3M, the originator of the famous POST-IT® brand of adhesive notes, recently prevailed in opposing the trademark application of an applicant that attempted to register the mark “Flag-it” for similar labeling goods.
In the case, 3M Company v. Professional Gallery, Inc., the Applicant, had applied to register the mark FLAG-IT! in standard characters for “adhesive-backed labels; and adhesive-backed plastic film designating signatory action.” The application was first filed in 2005, based on an intent-to-use the mark in commerce. The Opposer, 3M, opposed the application on the grounds of a likelihood of confusion and dilution. In particular, the Opposer alleged that it was the owner of numerous preexisting trademark registrations for the mark POST-IT and POST-IT and design for adhesive-backed stationery products. In conjunction with its Notice of Reliance, the Opposer submitted certified copies of 13 of its U.S. trademark registrations of POST-IT for a wide variety of adhesive-backed goods.
In addition to its trademark registrations that were submitted into evidence, 3M introduced evidence showing its use of the POST-IT mark going back to at least as early as 1980, which use was found to be continuous and prior to the date that Applicant first applied for its FLAG-IT mark. Therefore, the issue of priority of use was found in favor of 3M. With regard to the issue of fame, Opposer submitted a plethora of evidence (some under seal and some not) that included its historical sales and advertising figures for goods sold under its POST-IT mark, as well as numerous examples of TV, newspaper, and other media listings and articles that featured the trademark. Based on the quantity and nature of Opposer’s submissions, the Board easily found that 3M’s POST-IT mark to be famous for purposes of dilution under the applicable legal standards. The Board then proceeded to conclude that given the nature and similarity of the parties’ respective goods, customers, and trade channels, a likelihood of confusion between the marks was assured, therefore resulting in judgment in favor of 3M.
Trademark Attorney Notes: This case is but another example of how strong trademarks that have been in commerce for many years and have achieved wide-spread recognition among the relevant consuming public have a distinct advantage when being compared with a junior applicant’s trademark for likelihood of confusion purposes. Since the Board in its likelihood of confusion analysis gives greater weight to the “fame” element of the likelihood of confusion analysis, does it necessarily flow that the larger the company the greater the possibility of confusion if the mark in question is a well-known consumer brand?