Trademark strength is an extremely important likelihood of confusion factor even if it is not generally a dispositive factor like the similarity of the marks or relatedness of the good or services factors. When the trademark strength of a particular term used in connection with certain goods or services is improperly assessed it generally leads to unintended consequences. These can include spending unnecessary money prosecuting a trademark application or getting into a dispute with another party. We say the former happen in a recent Trademark Trial and Appeal Board decision.
Gabor Alex Stibinger filed a trademark application to register the mark SNAP FUNNEL (in standard characters with FUNNEL disclaimed) for “funnels; household utensils, namely, specialized funnels with a small diameter inner bottom opening and a larger diameter bottom outer ring specifically adapted to stabilize the utensil to various size bottles that also acts as a pour spout; household utensils, namely, silicone funnels; pouring spouts for household use.” As a preliminary matter, we have to ask why Mr. Stibinger would settle on this description. It does no good to include an extremely broad description like “funnels” along with the narrow description that describes the funnel in detail. A trademark application is not like a patent application. There is no benefit to writing a goods or services description like claims in a patent application.
The Trademark Office refused registration of the SNAP FUNNEL mark based on a prior registration for SNAP & POUR for a “funnel which snaps onto plastic containers, including automotive fluids and household cleaners and detergents.” Mr. Stibinger appealed the Trademark Office’s refusal to the Trademark Trial and Appeal Board.
In his brief, Mr. Stibinger cited 61 third-party registrations that included the SNAP term. However, none of the registrations were for funnels. In fact, the Board found that none of the third-party registrations were for goods related to funnels. Accordingly, none of the third-party registrations established the SNAP term lacked trademark strength when used in connection with funnels.
If Mr. Stibinger was aware of these 61 third-party registrations during the trademark search stage and a proper trademark strength assessment was made, then maybe a decision could have been made to avoid the refusal based on the SNAP & POUR mark. We know that when a term lacks trademark strength, adding another weak or even generic term like FUNNEL could be enough to avoid a conflict. But when there is no conceptual weakness, then adding a more distinctive term is necessary to avoid a conflict.