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Transferring Goodwill to a New Trademark: Using the Old and New Trademarks Together

Trademark owners develop goodwill associated with their trademarks by using the trademarks in connection with goods/services. Therefore, a name change risks loosing all the goodwill associated with the prior name in the marketplace. One way to mitigate this risk of loss is to use the old and new name together for a time. This will inform the marketplace that the new name is associated with the old. Hopefully some of the goodwill and recognition will transfer to the new name.

Recently Hitachi Power Tool rebranded as Metabo HTP. You can see the rebranding notice that was previously used below a miter saw in this Amazon listing:

This notice is very direct, providing a narrow to the new name and including the words “New Name.” They didn’t have to use “New Name”, but they did to be even more direct beyond the arrow.

You don’t have to use the “New Name” words. You could say Trademark A is now Trademark B. There are a number of options for trying to transfer the goodwill to a new name by using the old and new names together.

Unless the old brand is trying to escape a negative reputation by rebranding, the use of both the new and old trademark together for a time is a good method to try to transfer the goodwill and brand recognition developed under the old trademark to the new trademark.



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Adding a Descriptive Word to a Mark Unlikely to Avoid Confusion When Common Words Are Strong

I previously wrote about the trademark application for BEAST MODE SOCCER. In that case, evidence of third party use was not close enough to weaken the two registered marks for BEAST MODE owned by retired NFL football player Marshawn Lynch.

Another issue in that case was whether the addition of SOCCER in the applied-for mark was sufficient to distinguish it from the registered marks. It was not.

The court said, “When one incorporates the entire arbitrary mark of another into a composite mark, . . . inclusion of a merely suggestive or descriptive element, of course, is of much less significance in avoiding a likelihood of confusion.” 

How was SOCCER word was descriptive of the applicant’s T-shirt goods? The applicant Copeland-Smith was a soccer coach. And he had been training soccer players under his mark BEAST MODE SOCCER, which was registered under another applciation for “coaching services in the field of soccer; providing group coaching and learning forums in the field of soccer.” 

The overlapping elements, BEAST MODE, were strong and the SOCCER element was weak as descriptive. Therefore, the addition of SOCCER to BEAST MODE was not sufficient to distinguish it from BEAST MODE and avoid a likelihood of confusion.

Case: In Re: Copeland-Smith, No. 2018-1968 (Fed. Cir. 2019).

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Inventing Play-Doh: Repurposing an Obsolete Product

History provides numerous examples of what could be called “accidental” inventions– inventions that were discovered or developed for one problem or purpose while the inventor was working on something else. Examples include penicillin and the slinky, among reported others.

An article at the Smithsonian explains the origins of Play-Doh. The creation of the Play-Doh material was not an accident. Instead the product owner found a new use for an existing product.

The existing product was a compound originally used for wiping and removing soot from wallpaper. Demand was falling for this product as fuel sources for heating moved from dirtier coal to cleaner oil, gas, and electricity. Joseph McVicker’s company selling the wallpaper cleaner was struggling when his sister-in-law Kay Zufall, a nursery school teacher, found children liked molding the pliable compound into various shapes. Play-Doh as a childern’s product was born.

Zufall reportedly coined the Play-Doh product name as well.

Zukfall, as a teacher, saw the world and the product differently from her perspective working with children. Something that was probably not obvious to McVicker. This is an example of an idea born not from solitude, but from a mix of perspectives.

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Third Party Use Not Close Enough to Goods of Registrant to Sufficiently Weaken Rights

David Copeland-Smith filed a trademark application on BEAST MODE SOCCER for T-shirts, which the USPTO refused based on two registered marks for BEAST MODE owned by retired NFL football player Marshawn Lynch. The registered marks covered the goods of “Men’s, women’s and children’s clothing, namely, shirts, sweatshirts; [and] headwear, namely hats, caps.”

Copeland-Smith argued the BEAST MODE mark was weak due to third party trademark registrations, applications, and uses of Beast Mode. The appeals court disagreed.

The seven third party registrations did not identify articles of closing, but rather pertained to ““computer software, dietary and nutritional supplements, beer, advertising and marketing consultancy, and entertainment in the nature of competitions in the field of fitness…” In other words, the goods/services of the third party registrations were not close enough to clothing to narrow Lynch’s rights in BEAST MODE.

Regarding uses, the Foreign websites identified by Copeland-Smith where of no probative value in determining likelihood of confusion in the US.

Further, many of the US websites with uses of Beast Mode were directed to goods and services other than clothing. The appeals court noted its prior decision where it said “T]he present analysis only involves goods like those being offered by the parties to the ‘relevant public,’ while third-party use outside of that relevant market is meaningless.”

Therefore, third party use of marks should be in connection with goods/services like those offered by the parties to have a good chance a narrowing trademark rights.

Case: In Re: Copeland-Smith, No. 2018-1968 (Fed. Cir. 2019)

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Sports Fuel is Descriptive of Food Products for Athletes?

SportFuel sued Pepico and The Gatorade Company asserting that Gatorade’s use of Sports Fuel infringed its SportFuel trademark. The Seventh Circuit found Gatorade’s use of Sports Fuel was not infringing because Gatorade’s use was a descriptive use.

It appears that Gatorade used Sports Fuel in “GATORADE THE SPORTS FUEL COMPANY.” The court’s opinion provided this image of Gatorade’s use of Sports Fuel.

In finding Gatorade’s use of Sports Fuel descriptive, the court said “It requires no imaginative leap to understand that a company selling ‘Sports Fuel’ is selling a variety of food products designed for athletes.”

Is “fuel” so directly and immediately descriptive of food? I’m not so sure. Without considering market use, I think that fuel could be suggestive rather that descriptive of food or drinks. Other factors such as the alleged third party use and the manner of use in the slogan probably played a larger roll in the court’s conclusion that the use was descriptive.

Cite: SportFuel, Inc. v. PepsiCo, Inc., No. 18-3010 (7th Cir. Aug. 2, 2019).

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Are Suggestive Logos More Effective?

Previously, I discussed whether a company or product name was predictive of future success. Now suggestive/descriptive nature of a logo may (or may not) also be a factor.

A recent study, reported in HBR, found that in certain circumstances, what the authors call “descriptive logos” positively influence brand evaluations, purchase intentions, and brand performance.

The study defines a descriptive logo as one that includes textual or visual design elements that communicate the type of product or service offered under the logo. For example, Burger King’s logo shown below is “descriptive” in that it contains burger bun where as the McDonald’s “M” logo is not.

The study found that as compared to non-descriptive logos, “descriptive” logos: (1) make brands appear more authentic in consumers’ eyes, (2) more favorably impact consumers’ evaluations of brands, and (3) more strongly increase consumers’ willingness to buy from brands.

What the authors call “descriptive logos,” I think could be better labeled as suggestive logos because admitting that your (word) mark is descriptive is generally not good. Further, on the spectrum of trademark strength, it may be more appropriate to call these logos suggestive than descriptive, at least in some cases.

Descriptive/suggestive logos may not be appropriate when a company sells goods or services in unrelated fields, such that a descriptive/suggestive logo for one line of products would not be appropriate or make sense for the companies’ other unrelated lines.

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Nonfunctional Trade Dress

Trade dress can include the shape or configuration a product or packaging. Trade dress is protectable if, among other things, it serves to identify a source of goods or services, as a trademark does, and it is nonfunctional. The question of what is nonfunctional was addressed in a recent case involving a french press coffee maker.

Bodum USA sued A Top New Casting alleging infringement of Bodum’s trade dress in the product configuration of its Chambord french press coffee maker. Below is a comparison of the products at issue with the Bodum’s product on the left and A Top’ s product on the right (from the court opinion):

Bodum claimed trade dress protection in the overall appearance of its product, with the following elements identified as contributing to that appearance: “the metal band surrounding the carafe that forms support feet and the handle attachment, the domed lid, the rounded knob atop the plunger, and the C‐shaped handle.”

A Top argued that Bodum failed to establish that these claimed features where not essential to the product’s use and therefore nonfunctional. Yet the court distinguished the common meaning of functional from the meaning used in trade dress law.

The court said that “to establish it has a valid trade dress, Bodum did not have to prove that something like a handle does not serve any function.” The court continued, “It merely needed to prove that preventing competitors from copying the Chambord’s particular design would not significantly disadvantage them from producing a competitive and cost‐efficient French press coffeemaker.”

According to the court, Bodum was not claiming that any French press coffeemaker with a handle, a domed top, or metal around the carafe infringes on its trade dress. Instead it was objecting to the overall appearance of A Top’s product, which included “the same shaped handle, the same domed lid, the same shaped feet, the same rounded knob, and the same shaped metal frame as the Chambord.”

The court found that Bodum presented sufficient evidence for a jury to conclude that the claimed trade dress was nonfunctional under trade dress law, even though the claimed trade dress included elements that had a function.

Citation: Bodum USA, Inc. v. A Top New Casting Inc., No. 18-3020 (7th Cir. 2019).

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Domain Name Registration Alone Does Not Establish Trademark Rights

You’re ready to launch a new business, product, service, or project. You have a name. The domain name for the name you chose is available. So you register it. But you haven’t lunched a website at the domain name you registered. Nor have you done anything more, other than prepare internally to launch. Have you established trademark rights in the name? Probably not.

In the case of Brookfield Communs., Inc. v. West Coast Entm’t Corp. 174 F.3d 1036, 1052 (9th Cir. 1999), Brookfeild sued West Coast alleging that West Coast’s planned use of Moviebuff.com infringed Brookfield’s trademark rights in MovieBuff.

West Coast argued that it had trademark priority (first use) by registering the domain name MovieBuff.com in February 1996 before Brookfield’s first use of MovieBuff in August 1997 in connection with its online database. However, West Coast had not yet launched a website at Moviebuff.com .

The court noted that the mere registration of a domain name with an intent to use the domain name as a trademark commercially does not establish trademark rights. Therefore, Brookfield’s first use of MovieBuff in August 1997 predated any valid trademark use of MovieBuff by West Coast in connection with its website. Therefore Brookfield had priority in the MOVIEBUFF mark. And West Coast’s “I was first” defense failed.

The court ordered that West Coast be enjoined (prohibited) from using MOVIEBUFF as a trademark and from using MOVIEBUFF.com.

The registration of a domain name is an important step in launching a project. If you can’t get the domain name, you might have to go with a different name for the project. However, registration of the domain name alone is not sufficient to establish trademark rights. To establish trademark rights, you’ll need something more, such as filing a federal trademark application (often preferred), or launching a website at the domain name providing goods and/or services under the trademark so that the name is in actual use as a trademark.

P.S. Also, forming a corporation or LLC with the name alone does not create federal trademark rights.

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Do Nothing and Wait

When there is a problem or a potential problem, the first desire is often to fix it and fix it now. However, sometimes the best approach is to do nothing and see if the problem solves itself.

Suspended Over Intent-to-Use Trademark Application

For example, consider the case where a trademark application is suspended based on a prior filed intent-to-use trademark application that is pending. If the owner of the prior filed intent-to-use trademark application has not filed a statement of use, it is possible that the owner will not file a statement of use. If a statement of use is not filed within the applicable time limit, then the application will be abandoned and no longer an obstacle to the later filed trademark application proceeding to registration.

It is not unusual for an owner of an intent-to-use application to abandon the application if their plans for using the mark fail to materialize. However, an owner of an intent-to-use application can extend the deadline to file a statement of use up to 3 years from the notice of allowance date. Therefore, this strategy of doing nothing, can involve a long wait time and a long period of uncertainty for the later filed trademark application owner.

Yet, if the later filed trademark application owner reaches out to the prior filed application owner the prior filed application owner might realize that their mark is more important (because someone else is interested in it) than he/she/it previously recognized. Therefore, contacting the trademark application owner might result in the filing a statement of use and perfecting the application, when he/she/it otherwise might not have otherwise done so. Therefore, doing something can be risker than doing nothing and waiting.

Refused Over Registration Nearing Renewal Deadline

As another example, consider the scenario where a trademark application is refused based a prior trademark registration, but the deadline for renewing the prior trademark registration is approaching. If the owner of the trademark registration does not file the renewal documents and pay the renewal fees, the trademark registration will be canceled, and no longer an obstacle to registration. Therefore, it may be best to wait to see if the renewal occurs, if time is available before an office action response top the refusal is due or otherwise.

Like in the prior example, contacting the trademark registration owner may lead the owner to renew the trademark registration–realizing it has value–when he/she/it otherwise would not have renewed.

Waiting can be uncomfortable because it allows tension and uncertainty. However, sometimes it is the best option.


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The Power of a Standard Character Trademark Registration

Cheryl Bauman-Buffone applied to register the mark JUST SAY IT in the stylized form shown below.

Nike opposed the registration based on its JUST DO IT trademarks in Nike, Inc. v. Cheryl Bauman-Buffone, Op No. 91234556 (TTAB 2019).

When the Trademark Trial and Appeals Board considered the similarities between the marks, it said, “The stylization of Applicant’s mark is essentially irrelevant, because Opposer’s [Nike’s] mark is registered in standard characters and typed forms, and could be displayed in any font or size, including in a manner similar to Applicant’s display of JUST SAY IT.” (emphasis added).

A standard character mark usually provides the broadest protection over the underlying words/characters of the mark. This is so, because the registration is not limited to any particular font or stylization of the mark. My prior article on Words or a Logo or Both in a Trademark Application? provides more factors to consider when choosing what to include in a federal trademark application.

Ultimately, the Board refused the registration Bauman-Buffone’s mark. While the similarity of the marks was not the only factor that lead to the refusal to register, it was an important factor.