Conceptual Weakness Must Focus on Registrant’s Goods

In Entertainment Content, Inc . v. Cooper Holdings, Inc., by change of name from Career Sports & Entertainment, Inc. we saw the Trademark Trial and Appeal Board chip away at the 17 third-party registrations that Cooper Holdings offered to demonstrate the conceptual weakness of the JUSTICE CENTRAL mark. What started as a promising argument quickly deteriorated to a total number of relevant, third-party marks below the 10 mark minimum.

The reason the argument ultimately failed was two-fold. First, Cooper Holdings did not focus on the Registrant’s services as they were described in the registration. Second, Cooper Holdings did not establish the relatedness of the services in most of the third-party registrations to the Registrant’s services.

Cooper Holdings filed an application to register the mark JUSTICE NETWORK (in standard characters) for, among other services, “television programming services” and “the production and distribution of television programs transmitted via various platforms across multiple forms of transmission media and other services.” Registrant had registered the mark JUSTICE CENTRAL for, among other services:

  • television programs in the field of law and courtroom legal proceedings;
  • entertainment programs in the field of law and
    courtroom legal proceedings accessible by cable,
    satellite, television, Internet, wireless devices,
    networks and via various platforms across multiple
    forms of transmission media;
  • providing programs in the field of law and courtroom
    legal proceedings accessible by cable, satellite,
    television, Internet, wireless networks and via various
    platforms across multiple forms of transmission media;
  • production and distribution of television shows.

Registrant’s services were limited to “courtroom legal proceedings” whereas Cooper Holdings’ services were unlimited. Accordingly, the parties’ services were legally identical.

Cooper Holdings offered 17 third-party registrations that contained the term JUSTICE. Five of the 17 third-party registrations were cancelled and one third-party registration was identified in Cooper Holdings’ brief; thus, not properly admitted into evidence. The remaining third-party registrations while identifying some form of entertainment did not identify courtroom legal proceedings as the content type. Cooper Holdings did not establish that the content type identified in the third-party registrations was related to courtroom legal proceedings. Accordingly, the Board chipped away at the 17 third-party registrations until the number was insufficient to establish the conceptual weakness of the JUSTICE CENTRAL mark.

A Deep Dive on the Relatedness of Goods and Services Factor

The relatedness of goods and services factor is very important in the likelihood of confusion analysis. Indeed, the fundamental inquiry mandated by Section 2(d) of the Trademark Act goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks. The Trademark Trial and Appeal Board issued a decision on New Year’s Eve that closely examined the essential characteristics of the goods because the marks at issue were identical.

Costa Farms, LLC applied to register the mark GROW WITH US (in standard characters) for “live flowers and living plants.” The Trademark Office refused registration based on a prior registration for the identical GROW WITH US mark for “distributorship services in the field of wholesale horticulture supplies and accessories.” Costa Farms eventually appealed the registration refusal to the Trademark Trial and Appeal Board primarily arguing that live flowers and living plants are unrelated goods to distributorship services in the horticulture field.

The Trademark Office compares the goods and services set forth in an application and a registration to determine whether they are similar, commercially related, or travel in the same trade channels. Goods and services dealing with or related to those goods can be found to be related. Relatedness will not be found when the goods or services at issue only chare a relationship with a broad category of goods.

In the GROW WITH US case, the Trademark Trial and Appeal Board found that “live flowers and living plants” on the one hand and “distributorship services in the field of wholesale horticulture supplies and accessories” on the other hand share only a relationship with horticulture, which is insufficient to find the goods and services are related. Costa Farms argued and presented evidence that “horticultural supplies” are “hard-good inputs needed in horticultural endeavors” not live plants and flowers. However, Costa Farms’ evidence also included that “horticultural endeavors” include growing live plants and flowers. It seems like hard-good inputs used to grow live plants and flowers have a commercial relationship with living plants and flowers, but apparently not according to the Trademark Trial and Appeal Board.

Infringing LIL’ BEANIES is not Like Taking Candy from a Baby

The Willamette Week reported that a Portland vegan ice cream company changed its name to Little Chickpea after Gerber complained that the company’s proposed LITTLE BEAN name was likely to cause confusion with its registered mark LIL’ BEANIES. Little Chickpea said in the story that Gerber insisted that the company change its name even though it had decided to discontinue the LIL’ BEANIES brand. It is questionable whether this is true, but if it is then Little Chickpea formerly Little Bean made a mistake prosecuting its application.

Nestle – the parent corporation to Gerber – owns a federal trademark registration for LIL’ BEANIES in connection with “bean-based snack foods; grain-based snack foods.” In the article, Mitch Camden said that “when he applied for a trademark he was initially told ‘everything looked good.'” This means that his trademark lawyers did a trademark search and told him LITTLE BEAN mark was available for him to register. The Trademark Office disagreed and issued a registration refusal asserting that the LITTLE BEAN mark was likely to cause confusion with the LIL’ BEANIES prior registration.

We have to assume that Little Chickpea’s attorneys searched for goods identified in the LITTLE BEAN trademark application, which included “processed chickpeas.” A chickpea is a bean, so it is difficult to understand how Little Chickpea’s attorneys would have concluded that chickpeas are unrelated to “bean-based snacks.” Nevertheless, Little Chickpea’s attorneys attempted to overcome the registration refusal and were unsuccessful. In a last-ditch effort to overcome the refusal, it appears that Little Chickpea’s attorneys reached out to Gerber to obtain consent to the registration of the LITTLE BEAN mark and Gerber refused.

Willamette Week also reported that Mr. Camdem was told Gerber has discontinued the LIL’ BEANIES product line and had no intention of doing anything with it. If this is true, then Little Chickpea had a good claim for abandonment. A trademark is abandoned with the use of the mark has discontinued with no intent to resume use of the mark. Abandonment is a ground for cancellation, which would have cleared the way for Little Chickpea to obtain a federal registration for its mark without having to go through what it described as an expensive rebrand.

The old adage that an ounce of prevention is worth a pound of cure is often true for any legal issue but it is especially true in the context of trademark law. A proper and thorough trademark is essential to avoiding costly disputes and rebrands.

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.