Connotation is the Deciding Factor in Registration Refusal

The analysis of the similarity of the marks involves the consideration of three factors: (1) visual similarity; (2) sound similarity; and (3) similar connotation. Generally, the visual similarity of the marks factor trumps the other two factors. But for the second time in about three months, the connotation factor has been the dispositive factor.

Don’t Run Out, Inc. applied to register the mark PUBLIC GOODS (in standard characters with GOODS disclaimed) for a variety of goods including “shampoos.” The Trademark Office refused registration of the PUBLIC GOODS mark on the ground that it was likely to cause confusion with the prior registered mark PUBLIX also for “hair shampoo.” With the goods legally identical and the descriptions unrestricted, the registration refusal turned on the similarity of the marks.

The Trademark Office argued that PUBLIX was the plural version of PUBLIC, and with GOODS disclaimed it was appropriate to compare the dominant portion of the marks. While more weight can be given to the dominant portions of the marks at issue, the final decision still needs to be made based on the marks in their entireties. In this case, the Trademark Trial and Appeal Board found that the addition of the term GOODS materially changed the commercial impression of the mark.

“The proper test is not a side-by-side comparison of the marks, but instead ‘whether the marks are sufficiently similar in terms of their commercial impression’ such that persons who encounter the marks would be likely to assume a connection between the parties.” The words PUBLIC GOODS were taken together project the connotation and commercial impression that Don’t Run Out personal care products are available to all consumers due to their affordability, and beneficial to the public because they are environmentally safe. By contrast, the PUBLIX mark has no well-recognized meaning. As a result, when confronted with both marks, prospective consumers are unlikely to assume the respective goods originate from the same source, despite use in part on identical and highly related goods.

Do You Believe in Miracles … Trade Channels Decide TTAB Case

Before you get too excited about the headline, this most recent TTAB decision may be another curveball and something that will not become the norm. On the other hand, it could be the start of something so we will be watching to see if another trend develops. The trend that may be starting is whether the introduction of uncommon trade channels to the goods or services description can defeat goods or services descriptions that are unrestricted as to channels of trade.

Minibar North America, Inc. filed a trademark application to register the mark MINIBAR SMARTSNAX (in standard characters) for “packaged snack foods, namely, candies, nuts, pretzels, popcorn, and cookies.” The Trademark Office refused registration of the MINIBAR SMARTSNAX mark on the ground that is was likely to cause confusion with two prior registered marks: SMART SNACKS (in standard characters) for “candy, caramels, chocolate and chewing gum” and THE SMART SNACK (in standard characters) for “dried fruits; dried fruit mixes; dried fruit snack foods; snack mix consisting primarily of processed fruit, processed nuts and/or raisins; shelled, roasted or otherwise processed nuts; candied nuts; raisins.” None of the goods descriptions in any of the marks at issue identified trade channel or class of consumer restrictions.

We also see again a trademark owner attempting to register the broadest goods description as possible. This is another example supporting the trademark search theory that you need to start broad with your search descriptions. Starting with a narrow description will result in missed registrations.

In response to the Office Action, Minibar North America did the smart thing and voluntarily amended its goods description to include a trade channel limitation. Minibar North America amended the goods description in its MINIBAR SMARTSNAX application to: “packaged snack food, namely, candies, pretzels, popcorn, and cookies packaged for sale to hotels, motels, and temporary stay facilities for distribution through refrigerators and food storage cabinets having sensors to detect presence and removal of packages” in International Class 30 and “packaged snack food, namely, processed nuts packaged for sale to hotels, motels, and temporary stay facilities for distribution through refrigerators and food storage cabinets having sensors to detect presence and removal of packages” in International Class 29. The Trademark Office maintained the refusal and Minibar North America appealed.

Minibar North America did not take the next step to petition to partially cancel the SMART SNACKS and THE SMART SNACK registrations to exclude “sale to hotels, motels, and temporary stay facilities for distribution through refrigerators and food storage cabinets having sensors to detect presence and removal of packages.” Ordinarily, the failure to obtain this corresponding amendment in the cited mark registrations would have been the final nail in the coffin for the MINIBAR SMARTSNAX application, but not this time.

The TTAB restated its settled precedent that unrestricted goods descriptions are presumed to travel through all usual channels of trade and are offered to all normal potential purchasers.” The TTAB took the opportunity to conclude that distribution through refrigerators and food storage cabinets having sensors to detect presence and removal of packages was not a “usual” trade channel for candy, cookies, nuts, etc. Rather, vending machines, convenience stores, grocery stores, and the like were the usual trade channels for candy, cookies, nuts, etc.

The TTAB’s analysis, which was correctly pointed out by the dissent, completely ignored the TTAB’s precedent that the owner of an unrestricted trademark registration is entitled to change its trade channels at any time and that trademark owners often expand into new trade channels.

Moreover, because the amended description included “sale to hotels, motels, and temporary stay facilities,” the TTAB inferred a sophisticated consumer. However, this analysis completely ignored the end consumer of the candy, cookies, nuts, etc. from the hotel, motel, or temporary stay facility. This is individual is not sophisticated like the snack food buyer at a hotel, motel, or temporary stay facility and this person needed to be taken into account by the TTAB. The applicable standard of care for a likelihood of confusion analysis is that of the least sophisticated consumer.

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.

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.

Smith & Wesson House Mark Can’t Distinguish Shared Terms

Years ago it was a successful strategy to avoid a likelihood of confusion by adding a house mark to a proposed mark regardless of whether the shared term was conceptual weak. However, times changed and what used to be a successful strategy now only works under certain circumstances.

According to the Trademark Manual of Examining Procedure, a house mark does not identify particular goods or services, rather a house mark identifies the provider of a wide variety of goods and services. The specific goods or services are often identified by a separate trademark or service mark. Because house marks appear on a wide variety of goods and services, they generally are afforded a broader scope of protection. The theory is that the more goods or services the mark appears on or in connection with, the more exposure consumers have to the mark, and the more recognizable the mark will become.

Smith & Wesson Corp. recently, unsuccessfully attempted to revive the old add the house mark strategy. Smith & Wesson filed an application to register the mark M&P SHIELD (in standard characters) for, among other goods, “knives.” The Trademark Office refused registration of this mark on the ground that is was likely to cause confusion with the prior registered mark SHIELD also for “knives.” Because the identifications of goods descriptions were identical, the Trademark Trial and Appeal Board found that the channels of trade and classes of consumers overlapped.

When it came to the similarity of the marks, the Board stated that the addition of a house mark has been found sufficient to distinguish marks under circumstances where the appropriated matter is highly suggestive, merely descriptive, or has been frequently used or registered by others in the field for the same or related goods or services. The Board found that SHIELD is “slightly suggestive” for knives.

With respect to the frequent use or registration of the term SHIELD, the Board found that Smith & Wesson offered only one third-party registration that included the SHIELD term for a related good. This was far less than the 10 minimum the Board has required in other cases. Therefore, the Board concluded that Smith & Wesson’s inclusion of the M&P house mark was incapable of distinguishing the SHIELD term.

Breathable, Waterproof Fabric is Related to Clothing

The Trademark Trial and Appeal Board recently found that breathable, waterproof fabric used to create clothing is related to clothing in general. A general rule for assessing whether goods are related is whether the goods are or can be used together. If the goods can be or are used to together like fabric and clothing, then the goods at issue are related.

Striker Brands LLC filed an application to register the mark HYDRAPORE (in standard characters) for “breathable waterproof fabric sold as an integral component of fishing and hunting apparel, namely, coats, jackets, [etc.]” The Trademark Office refused registration based on a prior registration for HYDRO PORE (in standard characters) in connection with “clothing, namely, tops, bottoms, jackets, headwear, and footwear.”

To demonstrate the relatedness of the goods the Trademark Office offered 20 third-party registrations for marks that identify fabric as a component of clothing, and finished articles of clothing. These third-party registrations demonstrated that consumers expect fabric and finished clothing articles to emanate from the same source. Additionally, although not forcefully made in the opinion, the Board found that consumers could mistakenly believe that the HYDRO PORE clothing was made from the HYDRAPORE fabric.

Striker Brands made the classic mistake of leaving the identification of goods description in the HYDRO PORE mark undisturbed. It should have focused on narrowing the description to exclude a type of fabric along with the hunting and fishing channels of trade before pursuing the appeal.

When it came to the conceptual strength of the HYDRO PORE mark, Striker Brands offered 33 third-party registrations for HYDRO- formative marks in connection with various types of apparel or fabric. The Board noted that none of the third-party registrations contained a second term similar to PORE or for PORE. Moreover, Striker Brands did not offer any evidence of use for the 33 third-party registrations. Nevertheless, although the Board found that HYDRO PORE is a suggestive mark, it was entitled to a slightly narrower scope of protection because of the third-party registrations.

This conceptual strength analysis is similar to the Board’s decision in HULA DELIGHTS, and is even more difficult to square with its decision in the LUNA CYCLE case. In the LUNA CYCLE case, 100 third-party registrations for marks displaying LUNA (like those displaying HYDRO in this case) were offered for some form of apparel (like the various clothing items and fabric in this case). The difference though is that the Board discounted all 100 third-party registrations because they were not for women’s bicycle apparel.

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.

Loosened Exceptional Case Standard Keeps Expanding

In 2014, the United States Supreme Court loosened the exceptional case standard in patent infringement cases. Because the Patent Act and Trademark Act are similar, often times a decision involving one of these Acts will influence the jurisprudence of the other Act. The loosening of the exceptional case standard is one of those decisions.

It did not take long for the Supreme Court’s decision in Octane Fitness v. Icon Health to start to influence trademark infringement cases. The Court of Appeals for the Sixth Judicial Circuit was the first to apply the loosened exceptional case standard to trademark infringement cases. Since then, the Third, Fourth, Fifth, Ninth, and most recently the Second Circuits along with a smattering of District Courts in the other Judicial Circuits have all held that the Supreme Court’s Octane Fitness decision applies to trademark infringement cases.

The most recent application of the Octane Fitness decision came from the Second Circuit Court of Appeals. 4 Pillar Dynasty LLC and Reflex Performance Resources Inc. (collectively the “Plaintiffs”) sued New York & Company, Inc. and New York & Company Stores, Inc. (collectively the “Defendants”) for trademark infringement. The District Court for the Southern District of New York initially awarded the Plaintiff treble damages in the amount of about $5.6M. However, after post-trial motions, the Court reconsidered its trebling decision and changed the award to the stipulated amount of the Defendants profits, which was $1.8M. The Court did award Plaintiffs its attorneys’ fees.

The Second Circuit Court of Appeals reversed the District Court’s decision not to treble the monetary damage award because the Court failed to applied the loosened exceptional case standard from Octane Fitness. The Octane Fitness standard requires a court to consider the totality of the circumstances in deciding whether a case is exceptional.

The totality of the circumstances standard considers not only the respective merits of the parties cases but also the parties conduct during and even leading up to the commencement of the case. While it is still unlikely that failing to conduct a trademark search will alone warrant a finding that a case is exceptional, it certainly will be a consideration.

Number 1 Misconception When Searching Trademarks

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.

Insurance Company Win Makes Coverage More Difficult

2019 is shaping up to be a pretty unfriendly year for trademark infringement plaintiffs. A pending Supreme Court decision and case involving insurance for advertising injury could make trademark infringement costs prohibitive for millions of small businesses leaving them without a realistic avenue for recourse when their trademarks are being infringed. When small businesses cannot receive assistance with the cost of litigation, then defendants are incentivized to make branding decisions based on their perceptions of a plaintiff’s ability to pay for litigation. In the end, a market filled with more confusingly similar marks may exist, which ultimately harms consumers.

The First Circuit Court of Appeals recently decided a case involving insurance coverage for advertising injury. Small businesses pay for policies that include this type of coverage, but these policies generally make an exception for trademark infringement. Meaning if the advertising injury involves a trademark infringement claim, then the insurance is not obligated to cover the claim.

The argument over this advertising injury clause always centers around whether the infringing trademark plead in the complaint also functions as an “advertising idea” or “slogan.” If this dual functionality exists, then Courts have been more receptive to find that coverage exists. Unfortunately, the First Circuit Court of Appeals recently slammed the door on there ever being coverage for an infringing trademark that also functions as an “advertising idea.” The Court held that even if a trademark can qualify as an advertising idea, the exclusion nevertheless avoids coverage for a resulting infringement claim. Consequently, there will never be coverage for a trademark infringement claim in the First Circuit because plaintiffs do not bring claims for “advertising idea infringement” they bring claims for “trademark infringement.”

Additionally, the Supreme Court will decide whether a plaintiff must prove intent before being allowed to recover the defendant’s profits from its infringing act. Assuming the Supreme Court decide this issue in favor of requiring evidence of bad faith intent, the small market there is for contingent trademark infringement cases or third-party financing for trademark infringement litigation will dry up. The reason lawyers take contingent fee cases or there is third-party litigation is the possibility for a plaintiff to recover a large monetary damage award. Sometimes these fee arrangements result in frivolous litigation, but frivolous litigation is the minority of cases.

Where are small businesses to go if insurance coverage is more difficult or impossible to obtain and no attorney will take the plaintiff’s case on a contingency? The Trademark Trial and Appeal Board is not an option because the TTAB does not have the authority to issue injunctions. Small businesses will have to turn to legal aid clinics, but there are not enough of them to adequately service the number of small businesses in the U.S. The legal system needs a small business favorable option for markets to function fairly.