about your client by adding value about the search results beyond just the results. In other words, show the client that you tried to find ways to make sure the name they fall in love with is available for their use.

To add this value requires a more critical analysis of the search results. It means that there may be a way around a search result colored red. Or that a small change to a mark may avoid an issue with a search result colored yellow.

If you are a naming firm or professional trademark searcher, here is strategy to employ to demonstrate to your clients that you are invested in their business while using your time and money in the most cost-effective way. First, use a trademark search engine to conduct the preliminary trademark search. When reviewing the search results, sort them by green first, then red, and finally yellow. Set the green marks aside, and turn your attention to the red marks. Review the list of red marks for any you suspect your client would really like. Put those list of red marks in separate list. Then turn your attention to the yellow marks. Similar to the red marks, make a list of the yellow marks you suspect your client would really like.

If you do not have a relationship with a trademark attorney, then you should get one. Send the list of red marks and yellow marks to the trademark attorney along with the relevant search results. Have the trademark attorney reviewing the prosecution history for the marks to determine if he or she sees a potential path to registration for any of the marks on the list. If a path exists, have the trademark attorney provide the patch details.

When you structuring a relationship with a trademark attorney this way, you maximize the value the trademark attorney brings to the clearance process. You are not wasting money on a search, which can be done in a more cost-effective way.

Through this process you will avoid difficult conversations with your client because they will see the extra mile you went to ensure they can use a name they ultimately fall in love with.

Airline Entertainment Equipment Is Unrelated to Broadcasting Services

"Delta airline entertainment equipment, like P.G.A. Electronic's CARAT system, that allows broadcasting services providers to deliver content"

P.G.A. Electronic wins a rare reversal from the Trademark Trial and Appeal Board for its CARAT application. Given the surprises the Trademark Office delivers from time to time, it is possible that airline entertainment equipment could be related to television and radio broadcasting services. These goods and services could be related because they are both involved in the delivery of content to consumers. The Trademark Office has held in prior cases that when the goods or services are ingredients in or compliments to the other good or service, that is an indication of relatedness.

In In re P.G.A. Electronic, the Trademark Trial and Appeal Board decided whether airline entertainment equipment is related to television and radio broadcasting services. P.G.A. Electronic filed a request for extension of protection of an international registration for the mark CARAT (in stylized form) through the Madrid Protocol. P.G.A. Electronic filed the CARAT application in connection with airline entertainment equipment. The Trademark Office refused registration of the mark on the ground that it was likely to cause confusion with a prior registered mark CARAT for radio and television broadcasting services.

The central issue in this case was the relatedness of the goods or services because the marks were virtually identical. The only difference was the stylization of the CARAT word used by P.G.A. Electronic. When the marks at issue are identical, less similarity between the goods or services at issue is required for a likelihood of confusion to exist.

The Examining Attorney offered third-party registrations for marks that covered broadcasting services and some form of content transmission.  Because of the transmission aspect of these third-party registrations did not exclude transmitting in airplanes, the Examining Attorney argued this was evidence that the goods and services at issue in the case were related.

The Trademark Trial and Appeal Board agreed, but held that the Examining Attorney failed to prove that P.G.A. Electronic’s customers were airline passengers and not the technicians who install the CARAT equipment in the airplanes. Accordingly, the Trademark Trial and Appeal Board held that airline entertainment equipment is unrelated to radio and television broadcasting services.

Trademark Registration Process and Trademark Cost

"trademark application used in the trademark registration process and trademark cost"

Most people do not understand the trademark registration process nor the trademark cost to register a mark. And while a lot of attention is given to the cost of litigation and the cost to rebrand, the trademark cost to register a mark should not be overlooked.

The first decision a trademark owner must make to begin the trademark registration process is to decide whether to file on a use basis or on an intent-to-use basis. Sometimes the decision will be made for you because you are filing a trademark application before you have a product or service to sell. Filing on a use basis as opposed to an intent-to-use basis could end up saving the trademark owner in the long run.

There are three options when filing a trademark application. A TEAS Plus application costs $225 per International Class of Goods or Services, requires all communication to be conducted through e-mail, and requires the trademark application to select a goods or services description from the Manual of Acceptable Identifications. A TEAS RF application costs $275 per International Class of Goods or Services, requires all communication to be conducted through e-mail, and allows the trademark applicant to submit a custom goods or services description. A TEAS Regular application costs $400 per International Class of Goods or Services and can be filed on paper, but this option will soon be phased out. The costs identified in this paragraph do not include attorney’s fees, which can be the total cost to file a trademark application to $500-$1,000 per International Class of Goods or Services.

After the trademark application is filed, it will be assigned to an examining attorney within 3 months. Once assigned, the Examining Attorney will examine the application for any registrability issues. Most trademark applications receive some form of refusal from the Trademark Office. If a refusal issues, the trademark applicant has 6 months to respond to the refusal.

A formal refusal represents minor issues such as:  a disclaimer requirement, clarification to the description of goods or services, clarification to a description of the mark, etc. The cost to address a formal refusal is about $200-$400. A substantive refusal represents a significant issue with the application. The substantive refusals are those found in Section 2 of the Trademark Act with the most prevalent substantive refusal being likelihood of confusion. The cost to overcome a likelihood of confusion refusal can be in the thousands of dollars because it may take multiple rounds of responses and even an appeal to overcome the refusal.

Assuming no registration refusal issues or a registration refusal is overcome, the trademark application will be published for opposition in the Official Gazette. The publication date starts a 30-day period where another party can object to the registration of your proposed mark. And if an opposition proceeding does commence because a mark is too close to someone else’s, then you are looking at litigation type costs to defend yourself.

If no opposition proceeding is filed, then if you filed the application on a use basis, then the certificate of registration will issue. On the other hand, if you filed on an intent-to-use basis, then the notice of allowance will issue. Before the certificate of registration issues, you will need to file a Statement of Use. the cost to file a Statement of Use is $100. If you are not ready to file the Statement of Use within in 6 months after it issues, then you can file a request for an extension of time up to 5 times following the Notice of Allowance date. However, each extension of time will cost you $150. None of these costs include attorney’s fees.

The trademark cost while not on par with litigation cost is nevertheless money that can be saved by conducting a trademark search first. Probably more important is the time lost due to the trademark registration process. Once you file the trademark application, it will be at least 5 months before a certificate of registration issues.

All Brands are Trademarks, But Not All Trademarks are Brands

"brands trademarks"

What comes first the trademarks or the brands? These words are not synonymous, and understanding the difference is important. Vocabulary in general is critically important to understanding new topics and being able to converse intelligently about them.

The Federal Trademark Act defines what constitutes a trademark very broadly. “A ‘trademark‘ includes any word, name, symbol, or device, or any combination thereof – used by a person – to identify and distinguish his or her goods . . . from those manufactured or sold by others and to indicate the source of the goods, even if that source if unknown.”

Traditionally, a trademark is thought of as words and designs, but it can include smells, tastes, colors, shapes, touch, and sounds. What determines if any of this matter can function as a trademark is whether consumers rely on it when making purchasing decisions. Consumers come to rely on any matter when making purchasing decisions by having experiences with the matter. Those experiences can be good or bad, but those experiences are embodied in the trademark and the trademark starts to represent and stand for those collective experiences. The collective experiences embodied in a trademark is referred to as the goodwill associated with the trademark.

When someone mentions the word brand they are referring to “the sum total fo the thoughts, opinions, associations, and experiences people have with your company.” Brand is more synonymous with goodwill than it is the word trademark. And because a brand requires consumer experiences, all brands are trademarks but not all trademarks are brands.

A company can do a lot to influence the experiences consumers have with the trademark. For example, you can have attractive packaging and marketing collateral, and have excellent customer service. All these things positively reflect on the company and create a quality expectation by consumers every time they encounter the trademark. When this expectation is created, you then have a brand.

The path from trademark to brand depends in part from the selection of your starting point. Select matter that consumers immediately recognize as a trademark, and your path will be shorter than if you select matter that takes time for consumers to recognize is a trademark in the first place.

Concert Speakers and Consumer Speakers are Related

"Guardian Audio concert speakers and consumer speakers"

Have you ever noticed or even pay attention to the brand name of the concert speakers? No, us either. But according to the Trademark Trial and Appeal Board, most consumers must pay attention to and could be confused by a similar trademark used on a concert speakers and consumer speakers. The astonishing aspect of this case was the level of detail the applicant – David Mottinger – included in its identification of goods description in order to avoid the issue the Trademark Office had with his application.

In In re David Mottinger the Trademark Trial and Appeal Board had to decide whether GUARDIAN AUDIO for – take a breath – “audio equipment for use in commercial entertainment systems for use in large public venues, namely, amplifiers, speakers, receivers; all of the foregoing sold only to sound contractors for commercial installation, and to sound production companies, and none of which are targeted to or designed for use by the general consuming public” was confusingly similar to EGUARDIAN for, among other goods, the broadly worded audio products that could include consumer speakers and concert speakers.

This case was no exception to the tried and true statement made by the Trademark Trial and Appeal Board that the relatedness of goods determination must be made based on the descriptions contained in the application and registration at issue. With respect to Mr. Mottinger’s GUARDIAN AUDIO application, there is not much more detail he could have included to avoid the issue the Trademark Office had with his application. But because the EGUARDIAN registration broadly described its audio goods, the Board found there was overlap; thus, the relatedness factor favored a likelihood of confusion.

Moreover, it is high time the Trademark Trial and Appeal Board stop with this policy of only considering what is described in the application and registration. In this case, Acceptto Corporation – the owner of the EGUARDIAN registration – uses the mark only as the name of a driver. But because it only had to show use on 1 of the goods described in the then application it was able to register the mark for the entire goods description if it was willing to the risk on a fraud claim most likely because the Trademark Trial and Appeal Board has been so milk toast on fraud claims since the Bose decision. All the Board’s policy is doing is pushing more people to file partial cancellation actions, which will further clog the TTAB docket.

Trademark searchers need to pay attention to how marks are actually being used if a mark appears problematic from the search results.

Red Hen Protest Shows the Importance of Selecting Unique Marks

"Red Hen"

The owner of the Red Hen restaurant in Lexington, VA asked White House Press Secretary Sarah Huckabee Sanders asked her to leave her restaurant a couple of nights ago, and then proceeded to arrange a protest of Mrs. Huckabee Sanders family as they dined across the street at another restaurant not affiliated with her restaurant. The events of that night received and continues to receive a lot of attention in the press.

However, the issue with the Red Hen has not been confined to Lexington, VA. Unfortunately, the Washington Post reported that other Red Hen restaurants that are not affiliated with the restaurant in Lexington, VA are feeling the backlash. The owner of the Red Hen restaurant in Washington, D.C. trying to be proactive to avoid a mistaken connection with the Lexington, VA restaurant took to Twitter to explain the difference. Instead of receiving a sympathetic ear, the Twitter mob turned its attention to the post flooding the Washington, D.C. Red Hen with 4,400 tweets – some supportive but some disparaging.

Red Hen restaurants in Swedesboro, N.J., and Old Saybrook, Conn. received similar treatment to the Red Hen in Washington, D.C. However, in addition to the Tweets, these restaurants suffered lower Yelp scores at the hand of the Internet mob.

If you didn’t believe it before, you should now, that a trademark embodies the goodwill or reputation of a business. This case also highlights the importance of selecting trademarks that are sufficiently different from other parties’ marks and protecting the mark you choose from other parties that may choose a confusingly similar mark. And while this situation may be unique, it demonstrates how quickly a reputation can be damages.

In a matter of hours, the Yelp ratings for the Red Hen restaurants were negatively impacted all over a misunderstanding. Yelp has become a trusted source for many people looking to have dinner out. With ratings now in the threes instead of the fives, who knows how much business these Red Hen restaurants will lose over this situation.

Make sure to search your trademark before adopting it. While not on such a public stage, trademark disputes involving similar marks happen all the time and are avoidable if the proper search is conducted.

TailGate Beer Boulevard Brewing Crossroad of Images and Words

"tailgate beer boulevard brewing"

TailGate Beer is a craft brewery in Nashville, TN. Obviously, the name of the brewery is TAILGATE and some of their beers show the design of the backend of a pickup truck with the tailgate down. According to their website, their beer is available in Middle Tennessee only. Tailgate Beer sued Boulevard Brewing Co. over its use of an image of a pickup truck with the tailgate down.

Boulevard Brewing Co. was founded in 1989 and is headquartered in Kansas City, MO. They claim to be the largest specialty brewer in the Midwest and according to their website sell beer in Tennessee. However, again according to their website, do not sell the Pale Ale in Tennessee that is the subject of TailGate Beer’s lawsuit.

This case raises interesting questions for trademark searches; namely, when will an image prevent the registration of word and should images be included in a trademark search for a word. With respect to an image preventing the registration of word, this occurrence is rare because the word needs to be the exact term for the image. For example, if you attempt to register the mark RAILROAD for beer and another brewery has the picture of RailRoad tracks on its beer label, there may be an argument that consumers could confuse the source of the word and image.

However, vary the mark even slightly so that it is not essentially the identical word for the image, and you avoid the likelihood of confusion issue. For example, add to the mark PALE ALE so the mark reach RAILROAD PALE ALE. The terms PALE ALE are clearly generic for the type of beer, but even generic terms are considered when assessing the overall commercial impression of a mark in the likelihood of confusion analysis. This also means that you have varied the word enough to avoid an issue with an image that the word describes.

Boulevard Brewing Co.’s image is not just of a tailgate, it is the image of an entire truck with the tailgate down. So the likelihood of Tailgate Brewing winning on the word/image confusion factor is low. It is also unlikely that they win on the image of truck with its tailgate down being recognized by consumers as their exclusive trademark. Beer and the act of tailgating with a pickup truck is ubiquitous.

But more importantly, on the trademark claims, there is no basis to bring the lawsuit unless Tailgate Beer knows of Boulevard Brewing Co.’s plans to sell its PALE ALE beer in Tennessee. Until that exists, Dawn Donut would prevent the suit from going forward on the trademark claims. This is a good example that not every potential trademark action needs to be pursued and how some trademark attorneys can convince trademark owners to sue out cases that do not deserve to be sued out. As a trademark owner, make sure you interview prospective trademark counsel for their philosophy on enforcement before agreeing to engage them. And you don’t have to use the trademark attorney that works in your corporate attorney’s office. Make sure you find a trademark attorney that understands the business objectives of being a trademark owner.

As trademarks searchers, it is generally unnecessary to include designs in the trademark search. The only time it makes sense to include designs is when the client is contemplating using only a common word in an uncommon way.

How a Brand Agency Should Work with a Trademark Lawyer

"five people giving knuckles showing a brand agency working with a trademark lawyer"

Working with a trademark lawyer may seem like an elementary task, but there are some tips a brand agency should be aware of that will benefit their relationship with their clients. A trademark lawyer or any lawyer’s role for that matter is to advise on risk. The next time you read an opinion from a trademark lawyer on the availability of a mark, the trademark lawyer will not use definitive language that a particular mark is available. Instead, you will see words like “appears to be available” or “reasonable arguments exist.”

The trademark lawyer uses this language primarily because there is no such thing as a perfect trademark search. Even the most expensive trademark search is incapable of finding every potential conflict. What the trademark lawyer evaluates are signals in the search that, according to the law, would suggest the potential for a conflict.

The first tip for a brand agency is have a realistic attitude about what a trademark search will reveal and the a trademark attorney’s opinion about it. The second tip is a financial one. Most, if not all, trademark attorneys will work on flat fees, but you have to ask. The days of the hourly rate have been under siege lately, and you not only can get budget certainty with a flat fee but likely a lower cost as well.

The third tip relates to the flat fee, which is make sure you understand what is included in the flat fee. If you ask for a flat fee on a trademark search, but not the reporting out of the results or any discussion about the results, then you likely end up with a low ball flat fee only to have a larger hourly rate applying later.

The fourth tip is to do the initial screening yourself. Most attorneys will say about areas of law they do not specialize in that they know enough to be dangerous. Well, the same statement can apply to a brand agency. A trademark attorney will charge more for a trademark search than what it would cost to use an online trademark search engine or to do the search yourself. Get the trademark attorney involved for the final search.

The fifth and final tip is to recognize the value a trademark attorney brings to the search process. A trademark attorney provides the most value on the tough registration questions. If there is a mark that the client loves but your preliminary search revealed a question about its availability, have the trademark attorney conduct a more in-depth investigation to determine if there is a path to a registration.