Westchester Women's Bar Association
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Consent Agreements will be considered in a likelihood of confusion analysis. These are agreements between the registrant of a trademark and another party, where the registrant agrees to the registration of a similar or identical trademark. See our webpage entitled, Resolving Trademark Disputes Without Litigation for a detailed discussion on Consent Agreements and other types of agreements that can avoid litigation. The trademark applicant can submit a Consent Agreement to overcome a refusal of registration based on likelihood of confusion with a prior registered mark. The Examining Attorney will consider the Consent Agreement along with the other evidence in the record.

See In re Intuity Medical Inc., Serial Nos. 77416484 & 77416487 (July 26, 2011), where the Trademark Trial and Appeal Board (hereinafter the “Board”) held that the Applicant’s two marks were identical (ONE STEP & ONE-STEP – standard character marks) with the several marks that the Registrant owned (ONE-STEP in stylized formats and in standard character). Applicant identified his goods as “blood glucose monitoring systems including the devices, and parts and accessories thereof”. The Registrant’s goods were for “blood sampling prickers and parts therefore”.

The Board determined that the goods were related because blood drawing devices are a component of blood glucose monitoring systems. Essentially, the Board’s argument was that the Registrant’s identification was broad enough to include the goods of the Applicant (blood drawing devices used in connection with monitoring blood glucose levels). In conjunction with finding a relationship between the goods, the Board also held that the goods moved in the same channels of trade and were sold to the same classes of consumers.

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A recent court case in the Eastern District of California, E. & J. Gallo Winery v. Grenade Beverage LLC, No. 1:13-cv-00770 (E.D. Cal. Aug. 15, 2014), seems to underscore a trend of court decisions and TTAB findings where alcoholic and non-alcoholic beverages are considered related for purposes of a likelihood of confusion analysis. In this recent case, the court held that GALLO (for wines) and EL GALLO (for energy drinks) were similar trademarks and that the products were related. There was not much evidence produced by the parties that showed use of the products in the marketplace. Therefore, the Court relied on the similar spellings of the terms “Gallo” and “El Gallo” and inferred that based on the spellings of the terms, purchasers would likely pronounce the marks in the same way.

Regarding the analysis of the relatedness of the goods, the questions usually focus on the following: (1) are the products complementary; (2) are the products sold to the same class of consumers; and (3) are the products similar in use and function. A close proximity of the goods is not necessarily required. Here both products are in the beverage industry. Thus, they have similar use and function. Given that both products are beverages, there is a reasonable inference that they utilize similar marketing channels. Through deposition testimony, Gallo Wines contended that it would market its wine in convenience stores, supermarkets, liquor stores, restaurants, and bars. One of the Plaintiff’s witnesses attested to the fact that energy drinks and wines are sold in the same aisle of the grocery store. Therefore, the court concluded that the marketing channels of the two products overlapped to a certain degree.

The degree of care factor favors Plaintiff here. The rationale is that Plaintiff’s wines cost somewhere between $5.99-$9.99 a bottle. It has been held that consumers are likely to exercise less care when the goods are relatively inexpensive and that confusion is more likely when less care is employed. Several other factors also favored the Plaintiff. After reviewing all the evidence, the Court granted Plaintiff’s motion for summary judgment on all of its claims. It issued a permanent injunction against the use of EL GALLO for energy drinks.

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One of the most frequently asked questions in our trademark practice is, can my last name be used as a trademark? The answer is that it depends on the nature of the surname. In this blog post we will examine an example of when a surname can be used as a trademark and an example of when it would be considered primarily merely a surname. See In re G R  Lane Health Products Limited, Serial No. 85115445 (July 10, 2013) [not precedential]. In this case, the Applicant filed for the mark JAKEMANS for throat lozenges and similar goods in International Class 5 and hard candies in International Class 30. The Examining attorney refused the registration under section 2(e)(4) of the Trademark Act (15 U.S.C. §1052(e)(4)) on the grounds that JAKEMANS is primarily merely a surname.

The first question to ask is when viewing the trademark in relationship to the goods or services, will the purchasing public perceive the term’s primary significance as that of a surname. The Trademark Trial and Appeal Board (the “Board”) has identified five factors to be considered in making this determination:

(1)   Is the surname rare;

(2)   Is the term the surname of anyone connected with the applicant;

(3)   Does the term have recognized meaning other than as a surname;

(4)   Does the term have the look and feel of a surname; and

(5)   Whether the stylization of the lettering is distinctive enough to make a separate commercial impression.

If there is any doubt as to whether a term is primarily merely a surname, the Board will resolve the doubt in favor of the applicant. See In re Benthin Management GmbH, 37 USPQ2d 1332, 1334 (TTAB 1995). During the prosecution, the Examining Attorney presented evidence to show that the surname was not rare. The Examiner produced evidence showing 87 names in a telephone directory for the term Jakeman. The Board held that 87 names is NOT substantial evidence that Jakemans is a common surname. In fact, the Board determined that Jakemans is a very rare surname in the U.S. See also, In re United Distillers plc, 56 USPQ2d 1220 (TTAB 2000), where HACKLER was held to be a rare surname despite the 1,295 listings in the telephone directory.

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In recent years, prevailing on summary judgment motions at the Trademark Trial and Appeal Board (hereinafter the “Board”) has become more difficult. However, if a petitioner believes that there are no material facts in dispute, a summary judgment motion should be filed. The following case is a good example of how petitioners can prevail on these types of motions before the Board. In a recent cancellation proceeding, MeUndies, Inc. (hereinafter the “Petitioner”) alleged that Drew Massey dba myUndies Inc. (hereinafter the “Respondent”) abandoned its trademark MYUNDIES for clothing, namely underwear, boxers, briefs, panties, thongs, bras, sleepware, loungewear, shirts, shorts, jeans, pants, socks, and hats.

Petitioner also alleges that he owns MEUNDIES and MEUNDIES.COM for various undergarments and his use commenced on December 21, 2011. See MeUndies, Inc. v. Drew Massey dba myUndies Inc., Cancellation No. 92055585 (August 13, 2014) [not precedential]. The Respondent filed its application on October 22, 2008 based on use in commerce. The Petitioner filed a trademark application for the mark MYUNDIES.COM and it was refused based on a likelihood of confusion with Respondent’s registration. See  Trademark Act Section 2(d), 15 U.S.C.2d §1052(d), and our webpage entitled Likelihood Of Confusion Refusals – 2(d) Refusals, for details concerning the basis for this type of refusal. This blog post is categorized under Trademark Application Refusal because sometimes a trademark application will be refused, and the only appropriate recourse is to initiate a proceeding with the Board. An action before the Board may be necessary so that the applicant can demonstrate that there is good reason why its application should proceed, but the only way to allow it to proceed is to cancel another registration.

Petitioner filed a summary judgment motion based on abandonment and nonuse. Petitioners have the burden of demonstrating the absence of any genuine dispute as to a material fact. See Celotex Corp. v. Catrett 477 U.S. 317, 323 (1986). The burden then shifts to the non-moving party once the moving party submits sufficient evidence that if unopposed, shows that there is no genuine issue of material fact. In a summary judgment motion, the role of the Board is to determine if there are any material facts that can be disputed, and not to actually resolve any genuine disputes of material fact. See Lloyd’s Food Products Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993).

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In a recent July decision of the Trademark Trial and Appeal Board (“TTAB” or “Board”) a fashion company learned the hard way that registering a mark that has geographic significance can be an uphill battle. See In re Tigerland-Foxland of NY, Inc. Serial No. 85130889, July 23, 2014. Tigerland-Foxland of NY, Inc. (the “Applicant”) sought to register the mark VENEZIA-MILANO in standard characters for women’s clothing. The Examining Attorney refused the application on the basis that the trademark was geographically deceptively misdescriptive. The Applicant appealed to the Board. Regarding an evidentiary matter, the Applicant made a mistake in submitting third-party applications and not third-party registrations as supporting evidence. It is well settled law that the Board does not give probative value to pending trademark applications. Applications are evidence only of the fact that the application was filed with the USPTO. See In re Kent Pederson, 109 U.S.P.Q.2d 1185 (TTAB 2013).

Section 2(e)(3) of the Trademark Act states that a trademark is primarily geographically deceptively misdescriptive if:

(1)     The primary significance of the trademark is a generally known geographic area or region;

(2)     Applicant’s products or services do not originate in the generally known geographic location;

(3)     Consumers are likely to believe that Applicant’s goods or services originate in the known geographic location named in the mark; and

(4)     This misrepresentation is a material factor in the consumer’s decision making process when purchasing the goods or utilizing the services.

We discuss these four factors in detail on our web page entitled Geographic Indicators As Marks. You can also find additional information on this subject matter in the Trademark Manual Of Examining Procedure Section 1210.01(b). Applicant’s mark contains Italian words. Since Italian is a common language spoken in the United States, it is likely that U.S. consumers will translate the trademark into English. In recognition of this, Applicant has placed a translation statement in the record. The English translation is Venice-Milan. Venice and Milan are well known geographic locations in Italy. The Applicant unsuccessfully argued that since the term is hyphenated, consumers will read it as one location and there is no such place as Venice-Milan. The Board did not agree with this argument. The first requirement of this test is satisfied.

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Trademark applicants must be cautious when relying too heavily on third–party uses. This is an area where an experienced trademark attorney will be able to guide a trademark applicant in the right direction. Do not make the mistake of arguing that the existence of third-party registrations with similar terms can justify the registration of another confusingly similar trademark. Examining Attorneys utilize third-party registrations to show that the Registrant’s goods and the Applicant’s goods often have been covered in the same registration under the same trademark. The Examining Attorney submits this proof when refusing an application based on likelihood of confusion to show the relatedness of the goods or services and that the goods or services are of the type that may originate from a single source.

Applicants can also use third-party registrations as probative evidence as to the meaning of a mark or a term in the trademark. Essentially, the argument is that a term in the mark has a well-known meaning and this has been recognized by the Trademark Office by registering marks containing this common term for closely related goods. Other elements (apart from the common term) in the marks distinguish the trademarks. Thus, a finding of likelihood of confusion based on the common term is a flawed determination. In other words, third- party registrations may be relevant to show that the mark or a portion of the mark is descriptive, suggestive, or frequently used so that consumers will look to other elements to distinguish the source of the goods or services. See Plus Products v. Star-Kist Foods, Inc. 220 U.S.P.Q. 541, 544, 1983 WL 51884 (TTAB 1983). Evidence of third-party use falls under the sixth factor of the du Pont factor analysis. When determining likelihood of confusion, an Examining Attorney or the Board will consider the number of similar marks in use on similar goods or in use with similar services. However, third-party registrations do not prove the mark is in use.

Further evidence must be presented to demonstrate this fact. For example, an Applicant may submit testimony or declarations showing that through telephone contact it was verified that a number of the marks in the registrations or in the website evidence are in fact in use for the goods or services indicated. See Anthony’s Pizza & Pasta Int’l Inc. v. Anthony’s Pizza Holding Co., 95 1271 USPQ2d (TTAB 2009), aff’d 415 Fed. Appx. 222 (Fed. Circ. 2010), where there was evidence of third party registrations and telephone listings that showed extensive use of the name Anthony for Italian restaurants and pizzerias. The evidence was persuasive because 29 of the listings were proven to be currently in use in commerce and this was confirmed via telephone. As a result, the Board determined that the name “Anthony” in connection with restaurant services would be given a restricted scope of protection.

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On June 12, 2014, The Trademark Trial and Appeal Board (“TTAB” or the “Board”) reviewed the Appeal of Fibre-Crafts Materials Corp. (“Applicant”) who had filed a trademark application for the mark BENDASTIX for jewelry making kits and arts and crafts hobby kits for making toys. The Examining Attorney refused the application based on a likelihood of confusion with Merchant Media, LLC’s (“Registrant”) registrations for the marks BENDAROOS (standard character and stylized versions) and BENDAMODEL (standard character) for “flexible building, modeling, and craft toys, namely bendable toys”.  See In re Fibre-Craft Material Corp., Serial No. 86727475 (June 12, 2014). The TTAB reversed the refusal. The Board determined that the Registrant’s marks contained a highly suggestive term (“Bend”) in connection with its goods and therefore was entitled to a narrow scope of protection which would allow Applicant’s mark BENDASTIX to co-exist.

The Board relied on the factors in In re E.I. du Pont Nemours & Co., 476 F.2d 1357 177 USPQ 563 (CCPA 1973), and analyzed the probative facts in the record. First the goods were compared as recited in the trademark application and registrations. The applicant was seeking registration for kits for making jewelry and arts and crafts hobby kits for making toys. The Board held that the record did not present any facts to support a relationship between jewelry kits and toys that are bendable. However, the Board found that Applicant’s arts and crafts hobby kits could include bendable toys. Neither the Applicant nor the Registrant limited the trade channels in which the goods will be distributed. At this point in the analysis, the du Pont factors weigh in favor of finding a likelihood of confusion for Applicants craft kits, but not its jewelry making kits.

The next step in the analysis is to evaluate the strength of the marks. The Board will look to the number of similar trademarks on like goods. If multiple third party marks use a particular term for similar goods, the mark may be considered weak. See Palm Bay Imp. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The Board provided an example of a highly suggestive term (“Grand Hotel”) that when used in connection hotel branding was considered weak. In the instant case, due to the extensive use of the term BEND for toys, those marks that incorporate this highly suggestive term, receive a narrow scope of protection. The extensive use of the term BEND demonstrates that consumers have become accustom to distinguishing “BEND” marks in the toy category, based on minor differences between the marks.

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The answer to this question is similar to the answer to many other legal questions, it depends on a number of factors. The central inquiry is what is the primary significance of the term to the purchasing public. Under §2(e)(4), of the Trademark Act, 15 U.S.C. §1052(e)(4) a trademark that is primarily merely a surname cannot register on the Principal Register of the United States Patent & Trademark Office (USPTO) absent a showing of acquired distinctiveness under §2(f), 15 U.S.C. §1052(f). However, a trademark that is primarily merely a surname can register on the Supplemental Register. In some of my earlier postings, I have discussed some of the types of marks appropriate for the Supplemental Register. These marks include descriptive terms that are capable of acquiring distinctiveness, geographic terms, trade dress that is not functional or distinctive, and certain surnames. See our webpage entitled Filing Your Trademark On The Principal Register And Supplemental Register.

The reasoning behind this rule is that exclusive rights in a surname cannot be established without a showing of a long history of exclusive use so that the meaning to the public changes from that of a surname to that of a trademark for specific goods or services. Public policy recognizes that many people can share the same surname and multiple parties may have an interest in utilizing the name as a brand in business. Therefore, it is fair to ask the party requesting exclusive rights to the surname to demonstrate that the name has acquired secondary meaning.

It is not always easy to ascertain whether a last name is primarily merely a surname and even the experts at the USPTO struggle with this determination. A couple of weeks ago, the Trademark Trial and Appeal Board (“TTAB” or “Board”) reversed a refusal to register a trademark based on finding that the proposed mark was not primarily merely a surname. See In re The Hyman Companies Inc., Serial No. 85483695 (June 4, 2014) [not precedential]. In that case, the applicant was seeking registration of the mark ROMANOV for decorative eggs, porcelain boxes, jewelry, and picture frames. The Examiner refused the application claiming that the term was primarily merely a surname.

In these types of refusals, the Examiners bear the burden of proving a prima facie case and then the burden shifts to the Applicant to rebut the showing. See In re Hamilton Pharmaceuticals Ltd., 27 USPQ2d 1939 (TTAB 1993).  The TTAB reviews five factors when determining if a name is primarily merely a surname:

(1) Is the surname rare (See Trademark Manual Of Examining Procedure “TMEP” §1211.01(a)(v));

(2) Is the proposed mark the surname of the Applicant or anyone connected with the Applicant;

(3) Does the proposed mark have any recognized meaning other than a surname;

(4) Does the term have the “look and feel” of a surname (See TMEP §1211.01(a)(vi)); and

(5) Is the stylization of the lettering in the proposed mark distinctive enough to create a separate commercial impression.

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Chanel, Inc. (“Opposer” or “Chanel”) filed an Opposition proceeding against an individual applicant Jerzy Makarczyk (“Applicant”) who filed to register the mark CHANEL. The Applicant was interested in protecting the mark CHANEL for real estate development and construction of commercial, residential, and hotel properties in International Class 37. Chanel opposed the application on the grounds of dilution by blurring under §43(c) of the Trademark Act, 15 U.S.C. §1152(a), likelihood of confusion, and false suggestion of a connection under the Trademark Act. Opposer uses the CHANEL mark on a variety of  goods, including but not limited to apparel, jewelry, sunglasses, perfume, and cosmetics. And also for retail store services in the field of clothing and accessories. The Trademark Trial and Appeal Board (“TTAB” or “Board”) did not reach the issues of likelihood of confusion or false suggestion of a connection under the Trademark Act. See Chanel, Inc. v. Jerzy Makarczyk, Opposition No. 91208352 (May 27, 2014)[precedential].

The Trademark Act Sections 13 and 43(c) (15 U.S.C. §§ 1063 and 1125(c)) provide a cause of action for dilution. Dilution by blurring is an association arising from a similarity between a trademark or trade name and a famous mark that impairs the distinctiveness of the famous trademark. The Court of Appeals for the Federal Circuit set forth four elements a plaintiff must prove in order to succeed on this type of claim in a Board proceeding:

(1)   Plaintiff’s trademark must be “famous” and “distinctive”;

(2)   Defendant must be using a mark in commerce that allegedly is diluting the Plaintiff’s famous mark;

(3)   The Defendant’s use of the trademark must have begun after the Plaintiff’s mark became famous; and

(4)   The Defendant’s use is likely to cause dilution by blurring.

This standard was set forth in Coach Services, Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1723-1724 (Fed. Cir. 2012). To address the first element, the following factors must be reviewed: (1) the duration, extent, and reach of the brand’s advertising and publicity; (2) the amount, volume, and extent of sales or services;  and (3) the extent of actual recognition of the trademark (wide spread recognition by the general public is required). Proving the level of fame required for a dilution claim is a high standard and the opposer has the burden of proof. See our blog post entitled TTAB Precedent – How Fame Impacts A Likelihood Of Confusion Determination, to compare the requirements for a fame showing under different standards.  Another way to determine if a mark is “famous” for dilution purposes is to answer this question in the affirmative, if the general public encounters the trademark, will it associate the trademark with the mark’s owner?

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On May 20, 2014, Blue Sphere Inc. doing business as Lucky 13 (hereinafter “Lucky 13” or “Plaintiff”) and Robert Kloetzly filed a lawsuit in California Federal Court against Taylor Swift (hereinafter “Swift”) and her business entities alleging trademark infringement, unfair competition, trademark dilution, and common law misappropriation. Plaintiff is seeking injunctive relief, Swift’s profits, his lost profits, damages, including punitive damages and attorney fees. Lucky 13 owns multiple U.S. Trademark Registrations for LUCKY 13 for goods included but not limited to the following categories: clothing in International Class 25, various types of bags and purses in International Class 18, jewelry in International Class 14, hair products and body sprays in International Class 3, and other consumer goods related to automobiles and motorcycles. It is alleged that Swift started selling clothing under the mark LUCKY 13 sometime in 2012. In the Complaint, it is also alleged that Swift also started to sell other merchandise under the brand LUCKY 13 in and about that same time.

Lucky 13 further claims that Swift had filed about sixty federal trademark applications with the United States Patent & Trademark Office (USPTO). Many of these trademarks were for apparel and similar goods. It seems curious that Swift pursued trademark registrations for other clothing brands, but choose not to file an application for her mark LUCKY 13. Lucky 13 contends that this was because Swift was aware of their use of LUCKY 13, and knew that an application would be refused. There is ample discussion in the Complaint with regard to Swift being a smart entrepreneur. However, this is a strategic and backhanded compliment to imply that she should have known better, before violating Lucky 13’s trademark rights.

Plaintiff contends that Swift’s use of the mark LUCKY 13 is likely to cause confusion as to source and origin because both parties’ goods are sold in the same distribution channels at similar price points. The parties appear to be targeting the same consumer demographic. Plaintiff claims that Swift markets herself as liking fast cars and dangerous men and by admission Lucky 13 targets the same consumer type.

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