Category Archives: Trademarks

Eww, You’re *Related!*

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When assessing the likelihood of confusion between two trademarks – and therefore, likely trademark infringement – we usually look for similar marks for similar goods and services.  That’s a bit of a simplification, of course.  There are numerous other factors that go into the analysis (and, to make matters worse, no two appellate courts use the same list of factors), but similarity of goods and services it one of the most important factors in any analysis.  But, how to know when things are sufficiently similar?

First, it must be stressed that goods and services do not need to be identical to be problematic.  The Trademark Office stresses, “It is sufficient that the goods and/or services of the applicant and the registrant are related in some manner or that the conditions surrounding their marketing are such that they are likely to be encountered by the same persons under circumstances that, because of the marks used in connection therewith, would lead to the mistaken belief that they originate from the same source.”  For example, shirts are related to pants, in that both are items of clothing and are routinely sold by the same outlets.  Similarly, shirts are also related to clothing store services, because it is reasonable to assume that ACME-brand clothing stores would sell their own ACME-brand shirts.

However, this link is not always so straightforward, and sometimes the Trademark Office finds relatedness where it might not be so obvious.  For example, clothing may also be related to jewelry such as earrings and necklaces.  This is so, according to the Trademark Trial and Appeal Board, because a consumer might purchase both “so as to coordinate a fashionable ensemble.”  In re Manja Studio SDN BHD (TTAB, 2019).

Food items may also be deemed related, even if they are vastly different kinds of food.  Yogurt and cereal have been held to be related because they are both seen as breakfast foods and are even sometimes mixed together and eaten at the same time.  General Mills, Inc. v. Fage Dairy Processing Industry S.A. (TTAB, 2011).  Bread and cheese have also considered related, in part because they are often eaten together and are frequently displayed near each other in supermarkets and deli counters.  In Re Martin’s Famous Pastry Shoppe, Inc. (Fed. Cir. 1984).

Finally, magazines (or other printed or online publications) may be related to practically anything that is featured or advertised in the magazine.  Specific cases include beauty salon & health spa services vs. magazines relating to physical fitness (Weider Publications, LLC v. D & D Beauty Care Company, LLC (TTAB, 2014)); face cream & bar soap vs. magazines featuring articles on health, beauty, and grooming (Cowles Magazines, Inc. v. The Andrew Jergens Co., 115 USPQ 92 (Comr., 1957)); and travel agency services vs. magazines that feature travel “as a significant, albeit not the principle, feature” (The Conde Nast Publications Inc. v. Vogue Travel, 205 USPQ 579 (TTAB 1979)).

All likelihood-of-confusion issues are fact-based inquiries, and relatedness of goods and services is no exception.  Small changes from one situation to the next can have big differences on whether infringement has occurred.

The Birth of Your Business: Naming the Baby.

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Potential Trademark Issues Associated when Creating a Name for Your Business

In the development of a business plan, critical features include choosing a name for a business entity, developing a marketing plan, promoting the name and business and eventually establishing a domain name and web presence. While it is tempting to name the business in the early stages to establish an identity for the new venture, this is a risk-filled endeavor as few businesses have properly secured trademark rights and registrations for the new name.
Frequently, the first attempt of naming the new business venture is the establishment of a domain name; for example www.mynewbusinessname.com. Many new businesses rush, enthusiastically, to secure this domain name at the very early planning stages and before the venture has launched to ensure that the domain name will be available for future use. While this may seem a prudent step, the very first task in naming this new venture should be to secure the Federal trademark clearance and registration of the business name and trademark. Far too often, new ventures invest significant resources in securing a domain name prior to clearing and securing the Federal trademark registration. Many issues often arise if these critical steps are not taken to clear and register the Federal trademark.

Establishing First Use of the Trademark in Commerce

The new entity may be staking its claim and starting to accrue common law rights in its name by use of the name in commerce even if a United States trademark application is not filed. Common law rights have limitations and cannot replace the benefits gained by filing a United States trademark application. Further, a new entity may be staking its claim and starting to garner rights to the name over competitors with its first date of actual use of the trademark in conjunction with the goods or services in interstate commerce but again, this actual use cannot replace the benefits gained by filing a United States trademark application.[1]

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A Rose by Any Other Name – May or May NOT be a Rose:

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A Rose by Any Other Name – May or May NOT be a Rose:
The Distinguishing Characteristics of Federal Marks.

The need for a thorough understanding of the nuances of law surrounding federal marks can arise at unexpected times.   During the practice of any facet of legal procedure, clients’ needs can include establishment and protection of property or rights, including federal trademarks, service marks, collective trademarks and collective service marks, collective membership marks, and certification marks.  While the ‘titles’ of these marks seem quite similar, or perhaps even overlapping, their functions each are unique.  Differentiating between them requires understanding of the intrinsic characteristics of various federal marks.

The laws governing federal marks can be found in the United States Code and the Code of Federal Regulations.  Chapter 15 of the United States Code encompasses the Lanham Act which is the federal trademark statute.  Also, since trademarks are not provided for in the United States Constitution, the federal government controls their registration and use through the Interstate Commerce Clause.

Federal Trademarks

Federal trademarks are used on tangible goods or products to identify the source or origin of goods and are registered and protected by federal statute [i].  A federal trademark is used to identify the origin of shoes, fruit, sporting equipment, or any other tangible goods.  A federal trademark which is placed upon or is part of said items is “any word, name, symbol, device, or any combination of these options”[ii].  This definition encompasses groupings of words or logos.

Case law has also allowed for a single color or a multitude of colors to function as a trademark.  The Federal Circuit held that Owens-Corning could use the color pink to distinguish and identify its residential fibrous glass insulation from competitors in the marketplace [iii].  The Supreme Court also held that a single color may serve as a trademark[iv].  Both the Federal Circuit and the Supreme Court noted that it was important that the trademarked color serve no utilitarian purpose but merely distinguish the goods from those of competitors[v]

The United States also recognizes that a distinctive sound may be trademarked.  The National Broadcasting Corporation (“NBC”) was able to trademark the sound of its chimes preceding a broadcast[vi].  Also, Metro Goldwyn Mayer Lion Corporation (“MGM”) has a trademarked its lion’s roar which is heard at the beginning of many MGM movies[vii].

Regardless of what trademark the owner chooses, it must be used in association with goods in interstate commerce.  A federal trademark is owned by an individual, company, or other entity and used to distinguish its goods and services from competitors in the market.  Only the owner of the federal trademark is allowed to use that mark on its products and can prevent others from using the same or similar mark on similar goods.  However, the owner of a trademark may grant other entities permission to use its mark on the grantee’s products.

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