U.S. Trademark Trial and Appeal Board

The U.S. Trademark Trial and Appeal Board has disclosed first and second quarter filing and pendency statistics for 2018.   Year to date (YTD) statistics as compared to the same period in 2017 include the following:

U.S. Trademark Trial and Appeal Board filings

  • extensions of time to oppose:  9,498  (+2.7% YTD)
  • trademark oppositions: 3,211 (+4.3% YTD)
  • trademark cancellations: 1,143 (+8.8% YTD)
  • trademark appeals: 1,643 (+4% YTD)

Pendency of Proceedings  (commencement to completion processing times)

  • trial cases (average):  140.6 weeks (-10.6% YTD)
  • trial cases (median):  126 weeks (-14.9% YTD )
  • ACR trial cases (average): 112 weeks (-6.2% YTD)

Contested Motions

  • decisions issued:  535 (+8% YTD)
  • average pendency: 9 weeks (+15.4% YTD)
  • cases awaiting decision: 172 (+17% YTD)

Of note is the increase in trademark cancellation proceedings as well as trademark oppositions.  This may be a sign of greater brand enforcement efforts by companies.  At the same time, there are mixed performance trends within the TTAB itself.  While the pendency of proceedings has decreased, the average pendency of contested motions has increased.   One reason may be due to the inability of counsel to fully cooperate in discovery disputes, with an increase in contested motions being an unfortunate result.

TTAB filing and performance data for 2015 and 2016 may be found here.

Practitioner’s Note:   The importance of cooperation with opposing counsel in the prosecution or defense of TTAB proceedings should not be overlooked.   Where antagonism and lack of communication are the norm, increased client expenses and unnecessary motion practice often follow.  This can have a direct impact on the  risk and costs associated with trademark opposition proceedings. 

When it comes to trademark oppositions, it pays to be Kühl.

In Alfwear Inc. v. Shuff, the U.S. Trademark Trial and Appeal Board was asked to consider whether the Applicant’s KU:L and design trademark for bicycles in International Class 12 created a likelihood of confusion with Opposer’s asserted “family” of KUHL trademarks for inter alia, clothing, bottled water, textile fabrics, lip balm and other items.  Of interesting note is that Opposer’s trademark registrations on which it had relied to constitute a family consisted of multiple variants of the English translation of “cool,” including KUHL, KÜHL, and KUUL.

Family of trademarks.   The Federal Circuit has defined a family of trademarks as a group of marks having a recognizable common characteristic; however, simply using a series of similar marks does not a family make for purposes of protection.  Instead, there must be a recognition among the relevant consuming public that the marks are indicative of a common origin, which is generally established by considering the use, advertising, and distinctiveness of the marks as a whole.  Here, the Opposer introduced evidence that showed that although it used multiple spellings of its “Kühl” mark, it did not establish sufficient proof that it had extensively used all of them in commerce, and in particular, “Kuul” and “Kuhl,” such that it created a family of trademarks.

Likelihood of Confusion.  While there are at least 25 separate grounds that an Opposer may assert for the basis of a trademark opposition, by far, the most prevalent is likelihood of confusion pursuant to Section 2(d) of the Trademark Act.  In determining whether a likelihood of confusion exists under Section 2(d), the Board looks to several factors, with two key considerations being the similarities between the marks and the similarities between the goods or services.  In comparing the similarities between the marks, the Board, unsurprisingly, noted that closeness in spelling between the parties’ marks, and also concluded that consumers were likely to pronounce the two marks similarly.  In analyzing the similarity of the parties’ goods, the Board concluded that since there was ample evidence introduced of third-party party registrations and websites offering both bicycles and outdoor apparel together, this tended to support the conclusion that the Opposer’s and Applicant’s goods were similar.  The TTAB went on to find that since the parties’ goods were offered in the same channels of trade to consumers who exercise a low degree of purchasing care, confusion was likely such that the Opposition was sustained in favor of Opposer.

Practitioner’s Note:  Opposer was unsuccessful in convincing the Board that its “Kühl” marks were famous, despite the fact that it sells its products bearing the Kühl mark in over 1,0000 retail outlets nationwide.  This is due to the fact that Opposer’s introduction of advertising and sales figures alone did not provide context as to the level of exposure and recognition that consumers  might have had to the Kühl trademark in order for it to be considered famous.  The Kühl mark, was, however, deemed to be strong for purposes of the Section 2(d) likelihood of confusion analysis.

 

Not all trademarks are created equal.

In a decision of a rarely invoked dictum of trademark law, the U.S. Trademark Trial and Appeal Board ruled that the phrase I BELIEVE THAT WE WILL WIN failed to function as a trademark and thus was not entitled to registration.  The case, United States Soccer Federation, Inc. v. Aztec Shops, Ltd., provides a good example of how to take into account all components of an effective trademark opposition strategy.

In United States Soccer Federation, the applicant sought registration of the mark “I believe that we will win” for a wide-variety of sports and promotional apparel in International Class 25.   The Opposer, U.S. Soccer Federation, opposed the trademark application on the grounds that it failed to function as a trademark under Sections 1, 2 and 45 of the Trademark Act.

Section 45 of the Trademark Act defines a trademark as “any word, name,symbol, or device, or any combination thereof– (1) used by a person. . . to identify and distinguish his or her goods . . . from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.”   Not every phrase used in connection with the promotion of goods or services necessarily is a trademark and it is incumbent to examine how the phrase is used.   Slogans or other terms that are merely considered to be informational in nature or express support, admiration, or affiliation are generally not registrable.  The more common a phrase, the less likely that public will perceive it to be emanating from a single source.  Here, the Board focused on how the phrase “I believe that we will win” is viewed by the relevant general public when used in the marketplace.   The evidence submitted by Opposer revealed that “I believe that we will win” has been chanted at sporting events for years predating the Opposer as well as other public events.  The fact that the Applicant had sold thousands of dollars worth of promotional merchandise bearing the mark could not negate the fact that consumers viewed the mark as famous and ubiquitous in and of itself, separate and apart from Applicant’s attempts to appropriate it as a single-source identifier for Applicant’s goods.  As a matter of competitive policy, the Board ruled that the Applicant did not have the right to appropriate the phrase so widely-used by numerous groups and individuals in an attempt to gain exclusive rights.

The ability of a phrase to function as a trademark is the first-step in determining whether the phrase is entitled to trademark protection.

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

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.

The U.S. Trademark Trial and Appeal Board has ruled in favor of Pepsi-Cola in a trademark opposition case filed by the New York beverage giant against a pro se applicant in the matter of Pepsico, Inc. v. Jay Pirincci.

The Applicant had sought registration of the mark CAN DEW for  nutritional drink mixes to be used as meal replacement in International Class 5.  Pepsi opposed the application on the grounds that it was confusingly similar to its well-known family of Mountain Dew® trademarks for soft drinks, including Dew®, Do the Dew®, and Mountain Dew®.

In its decision, the Board assessed the Dupont Factors for likelihood of confusion, finding that the Mountain Dew® mark is a famous mark based on its extensive use and advertising over the years.

Originally, Applicant had filed for registration of the CAN DEW Mark for both nutritional supplements in international class 5 as well as fruit drinks and fruit beverages; fruit flavored energy drinks; non-alcoholic malt beverages; and malt beer in international class 32.  Pepsi then moved for summary judgment on its likelihood of confusion and dilution claims.

The Board partially ruled in favor of Pepsi on the issues of fame and similarity of the marks as well as likelihood of confusion with Pepsi’s Mountain Dew® marks and goods in International Class 32.  The Board, however, found a genuine issue of material fact as to whether Applicant’s nutritional drink mixes would be sold in the same channels of trade as the Opposer’s products and/or whether Applicant intended to trade upon Opposer’s goodwill.  Therefore, partial summary judgment was entered in favor of Pepsi for likelihood of confusion with respect to International class 32 beverages and was denied for International Class 5 nutritional drink mixes.

In its extended analysis, the Board pointed out that for purposes of likelihood of confusion, the Applicant filed for the word-mark CAN DEW in standard characters, without any visual design or label elements.  Therefore, Applicant could not compare its design labels with the Mountain Dew design label marks since Applicant had also applied for the goods as word marks.  Likewise, Applicant’s applied for goods were compared in their entirety to Applicant’s registered goods.   This correct interpretation of trademark law prevented Applicant from a more liberal interpretation of the likelihood of confusion factors.  The Board also ruled that any interpretation (or ambiguity) in the identification of goods must be construed in favor or the prior user, here, Pepsico.

In the end, the Board ruled in favor of Pepsico on the issue of likelihood of confusion for the Class 32 goods, thereby denying registration of Applicant’s mark, stating both expressly and implicitly that the evidence in support of the fame of Pepsi’s cited registrations (by way of historical advertising, promotional, and sales figures) as well as the similarity of the marks weighed mightily in their decision.

The moral of the story?  When one has a trademark that is deemed famous, all other arguments against likelihood of confusion seem to become secondary.