Thumbnail for version as of 15:21, 6 September 2009A lot can be learned from the easily searched trademark registrations existing on the United States Patent and Trademark Office’s online database. For example, Examining Attorneys at the USPTO will refuse registration based on prior confusingly similar registered marks, so responsible trademark owners will conduct the necessary searching and due diligence prior to adoption and first use. In addition, because searching the USPTO’s database can yield readily available evidence on a number of substantive issues important to trademark types and brand owners, third-party trademark registrations are a very tempting tool to use to try to prove a point.

As frustrating as it can be to trademark types and the brand owners they represent, third-party registrations cannot be used as legal precedent to try and compel a certain result. Such attempts easily are rebuffed at the USPTO since each application must be decided on its own merits and one Examining Attorney is not bound by the "mistakes" that may have been made by other Examining Attorneys at the USPTO. As a result, although consistency is a goal at the USPTO, it can be rather elusive at times. Having said that, third-party trademark registration evidence can have evidentiary value, if used properly, and the valid and acceptable use of third-party registration evidence has grown over time.

Third-party registrations have been considered relevant and probative in establishing a number of different and important trademark issues, including at least:

  1. The likely meaning of a mark to consumers. Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915 (CCPA 1976). 
  2. That goods or services are of a type that consumers may believe emanate from a single source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993).
  3. The likely meaning of a mark to consumers, i.e., whether it is merely descriptive or suggestive. Plus Products v. Star-Kist Foods, Inc., 220 USPQ 541 (TTAB 1983).
  4. That a mark is relatively weak and that consumers will rely on other matter to distinguish between marks. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369 (CAFC 2005).
  5. The existence of a relevant industry practice. Stuart Spector Designs, Ltd. et al. v. Fender Musical Instrument Corporation, 2009 WL 804142 (TTAB March 25, 2009) (finding the third-party registrations for guitar body designs supported the applicant’s position that the USPTO recognizes guitar body designs as capable of indicating source and the industry’s practice of registering guitar body designs); In re The Black & Decker Corp., 81 USPQ2d 1841 (TTAB 2006) (finding industry practice to use key head design as source indicator).

A couple of days ago I posted about a trademark specimen case, one where I was hoping the TTAB would expand the valid use of third-party registration evidence, but unfortunately, the TTAB did not acknowledge or address the third-party trademark registration evidence that was submitted (along with the specimens of use supporting those standard character word-only trademark registrations). Perhaps someone else can benefit from these thoughts in arguing for additional expanded use of third-party registrations in their trademark registration cases.

The submission of this evidence represented an attempt to naturally expand the use of third-party registrations (and their accompanying specimens) as relevant circumstantial evidence to show how consumers of packaged food products perceive house marks and product marks when they both appear on food packaging (and how manufacturers and brand owners view and treat them) and under what circumstances they will treat or perceive them together as a combined unitary word-only mark.

It also argued that third-party registrations and specimens are probative to show how common it is that packaged food product manufacturers intend for consumers to view their house mark and product marks as having not only separate trademark significance from each other, but also significance together as a combined unitary mark, even when the elements are not immediately adjacent, when other matter or wording may appear between them, and even when each element may appear in a different style, font, design, color, or background: DANNON CRUNCH, DANNON FRUSION, DEL MONTE FRUIT CHILLERS, SOBE FUERTE, DOLE TROPICAL BLEND, DEL MONTE HEALTY KIDS, DORITOS ROLLITOS, MILLER CHILL, SOBE COURAGE, FROM THE KITCHENS OF JIMMY DEAN BREAKFAST SCRAMBLE, PEPSI SUMMER MIX, PEPSI WILD CHERRY, and SUNKIST FUN FRUIT BUDDIES.

Additionally, it argued that the multitude of third-party registrations and specimens in the record, taken together, further show that there is an industry practice — at least within the packaged food and beverage industry — to treat and view house mark and product mark, taken together, as a composite unitary mark, even though the house mark and product mark continue to function as separate and distinct marks too.

Finally, it argued that it is reasonable to infer from the record evidence that major food and beverage companies intentionally file trademark applications for standard character word-only composite marks consisting of their house and product marks because they believe consumers perceive these elements as unitary marks.

Perhaps there is some hope this line of thinking will be accepted at some point in the not-to-distant-future. In the In re E.A. Sween Company decision, the TTAB ruled: "The specimens of use presumably show how the average purchaser will encounter the mark under normal marketing conditions and, as such, the specimens are suggestive of the reaction of the average purchaser to this display of the mark." (citing In re Magic Muffler Service, Inc., 184 USPQ 125 (TTAB 1974)).