Zillow may now be larger with its recent acquisition of Trulia, but not as big as LoanZilla!

In a recent decision of the U.S. Trademark Trial and Appeal Board, the Board dismissed Zillow’s trademark opposition proceeding against LoanZilla, finding no likelihood of confusion between the parties’ respective trademarks.

The case, Zillow, Inc. v. Super T Financial, Inc. DBA LoanZilla,  pitted the online real estate listing behemoth against the Washington State mortgage brokerage doing business under the LoanZilla mark since 2010.  In its grounds for why the trademark application of the Applicant, LoanZilla should be denied, the Opposer, Zillow, relied on eight U.S. trademark registrations of its ZILLOW trademark for real estate listing databases and associated services as well as mortgage-related services.  In addition, Zillow submitted testimony of one of its officers as well as media reports and other evidence that was introduced to show consumer awareness and recognition of the ZILLOW mark.

The Board first compared the trademarks to determine the extent to which they were similar in appearance, sound, meaning and commercial impression. It observed that the although the letters “zill” were common to both trademarks, there was nothing common or unique to that letter combination, nor did Opposer prove that the “zill” component of its mark was distinctive.  Therefore, it was concluded that focusing on those two components of the parties’ respective trademarks was an improper dissection of the Applicant’s mark for purposes of determining a likelihood of confusion.

In its defense, LoanZilla submitted numerous third-party registrations containing the suffix “zilla” for a variety of goods and services.  The Board took note of the fact that the “zilla” moniker has been in wide-use to connote the monster known as godzilla, stating:

The evidence of record substantiates Applicant’s contention that the suffix -ZILLA suggests an association with the monster Godzilla and that this suggestiveness likely affects the commercial impression that customers will receive from the mark.

Accordingly, the Board found that no likelihood of confusion existed between the parties’ marks and entered judgment in favor of the Applicant.

Trademark Attorney Notes:   This case highlights the importance of the need to properly introduce evidence in trademark opposition cases.  Despite the fact that Zillow is a publicly traded company with substantial revenue, it did not properly introduce its sales and advertising and marketing expenditures into evidence, which led the Board to conclude that Zillow’s annual reports, without further substantiating testimony as to the veracity of the figures, were hearsay for the purpose of Zillow’s claim that its trademark was famous.

AEagle
Anheuser-Busch is opposing the trademark application of a North Carolina brewer for the trademark Natty Greene’s, relying on several of its “Natty” beer trademarks for the grounds thereof. In Anheuser-Busch v. Natty Greene Brewing Company, LLC, the St. Louis brewing giant alleges that the Applicant’s trademark Natty Greene’s, is confusingly similar to Anheuser-Busch’s family of NATTY marks, including Natty Light®, Fatty Natty®, and Natty Daddy®, in connection with its Natural Light line of beers.  Applicant’s beer is named after the Revolutionary War General, Nathanael Greene.
The notice of opposition was filed with the United States Trademark Trial and Appeal Board on June 18, 2014.  The notice of opposition alleges that consumers are likely to be confused into believing that the Natty Greene’s mark is associated, affiliated, or sponsored by Anheuser-Busch, in violation of Section 2(d) of the Trademark Act.  The Opposer claims that it has been using its “Natty” marks for beer since at least as early as 1998.  The Applicant claims that it has been using its Natty Greene’s mark for beer, paper coasters, glassware, and hats and t-shirts since as early as 2004.

                                                                                                                                                                                                                                                 Anheuser-Busch Claims Dilution of its Famous Natty Marks

In a bold move, Anheuser-Busch is also claiming that its “Natty” marks for beer are well-known and famous, and that the Applicant’s mark is likely to cause dilution by blurring of the Opposer’s famous marks in violation of 15 U.S.C. Section 1125(c).  Under the applicable law, dilution by blurring is association arising from the similarity of a trademark with a famous trademark that impairs the distinctiveness of the famous mark.  A trademark opposer must prove that the following elements, in their totality, are in its favor to prevail under the theory of dilution by blurring:

(i) The degree of similarity between the mark or trade name and the famous mark.

(ii) The degree of inherent or acquired distinctiveness of the famous mark.

(iii) The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark.

(iv) The degree of recognition of the famous mark.

(v) Whether the user of the mark or trade name intended to create an association with the famous mark.

(vi) Any actual association between the mark or trade name and the famous mark.

In support if its dilution claim, Anheuser-Busch claims that it has sold millions of dollars of Natty beers, and has also invested millions of dollars in marketing and promotions  for products that incorporate its pleaded trademarks.  The Applicant is also claiming that it adopted its “Natty” marks prior to the Applicant’s first use in 2004.

Applicant has not yet filed an answer and/or affirmative defenses to the allegations.

Redskin    n.  slang  (often disparaging and offensive).   a north American Indian.   Random House Dictionary of the English Language 1618 (2d Ed. 1987).

In a monumental decision, the U.S. Patent and Trademark Office has cancelled several trademark registrations of the Washington Redskins national football league team, on the grounds that the term “redskins” is disparaging to Native Americans.

The case, Amanda Blackhorse, et al. v. Pro-Football, Inc.,  which was brought on behalf of five Native Americans, sought cancellation of numerous trademark registrations for the marks Washington Redskins®, The Redskins®, and Redskinettes®,  pursuant to Section 2(a) of the Trademark Act, which bars the registration of a trademark that “consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt…”

The Evidence in Support of Cancellation

In concluding that the term “redskin” is disparaging to Native Americans so as to order cancellation of the trademarks, the U.S. Trademark Trial and Appeal Board carefully analyzed the testimony and supporting evidence surrounding the derivation of the term “redskins” as well as the perception among Native Americans as to the term and whether they found it to be offensive.  The evidence, which was voluminous and consisted of evidence and trial testimony from a previously litigated case on the same issues, included dictionary entries, media reports and a survey that all weighed heavily in favor of disparagement.   Also submitted into evidence was a 1993 resolution passed by the National Congress of American Indians,  (“NCAI”) that specifically condemned use of the “redskins” by the NFL team, and sought cancellation of all of the team’s trademarks that contained the offensive term.  The NCAI resolution was found to be highly probative, since the NCAI represents a large composite of the Native American population in the United States and their perception of the term “redskin” as being that of a racial slur and/or highly offensive to individuals of  Native American heritage.

Based on a totality of the evidence, the Board, in a 2-1 decision, issued an order cancelling all of the trademark registrations at issue, stating in part:

We decide, based on the evidence properly before us, that these registrations must be canceled because they were disparaging to Native Americans at the respective times they were registered.

The NFL and Washington Redskins are expected to appeal the case in the U.S. federal courts.

Legal Note:  The decision does not prevent the Washington Redskins from continuing to use the trademarks in commerce.  This is because the U.S. Trademark Trial and Appeal’s Board jurisdiction is limited to trademark registration issues only; as such, it does not have the statutory authority to order parties to cease using trademarks in association with the sale of goods and services.

Ignorance of the law is no excuse – and trademark owners who do not hire an experienced trademark attorney may end up paying dearly for their mistake.

The Perils of Self-Representation

When faced with a trademark opposition, many companies or small businesses believe that they can effectively represent themselves.  They quickly find out, however, that a trademark opposition proceeding is a civil litigation that has many procedural and substantive rules of law that must be followed.

The U.S. Trademark Trial and Appeal Board (“TTAB”), the administrative tribunal that has jurisdiction over trademark opposition proceedings,  has made it very clear that parties who attempt to represent themselves are held to the same standards when it comes to parties that are represented by attorneys.   What does this mean?  That adherence to the Federal Code of Regulations, Trademark Board Manual of Procedure, and Federal Rules of Evidence is strictly enforced.

The TTAB has even gone as far to state that since trademark law is a highly specialized field of law, that it is best to hire a qualified trademark attorney:

Any attorney licensed to practice in the United States may represent you before the TTAB. However, intellectual property law (which includes trademark law) is a specialized area of the law. You may wish to keep this in mind as you choose an attorney.

There are many consequences to not hiring a trademark attorney who is experienced in representing clients in litigation before the U.S. Trademark Trial and Appeal Board.  These may include:

  • Higher costs– Many companies engage an attorney after making procedural or substantive errors in the case that need to be corrected
  • Weaker case– The failure to have a firm grasp of trademark law, precedent, and the Trademark Board Manual of Procedure all may contribute to placing at risk an otherwise strong case
  • Emboldened opponent– the mishandling of a trademark opposition often results in the adversary’s attorney being more aggressive, further contributing to higher attorney’s fees

The information age has produced vast quantities of knowledge that is freely available to people on almost any conceivable subject.  Want to learn about quantum physics?  No problem.  How about heart-valve replacement?  That, too.  Yet having access to unlimited information does not a rocket scientist or heart surgeon make.  This cautionary advice equally applies to arguing a trademark opposition case before the U.S. Trademark Trial and Appeal Board.

Further information on what to look for when considering to hire a trademark opposition lawyer has been discussed in earlier postings.

WARNING:  Provoke the alligators at your own risk!

In a recent decision before the U.S. Trademark Trial and Appeal Board, the University of Florida was successful in defeating a trademark application for the mark GATOR SHOP for online and retail store services.

In University Athletic Association v. Incentive Marketing, Inc., the Opposer (the University of Florida’s trademark holding entity), brought a notice of opposition against the Applicant, Incentive Marketing, claiming that Incentive’s application for the mark GATOR SHOP for “online retail store services featuring a wide variety of consumer goods of others; and retail shops featuring clothing, and a wide range of consumer goods for others,” was confusingly similar to Florida’s GATOR family of marks. In support of its claims, Opposer submitted twelve U.S. trademark registrations, all incorporating variations of its GATOR marks and designs for a wide variety of goods and services. In analyzing the merits, the Board noted that two key considerations in determining a likelihood of confusion is the similarity of the marks and the similarity of the goods or services to be offered under Applicant’s mark.  Here, the Board chose to isolate and compare Applicant’s GATOR SHOP mark with Opposer’s U.S. Trademark Registration No.122208 for the mark GATORS for the following goods and services:

  • entertainment services, namely conducting intercollegiate athletic events for others in International Class 41; and
  • retail store services, distributorship services and mail order services, in the field of wearing apparel and accessories, and novelty items and jewelry in International Class 42

In so doing, the Board observed that Opposer’s and Applicant’s retail store services were legally identical, particularly where, as here, neither of the parties’ identification of goods and services is restricted to a particular channel of trade or customers.  The Board went on to find the parties’ marks to be confusingly similar as well, given the dominant portion of both parties’ marks is “GATOR” and that Applicant’s inclusion of the term “shop” in its application did not do anything to alleviate potential confusion.  Therefore, to the TTAB, it was a relatively simple and straightforward case of likelihood of confusion and therefore the Opposition was sustained and registration denied.

It should be noted that the licensing of university trademarks for apparel, gifts, and related items brings in major revenue for colleges and their athletic programs. The University of Florida, like all members of the NCAA and other university organizations, has trademark licensing procedures that require strict adherence to University trademark standards.  Similarly, the NCAA has its own trademark protection program to enforce its roster of university sporting events trademarks, such as March Madness®, Final Four®, and others.

Sorry mom and dad — guess that all my expensive legal training was for naught.

Over the past several years, online technology has spurned a cottage industry of trademark filers, business consultants, and trademark lawyers who will gladly file a trademark application for the lowest dollar amount possible. Attention shoppers!  Who knew that being a trademark lawyer could be so easy that even a caveman can do it?  Note: the USPTO seems to think otherwise and has issued its own warning.

Welcome to the wonderful world of legal commodities where you always get more and pay less. Feel free to stock up on paper towels, detergent — and yes, trademark filings.

We are strong advocates of the use of technology to make trademark legal services more efficient and affordable.  However, when trademark solution providers either misrepresent the law or deliberately hide additional fees that most companies will incur, this causes damage to the relevant consuming public and reputable trademark attorneys everywhere. Buyer beware: trademark business services ain’t so simple or cheap as advertised.

Here are some examples of “too good to be true” trademark services claims:

  • “Register your trademark in minutes!” There was a time not too long ago that LegalZoom advertised this statement in their SEM campaigns. Problem was, this statement is a legal impossibility, starting with the fact that the U.S. Trademark Office currently has a 3-4 month backlog before they even review a trademark application!
  • One trademark law “consultant” (who is in effect practicing law without a license) authoritatively declares on his website that “a trademark opposition or cancellation, or petition to cancel means that a party wants you to stop using your brand, product, or service name, and can.”   This statement is legally false; the U.S. Trademark Trial and Appeal Board’s jurisdiction authority is limited to the registrability of trademarks only. It has no authority to stop someone from using a trademark in commerce, which is within the jurisdiction of federal and state courts. The author did get one thing right, however: “ignorance of the law is no excuse.”
  • The top filer in the United States for trademarks (who was brilliant in creating a robust trademark search database) unfortunately advertises in his SEM pay per-click search engine ads that companies can “trademark a name in just 5 minutes.”   Again, a legal impossibility — not to mention that many trademark applications get rejected and there is no guarantee that registration will always result.

What is the result of this big-box store approach to trademark advertising claims and representations?  The perception that registering and protecting valuable U.S. trademarks is as easy (and inexpensive) as shopping at your local dollar store. Trademark owners and companies that are serious about their brand name protection are well-advised to proceed with caution and to hire an experienced trademark attorney.

Target Brands, Inc., the well-known multichannel retailer, recently received affirmation from the U.S. Trademark Trial and Appeal Board that its “bullseye” design mark is a moniker that deserves to be respected.

In Target Brands, Inc. v. Artificer Life Corp., Target had opposed two trademark applications for registration of the mark ARTIFICER and Design for a wide variety of clothing and accessories items in International Class 25 and jewelery items in International Class 14. The applications for the trademark ARTIFICER included with the following design element:

artificer

As grounds for the notice of opposition, Target relied on fourteen of its trademark registrations for its bulls-eye design in conjunction with one or more words, such as “target,” “couture,” and “expect more, pay less” for numerous goods and services, including apparel and jewelry items.   Target’s cited registrations all included the following bullseye design mark* together with the respective word marks sought for protection:

large  *Target’s BULLSEYE mark

In evaluating the merits of Target’s position, the Board found Target’s bullseye mark to be inherently distinctive as used in connection with its apparel and jewelry items.  This reasoning was based on Target’s testimony that the mark has been used in various forms since at least 1962 in over 1,700 retail stores in the United States. In its likelihood of confusion analysis, the Board went on to rule in favor or Target on virtually all of the Dupont factors for analyzing whether a moving party has met its burden of proof.  Specifically, the Board found Target’s bullseye mark to be a famous mark based on several evidentiary factors, including a consumer survey, as well as advertising and sales figures that were all indicators in support of the mark being well-known to the relevant purchasing public. The Board also found in favor in Target on the factors of similarity of the goods, similarity of the trade channels, and similarity of the trademarks.  As it related to the similarity of the marks, the Board noted that the proper test is not a side-by-side comparison, but rather the overall commercial impression that both marks convey to potential purchasers.  In finding in favor of Target on this factor, the Board indicated that the bullseye was the dominant feature in both parties’ trademarks.

Trademark Attorney Practitioner note:  Target’s case was not flawless. It did not properly submit any of its trademark registrations into evidence, and had to to rely on its common law usage and related evidence to establish priority.   It also sought to bring up for the first time in its Trial Brief the issue of dilution by blurring, but was barred by the Board from doing so.  This once again serves as a reminder to trademark opposition attorneys that strict adherence to U.S. Trademark Trial and Appeal Board rules concerning Federal Rules of Evidence and other procedural requirements is mandatory when arguing trademark opposition cases before the Board.

We often receive inquiries from domestic and international companies on how to oppose a U.S. trademark application that is filed with the United States Patent and Trademark Office. There are several components to this question that require a brief explanation.

What is an Opposition?   When a party files a trademark application in the United States, the application is reviewed by an Examining Attorney in the U.S. Patent and Trademark Office for procedural and substantive requirements necessary to register a trademark.  As part of the review, the Examining attorney will search the records of the U.S. Patent and Trademark Office to determine if there are any confusingly similar preexisting registrations that may prevent the application from proceeding to registration.  Assuming that the application is approved for registration, the trademark is then published in the Official Gazette giving any third-party the opportunity to oppose the trademark application.

What are the Grounds for an Opposition?  In the United States, a party can base an opposition to a trademark application on many grounds, including likelihood of confusion with a preexisting trademark registration, mere descriptiveness of the trademark application, genericness, or in rare circumstances, bad-faith or fraud.

What is the Process of a Trademark Opposition?   Trademark oppositions are inter-partes proceedings that are brought before the United States Trademark Trial and Appeal Board (TTAB), which is the administrative tribunal of the U.S. Patent and Trademark Office.  Trademark Oppositions are a form of civil litigation in which the party bringing the trademark opposition is the opposer/plaintiff, and the party that has filed the trademark application is the applicant/defendant.  The opposition may consist of the following legal phases of litigation:

  • Notice of Opposition/Answer: A trademark opposition proceeding is instituted by the Opposer filing a Notice of Opposition.  The Applicant then has 40 days to answer, move, or otherwise plead to the allegations raised in the opposition complaint.
  • Discovery:  The TTAB issues a discovery and trial schedule, setting forth relevant dates and deadlines for the proceeding.  Included are the deadlines for each party to take discovery, which may include interrogatories, requests for production of documents, requests for admissions, and depositions.
  •  Trial: The trial phase of the Opposition will include the filing of a Notice of Reliance (which sets forth all documentary and/or testimonial evidence and affidavits that a party wishes to include in its case-in-chief), together with respective schedules for each party to submit its trial testimony and trial briefs.

How much does a Trademark Opposition cost? Each trademark opposition attorney and/or trademark law firm may set its own fees for representing a client in a case to oppose a trademark before the U.S. Trademark Trial and Appeal Board.  Although most law firms bill hourly, there are a few, including our own, that offer flat-fees for certain phases of the litigation in combination with hourly fees, which gives the client the ability to effectively manage its legal budget and to encourage, where possible, an early resolution to the case in the form of a mutual trademark settlement agreement.

Additional commentary on filing a U.S. trademark opposition may be found in my earlier postings on this subject.

U.S. Trademark application filings are steadily on the rise, according to 2013 year-end figures released by the U.S. Patent and Trademark Office.

Electric and scientific apparatus goods in International Class 9 continue to be the leading class of goods for which U.S. trademark protection is being sought in the Trademark Office, with Advertising and Business services in International Class 35 the most popular Class for service mark filings.

Highlights of top 2013 U.S. trademark application filings include the following:

Most Popular: U.S. Trademark Goods

  • Class 9 (electric/scientific): 47,625 trademark applications representing 10.9% of overall filings
  • Class 25 (clothing/apparel): 33,565 trademark applications representing 7.5% of overall filings
  • Class 16 (paper/printing): 14,957 trademark applications representing 3.7% of overall filings
  • Goods subtotal: 255,400 trademark applications representing 57.8% of overall annual trademark filings

Most Popular: U.S. Trademark Services

  • Class 35 (advertising/business): 43,885 trademark applications representing 10.6% of overall filings
  • Class 41 (education/entertainment): 40,226 trademark applications representing 9.5% of overall filings
  • Class 42 (computer/scientific/legal): 25,937 trademark applications representing 6.0% of overall filings
  • Services subtotal:  177,222 trademark applications representing 42% of overall annual trademark filings

The total number of U.S. trademark applications filed in 2013 saw an increase over 2012 figures, with the annual totals being 433,360 and 414,649 respectively.

The increase in U.S. trademark application filings corresponds with the increase in U.S. trademark opposition and cancellation filings over the same period, which were summarized in a recent posting found in this publication regarding 2013 U.S. Trademark Trial and Appeal Board activity.

The Trademark Trial and Appeal Board recently denied an ex parte appeal from a refusal to register the trademark ON Q SMOKEHOUSE GRILL and Design based on a likelihood of confusion with a preexisting registration of the mark ON Q CLUB® in the name of On Q Billiards, Inc.

Flo Enterprise LLC (“Applicant”) sought registration of its On Q Smokehouse Grill trademark for restaurant services with the words “smokehouse grill” disclaimed.  Registrant is the owner of two ON Q CLUB® registrations (in both word and design format) for “restaurant and cocktail lounge services.”  On appeal, the Applicant argued that its On Q Smokehouse Grill mark was distinguishable from Registrant’s On Q Club® marks so as to make confusion unlikely.

Applicant’s Identification of Services Not Sufficiently Limited in Scope 

In deciding against registration of Applicant’s Mark, the Trademark Board viewed all relevant factors and probative evidence bearing on a likelihood of confusion pursuant to section 2(d) of the Trademark Act.  It went on to state that that in any likelihood of confusion analysis, two key considerations are the similarities between the trademarks and the similarities between the services.  In trying to make a distinction between the parties’ services, Applicant argued that its restaurant services are for “barbecued and grilled meats and side dishes,” while Registrant’s trademark is for “an upscale eatery featuring a bar and dancing.” The Board rejected Applicant’s argument, stating that because Applicant failed to limit its channels of trade for its goods in its application, it is presumed that the applied for goods encompass all services of the type described, move it all normal channels of trade for the services, and are available to all classes of consumers (trademark attorneys should take note of this very important distinction when faced with a pre-existing registration for goods or services in the same class as those of an applicant/client).

In comparing the similarities of the parties’ respective trademarks, the Trademark Board  took notice of the examining attorney’s evidence that the term “smokehouse grill” is merely descriptive of a type of restaurant.  Therefore, the primary element of the parties’ trademarks for comparison purposes was “on Q.”  The Board also rejected Applicant’s argument that Registrant was not using its trademarks in commerce and therefore Registrant’s marks should be deemed abandoned.  The Board correctly stated that having failed to bring a petition to cancel the Registrant’s trademark registrations, Applicant was barred from making the arguments of trademark abandonment in the ex parte appeal of the refusal to register Applicant’s trademark.  Finally, the Board also observed that when it comes to a design element in a mark, the word element will always be the most important factor for determining a likelihood of confusion, since customers often ask for a product by name, in the absence of any visual mark or the impression that it may convey.

Trademark Attorney Notes

This case, while not precedential, cites important distinctions of United States trademark law as it relates to the refusal to register a trademark on Section 2(d) grounds.  Trademark attorneys may find the findings contained therein useful when representing clients in future proceedings before the Trademark Board.