Trademarkbully.com is a great resource for being aware of and understanding the phenomena of trademark bullying. There are lots of stories about companies that stretch trademark law as a means of bullying others and trying to get what they want. From the battle between Apple and Microsoft over AppStore, to individual trademark owners standing up to corporate giants such as Nestle and Monsanto, there are plenty of examples to share with clients to emphasize the dangers of adopting a name that’s too similar to another mark. The video of the founder of a small Vermont brewery who explains how he defended himself against bullying, is particularly memorable. Even Bob Marley is a trademark bully as he’s seeking to cancel a preexisting MELLOW MOOD mark for cafe services so he can use MARLEY’S MELLOW MOOD for tea products. That gives an ironic twist to “Get up, stand up, stand up for your rights. Get up, stand up, don’t give up the fight.” The site is maintained by Benjamin Ashurov, a trademark attorney at Raj Abhyanker P.C., the top trademark filing firm in the US.
Brand name developers occasionally throw around the idea that clients, in the hopes of using a name they like, can sometimes “make an agreement” with another trademark owner who is already using the trademark – a naked consent agreement, perhaps.
A naked consent agreement is where a trademark owner consents to the registration of, and perhaps the use of, another’s mark with no explanation as to why contemporaneous use of the marks would not result in a likelihood of confusion.
This is not always good advice.
The Trademark Trial & Appeal Board recently refused registration for the marks ONE STEP and ONE-STEP for glucose monitoring systems and related devices, finding them likely to cause confusion with the registered mark ONE-STEP for blood sampling prickers.
The Board found the marks to be “virtually identical” and the goods to be related.
The applicant for the marks ONE STEP and ONE-STEP for glucose monitoring systems pointed to a letter of consent signed by the owners of the three cited registrations. The applicant argued that the letter “should be given great weight” and that the Board “must honor the parties’ position.” The Board disagreed and acted, as they should, to protect the public from confusion.
The Board noted that any consent agreement should reflect the relevant du Pont likelihood of confusion factors and explain the underlying facts that led the parties to the conclusion that there would be no likelihood of confusion.
Brand name developers therefore should be careful to recommend making “agreements” to their clients unless a qualified trademark attorney is involved. As the case above illustrates, agreements for trademarks to co-exist do not trump the underlying principles of trademark law.
What are trademark attorneys thinking when they say, “Yes” or “No” to a new name?
If your client’s trademark counsel is experienced and talented, they will carefully consider the trademark issues preliminary trademark screening reports discover. Counsel knows the markets where the mark will be used; they know how the name will be used; they have extensive experience determining the overall risk factors for their company. A preliminary trademark screen points out similar trademarks on similar goods and services, but counsel determines if these similarities pose the risk of infringement. So, what is counsel thinking?
Knowing these factors before starting a preliminary trademark screen guarantees a maximum number of available names.
Consider a recent screening of the name ENHANCE for medical equipment.
Without knowing ENHANCE would be used with the preexisting trademark, FLEXX, ENHANCE was knocked out. The US Federal trademark registration, SILIMED ENHANCE, for medical apparatus was discovered as well as a multitude of marks including ENHANCE. Trademark clutter weakens the ability of ENHANCE to serve as a trademark BUT it strengthens a unique combination of words, such as FLEXX ENHANCE. FLEXX ENHANCE was considered a unique enough name to be used by the client’s counsel. ENHANCE was a “Maybe Not” name. FLEXX ENHANCE was a “Go” name – provided we know what counsel is thinking.
In today’s world of millions of trademarks in the US and tens of millions of trademarks around the world, creativity doesn’t go as far as it used to. What does it take to guarantee a client a great new brand name?
The psychologist, Dean Simonton, argues that fecundity is often at the heart of what distinguishes the truly creative and successful. After 18 years of developing great brand names and now as a preliminary trademark-screening expert for brand name developers, I agree. The more good names that are screened to determine if they’re similar to existing trademarks or not the more creative choices there are to be shared with clients. This creative fecundity paired with reliable trademark screening is key to differentiating great brand name developers.
Simonton reports the more success there is the more failures there are as well – meaning that the brand name developer who has more creative names than a competitor will also have more names knocked out by a trademark screen. Needless to say, the brand name developer who submits 100 or more of their names to screening will emerge with more good names than those who submitted fewer names. It’s really that simple.
The difference between Bach and his forgotten peers isn’t that he had a better ratio of hits to misses, but that Bach created more than 1000 compositions while mediocre musicians might have created a dozen. Simonton says a genius is a genius because he can put together such a staggering number of insights, ideas, theories, random observations and unexpected connections. Isn’t that what clients are looking and paying for – great brand names that are also available as a trademark in the US and beyond?
The quality of brand names is almost always equal to the quantity created and screened.
Keith Richards complained The Rolling Stones always had too many ideas and the band had to fight to find the great songs. Putting more names into preliminary trademark screening is that same “fight” helping to bring out the “Brown Sugar” of brand names and not the “Head In The Toilet Blues” kind of names. (Never heard of that Stone’s song, have you!)
Often the overall commercial impression between two marks is open for debate. There’s the client’s favorite brand name candidate and a similar pre-existing trademark. Are they significantly different? Should the status of the name be a “Maybe” or a “Maybe Not?” For example, are STREAM and VUESTREEM for mobile phones too similar? The marks contain the same word, “Stream.” Does the addition of “Vue” make a difference?
A recent case before the Trademark Trial and Appeal Board helps answer these questions.
The Board sustained an opposition to registration of the mark WAGGIN’ STRIPS for pet food and edible pet treats, finding it likely to cause confusion with the registered mark BEGGIN’ STRIPS from Nestle for dog snacks. These two marks seem less similar to me than STREAM and VUESTREEM.
The Board observed that when the involved goods are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion. In our case, mobile phones are identical goods.
In appearance, “the marks … look similar to the extent that both have the same format, structure and syntax; both being comprised of two words, the first word in each ending in ‘GGIN” and the second in each being the word STRIPS.” Although STREAM is one syllable and VUESTREEM is two, the similarities of the two names would be examined in a similar fashion.
As to sound, the marks are “similar in rhythm and cadence, both having three syllables, the final two of which would be pronounced the same.” As regards connotation, since both parties’ goods include edible pet treats, the term “strips” would mean the same thing in relation to both marks. Since both of our names are for mobile phones, “Stream” is likely to mean the same thing to consumers. In addition, both “WAGGIN’ and BEGGIN’ evoke images of, albeit somewhat different, dog behaviors. As such, both marks, as a whole, connote types of treat that elicit certain canine behavior. In our case, both marks, as a whole, connote a type of performance for mobile phone users.
Finally, as to commercial impression, the Board found the marks to be “very similar,” since they are “two-word marks which are constructed in the same way. They both begin with similarly spelled words that describe attributes of dog behavior and end with the identical word STRIPS.”
I think the same kind of thinking would be applied to STREAM and VUESTREEM for mobile phones. The whole purpose of preliminary trademark screening is to stay out of these arguments and to help identify the most unique brand name candidates before turning them over to a trademark attorney for a full trademark search and opinion on the availability of the name as a mark.
(Thanks to the TTABlog for posting the TTAB case referenced above).