Westchester Women's Bar Association
NYSBA

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A recent Trademark Trial and Appeal Board (“Board”) decision from last week emphasizes the detailed analysis required when comparing a composite mark (in this case words and a design) to a design mark. Here, the applicant, the University of Houston System (“Applicant”) is seeking to register a mark, UHCL Hawks and a design of a flying hawk (view here) for various goods in international classes 16, 21, 25, and 41. Retail Royalty Company (“Opposer”) filed a Notice of Opposition based on the ground of likelihood of confusion based on its ownership of U.S. Registration 3878197 (hereinafter “Flying Eagle Mark”) a design image of a flying eagle (view here). Opposer’s Flying Eagle Mark is registered for various goods in class 3 (creams and perfumes etc.), 18 (handbags and wallets etc.), 25 (various apparel), and 35 (retail store services featuring clothing, sunglasses, jewelry etc.). Opposer claims rights in prior registered marks for AMERICAN EAGLE OUTFITTERS and “AMERICAN EAGLE family of marks” for a broad range of lifestyle products.

Opposer did not directly argue that its mark was “famous”, but did argue the Flying Eagle Mark was “strong and entitled to broad protection”. Opposer also stated that its mark has been used in widespread and extensive advertising and the company maintains strong sales in relationship to the branded goods. These statements were supported by substantial evidence. The net U.S. sales for the years 2010-2015 were over $3 Billion. However, the evidence showed that Opposer’s Flying Eagle Mark does not have a strong commercial presence or consumer recognition except with retail clothing goods and services.

Conversely, Applicant argued that the Flying Eagle Mark was not strong, but instead was dramatically diluted by the existence of numerous third party bird design marks for general retail including clothing. Applicant argued that purchasers have become conditioned to numerous bird marks in the marketplace and are capable of distinguishig the sources by small differences in the marks. Among the co-existing marks are bird designs of Hollister (owned by Abercrombie and Fitch) and Eddie Bauer. The Board reviewed numerous bird design marks submitted by the Applicant (120 were submitted) and referenced twelve in the decision stating,” we find the following as bearing the closest resemblance to Opposer’s (or Applicant’s) bird logo.” And of the twelve only a few were identified as bearing a strong resemblance. The Board stated that to assess the strength of the mark, they evaluate the inherent strength based on the trademark alone and also the commercial strength based on marketplace recognition by consumers.

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The Sixth Circuit recently answered this question. See Kelly Servs., et al. v. Creative Harbor, Case No. 16-1200 (6th Cir., Jan. 23, 2017), where the Sixth Circuit remanded the case back to the district court to evaluate all the goods and services in the trademark application and to determine if a bona fide intent existed for some of the goods and services. The parties in this matter both filed a trademark application at the United States Patent & Trademark Office (“USPTO”) for the mark WORKWIRE for mobile software applications in the employment field.

Creative Harbor, LLC (“Creative Harbor”) filed its intent-to-use application on February 19, 2014. The other party Kelly Services, Inc. (“Kelly Services”) filed its intent-to-use application for the mark WORKWIRE on August 13, 2014. Creative Harbor discovered that Kelly Services was using the mark WORKWIRE and sent a Cease & Desist demand. In response, Kelly Services filed a declaratory judgment action challenging Creative Harbor’s claim that it had priority.

The district court held that Creative Harbor lacked a bona fide intent to use the mark in commerce for some of the goods and services identified in the trademark application. The district court voided the entire application and Creative Harbor appealed to the Sixth Circuit. The Circuit Court placed emphasis on the deposition testimony of the CEO of Creative Harbor. The CEO stated that he wanted the intent-to-use application to cover goods and services, not only for the present, but also for the future. He further testified that the identification in the application was to cover goods for future exploration and expansion; “to keep the option open to at some point do that”. The Sixth Circuit concluded that Creative Harbor did not have a firm intention to use the mark with all the goods and services, but instead was reserving a right in the mark in case it ever wanted to expand its commercial line of goods.

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A recent decision from the Trademark Trial and Appeal Board (“TTAB” or the “Board”), reminds trademark applicants that if there is a term that has taken on significance or meaning in a particular industry and this term immediately conveys information about the goods or services identified in your trademark application, your application could be refused. The ground for refusal would be that the trademark is merely descriptive of the Applicant’s goods and services. See In re Bitvoyant, Serial No. 86693221 (February 9, 2017) [not precedential]. For more details on this subject matter, see our web page entitled, Factors To Be Considered When Determining If A Mark Is Descriptive. Some of the factors discussed on our web page are dictionary meanings, is the term an acronym that would be perceived to mean the same as the wording it represents, and does the term describe the intended user. Another factor to now consider is whether the mark is a term of art in your industry.

In Bitvoyant, the Applicant filed to register the mark HONEYFILE. The goods identified were computer software platforms for use in the field of computer network security that assist in the tracking of data exfiltration and network intelligence. The services included computer security consultancy; computer security service, namely, restricting access to and by computer networks to and of undesired web sites, media and individuals and facilities, along with other computer security services.

The application was refused on the ground that the mark was merely descriptive of the goods and services. The Applicant filed a request for reconsideration that was denied. An appeal followed. The Court of Appeals for the Federal Circuit set forth the following standard: ” [A] term is merely descriptive if it immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used.” See In re Chamber of Commerce of the U.S.A., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012). Evidence to prove this proposition can be taken from any competent source, such as dictionaries, newspapers or surveys.

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The United States Court of Appeals for the Federal Circuit had to determine if JobDiva Inc. (“Appellant” or “JobDiva”) used its trademark JOBDIVA in conjunction with the services registered in its registration, “personnel placement and recruitment services; computer services, namely, providing databases featuring recruitment and employment, employment advertising, career information and resources, resume creation, resume transmittals and communication of responses thereto via a global computer network.” The Court started out by citing the general principle that a registrant must use its mark in accordance with goods and services recited in the trademark registration. For more details pertaining to service marks, see our webpage entitled, What Is A Service Mark And How Can It Be Protected?

The Board summarized the offerings of JobDiva as “Software-as-a-Service”. In other words, JobDiva allows users to access its software over the Internet. By hosting the software remotely, there is no need to download the software onto one’s own personal computer. The Board reviewed dictionary definitions for JobDiva’s services and decided that JobDiva had to show that it was finding and placing people in jobs at other companies. There was evidence in the record via testimony from JobDiva’s CEO that JobDiva’s software performed personnel placement and recruitment functions. After JobDiva presented its evidence, the Board held that it only provided software, and not additional personnel placement and recruitment services. The Board demanded that JobDiva prove it placed clients in jobs independent of the activity performed through the software. The Federal Circuit disagreed with the Board’s approach. See In re JobDiva, Inc., 1122 (Fed. Cir. 2016) [precedential].

The Federal Circuit Court pointed out that a trademark that is used with a web-based offering will require careful analysis to determine whether the offering is a product or a service or potentially both a product and a service. In fact, the Court held that the Board erred in understanding the law when requiring that JobDiva produce evidence that it provided personnel placement and recruitment services independent of the offering of its software. The Court further held that even though a service may be performed by a company’s software, the company may still be rendering a service. See also, On-Line Careline Inc. v. Am. OnLine Inc., 229 F.3d 1080 (Fed. Cir. 2000), where this Court held that AOL used its trademark ONLINE TODAY in connection with services, even though the services were provided by software. In that case, the Federal Circuit recognized that software may be used by companies to provide services. Indeed, a trademark applicant may file a trademark application wherein it identifies both goods and services under the same mark. See 37 C.F.R. §2.86.

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The United States Court of Appeals, Federal Circuit issued a ruling on November 14, 2016 that encouraged small business owners all over the country. This was a David and Goliath battle that started in 2009. The Christian Faith Fellowship Church (the “Church” or “Appellant”) takes on Goliath, Adidas AG, the apparel giant (“Adidas” or the “Appellee”). The Church started selling apparel and caps with the mark ADD A ZERO in January 2005 as a campaign to encourage fundraising for the church by increasing the contribution of the donor by adding one zero. In February 2005, the Church made one sale of two caps to an out-of-state resident bearing the mark ADD A ZERO. One month later, the Appellant filed for federal trademark registration with the United States Patent & Trademark Office (“USPTO”). Approximately four years later, Adidas filed a trademark application for the mark ADIZERO for clothing.

The USPTO refused Adidas’ application based on likelihood of confusion grounds citing the Church’s mark ADD A ZERO as a conflict. Adidas filed a petition to cancel with the Trademark Trial and Appeal Board (the “Board”) based on various grounds, one of which was failure to use the mark in commerce prior to filing the trademark application. The Board found in Adidas’ favor holding the one sale made by the Church was de minimus and thus not sufficient to satisfy the “use in commerce” requirement. The Church filed this appeal.

The Board further held that the sale for $38.34 did not effect interstate commerce. The Federal Circuit reversed the Board’s decision, holding that it was in error for the Board to rely on a precedent that required a trademark applicant to engage in commercial activity beyond the Commerce Clause’s threshold. The Lanham Act defines commerce as all activity lawfully regulated by Congress. The Federal Circuit held that Congress did have power to regulate the out-of-state sale of the two caps made by the Church. For a basic understanding of use in commerce, see our webpage entitled, For The Purposes Of Trademark Law What Is Use In Commerce.

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Now that Melania Trump is to assume the role of First Lady of the United States on January 20, 2017, her trademark troubles may have just begun. Melania Trump has hired a law firm in Slovenia to stop the use of her name on numerous products without her consent. Similar to the laws of the United States, use of the name Melania Trump without Ms. Trump’s authorization for commercial purposes is a violation of the law in her native country. Since Donald Trump was elected President of the United States, various products in Slovenia have commenced use of Melania Trump’s name such as shoes, underwear, candy, cakes, etc. In Slovenia, not only did these products use Melania Trump’s name, some also placed her image on the packaging. I wouldn’t be surprised if the United States Patent & Trademark Office (“USPTO”) also starts to receive applications trying to take advantage of the recent fame of Melania Trump.

The soon to be First Lady, already owns several trademark registrations and one pending  trademark application with the USPTO. There is a registration in the name MELANIA for watches and jewelry, a second registration for the mark MELANIA in international class 3 for various cosmetic products, and a third registration for MELANIA TRUMP for jewelry and cosmetic goods. The earliest filing date of the three applications was in 2009 and the latest trademark application was filed in August 2016.

As anticipated, there was also a trademark application filed for the mark MELANIA DIET, but not filed by Melania Trump. This application was filed on July 20, 2016 seeking to brand weight reduction services. On November 16, 2016 a refusal was issued by the USPTO. The refusal states that based on Trademark Act Section 2(c), 15 U.S.C. §1052(c) a name in a trademark would identify a living individual if the person bearing the name will be associated with the mark when used on the goods or services because the person is so well known that the purchasing public would reasonably assume a connection with the person and the goods or services. See our web page entitled, Trademarks That Falsely Suggest A Connection With Other Persons, where we discuss similar cases involving the famous model Twiggy, Beyonce’s famous infant Blu Ivy Carter and numerous applications trying to incorporate President Obama’s name such as The Obama Collection, Bronx Obama, and The Obama Collection.

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If the parties are disputing priority rights, and one party is relying on use-analogous-to-trademark use or trade name use, public use of the mark is necessary. Although, technical trademark use is not necessary another standard is applied to determine if there has been a sufficient and substantial impact on the purchasing public to show proprietary rights. See our blog post entitled, Common Law Rights And Use Analogous To Trademark Use, where we define technical trademark use for both goods and services.

To prevail in a priority dispute, the party attempting to demonstrate use-analogous-to-trademark use must submit evidence to show use of the trademark created an association in the minds of the relevant purchasing public between the mark and the goods/and or services. For example, if you are submitting evidence of use of the mark on a live website, you must also show how many users visited the site to demonstrate the extent of public exposure. Something more than a de minimis public association of the term with the goods or services is required. Great Seats, Inc. v. Great Seats, Ltd., Opposition No. 91189540 (August 12, 2013). Prior case law demonstrates that mere sporadic, minimal use of a mark generally is insufficient as a basis for prevailing in a priority dispute. See Pet Inc. v. Bassetti, 219 USPQ 911 (TTAB 1983); Lever Brothers Co. v. Shaklee Corp., 214 USPQ 360 (TTAB 1982).

For trade name use, something more than incorporation must be shown. There needs to be open and public use of the name before proprietary rights can accrue. See Dynamet Tech. v. Dynamet, Inc., 593 F.2d 1007, 201 USPQ 129 (CCPA 1979). The use must be calculated to come to the attention of customers and prospective customers. A party can tack this type of use on to subsequent technical trademark use for purposes of prevailing in a priority dispute. See Peopleware Sys., Inc. v. Peopleware, Inc., 226 USPQ 320 (TTAB 1985). It is common for a party to submit evidence of trade name use in advertising, promotional material, brochures, social media, on letterhead, envelopes, invoices, annual reports, and on websites. If trade name use is of the type to create an association with the purchasing public between the mark and the goods and/or services, then this could establish trademark priority. TutorTape Laboratories, Inc. v. Halvorson, 155 USPQ 268 (TTAB 1967).

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A precedential decision from earlier this year reinforces the fact that Consent Agreements may not always tip the scales in favor of trademark registration. A consent agreement is a type of coexistence agreement submitted to Examining Attorneys at the United States Patent & Trademark Office (“USPTO”) in an attempt to demonstrate that confusion will not occur in the marketplace. See In re Bay State Brewing Company, Inc., 117 USPQ2d 1958 (TTAB 2016) [precedential], where the Board determined that the consent agreement was not sufficient to avoid confusion and affirmed the 2(d) refusal on likelihood of confusion grounds. Typically consent agreements are given great weight in a likelihood of confusion analysis, see our web page entitled, Is A Co-Existence Agreement The Right Choice For Your Brand , where we discuss the pros and cons of entering into this type of agreement.

Bay State Brewing Company (the “Applicant”) filed a trademark application to register the mark, TIME TRAVELER BLONDE, in standard character format for beer. The application was refused based on a prior registered mark for TIME TRAVELER also for beer, ale and lager. The Applicant appealed to the Trademark Trial and Appeal Board (“TTAB” or the “Board”). Although the Applicant admitted that there is a likelihood of confusion between the sources of the marks, Applicant argued that it entered into a consent agreement that would lessen the likelihood of confusion between the marks. It is well settled precedent that a consent agreement relates to the market interface between the parties (du Pont factor number ten).

Other du Pont factors were considered, such as the relatedness of the goods. The goods were identical. Both parties used its respective mark to brand beer. Regarding trade channels, because the goods were in part identical, there is a presumption that the classes of consumers and trade channels are the same. See In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721 (CCPA 1968). Regarding, the sophistication of the consumers, it was noted that beer is inexpensive and often purchased on impulse. Therefore, the risk of confusion among consumers is increased. In comparing the marks’ similarities, the marks are identical except for the term, “blonde”. In the beer industry, the term “blonde” is generic or at least highly descriptive. The Examiner required a disclaimer of the term “blonde”. The Board concluded that the commercial impression of the Applicant’s mark is that it is the blonde brew of TIME TRAVELER. Also weighing in favor of confusion is the fact that the mark TIME TRAVELER is an arbitrary mark entitled to a broad scope of protection.

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Trademark applicants should be mindful of the statements made during a trademark prosecution at the United States Patent & Trademark Office (“USPTO”). In fact, an applicant’s words may be used against them in a later proceeding before the Trademark Trial and Appeal Board (the “Board”) or in a court. A party may have made a statement during the prosecution that is inconsistent with a position later asserted before the Board. One scenario may include a party entering into a consent agreement, settlement agreement or consent judgment wherein the terms of the agreement or judgment are inconsistent with the position the party is currently asserting. This type of a prior inconsistent statement can constitute an admission against interest. Such statements become problematic in a future proceeding when the party is asserting likelihood of confusion against another party.

Often parties forget that any arguments or statements made in the prosecution of their trademark application become a public record. Statements made in a response to an Office Action can be particularly useful to an adversary. For this reason, a party should always scrutinize their opponent’s original trademark application and any responses submitted to an Examining Attorney.

The typical scenario will involve an Examining Attorney refusing an application based on likelihood of confusion with a prior trademark registration for the same or similar trademark. The applicant in response to the refusal will make statements attempting to overcome the refusal. Example arguments may include a term within the mark is suggestive or descriptive and thus weak, many similar marks co-exist on the trademark register indicating a crowded field, since the mark uses a suggestive or descriptive term it is entitled to a narrow scope of protection, and lastly slight differences between the marks will suffice to distinguish the trademarks. These statements often support the reasoning that the two trademarks can coexist because there is no likelihood of confusion between the sources of the marks. Such statements may constitute admissions against interest and they can serve to restrict the scope of protection of the applicant’s mark.

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