Category: Trademarks

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Punctuation Differences Alone Usually Do Not Distinguish Trademarks

BodysBoyd Coddington’s Hot Rods & Collectibles filed an application to register the trademark BOYD’S for apparel. But the USPTO examining attorney refused the registration based on a likelihood of confusion with the prior mark BOYDS for clothing. The TTAB affirmed the refusal finding the marks were virtually identical and the apostrophe was inconsequential in comparing the marks. Boyd Coddington’s Hot Rods & Collectibles, Inc., No. 78913114 (TTAB 2008).

Similarly, Sears filed an application to register CROSS-OVER for bras. The USPTO Examining Attorney refused registration based on the mark CROSSOVER for ladies’ sportswear. The TTAB found that the marks were legally equivalent and the hyphen was of “no legal significance.” In re Sears, Roebuck & Co., 2 USPQ2d 1312 (TTAB 1987).

Simple punctuation alone usually does not distinguish marks because marks are compared in the following ways: (1) appearance, (2) sound, and (3) connotation. A similarity in any one of those aspects could be enough to find that the marks are similar. Many times you can’t hear punctuation when a mark is spoken, e.g. its sound. So, the punctuation is unlikely to distinguish the way the marks sound.

Looking at the Sears case, simple punctuation often doesn’t do much to distinguish the visual appearance of the marks either. Does CROSS-OVER appear much different from CROSSOVER to the average customer? Further, does the hyphen alone change the meaning of CROSSOVER? No, it does not.

While there might be some cases where punctuation could make a difference–possibly when combined with other distinguishing features–often punctuation alone does not do much to distinguish marks and avoid a conflict.

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Sharply Different Meanings of Marks Avoids Confusion

PrayThenSlayWhen considering whether two trademarks are similar for conflict purposes, the marks are considered in their entireties, including their appearance, sound, and commercial impression. Sometimes one of those attributes stands out to distinguish the marks even when similarities exist in the other attributes.

Manuel Tellez applied to register the mark SLAY OR PREY for apparel. The USPTO Examining Attorney refused registration based on a likelihood of confusion with Registration no. 5,066,234 for the mark PRAY THEN SLAY (and design) for t-shirts.

On appeal, the Board reversed the Examining Attorney’s refusal to register, finding the two marks had sharply different meanings.

The Board acknowledged that the appearance and sound of the marks were somewhat similar because (1) the marks shared the term “slay” and (2) “pray” and “prey” of the marks were phonetically equivalent and visually similar. Yet, the Board said that consumers would read and recognize “prey” and “pray” as sharply distinct words.

After reviewing dictionary definitions, the Board stated:

“…Applicant’s mark most likely gives the impression of presenting a choice to either kill or become a victim by falling prey to a predator. By contrast, we find that the registered mark most likely conveys a command to first confer with the divine through prayer, and next to impress others (the slang meaning of “slay” [which is “to impress strongly; overwhelm, especially by humor: Your jokes slay me.”]). The mark may suggest that prayer will lead to making a strong impression on others – i.e. if you pray, then you will slay. Alternatively, Registrant’s mark could be viewed as a call to faith-inspired violence – i.e. to pray and then slay, in the traditional sense of the word.”

Let’s hope that the registrant was intending the slang meaning of slay.

The sharply different meanings of the marks were enough for the Board to conclude there was no likelihood of confusion between the marks.

Case citation: In re Manuel E. Tellez, No. 87229195 (TTAB 2017).

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Designating Different Trademark Classes Does Not Avoid a Conflict Between Marks

REALORANGEAnn Peterson applied to register the word-and-design mark REAL ORANGE for Christian ministry services in class 45.

The reThink Group, Inc opposed the registration based on its prior registration for the word-and-design mark of ORANGE for electronic downloadable publications and prerecorded media, print material, and educational services related to church ministry, among other services in class 9, 16, and 41. 

One factor in determining whether there is a conflict between two marks is whether the goods/services provided under the respective marks are similar.

ORANGEPeterson argued her services were different from the goods and services of reThink’s mark because they were in different International Classes: class 45 in Peterson’s case and Classes 9, 16, and 41 in reThink’s case. Each trademark applicant must (1) provide a description of goods and/or services, which are provided under the mark and (2) designate the international class(es) which the goods/services fall into.

But the Board rejected Peterson’s argument. The Board noted that 15 USC 1112 provides “The Director may establish a classification of goods and services, for the convenience of the Patent and Trademark Office administration, but not to limit or extend the applicant’s or registrant’s rights.” The Board also noted that the Federal Circuit has stated that “classification is wholly irrelevant to the issue of registrability under section 1052(d), which makes no reference to classification.

Therefore, you cannot avoid a conflict with another registered mark solely on the argument that the goods/services of the registered mark are registered in different international trademark class(es) from the goods/services of your mark.

Case citation: The reThink Group, Inc. v. Ann Peterson, Op. No. 91227798 (TTAB 2017).

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Limits on Use of Crowded Market Evidence to Show Weak Trademark Rights

AMIGOSDurrset Amigos Ltd (Durrset) filed a petition to cancel Amigo Meat Distributors’ (AMD) trademark registration on the mark AMIGOS FOODS for the services of wholesale meat products distributorship.

As a basis to cancel, Durrset asserted its common law mark AMIGOS FOODS and its registration for AMIGOS in a stylized form for “prepared tortillas, taco sauce, picante sauce (hot sauce) and taco shells” and for the services of “manufacturing and packaging food to the order and specification of others.”

The TTAB (Board) found that the parties’ marks and the parties’ goods were similar in Durrset Amigos, Ltd. v. Amigos Meat Distributors, L.P., No. 92060896 (TTAB 2017). AMD tried to save its registration by asserting that Durrset’s AMIGOS FOODS mark was extremely weak due to third party uses of AMIGOS marks in the “general area of food products.” But the TTAB found AMD’s evidence of third party use failed to demonstrate that Durrset’s mark was weak.

I’ve written previously about how third party use of similar marks can weaken rights in a trademark. The weaker a party’s rights in its mark are, the closer a defendant can come without causing confusion. The idea is that in a crowded market, if customers see many similar marks used on similar goods then customers will be conditioned to look closer to any differences in the marks, so confusion is less likely. But there are important limitations on this approach, as the AMIGOS case demonstrates.

1. Third party use should be for the same or similar services

AMD introduced 45 third party registrations and applications for marks that include AMIGO or AMGIOS for goods or services that AMD alleged were “somewhat related to food, such as food products, food distribution services, and restaurants.” AMD also introduced Internet search result showing over 90 restaurants with a name that includes the term AMIGOS.

The Board said, “the evidence falls short of showing extensive or voluminous registrations or use of AMIGOS marks coexisting for the same or similar services as those involved herein.” The board found that the third party use of the mark on food goods and restaurant services were of little relevance considering the services at issue in the cancelation proceeding.

The Board said that of all of the proposed third party uses, only two of the registrations covering retail grocery store services “are even arguably related to” AMD’s or Durrset’s services. And, only one third party use was in connection with the manufacture and packaging of food products.

In short, although AMD introduced a lot of third party use, most of it was irrelevant because it was not directed to services that were the same or similar as those at issue in the case.

2. When marks are identical, third party uses may be less effective

The Board distinguished two prior cases cited by AMD to support its argument that Durrset’s rights were weak. The Board said that parties’ marks in those cases were not identical, whereas in the present case, AMD’s and Durrset’s marks were identical, e.g. AMIGOS FOODS.

Therefore, when the parties marks are identical, it may be more difficult to rely on third party use to show weak or narrow rights and avoid confusion.

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$200M in Annual Sales Under Highly Descriptive Mark Insufficient to Establish Trademark Rights

When you have a highly descriptive mark, even hundreds of millions of dollars in annual sales under the mark may not be enough to establish trademark rights.

magnestiaMagnesita Refractories Company (MRC) applied to register the mark MAGNESITA in two trademark applications for refractory products in class 19 and for online services related to using refractory products in class 37.

The USPTO found that the mark was generic for refractory products in class 19, and the appeals court agreed in In re Magnesita Refractories Company, 2016-2345 (Fed. Cir. 2017).

The court also found that MRC failed to show that the mark acquired distinctiveness in connection with the class 37 services. A mark has acquired distinctiveness when “the primary significance of the term in the minds of the consuming public is not the product but the producer.” Stated another way, the mark needs to act as a source identifier and not be merely understood by the purchasing public as descriptive of the goods/services on which the mark is used.

The court noted that “If a term is highly descriptive, the applicant faces an elevated burden to show acquired distinctiveness.”

MRC submitted evidence showing that MRC (1) sold $100 million in refractory products under the MAGNESITA mark during half the 2010 year and (2) sold $200 million or more annually in refractory products under the MAGNESITA mark from 2011 to 2014. The USPTO TTAB recognized that these sales figures were substantial. Nevertheless, they were not sufficient to establish acquired distinctiveness.

MRC also submitted a declaration attesting to exclusive and continuous use of the mark since 2008. This too what not sufficient to establish rights in the mark.

The court found that MRC should have submitted evidence demonstrating how the public perceived MAGNESITA as source indicating. Such evidence is usually in the form of a trademark survey and/or direct testimony of customers. But surveys are expensive to conduct, which is probably why MRC didn’t conduct one. Also, regarding direct testimony, companies are sometimes reluctant to bother their customers with requests for testimony and other help in legal proceedings.

Nevertheless, when you have a highly descriptive mark, even hundreds of millions of dollars in annual sales under the mark may not be enough to establish trademark rights. You will probably need to pay to have a trademark survey conducted. And, even that’s no guarantee. What if the results of the survey show that your mark is not recognized as source identifying by the relevant group of consumers?

Choosing a highly descriptive mark can be expensive, both in obtaining trademark protection and in defending the mark against attacks of others. Therefore, if you have the opportunity, you should consider choosing a stronger mark at the outset.

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How to Position a Trademark Application to Avoid Conflict with a Similar Mark

US_TM_Reg4137026Nikon Corporation filed a trademark application to register the mark MMD for the goods of (1) laser scanners for industrial inspection and for geometrical measurement, and not for use with land surveying equipment, and (2) software for collection and interpretation of data in the operation of laser scanners, not for use with land surveying equipment. The USPTO trademark examining attorney refused registration based on prior registration no. 4137026 of the mark MMD (and dog design, shown to the right of this paragraph) for land surveying equipment.

The Trademark Trial and Appeals (Board) found that the marks were similar because while the prior registration contained a graphical dog, words “are normally accorded greater weight because the words are likely to make an impression upon purchasers.”

The Board also found the goods of both marks were related because evidence showed that non-land surveying laser scanners are sold by the same entities that provide land surveying instruments.

However, the Board found that Nikon’s laser scanners for industrial inspection and the registrant’s surveying equipment move in different channels of trade.

The Board also found that laser scanners and surveying instruments are purchased by customers that exercise a high degree of care in purchasing. Where customers take great care in purchasing, confusion is less likely.

The Board concluded that the goods will not be encountered by the same consumers under circumstances likely to give rise to the mistaken belief that the products emanate from the same source. Therefore, the Board reversed the Examiner’s refusal and allowed Nikon’s application for the MMD mark to proceed to registration.

By amending the description to exclude land surveying equipment, Nikon was able to convince the Board that the goods were sold in different channels of trade despite the fact the goods were related. If Nikon did not add the exclusion of land surveying equipment to the description, it would have lost this appeal. Sometimes narrowing the description of good/services is an important step to avoid a conflict with a nearly identical mark.

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Tagline Not In Trademark Application Cannot Distinguish Prior Mark

P.T. Arista Latindo (“Arista”) sought to register the trademark SENSI for diapers, among other things. The USPTO refused the registration in connection with diapers on the basis of two prior registrations for the mark SENSI-CARE (Tm Reg. Nos. 2618533, 3640455) for skin care products for treating and preventing diaper rash.

Arista argued that there was no likelihood of confusion between its mark and the SENSI-CARE marks because Arista uses a tagline “Sensible way of living” on its website. It argued that customers would assume its SENI mark means “sensible,” considering its tagline, whereas consumers would see SENI in the prior SENI-CARE marks as referring to “sensitive.”

The problem is that Airsta’s tagline was not in its trademark application. On appeal, the court said that the USPTO “must only compare the mark in the prior registration with the mark in the [present] application.” In re P.T. Arista Latindo, No. 2017-1292 (Fed. Cir. 2017). The court also said  “trade dress may not be used to prove that the commercial impressions are different, since trade dress may be changed at any time.”

The content of a trademark application is what is considered by the USPTO when deciding whether to register the mark. This is one reason it is important to do a trademark search prior to filing an application. A trademark search may help inform whether you should include a tagline, other words or characters, or graphical elements in your applied-for mark to increase the chance of distinguishing an already registered mark. Taglines, words, characters, or other elements that are not included in your application when it is filed probably will be of no help in distinguishing prior marks, as was the case for Arista.

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How to Destroy Your Trade Dress Rights in a Product Design

Illinois Tool Works (ITW) was the owner of three product design trademark registrations used in connection with resealable plastic bags. ITW licensed these trademarks to third parties, including S.C. Johnson. S.C. Johnson appears to use these designs in its ZIPLOC branded bags. The product design trademarks (a.k.a. trade dress) are directed to a colored stripe extending across the top of a bag. Tm Reg. Nos. 0946120, 1055114, 1294243. An example figure from the Registration No. 0946120 follows.

946120

Poly-America, L.P. petitioned the USPTO to cancel these trademark registrations. [Poly-America, L.P. v. Illinois Tool Works, No. 92056833 (TTAB 2017)]. Poly-America asserted that the mark of each was ineligible for registration because the color stripe was functional.

Obtaining trademark protection over a product design or a portion of a product design is not easy. This is because it is more likely that consumers generally see design features as functional and not a source indicating. Functional features are protected by patents not trademarks. How can we determine if something is functional rather than source indicating? Well, it is easy to assert that a product design feature is functional if the trademark owner admits that it is functional in its advertising and in its utility patent. That’s what happened to ITW.

Here’s a portion of the present law on functionality. The registration of a product design may be denied or cancelled if it “comprises any matter that, as a whole, is functional.” 15 U.S.C. § 1052(e)(5). A product design or product feature is functional if it is (1) “essential to the use or purpose of the article,” or if it (2) “affects the cost or quality of the article.” TrafFix Devices Inc. v. Mktg. Displays Inc., 532 U.S. 23 (2001). Two factors relevant to whether a design is functional are “(1) the existence of a utility patent disclosing the utilitarian advantages of the design; and (2) advertising materials in which the originator of the design touts the design’s utilitarian advantages…”

In the Poly-America case, ITW’s predecessor admitted that the colored strip was functional in its utility patent, US Patent. No. 3054434. The patent stated, “In order to facilitate identification of the flanges as means to assist in the separation of the strips 9′, 9′ when they are engaged together, the flanges may be colored differently than the strips themselves.”

Further, ITW’s predecessor admitted that the color strip was functional it its advertising of the product. The advertising stated, the “color flange immediately identifies the point of opening” and “also serves a practical purpose. It immediately identifies the point of opening.”

The Board relied on these admissions to conclude that the registrations should be canceled as the colored strip is functional.

When seeking or holding trade dress protection in a product design, advertising and utility patent efforts must be closely monitored and coordinated so that you don’t destroy such trade dress protection by admitting that the relevant product design features are functional.

 

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Google’s Trademark Survives Genericide Attack Despite Use as a Verb

Google’s trademark was attacked by two individuals who claimed that the GOOGLE trademark was generic for the act of internet searching in the case of Elliott v. Google, Inc., No 15-15809 (9th Cir. 2017). The owner of a valid trademark can become the “victim of genericide,” which occurs when the public appropriates a trademark and uses it as a generic name for a type of goods or services regardless of the source. If this happens, as it did for ASPIRIN and THERMOS, the trademark owner can loose its rights in the mark.

Here, the plaintiffs claimed that the public’s use of google as a verb, e.g. “I googled it,” showed that the trademark was generic. The plaintiff’s claimed that a word can only be used in a trademark sense when it is used as an adjective, e.g. “the Google search engine.” However, the Ninth Circuit held that verb use alone does not automatically constitute a generic use. Trademark lawyers often counsel their clients to use a trademark as an adjective and not as a noun or verb to avoid the possibility that the mark could be come generic.

Here, though, the court says that more beyond verb use is needed to know whether a mark is generic for a type of good or service. Instead, to know if the public uses the mark as a generic name of a type of good or service, we need some information about what the consumer is thinking when they use the mark as a verb. Did the consumer mean the google search engine or any internet search engine when using google as a verb? The court found that there was insufficient evidence of what the customer/public was thinking when they used the term google as a verb.

The court also found that a claim that a mark is generic must be made in relation to a good or service, not an act. Therefore the proper question was whether Google was generic for internet search engines. The question was not whether google was generic for the act of internet searching, as the plaintiffs asserted.

While this case shows that use of a trademark as a verb is not conclusive evidence that a mark is generic, it is best to use and encourage others to use, as Google does, a trademark as an adjective, and not as a verb or a noun.

 

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Components of a Trademark Cease and Desist Letter

At its most basic, a trademark cease and desist letter explains the what and why of the wrongful conduct and requests that it stop. Below provides a more detailed explanation of some components that may go into a cease and desist letter, depending on the circumstances.

1.  Who is this?

Simply explain who you are. For example, “I’m the president of Acme, Inc.”

2. Tell them what you want

Provide a brief one or two sentence summary of the issue and what you want. For example, “I am writing regarding Beta Inc.’s use of the word “BOSSES” in connection with the sale of widgets. As this use infringes Acme’s trademark rights, Acme demands that you immediately stop all use of BOSSES in connection with the sale of widgets.”

3. Explain your rights

Provide an explanation of the basis for your trademark rights. Trademark rights can be based on use of a mark in connection with goods or services. A trademark registration is helpful but is not required to obtain trademark rights.

Acme Inc. is the owner of the BOSS trademark. Acme has used the mark continuously and exclusively in connection with widgets since at least [first use date]. Acme has advertised and sold widgets in the U.S. through its [channels of trade, e.g. website, retailers, etc…]. Therefore, Acme has established valuable trademark rights. In addition to its common law trademark rights, Acme is the owner of U.S. Trademark Registration No. __________ for the mark BOSS.

4. Introduce the wrongful conduct

Explain the activities of the recipient that violate your trademark rights.

Beta is engaged in the sale of widgets having the BOSSES mark at [locations of sale, e.g. website, retail, etc]. This activity infringes Acme’s trademark rights.

5. Explain the applicable law

Explain the trademark law that is applicable to your situation.

Trademark law prohibits parties from using a trademark in a manner that is likely to create confusion in the market place as to the source of the goods provided in connection with the trademark. Whether there is a likelihood of confusion depends on several factors including the similarities of the marks and the similarities of the good/services.

6. Explain how the law applies

Explain how the trademark law applies to your situation.

Here, comparing the marks, BOSSES is very similar to BOSS. Each mark contains the common root word BOSS, which provides a similarity of sound, meaning, and appearance. Your mark merely provides a plural of Acme’s BOSS mark. Therefore, the marks are similar.

Turning to the goods, your widgets are ________ type widgets, which are the same type of widget sold by Acme under its BOSS trademark. Further, your widgets are sold to the same type of customers and are useable in the same type of applications as the Acme widgets sold under the BOSS mark.

As a result, your use of BOSSES in connection with the sale of widgets is likely to cause confusion with Acme’s trademark BOSS in the marketplace.

7. Explain the possible consequences

You can also explain the consequences of trademark infringement.

Trademark law and common law provide protection for trademark owners. Some of the remedies available to trademark owners against trademark infringers include enjoining the infringer from using the trademark, impounding and destroying goods bearing the trademark, recovery of the infringer’s profits, and an award of attorney’s fees.

8. State Your Demand(s)

List your demand or demands.

Therefore, Acme demands that Beta take the following steps by [deadline]: (1) stop using the mark BOSSES and any similar mark in the marketing and sale of widgets; (2) recall and destroy all advertising, products, labels, packaging, stationary, and other materials having the BOSSES mark, (3) turnover control of any domain names having the BOSSES mark to us, etc…

9. Reservation

A reservation of rights statement can be included stating that Acme reserves all of its rights, none of which is waived by the letter.

Cautions

The above are possible parts of a cease and desist letter. Lawyers often receive requests for “forms.” However, forms, if they are any good at all, are only a starting place and most often need modification to fit a particular circumstance. Therefore, the example excerpts might not be appropriate for your circumstance.

Further, it might be that you should not send a cease and desist letter at all. Generally, trademark law awards rights based on priority–that is, who was first. If you send a cease and desist letter to someone that started using their mark before you started using your mark, you could be in trouble. If the recipient was first, he/she/it could be a senior user that could turn around and sue you for infringing their mark. And your letter could be used as an admission of infringement. Therefore, it is critical to determine whether you have priority over the target of your letter before any letter is sent. But examining all the details of priority is outside the scope of this post.

Moreover, the recipient of your letter could use it to gain “home court advantage” by filing a declaratory judgement lawsuit against you in their home state or district. Many courts can only decide cases and controversies. And your threatening cease and desist letter will create a controversy that the target of the letter could use to start a lawsuit in their preferred court asking the court to declare that they do not infringe your mark. Therefore, when sending a cease and desist letter, you must consider the risk that the target could file a lawsuit based on the letter in a court that is far from you or otherwise disadvantageous.