When we hear the word “overbreadth” in close connection with the word “trademark,” the often discussed “trademark bullying” topic will frequently come to mind.
Yet, discussions about “trademark overbreadth” are not limited to exaggerated and unrealistic trademark claims by a trademark owner.
We previously have discussed how one might deal with prior registrations that contain overbroad descriptions of goods or services, utilizing Section 18 challenges to compel certain narrowing.
Trademark overbreadth also can have real meaning in connection with the representation of the chosen mark an applicant might select in attempting to federally register at the USPTO.
An applied-for mark, in standard character format, is the broadest possible method of protection: “Registration of a mark in the standard character format will provide broad rights, namely use in any manner of presentation.” (emphasis added)
Broad isn’t always best, especially when a new comer and Applicant is hoping to coexist with prior federally-registered rights that already enjoy the many benefits of that very broad standard character protection at the USPTO:
“[T]he TTAB decides likelihood of confusion “on paper” at the USPTO as opposed to how a federal district court finds likelihood of confusion in “the real world” with the specific marks in use in their full and complete marketplace context:
- If a mark (in either an application or a registration) is presented in standard characters, the owner of the mark is not limited to any particular depiction of the mark. Cunningham v. Laser Golf Corp., 222 F.3d 943, 950, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000); In re Cox Enters., 82 USPQ2d 1040, 1044 (TTAB 2007).
- The rights associated with a mark in standard characters reside in the wording (or other literal element, e.g., letters, numerals, punctuation) and not in any particular display. In re White Rock Distilleries Inc., 92 USPQ2d 1282, 1284 (TTAB 2009).
- A registrant is entitled to all depictions of a standard character mark regardless of the font style, size, or color, and not merely “reasonable manners” of depicting such mark. SeeIn re Viterra Inc., 671 F.3d 1358, 1364-65, 101 USPQ2d 1905, 1910 (Fed. Cir. 2012); Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 1353, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011).
- Therefore, an applicant cannot, by presenting its mark in special form, avoid likelihood of confusion with a mark that is registered in standard characters because the registered mark presumably could be used in the same manner of display. See, e.g., In re RSI Sys., LLC, 88 USPQ2d 1445, 1448 (TTAB 2008); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re Pollio Dairy Prods. Corp., 8 USPQ2d 2012, 2015 (TTAB 1988).
- Likewise, the fact that an applied-for mark is presented in standard character form would not, by itself, be sufficient to distinguish it from a similar mark in special form. See, e.g., In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); Sunnen Prods. Co. v. Sunex Int’l, Inc., 1 USPQ2d 1744, 1747 (TTAB 1987); In re Hester Indus., Inc., 231 USPQ 881, 882 n.6 (TTAB 1986).
“With this well-settled precedent governing most TTAB cases, it should become more and more clear that proving likelihood of confusion at the TTAB to prevent another from being able to register a standard character mark doesn’t necessarily mean that infringement should be assumed or that it can even be established in federal district court, based on the actual market conditions of the specific trademark uses of the parties.”
The reverse is true as well. Just because an Applicant might be successful in avoiding a finding of trademark infringement based on its particular stylized use, doesn’t mean the Applicant’s federal registration application — in standard character form — is sufficiently tailored and narrow enough to avoid a finding of a likelihood of confusion at the TTAB, especially when the new comer and Applicant is confronted by prior standard character trademark or service mark registrations.
So, there is certainly an advantage to being the first to obtain standard character protection at the USPTO, and there is no guarantee a new comer Applicant is entitled to one.
Applicants should think carefully about whether the broad standard character format puts them in the best position to defend against a likelihood of confusion claim at the TTAB.