Posts Tagged ‘Trademark Act’

Likelihood of Confusion Case

Sunday, March 15th, 2020

In the post on likelihood of confusion, the Dupont Factors were discussed. Though there are nine factors, not all of them are relevant or applicable in every case. The first two factors are the most important across the board. After taking them into consideration, an examining attorney will look to the remaining factors in order to support a finding of likelihood of confusion. If there is enough evidence to support such a finding, a mark may be deemed unregistrable with the USPTO under §2(d) of the Lanham Act. The following is a case that was taken before the Trademark Trial and Appeal Board on the grounds of likelihood of confusion.

In a 2020 non-precedential decision, the Trademark Trial and Appeal Board affirmed the refusal for registration for the mark HARDROK EQUIPMENT INC. for “distributorship services in the field of industrial machinery and parts therefor in the mineral and aggregate industries” (EQUIPMENT INC. disclaimed). The Board found confusion to be likely with the previously registered mark HARDROCK for “rock drills, drill bits, and other drilling equipment.” Turning to the first factor in the Dupont Factors, the Board found that the two marks are “quite similar in appearance, sound, and connotation and commercial impression when considered in their entireties.” In that manner, the first factor was satisfied. The second factor, relating to the relatedness of the goods and services, is examined based on what was described in the registration and application. The Board concluded that even though the applicant and the cited registered mark owner did not have identical goods, “they substantially overlap, which weighs in favor of finding a likelihood of confusion.” Therefore, the second factor was satisfied. The applicant then cited the fourth factor: The conditions under which and buyers to whom sales are made, i.e., “impulse” vs. careful, sophisticated purchasing. In this case, the fourth factor supported a finding that confusion was not likely, however, the first two factors are the most heavily considered. Simply because other factors may be relevant or applicable, does not mean they outweigh the first two. In summation, the Board found that “[s]ophistication of buyers and purchaser care are relevant considerations but are not controlling on this factual record.” So, the Board affirmed the §2(d) refusal for registration.

Likelihood of Confusion

Sunday, March 15th, 2020

As discussed in a much earlier post, it is important to select a strong trademark. The purpose of a trademark is to distinguish an owner’s goods and services from another’s goods or services. Since the purpose of a trademark is to act as a source indicator, it is important that two trademarks are not so similar, that the consuming public believes them to be related, or confuses them, this is known as likelihood of confusion. Under §2(d) of the Lanham Act, marks that are found to be confusingly similar are unregistrable with the USPTO.

When determining likelihood of confusion, the key factors an examining attorney relies on are known as the Dupont Factors. The two most important factors to consider are: (1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. (2) The relatedness of the goods or services as described in the application and registration(s).  When looking at these two factors, the order in which they are considered is important, because the more similar the marks are, the less related the goods or services need to be in order to support a finding of likelihood of confusion.  The following are the remaining seven factors that should be considered if applicable and relevant: (3) The similarity of established, likely-to-continue trade channels. (4) The conditions under which and buyers to whom sales are made, i.e., “impulse” vs. careful, sophisticated purchasing. (5) The number and nature of similar marks in use on similar goods. (6) The existence of a valid consent agreement between the applicant and the owner of the previously registered mark. (7) Fame of the prior mark. (8) Nature and extent of any actual confusion. (9) Concurrent use without evidence of actual confusion: length of time and conditions. It is important to note that not all of these factors will be applicable in every case.

When determining likelihood of confusion, the standard is confusingly similar. Two marks need not be identical to support a finding of likelihood of confusion. This means that a new mark may be confusingly similar to a previously registered mark even if it is not identical. There is no guarantee that changing or removing portions of a new mark will make it sufficiently distinguishable and therefore registrable with the USPTO.

Geographically Deceptive Marks

Saturday, March 7th, 2020

An earlier post discussed deceptive marks, marks that may not be registered with the USPTO under §2(a) of the Lanham Act. This post will discuss marks that are geographically deceptive, which may not be registered on the Principal Register or the Supplemental Register.

There are four elements of a §2(e)(3) refusal under the Lanham Act: (1) The primary significance of the mark is a generally known geographic location (2) The goods or services do not originate in the place identified in the mark (3) Purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark (4) The misrepresentation would be a material factor in a significant portion of the relevant consumers’ decision to buy the goods or use the services.

In regard to the first three elements, the determination of whether the primary significance of the mark is a generally known location can be made “by showing that the mark in question consists of or incorporates a term that denotes a geographical location which is neither obscure or remote.” See In re Sharky’s Drygoods Co., 23 USPQ2d 1061, 1062 (TTAB 1992). For this element, the inquiry is whether the term at issue is primarily geographic respective to the mark, not whether the geographic reference dominates the mark. Thereafter, the focus shifts to the fourth element: determining materiality – whether a known or possible misdescription in the mark would affect a substantial portion of the relevant consumers’ decision to purchase the goods or services.

When it comes to determining materiality, which must be established to prove a geographic term is primarily deceptively misdescriptive under §2(e)(3) of the Act, or deceptive under §2(a), the tests differ slightly between determining materiality in cases involving goods, and those involving services.  To establish the materiality portion for goods, the evidence must show that: (1) The place named in the mark is famous as a source of the goods at issue, (2) The goods in question are a principal product of the place named in the mark; or (3) The goods are, or are related to, the traditional products of the place named in the mark, or are an expansion of the traditional products of the place named in the mark.

In terms of determining materiality in cases involving goods, the Board has stated that it “looks to evidence regarding the probable reaction of purchasers to a particular geographical term when it is applied to particular goods.” Evidence to establish a basis for materiality may be found on places such as third-party websites and magazine/gazetteer entries. If the evidence shows that the geographic area named in the mark is sufficiently known to lead purchasers to make a goods/place association, yet the record does not show that the relevant goods are a principal product of the location, the deception will likely be found not material. However, deception will most likely be found to be material if the relevant, or related goods, are a principal product of the geographic location named in the mark. Where locations that are “famous,” “renowned,” “well-known,” or “noted for” goods are in the mark, the location is clearly material.

Determining materiality in services is similar to the process used when determining the materiality in goods. However, when it comes to cases involving services, simply showing that the geographic location named in the mark offers a service is not sufficient, except for in cases where it rises to the level of fame. This quantifier is especially true when dealing with restaurant services. When customers attend a restaurant, they are aware of the location of the services and are less likely to associate the services with the place identified in the mark. However, if a customer sitting in a restaurant in one location would believe that: (1) The food came from the place named in the mark; or (2) The chef received specialized training in the place identified in the mark; or (3) The menu is identical to a known menu from the geographic location named in the mark. Regarding the question of fame, it can heighten the association between the services and the geographic location identified in the mark, which then raises the possibility of deception or materiality in the service mark, the location is material.  The Federal Circuit stated that “the record might show that customers would patronize the restaurant because they believed the food was imported from, or the chef was trained in, the place identified by the restaurant’s mark. The importation of food and culinary training are only examples, not exclusive methods of analysis…” See Les Halles De Paris, 334

Genericness Cases

Saturday, March 7th, 2020

The previous post discussed generic marks, which are the weakest type of mark on the Spectrum of Distinctiveness. Generic marks are not registrable on either the Principal Register or the Supplemental Register. A mark is considered generic if the mark is comprised wholly, or partially of a term(s) that the public primarily associates with a genus of goods or services.

Below, are two recent Trademark Trial and Appeal Board decisions affirming refusal for registration under §§ 2(e)(1) and 2(f) of the Lanham Act:

In a 2019 precedential opinion, the Trademark Trial and Appeal Board affirmed the refusal for registration of the generic mark MALAI, for ice cream. The Board ultimately found that the relevant public would understand the term MALAI to refer to a critical part of “ice cream, gelato, dairy-free ice cream, frozen yogurt, frozen desserts, ice cream sandwiches, sorbet, freezer pops and ice cream sundaes.” The Board applied the two-part inquiry set forth in H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F .2d at 990, 228 USPQ at 530 (Fed. Cir. 1986) to determine whether or not a mark is generic. For the first part of the inquiry, asking what the genus of the goods or service at hand is, there was no argument that the applicant’s identification of his goods satisfied this prong. In this case, the relevant consuming public consists of ordinary consumers who eat and purchase ice cream and equivalent products. The Board then looked at the second prong of the inquiry that asks how the relevant public perceives the term MALAI in the context of the applicant’s goods. Supporting evidence for genericness, included a dictionary definition of the term and a Wikipedia entry for “Ras Malai” as a kind of dessert as well as several articles, recipes and internet materials that identified the term as a cream.  Both pieces of evidence showed that the word MALAI “is commonly used in the English language as a genus of rich, high-fat creams commonly used in Indian and South Asian culinary dishes, especially dishes with a sweet taste.” The Board agreed with the examining attorney that the evidence showed that “malai” has its own English meaning for cream as a cooking ingredient. The Board agreed that there is no hard-and-fast rule the name of any ingredient in a product would be considered generic, but in this specific case, the public comprehends the ingredient name “to refer to a key aspect or sub-category of the genus of the goods, it is generic for those goods;” see Royal Crown, 127 USPQ2d at 1046; see also In re Empire Tech. Dev. LLC, 123 USPQ2d 1544 (TTAB 2017). In light of this, the Board affirmed the refusal to register on the Supplemental Register under §23 of the Lanham Act.

In a 2020 non-precedential opinion, the Trademark Trial and Appeal Board affirmed the refusal for registration of the generic mark FIDGET CUBE on the Supplemental Register, for “stress relief exercise toys.” (Note that FIDGET was previously disclaimed.) The Board found that the term was a “generic name of the subgenus or subcategory of Applicant’s identified goods.” As a main defense, the applicant argued that he was the first user of the term FIDGET CUBE. However, the fact that no third-party registrant had used the term, does not negate a finding of genericness. The examining attorney submitted dictionary definitions of equivalent words, third-party registrations disclaiming “fidget,” and Internet product reviews, online retailer advertisements and online articles referring to “fidget cubes.” The Board remarked that there was no ban on evidence taken from Internet forums or blogs. The Board then turned to evidence that showed the term FIDGET CUBE generic for a type of stress-relieving toy. In a final, and unconvincing, argument, the applicant attempted to argue that there were other names for the type of product, including terms such as “fidget dice, infinity cube, fidget box, stress cube, stress block and dodecahedron.” In light of these alternative names, the applicant rationalized that there was no need for competitors to use the term FIDGET CUBE to describe their products. The Board was quick to remind the applicant that there can be more than one generic term for a particular genus of goods or services. In summation, the Trademark Trial and Appeal Board affirmed the refusal to register under §23 and §45 of the Lanham Act.

Generic marks may not be registered on the Principal Register or the Supplemental Register in any case. If the mark is comprised wholly, or in part, by generic material, where the generic term(s) retain significance to the relevant public, the mark is generic. When conducting the two-part inquiry, an examining attorney must look at the mark as a whole. Unlike other marks on the Spectrum of Distinctiveness, generic marks cannot acquire distinctiveness, nor can an applicant argue first use as an immunization against genericness.

Generic Marks

Saturday, March 7th, 2020

As discussed in an earlier article, under the Spectrum of Distinctiveness, there are five distinct types of marks. The weakest type of mark is a generic mark. These are terms that the relevant purchasing public understands foremost as the common identification for goods or services. Under §§1,2 and §45 of the Lanham Act a generic term may never be registered on the Principal Register, nor may it be registered on the Supplemental Register under §§23(c) and 45. Generic words are incapable of functioning as source identifiers.  The purchasing public will never come to associate the generic term for just one source of goods or services.

A mark may be deemed as generic if its primary connotation to the relevant public is the class or category of goods or services on or in connection with which it is used. In determining genericness, the relevant public refers to the consuming public for the identified goods or services. H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F .2d at 990, 228 USPQ at 530 (Fed. Cir. 1986) sets forth a two-part inquiry to determine whether a mark is generic: (1) What is the genus of goods or services at issue? (2) Does the relevant public understand the designation primarily to refer to that genus of goods or services? When looking at the second portion of the test, the inquiry is not asking whether or not the relevant public uses the term to refer to the genus, but whether or not the relevant public would understand the term to be generic.

In applying the two-part inquiry, the examining attorney bears the burden of proving that the term is generic. This evidence may be gathered from including dictionary definitions, research databases, newspapers and other publications. When determining whether or not a term is generic, it is not relevant that there may be more than one generic term for a particular category of goods or services. Any term that the relevant public understands to refer to the category is considered generic.

A generic mark is not limited to one-word designations, the two-part inquiry is the same for compound terms and phrases. If possible, the examining attorney should include evidence showing the use of the mark as a whole. Yet, if there is no evidence of third-party use of the exact compound term or phrase, that does not, alone, negate a finding of genericness for a particular mark.  An examining attorney may find that a mark comprised of a compound or shortened term is generic by showing evidence that each portion of the mark is generic and that when joined, each portion of the mark retains its generic meaning. In re WM. B. Coleman Co., Inc. 93 USPQ2d 2019 (TTAB 2010) the Trademark Trial and Appeal Board affirmed the finding that ELECTRIC CANDLE COMPANY was merely the combination of two generic terms put together to create a compound mark. As stated above, if both portions of the term retain their generic significance, then the mark may be deemed generic.

Aside from compound and telescoped words, mnemonic telephones numbers and Internet domain names are studied as well. In regard to mnemonic telephone numbers, an examining attorney must show that the relevant public would perceive the mark as a whole to have a generic significance. In reference to Internet domain names, an examining attorney must determine whether or not all parts of the name, including the Internet domain name, are generic, and if in sum, the mark itself is generic. In certain isolated instances, the addition of a top-level domain indicator (“TLD”) may make an otherwise generic mark, distinct. An example of this is In re Steelbuilding.com, 415 F .3d 1293, 1299, 75 USPQ2d 1420, 1423 (Fed. Cir. 2005). In this case, the Federal Circuit reversed the Trademark Trial and Appeal Board’s decision that STEELBUILDING.COM was generic for “computerized on-line retail services in the field of pre-engineered metal buildings and roofing systems.” In this rarified instance, the Court chastised the Board for looking at each piece of the mark individually, but not as a whole. When adding the “TLD” it expanded the meaning of the mark beyond that of just selling steel buildings. With the addition of the “TLD,” the mark took on the meaning of internet services as well, including beforehand modeling’s of the buildings and price calculations. This again reinforces the notion that the relevant public must take the entire mark to have generic significance, therefore an examining attorney must focus on the mark as a whole, rather than multiple generic components.

As stated by the Trademark Manual of Examining Procedure (TMEP), the expression “generic name for the goods or services,” is not contained to noun forms, but also captures “generic adjectives” as well; see Sheetz of Del., Inc. v. Doctor’s Assocs. Inc., 108 USPQ2d 1341 (TTAB 2013) which held FOOTLONG generic for sandwiches, excluding hotdogs. In a comparable manner, evidence that shows a singular form of a term to be generic can suffice to demonstrate that the plural is also generic.

In conclusion, generic marks are the weakest types of mark and may not be registered with the USPTO either on the Principal Register or the Supplemental Register. A mark may be deemed generic whether it is comprised of a phonetically spelled term, multiple generic terms, mnemonic telephone numbers, Internet domain names or generic adjectives. An examining attorney must use the two-part inquiry to determine whether a mark is generic, and the mark must be examined as a whole. If, as a whole, the mark retains its generic significance to the public, it may be considered generic, and therefore unregistrable on either the Principal Register under §§1,2 and §45 of the Lanham Act or the Supplemental Register under §§23(c) and 45 of the Lanham Act.

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