If U.S. Trademark Trial and Appeal Board rulings are any indication, the “force” is  apparently with those who invest substantial sums of money into advertising and promoting their brand names.

In a recent decision before the TTAB, Salesforce.com Inc. was successful in preventing Edataforce Consulting, LLC  from asserting its rights in and to the mark EDATAFORCE for registration on the Principal Register. One of the influencing factors supporting judgment in favor of Salesforce.com was its substantial investment in the marketing and advertising of its pleaded family of “FORCE” marks and corresponding sales associated with the subject marks.

Continue Reading Salesforce® Flexes its Muscles before the TTAB

When a company discovers that a competitor has filed a trademark application for a brand name that may be deemed confusingly similar to its own, it has an effective alternative to expensive U.S. District Court litigation: oppose the trademark application by filing a notice of opposition with the U.S. Trademark Trial and Appeal Board (“TTAB”).

Here are 3 considerations when considering to file a trademark opposition proceeding:

Continue Reading Opposing a Trademark Application: Getting Started

Every in-house counsel knows the importance of protecting his or her client’s trademark portfolio from potentially confusingly similar trademarks.  So how do the best in-house counsel put their limited legal budgets to good use when considering when (or when not) to file a trademark opposition?

To quote the knight in Indiana Jones and The Last Crusade: they “choose wisely.”

Here are some tips on how to execute a simple and effective, U.S. trademark portfolio protection strategy.

Continue Reading Trademark Opposition Strategies for In House-Counsel

Trademark enforcement programs, also known as trademark monitoring programs, provide an important and proactive means for companies to monitor the commercial marketplace and federal and state trademark registries for possible trademark infringement violations.

Companies should consider the following steps to properly protect their valuable trademarks rights in the United States:

1.  Conduct a Trademark Audit

For larger companies, a trademark audit provides a useful means in which to identify and prioritize those trademarks that are either intended to be used, currently in use, and/or may require maintenance in order to remain active on the Principal or Supplemental Register of the United States Patent and Trademark Office records.  Included in the trademark audit should be a review of (a) the companies trademarks and the current scope of legal protection (federal, state, or common law); (b) a determination of which trademarks require additional protection (either in the form of filing for additional goods or services, recording the trademark with the U.S. Customs Service, Trademark Clearinghouse and/or applying for international trademark registration); and (c) confirmation that the chain of title for each trademark is accurately identified, assigned and/or recorded with the U.S. Patent and Trademark Office. Done properly, a trademark audit should be undertaken in close coordination with the company’s U.S. trademark attorneys and legal and business departments responsible for the protection, marketing, and development of the brand names and associated products or services contained in the company’s trademark portfolio.

2.  Subscribe to a U.S Trademark Watching Service

Once the company’s trademarks are properly identified and prioritized, it is advisable to place the company’s trademarks on a trademark watching service.  U.S. trademark attorneys, in conjunction with brand protection services, can routinely monitor U.S. Trademark Office filings for confusingly similar applications that may pose a threat to a company’s trademark properties.  Companies can submit a list of their trademarks to be watched, and the results of trademark applications that have the same or similar words or terms will be routinely furnished to the trademark owner or its U.S. trademark attorneys for further assessment and evaluation.

3.  Monitor U.S. Commercial Trademark Usage

By subscribing to Google Alerts and/or a commercial trademark watching service, companies can routinely monitor the marketplace for trademarks and brand names that could be confusingly similar or that dilute the strength of their own trademarks.  Once such trademarks are identified, the company’s U.S. trademark lawyers can properly assess the threat as viewed in conjunction with U.S. trademark law and determine what action, if appropriate, might be advisable.  The U.S. trademark attorney should carefully review the infringing application or use and advise his/her client of its options to either file a trademark opposition, send a cease and desist letter, or both, where appropriate.  In circumstances where the trademark infringement is immediate and serious, instituting a U.S. federal court action for trademark infringement and associated causes of action may be required.

Trademark attorney notes:  Creating a U.S. trademark audit and brand enforcement plan is a wise investment for companies that provides a relatively inexpensive and proactive means to routinely protect and enforce trademark holdings in the United States. To discuss how a trademark audit could benefit your company or domestic and international brand name clients, feel free to contact the author.

 

Trademark owners who are considering whether to bring a trademark opposition should keep in mind the Boy Scouts® motto: be prepared.  Not all trademark opposition cases are alike; therefore in assessing the strength of a particular case, it is wise to consider three elements that could have a significant impact on the likelihood of success.

1.  The Facts.  It is quite common for plaintiffs to file first and investigate later —  this is particularly true in trademark opposition cases.  In fact, many Opposers  believe that as a Plaintiff, they are in the right and that the Trademark Trial and Appeal Board  (“TTAB”) will deem the trademark applicant to be a bad-faith infringer who has usurped the Opposer’s trademark rights.  The TTAB, like all tribunals, decides matters based on the facts of each case, together with properly introduced evidence, as applied to the governing law.  Emotion is left at the courthouse door and is not persuasive.  Therefore, trademark opposers should be sure to investigate all facets of their case and any affirmative defenses that an Applicant may raise prior to filing a Notice of Opposition.

2.  The Law.  In trademark opposition cases where a likelihood of confusion is the basis of the claim, the TTAB looks to several factors in determining whether a likelihood of confusion exists.  These elements include the strength of the Opposer’s trademark, the similarity of the marks in sight, sound, and commercial impression, the similarity of the channels of trade, as well as the similarity of the products and/or services at issue that are associated with the parties’ trademarks.   A trademark opposer should carefully consider whether the legal factors necessary to prove its case exist based on proper due diligence and a review of all publicly available information regarding the Applicant’s commercial activities.

3.   The Adverse Party.   Many companies, particularly larger ones, are quick to file a Notice of Opposition (even with a less than stellar case), if they believe that the trademark applicant is not “deep-pocketed” and cannot afford the cost of litigation.  In fact, in some instances, this form of unfair economic leverage is known as “trademark bullying” as been addressed by the TTAB and the Trademark Office’s policy arm in an effort to level the playing field between large corporations and smaller businesses.   There are situations, however, where an Opposer with a strong case can properly use the litigation process as fair leverage to seek an early settlement of the case.

Trademark Attorney Notes:  Potential trademark opposers should do everything that they can to determine the likelihood of success of their case prior to filing a Notice of Opposition.   Such due diligence can include conducting a trademark search of similar third-party registrations, conducting an investigation of a trademark applicant’s commercial activities associated with the trademark at issue, and most importantly, review relevant case precedent of prior U.S. Trademark Trial and Appeal Board decisions.

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?

The Trademark Trial and Appeal Board is quick to throw the flag — just ask the NFL and New York Giants.

In the matter of In re New York Football Giants, Inc., the TTAB sent a strong signal in upholding the Trademark Examiner’s refusal to register the Giants’ trademark for G-MEN  for “shirts, t-shirts, and tops” on the grounds of a likelihood of confusion with the previously registered trademark GMAN SPORT for “boxer shorts; socks, t-shirts, and tank tops” in International Class 25.

On appeal, the Giants had forcefully argued that the term G-MEN was a well-known moniker of the NFL team going back decades and that the fame of the mark as associated with New York Giants precluded any finding of likelihood of confusion between the Giants’ mark and the cited registration.  The Giants stated that the Board, in essence, incorrectly applied a one-size-fits-all approach in its likelihood of confusion analysis, and did not properly take into account the Giant’s notoriety and fame as associated with the G-MEN name.  By comparing the two marks in the abstract, and ignoring marketplace conditions, the Board, according to the Giants,  committed a “fundamental and grievous error.”

In its response, the Trademark Board was equally forceful, stating that it was obligated under its long-standing precedent to adhere to the identification of goods in both parties’ trademark filings, and to construe them broadly in comparison of the two marks in determining whether confusion was likely.  Put another way, the Board expressly stated that it was improper for it to consider any extrinsic evidence regarding the Giants’ fame and limited use of its G-MEN mark on football apparel, and that the NY Giants could have, but did not, limited the goods in its application for registration to football-related items only.   Having failed to do so, the Board reasoned that its conclusion in refusing the application was proper:

Thus, where there is no specific limitation in the description of goods and nothing inherent in the nature of Applicant’s mark that restricts Applicant’s usage to football related merchandise or the promotion of a particular football team, the Board may not read such limitations into the application.

Hats off to the Giants for making a vigorous goal-line stand.  Unfortunately, the defensive line of the Trademark Office held firm in this contest.

Trademark Attorney Notes: When faced with an initial refusal of a trademark application based on a likelihood of confusion with a previously registered trademark, amending the identification of goods to narrow the identification to a specific sub-segment of products or class of customer should always be considered.  In doing so, it may be possible to avoid a final refusal based on a more expansive analysis of the parties’ goods as reflected in the outcome of this case.

The failure to protect valuable brand names can lead to loss of competitive advantage.  Since most companies intangible assets are valued greater than their physical assets and inventory, the importance of trademark protection is becoming more apparent to corporate leaders.

Case in point?  The highly competitive beverage industry.

As reported by the good folks at Bloomberg BNA, established beverage conglomerates have been increasingly opposing the trademark applications of micro-brewers and smaller beverage companies in an effort to quell competition and defend their brands against alleged trademark dilution and confusion.  Recent beverage trademark opposition filings in the U.S. Trademark Trial and Appeal Board include the following:

  • Anheuser-Busch’s opposition against the U.S. application for NATTY GREEN’S owned by the North Carolina micro-brewery Natty Greene’s LLC (this case was discussed by us in a recent beverage trademarks discussion on this blog);
  •  Diageo North America’s opposition against the U.S. application for the mark ROYAL filed by Sutter Home Wineries of Canada;
  • An extension of time filed by Coca-Cola to file an opposition against the dairy mark LACTOZERO owned by Cream-O-Land Dairies, based on Coca-Cola’s ownership of numerous “zero” marks for beverages; and
  • Pepsi-Co Inc.’s trademark opposition against the trademark ENERGY PEP by Nutritional Science Solutions, Ltd.

The policing of trademark applications by large companies is part of an essential intellectual property brand enforcement regimen.  While in the past many policing efforts were done by outside trademark counsel, companies are increasingly turning to their in-house intellectual property departments for trademark watching, cease and desist letters, and requests for extensions of time to file trademark oppositions. For those cases that do not settle short of litigation, outside trademark law firms that specialize in trademark opposition cases are often utilized.

Trademark Owner Tip:   Be sure to have a trademark watching service and intellectual property protection plan in place to avoid loss of valuable trademark rights and/or having to defend against claims of trademark infringement by third-parties.

 

Take cover, a trademark gunfight is brewing!

The First Shot: Duke University

John Wayne, our matinee idol, the symbol of the American West, is being tested once again.  No, not on the silver screen, but before the U.S. Trademark Trial and Appeal Board.  His antagonist?  Duke University, best known for stellar academics, bucolic settings, and Coach K.

Yes, it takes true grit to oppose The Duke.

In the trademark opposition, Duke University v. John Wayne Enterprises LLC,  the Opposer, Duke University (“Duke U.”), has challenged John Wayne Enterprise’s (“JWE”) application for registration of the mark DUKE for  “alcoholic beverages except beers, all in connection with indicia denoting the late internationally known movie star, John Wayne, who is also known as Duke.”  This is the latest chapter in Duke University’s fight against JWE, with Duke having either opposed or sought to cancel several other trademark registrations of JWE that contain the “Duke” moniker over the years.

In this most recent Notice of Opposition, Duke U. relies on several of its trademark registrations for “Duke” and its derivatives for a wide variety of goods and services, including Duke, Duke University, Dukie, and Iron Dukes ID.  Duke U. argues that JWE’s registration of the “Duke” moniker will be likely to cause confusion among the relevant consuming public as well as dilute Duke U.’s family of DUKE marks that it considers to be famous by virtue of the University’s long-standing use and sales of goods and services under the DUKE trademark.

The Big Gun Response- John Wayne Enterprises

Having had enough of Duke U.’s trademark confusion accusations, JWE has filed a federal lawsuit in U.S. District Court, seeking an order that JWE’s use of its Duke mark will not and does not cause confusion nor dilute Duke U.’s trademarks.   As reported by the Associated Press, there are over 250 existing federal trademark registrations that contain the name “Duke,” which may prove to be problematic to Duke University’s theory of its case.

Trademark Attorney Notes:  This case is a good example of when brand owners with well-known trademarks aggressively file trademark oppositions against third-party trademark applications that contain part or all of the Opposer’s trademark.  This strategy often results in a trademark applicant withdrawing its application and in certain instances, not proceeding to use its trademark in commerce.  There are a percentage of cases, however, as seems to be the case here, where the Applicant decides to make a stand.  The result?   The Opposer is forced to prove its case, something it does not have to do when successfully negotiating a trademark opposition settlement.  Therefore, trademark owners who oppose trademark applications should always make sure that they have a strong case, rather than gambling on the chance that the trademark owner will simply surrender without a fight.

Tyler Perry is one successful businessman – and now new trademark owner.

Mr. Perry, the acclaimed actor, writer, and producer, has prevailed in cancelling the trademark registration of “What Would Jesus Do” (“WWJD”) of the television personality, Kimberly Kearney.  The case is Tyler Perry Studios, LLC v. Kimberly Kearney.

Kearney, one of the contestants on the VH1 reality show, “I Want to Work for Diddy,” is the owner of U.S. Registration No. 3,748,123 for the WWJD trademark for “entertainment services in the nature of an ongoing television reality program.”  Kearney claimed to have first used the trademark on November 21, 2007; the registration issued on February 16, 2010.

Perry subsequently applied for the WWJD trademark for “entertainment services, including television, multimedia, and motion picture services,” as well as other related entertainment services.  In the petition for cancellation, Perry sought to have Kearney’s trademark registration cancelled based on the fact that Kearney never commenced use of the trademark, as required under the Trademark Act, and therefore was not entitled to registration.  As additional grounds, Perry also stated that Kearney had abandoned her trademark with no intent to resume use.

In its ruling in favor of Tyler Perry, the Trademark Trial and Appeal Board reviewed the applicable law regarding non-use of a trademark and other factors that are relevant to the case.  Under Section 1(a) of the Trademark Act, use of a trademark in commerce is a prerequisite to a party being granted a trademark registration.  The term “use in commerce” means the use of the mark in the ordinary course of trade, and not a mere token use for purposes of obtaining a registration.  Furthermore, where it is found that there was no use of the trademark prior to registration being issued, the trademark registration may be deemed void for failing to comply with trademark laws.  The Board found that here, the registration owner failed to rebut any of Perry’s allegations, either during the discovery period or at trial.  Rather, Kearney simply relied on the original filings and the statements and evidence of alleged use of the mark contained therein.  Even there, her evidence was not properly submitted and therefore not considered by the Board, which reasoned:

As noted above, Respondent did not submit any testimony or evidence during trial.

This case illustrates the dangers of not following the rules and procedures for trademark cancellation proceedings that are set forth in the Trademark Board Manual of Procedure.  The registrant’s failure to offer testimony or supporting evidence to rebut the petitioner’s allegations left the Trademark Board with no other alternative but to cancel the trademark registration.