Despite the fact that in most cases, a “likelihood of confusion” test governs both determinations, the right to use and the right to register are not necessarily coextensive rights — defeating the right to register, in most cases, is easier than defeating the right to use.
So, just because a brand owner is denied the right to register doesn’t necessarily mean that actual infringement has occurred, injunctive relief is appropriate, or monetary relief is warranted.
Hat tip to our friends at BlackCoffee in Boston, for providing this entertaining image, and another storytelling opportunity on this topic of great importance:
The name and visual identity of this portable restroom service provider were obviously inspired by the likely famous The Home Depot brand, name and logo. The orange and black trade dress, the similar all capital lettering style, the square logo, and the three word name beginning and ending identically (with the word in the middle creating a rhyme and having an overall similar cadence and sound), leave little doubt about the source of inspiration here.
So, why has Home Depot not taken action or stopped this use? Well, it appears they did take some form of action back in 2008, but the terms of any settlement are not publicly available, and they are likely confidential, but if you have any insights, please do share.
The Thone Depot, Inc. of Arlington, Massachusetts, filed on July 18, 2007, an application to federally-register this logo in connection with the “rental of portable toilets,” claiming a first use date of January 1, 2006.
We also know for sure that the application was examined by the USPTO and approved for publication, without any citation to Home Depot or its federally-registered rights, and in fact, the Throne Depot logo published for opposition on July 29, 2008.
It is also clear that The Home Depot filed extensions of time to oppose registration of the claimed logo, and then the registration application was voluntarily abandoned by Throne Depot on January 26, 2009.
The missing information, of course, is what terms might be contained in the apparent settlement between Throne Depot and Home Depot.
What we can reasonably surmise from abandonment of the application is that Throne Depot relinquished the right to register — as they have no pending trademark or service mark applications at the USPTO for any mark.
We can also surmise that The Home Depot did not extract a promise from Throne Depot to cease any and all use, and it seems unlikely a license arrangement exists, since there was no assignment of the application to The Home Depot.
If you’re in the mood to speculate, any thoughts on what other restrictions Home Depot might have extracted from Throne Depot to resolve the dispute on terms that apparently contemplate the continued use by Thone Depot?
Would you have dethroned only the right to register if you were the sitting king of this trademark enforcement effort?
Might Home Depot have been concerned about what is now called “trademark bullying“?
How strong is the likelihood of confusion claim here, and does it improve knowing that Throne Depot caters to the construction industry?
What about dilution of a famous mark, perhaps a tarnishment theory, given the nature of the services being provided by The Throne Depot?
What about these mocking Vine videos linking the two brands?