https://tsdrsec.uspto.gov/ts/cd/casedoc/sn85594830/DRW20120414073731/1/webcontent?scale=1

In a recent case before the U.S. Trademark Trial and Appeal Board, the TTAB provided useful guidance regarding the burden of proof that parties must meet in trademark opposition proceedings.

In Brick Bodies Fitness Services, Inc v. BRIK Fitness Solutions LLC, the Board held that the mark BRIK FITNESS and Design was likely to cause confusion with Opposer’s mark, Brick Bodies based on the similarity between the parties’ marks and respective health and fitness services.  In so ruling, the Board raised the following observations that touch upon several related issues that litigants face in trademark opposition proceedings:

  1.  Assertion of a “family” of marks.   Here, the Opposer Brick Bodies sought to assert rights in and to four separate trademarks – namely, Brick Bodies, Lynne Brick’s, Build Your Body with Brick, and Brick Bodies Extreme, claiming that collectively they constituted a family of “BRICK” marks that were entitled to greater protection.  The Board opined that the mere use of a common term in multiple trademarks owned by the same party does not a “family” make for purposes of trademark rights.  Instead, other factors must be examined, including the public’s recognition of the marks as emanating from the same source, as supported by website visitors or other consumer perception factors.
  2.   Strength/Weakness of marks.  Applicant claimed that the Opposer’s “brick” marks were weak, since the “brick” derivative of Opposer’s marks were derived from a combination of the surnames of the founders of the company.  The Board rejected this argument, stating that the term “brick” is commonly perceived to relate to a hardened clay block, and not primarily merely a surname.
  3.   Third-party trademark uses.   Applicant submitted into the record evidence of numerous third-party listings for fitness facilities that use the term “brick” as part of their name from several locations throughout the United States.  Surprisingly, and without explanation, the Board reasoned that although use of similar marks on similar goods by third-parties is relevant to show that a mark is weak and entitled to a narrow scope of protection, the Applicant failed to show the extent of such third-party uses.  Therefore, the Board summarily concluded that the uses provided by Applicant were limited in geographic scope and not probative to show that consumers would be aware of such third-party uses.

In the end, the Board relied on the standard likelihood of confusion analysis based on the similarity of sight, sound, and meaning of the parties’ respective BRICK BODIES and BRIKFITNESS marks, together with the similarity of the parties’ services, to deny registration and rule in favor of the Opposer.

Managing a trademark portfolio continues to present unique and often complex challenges for inhouse counsel and trademark administrators.  Professional organizations such as the International Trademark Association (INTA) and Association of Corporate Counsel (ACC) provide excellent networking opportunities and educational materials for in-house personnel to share best practices to help make their jobs easier.  In addition, outside trademark counsel often can provide valuable insight based on their wealth of real-world experiences.

With this in mind, here are some effective trademark portfolio management strategies worth repeating:

1.   Be a Valued Partner.   The best trademark counsel and trademark administrators are the ones that have an open and transparent line of communications with their clients.  Most inhouse trademark professionals have great relations with their product development and marketing teams. They educate them on the importance of trademark protection, and listen to their needs and concerns to help ensure that the company’s intellectual property investments are secured in a timely and cost-effective manner.

2.   Create a Trademark Enforcement Plan.   Surprisingly, many attorneys, both inhouse and outside trademark counsel, can not adequately articulate the factors that they take into account when deciding how and when to enforce the client’s trademark rights.  Such factors, where possible, should be determined in advanced as part of an overall proactive trademark monitoring and enforcement plan, so as to avoid any surprises as to why a certain decision was made or not made concerning the trademark portfolio.

3.    Remain Flexible.   Attorneys can learn alot from their business colleagues.  While a company’s trademark portfolio strategies, once approved, for the most part remain constant, the tactics to acheive the company’s brand enforcement goals should be open to fine-tuning and recalibration based on predetermined legal and economic preferences and outcomes.

By keeping in mind the above tips, trademark portfolio managers will better serve their companies and foster better relationships that are based on cooperation and mutual respect of all internal and external trademark team partners.