Westchester Women's Bar Association
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William Adams (aka “will.i.am”) member of the well-known music group, The Black Eyed Peas filed a trademark application for the mark I AM at the United States Patent & Trademark Office. The trademark application identified products in international class 3 including but not limited to cosmetics, fragrances, beauty products and personal care products. The Examining Attorney refused registration on the ground of likelihood of confusion. The cited mark was a prior registration for the identical trademark I AM for perfume in international class 3. William Adams appealed to the Trademark Trial and Appeal Board (the “Board” or the “TTAB”) and after filing the appeal assigned the trademark application to i.am.symbollic, llc (the “Applicant”). See In re  i.am.symbollic, llc Serial No. 85044494 (TTAB October 7, 2015).

The Applicant insisted that the language included in the identification of goods distinguished the goods from those cited in the prior registration. Specifically, the identification of goods states that the goods are “associated with William Adams, professionally known as ‘will.i.am.’ “. The Applicant alleges that the marks are marketed differently, the cited mark is not famous, and most importantly the goods identify Applicant’s founder “will.i.am”. The Applicant further argues that since the goods are exclusively associated with the famous front man of the band, The Black Eyed Peas (will.i.am.) there cannot be confusion with the cited mark I AM for perfume.

The primary inquiry with a likelihood of confusion analysis is the cumulative effect of differences in the essential characteristics of the goods and differences between the marks. The test is the recollection of the average consumer. Likelihood of confusion will be found if there is any confusion with any items included in the identification of goods that could possibly cause confusion between the sources of the goods. See Apple Computer v. TVNET.Net, Inc., 90 USPQ2d 1393 (TTAB 2007). In making the determination as to the relatedness of the goods, the evaluation must be based on the language used in the identification of the goods or services.

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Most readers will know that Pinterest Inc. (“Pinterest”) owns a social media website that allows users to post content by creating pins on their virtual “pinboard” in subject matters such as fashion, food, recipes, travel and home decor. Pinterest maintains trademark registrations for the marks “PINTEREST” and for “PIN” and has used these marks since March of 2010. Pinterest sued Pintrips Inc. (“Pintrips”) for trademark infringement, trademark dilution and other related causes of action. Pintrips uses the terms Pintrips and Pin in connection with its online services for travel planning. Users of Pintrips’ website have a “tripboard” where they can pin agendas for their travels and monitor price information regarding flights. Pintrips possesses common law rights and does not own any federal trademark registrations.

Pintrips filed a trademark application for PINTRIPS at the United States Patent & Trademark Office (USPTO). The matter was been stayed since Pinterest filed an action in the United States District Court Of Northern California for trademark infringement. The Court addressed the following matters first: (1) whether the common law trademark PINTRIPS infringes the registered mark PINTEREST; and whether the term Pin infringes Pinterest’s registered mark PIN and common law mark PIN IT. To make a determination the Court had to first assess the strength of Pinterest’s marks.

Not all trademarks are given the same scope of protection. The amount of protection turns on the type of mark in question. Trademarks fall into five categories. See our webpage entitled, The Importance Of Selecting A Distinctive And Inventive Mark for more information on the five categories of marks. The two strongest groups of trademarks are fanciful and arbitrary marks. These types of trademarks receive the broadest scope of protection. Suggestive marks are considered distinctive marks but receive a lesser amount of protection. Lastly, descriptive marks are considered to be weak trademarks and receive a very narrow scope of protection until they develop secondary meaning.

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In an earlier blog post, I stated that there were two significant decisions on the subject of how to use third-party evidence to demonstrate a crowded field of similar marks for similar goods or services. See our blog post entitled The Federal Circuit Sends A Strong Message To The TTAB, where the case of Juice Generation, Inc. V. GS Enterprises LLC, ____ F.3d____, 2015 WL 4400033 (Fed. Cir. July 20, 2015) was discussed. The second Federal Circuit decision, Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. Millennium Sports, S.L.U., 2015 U.S. App. LEXIS 12456, was issued in August of this year and it instructs the Trademark Trial and Appeal Board (the “Board” or “TTAB”) on when it is appropriate to extend only a narrow scope of protection to a mark based on a crowd field. This case underscores the general rule that not all trademarks are given a broad scope of protection.

In Jack Wolfskin, the Appellant/Applicant applied to register a design mark consisting of a paw print for use with apparel, footwear and accessories. To view Jack Wolfskin’s design mark click on this hyperlink. To view the Appellee’s paw print mark click on this hyperlink. The Appellee opposed the trademark application on the grounds of likelihood of confusion. The TTAB sustained the opposition and refused to register the mark. Jack Wolfskin appealed to the Federal District court and the court agreed with the Appellant that the Board incorrectly found a likelihood of confusion between the two marks. The Board failed to recognize the significant evidence of paw print designs appearing in third-party registrations for use with clothing.

The determination of whether there is a likelihood of confusion between the sources of two marks is a question of law based on the relevant facts. The Du Pont factors that are relevant to the record must be examined. Jack Wolfskin asserted on appeal that the Board’s likelihood of confusion analysis was flawed because there was insufficient evidence to support two important factors: similarities of the marks and the number and nature of similar marks in use.

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Several of our clients have recently inquired as to whether their mark can function as a certification trademark. The Trademark Act provides for registration of certification marks under Section 4. It can be any word, symbol, name or device or any combination thereof used by a person other than its owner or one where the owner of the mark maintains a bona fide intent to permit others to use the mark in commerce and the owner registers the mark on the Principal Register at the United States Patent & Trademark Office (“USPTO”). A certification mark differs from a standard trademark in that the owner does not use a certification mark and a mark of this nature does not indicate commercial source nor does it distinguish the goods and services among trademark owners. In fact, if a trademark owner uses the mark then pursuant to the statutory definition it is no longer a valid certification trademark.

There are three types of certification marks. The first category certifies that the goods or services emanate from a specific geographic region. An example would be COGNAC for distilled brandy from a region in France. The second category certifies that the goods and services meet certain standards in connection to the quality, materials, or mode of manufacture. For example, the certification mark UL certifies that samplings of electrical equipment meet certain safety standards. See Midwest Plastic Fabricators, Inc. v. Underwriters Laboratories Inc., 906 F.2d 1568, 15 USPQ2d 1359 (Fed. Cir. 1990). The third category certifies that the work or labor of the goods or services was performed by a member of a union or other organization or that the worker or laborer meets the required standards. For example, CRNA functions as a certification mark used to certify that a person who meets certain standards and tests of competency is performing anesthesia services.

Another common question we receive is can the same mark simultaneously function as a standard trademark and a certification mark. Most practitioners believe that the same mark may not be used both as a certification mark and as a trademark or service mark for the same goods or services. The rationale is that using the same term for both purposes would result in confusion about the meaning of the mark.

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The Federal Circuit recently issued two trademark decisions on the subject of third party use evidence and the weight that should be given to a crowded field argument. Both of these cases deserve attention. These decisions will have a significant impact on future decisions rendered by the Trademark Trial and Appeal Board (“TTAB” or the “Board”) and will also impact the decisions of USPTO examining attorneys. This week’s post will feature the case of Juice Generation, Inc. v. GS Enterprises LLC,  ____ F.3d ___, 2015 WL 4400033 (Fed. Cir. July 20, 2015).

Juice Generation, Inc. (“Juice Generation”) applied to the USPTO to register the mark PEACE LOVE AND JUICE (as both a standard character mark & a design mark) for juice bar services. GS Enterprises (“GS”) opposed the application on the ground that it would cause a likelihood of confusion with its family of marks, containing the phrase “PEACE & LOVE” for restaurant services. The Board sustained the opposition and refused to register Juice Generation’s mark and Juice Generation appealed the decision. The Federal Circuit vacated the Board’s decision and remanded the case to the Board so it could consider and evaluate the trademark as a whole because the Court held there was no evidence to suggest it considered the mark in its entirety. Moreover, the Federal Circuit stated consideration must also be given to the third-party use evidence.

The Board evaluated whether there was a likelihood of confusion by looking at the thirteen factors identified in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). See our web page entitled, Likelihood Of Confusion Refusals, 2(d) Refusal, where all thirteen factors are set forth. The Board reviewed the factors and determined that the similarities between the marks, the services, and the trade channels, as well as the similarities of the buyers and the purchasing conditions weighed in favor of finding a likelihood of confusion. Interestingly enough, when reviewing factor six, the number of similar marks in use, the Board held that either this factor was neutral or that it weighed slightly against finding confusion. The Court held that the Board did not sufficiently assess the strengths or weaknesses of GS’s marks and this is directly related to the sixth factor. Further, the Federal Circuit Court held that the Board gave inadequate consideration to Juice Generation’s three-word mark as a whole.

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The U.S. Court of Appeals for the Fifth Circuit recently reminded trademark owners that secondary meaning may not necessarily develop over time for a merely descriptive trademark. A merely descriptive mark is one that describes a feature, function, purpose, ingredient, quality, or use of an applicant’s goods or services. This principal is discussed in the Trademark Manual of Examining Procedure §1209.01 (b) and on our web page entitled Disadvantages of Descriptive Trademarks. A merely descriptive mark cannot be registered on the Principal Register because it lacks distinctiveness.

Marks on the Supplemental Register are weak marks that are difficult to enforce and will only receive a narrow scope of protection. Significant effort and resources must be invested over time to strengthen the merely descriptive mark through use, promotion, marketing, and advertising the mark in commerce. A significant budget must exist for marketing and advertising.

If an owner of a merely descriptive mark wants to sue for infringement, he must prove that he owns a proprietary right in the mark by showing the mark has acquired distinctiveness. Often, the end result will be that the mark owner is unable to prevent competitors from using a similar mark on a related good or service and this was the outcome in the Fifth Circuit in Test Masters Educ. Servs., Inc. v. Robin Singh Educ. Servs., Inc. Case No. 20250 (5th Cir., August 21, 2015).

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This blog post is a follow-up to our post entitled, Has One Of Tiffany And Company’s Trademarks Become Generic? posted on February 14, 2014. The U.S. District Court for the Southern District of New York answered the question we asked in our previous post after a two year court battle and the answer is no. Costco Wholesale Corporation (“Costco), the discount retailer displayed the term TIFFANY next to several diamond rings for sale, none of which were manufactured by Tiffany & Co. (“Tiffany”). Tiffany filed a lawsuit alleging trademark infringement, false advertising, unfair competition, counterfeiting, and dilution among other claims.

Costco counterclaimed alleging that the term Tiffany is generic for ring settings with six prongs. A trademark can become generic if the meaning becomes associated with the category of goods and services and the mark can no longer distinguish the goods and services on the basis of source. Essentially, Costco was alleging that the public had appropriated the term Tiffany to mean all rings with a particular setting type. See our blog post of February 14, 2014 where we discuss the legal concept of genericide.

Tiffany offered a significant amount of evidence to rebut Costco’s genericism claim. Among the evidence was a study of consumers. The study consisted of a survey administered to 464 men and women over the age of 21. The studied group received training for the survey. The group was first given a list of words and was asked to identify which words were brand names and which were descriptive terms. Then, they were each given a context to evaluate whether the term Tiffany was a brand name or a descriptive term. Nine out of ten of the prospective consumers considered Tiffany to be a brand identifier. Costco submitted evidence to rebut the survey. However, Costco was unable to raise a material issue of fact with respect to whether the primary significance of the Tiffany mark to the relevant public was a generic descriptor or a brand identifier. Therefore, the Court held that the counterclaim would be dismissed.

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Google announced a new branding identity to the world on September 1, 2015. Read more about Google’s logo update on its official blog. Certainly other brands look to Google to take the lead in innovative branding. Whether you love or hate the new Google logo, it was updated for some very practical reasons. The font has changed in the GOOGLE word mark. In addition, the lower case “g” icon is replaced with the upper case “G” which identifies most of its apps. Google’s trademark modifications are strategic and purposeful design changes that accommodate users who are moving away from laptop use and are moving towards use on a tablet, mobile phone, or other smaller devices, such as a watch. These new marks signify that Google believes that the momentum towards mobile media is here to stay.

Google’s choice of font style in conjunction with the bright primary colors of the new logo will be easier to read in smaller fonts and on smaller devices. In addition to the GOOGLE mark being redesigned, the company introduced a new mark, the “G” logo. The new upper case “G” logo incorporates the four primary colors found in the word mark, improving the aesthetic look and increasing the bold visual appearance for smaller screens. Now if there comes a time when the GOOGLE mark is too small in visual appearance, the company has the option of using the “G” logo mark as an alternative.

In addition, to the two new marks Google introduced to the world, a third animated mark was launched. See Google’s official blog page and view the new animated mark, click on the play button for the video and the animated mark appears towards the end of the short video . This mark is also based on the primary colors of the GOOGLE word mark. It contains four dots blue, red, yellow and green that move about in several different patterns before coming back together to form the GOOGLE word mark or the “G” logo.

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Failure to conduct a proper trademark clearance search can cause significant legal issues for a trademark owner at some point in the future. It is our practice to continually reiterate and encourage our clients to take the time to conduct a proper full U.S. trademark search before filing an application with the United States Patent & Trademark Office (“USPTO”). A recent case from the Trademark Trial and Appeal Board (“TTAB” or the “Board”) illustrates why this due diligence is so important to a trademark owner. See Daniel P. Matthews v. Black Clouds, Cancellation No. 92058978 (TTAB July 31, 2015).

On April 8, 2014, the Petitioner based on his common law rights in the mark THE BLACK CLOUDS for audio and video recordings via hard media and for streaming and downloading digital music, petitioned the TTAB to cancel a registration for the mark BLACK CLOUDS. The registration for BLACK CLOUDS, among other goods, identified audio and video recordings featuring music and artistic recordings. Petitioner claimed priority of rights and likelihood of confusion.

The Petitioner made a motion for summary judgment. This type of motion is made pretrial and it is intended to prove to the Board that there is no genuine dispute of material fact. The party filing a summary judgment motion is hoping to dispose of the matter early in the proceedings. The burden falls on the moving party to meet a certain level of proof and if met, the onus shifts to the respondent to demonstrate that there are facts in genuine dispute that must be resolved at trial. In this case the petitioner had to prove that it had priority rights in the mark THE BLACK CLOUDS and that use of the marks simultaneously would be likely to cause confusion, mistake or deceive consumers.

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This question is one that is frequently asked by our trademark clients. Once a Final Refusal has issued in an Office Action, a trademark applicant can file a request for reconsideration with the Examining Attorney, file an appeal with the Trademark Trial and Appeal Board (the “Board)”, or the applicant can file both a request for reconsideration and an appeal simultaneously. In the latter case, the trademark applicant should indicate in its Notice of Appeal that it has filed a request for reconsideration in conjunction with the Notice of Appeal. Moreover, we recommend that once the two filings are made that the applicant file with the Board a request to suspend the appeal until there has been a decision on the request for reconsideration and specifically request that the application be remanded to the Examining Attorney.

A request for reconsideration is a tool that is often overlooked by trademark practitioners. Often, it can be an effective strategy to avoid the need for an appeal or it can build a stronger record for an appeal, if in the end an appeal is required. To use this strategy effectively, a trademark applicant should raise new arguments in the request for reconsideration. In fact, the applicant would be wise to introduce additional evidence and even request an amendment intended to overcome the refusal in the request for reconsideration.

For example, if an Examiner refused an application based on the mark being merely descriptive of the goods or services, then an applicant could amend the application to claim acquired distinctiveness or the applicant could request to amend the application to the Supplement Register instead of the Principal Register. Yet another example would be if there was a likelihood of confusion refusal issued, then in this case the applicant could amend the application to narrow the identification of goods, limit the trade channels, or the applicant could acquire consent from the registrant and submit the consent with its request for reconsideration.

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