Likelihood of Dilution

Does Sanas Health Practice Ltd. (“Sanas Health”) think that Daenerys or Sansa will win at the end of the wildly popular Game Of Thrones series and ultimately sit on the Iron Throne?  Sanas Health filed two applications for the mark “QUEEN OF THRONES” with the United States Patent and Trademark Office (“USPTO”). Interestingly, the Applicant’s name Sanas is extremely similar to the Game of Thrones show leading character Sansa Stark. This may be merely a coincidence but could be argued to enhance confusion between the GAME OF THRONES® marks and the applied for “QUEEN OF THRONES” mark.

I guess there could even be those out there that think Cersei will not die in the final season (not me) and instead will end up on the Iron Throne at the end of the series. But, I am thinking most people agree with me that she will not survive (and will likely be killed by one of her brothers – my bet is on Jaimie).

Not surprisingly, Home Box Office (“HBO”) believes that Sanas Health is trying to capitalize on the goodwill of its famous GAME OF THRONES® mark and brand; and thereby, diluting its distinctive and famous GAME OF THRONES® marks. HBO further believes that the “QUEEN OF THRONES” mark is confusingly similar with its marks. Accordingly, HBO has filed a Notice of Opposition against these applications (No. 91246195).

By way of background, HBO has thirty-one (31) registrations and applications for GAME OF THRONES marks (including design marks and GAME OF THRONES with additional words such as GAME OF THRONES CONQUEST®, GAME OF THRONES THE THREE-EYED RAVEN®, GAME OF THRONES ASCENT®, and GAME OF THRONES BEYOND THE WALL) in connection with various goods and services.

Sanas Health applied for its “QUEEN OF THRONES” mark in connection with:

  • “Castor oil for medical purposes,” IC 5 (Ser. No. 87/839,043); and
  • “Nutrition counseling; Dietary and nutritional guidance; Providing a website featuring information about health, wellness and nutrition; Providing information about dietary supplements and nutrition,” IC 44  (Ser. No. 87/922,698).

This is not HBO’s first time seeking to protect its marks related to the Game Of Thrones series and brands. HBO has three (3) trademark registrations and an application for WINTER IS COMING®, which is the House of Stark-centric premiere episode of the Game of Thrones series. The Purple Wine Company attempted to register the “WINTER IS COMING” mark in connection with wines. HBO opposed the application and the Purple Wine Company failed to respond. The mark is now abandoned.

The Examining Attorney found the recent application for “WINTER IS COMING” filed by Chen Yufang to be confusingly similar with HBO’s WINTER IS COMING® marks and issued an Office Action preventing registration. We will have to see if Mr. Yufang serves a response to this Office Action or abandons the application. If he does not abandon the Application and is able to overcome the Office Action, I would anticipate that HBO would file a Notice of Opposition against his application for the famous “WINTER IS COMING” mark.

Fans of the Game of Thrones series are aware of the fanciful word “Dracarys” as a command to Daenerys’ the fire breathing dragons. HBO opposed an application filed by Hangzhou Wanry Imp. & Exp. Co., Ltd.  (“Hangzhou”) to register the “DRACARYS” mark in connection with numerous automobile related accessories. HBO opposed the application and Hangzhou failed to respond. The mark is now abandoned.

Fan favorite Tyrion Lannister proclaimed, “That’s what I do. I drink and I know Things” in season six of Game of Thrones, and HBO’s official trailer for the sixth season included this saying. When Francis Collins from Florida tried to register this mark in connection with t-shirts, HBO relied upon its common law rights associated with its sale of t-shirts having the “That’s what I do. I drink and I know Things” mark to oppose the Application. Ms. Collins defaulted and her application for the mark is now abandoned and dead.

DuetsBlog has featured other posts related to the famous show and its brand, including Martha’s post here, and mine here.

The wait is almost over.  The final six episodes of Game of Thrones start on April 14.  We will have to see if there is a King or Queen who ends up on the Iron Throne and what happens to the “QUEEN OF THRONES” applications.

A loyal reader brought to our attention the logo for a rather interesting chiropractic practice:

Without too much pain, can we all agree on the likely inspiration for the above name and logo?

What’s really interesting is that the name Thorassic Park has been federally-registered since 2004, so there is little doubt that the names may co-exist without likelihood of confusion or dilution.

But, what about the visual identities? Don’t they seem far too close, even if the businesses are very different? It appears the chiro-logo is almost a fossil now, having been around twenty years.

How can that be, given the close proximity between Orlando, Florida and Bradenton, Florida? What are the odds that the Jurassic Park franchise owner hasn’t discovered the chiro-logo before now?

And, what are the odds a patient of Thorassic Park in Bradenton might need an adjustment after visiting Jurassic Park in Orlando? Might there be an opportunity for a shuttle service in between?

So, if you are the brand police for the Jurassic Park franchise, does the chiro-logo give you back pain? For the creatives in the crowd, does your spine tingle seeing this painstakingly cloned logo?

We write a lot here about the scope and strength of trademark rights and how that determination is often intertwined to making intelligent likelihood of confusion determinations.

Does “April Madness” fall within the NCAA’s scope of trademark rights for “March Madness“?

Likelihood of confusion? Is “March Madness” a famous mark deserving protection from dilution?

How about “Final 3”? Does that fall within the NCAA’s scope of trademark rights in “Final 4”?

These are some of the questions that will be answered in NCAA v. Kizzang LLC, filed by the NCAA in Indiana federal district court last week, a PDF of the complaint is here.

Yesterday we wrote about a 1929 decision determining that the letter “C” fell within the scope of rights of a trademark containing the letter “B”.

Now, the NCAA is asking for a mark containing the month “April” to fall within the scope of rights in a mark containing the month “March.”

Doesn’t this remind you a little bit of our prior discussions of Adidas and its “one stripe buffer” — enjoying protection of its three stripe design against two and four stripes?

Hat tip to Dan.

Move over likelihood of confusion, there is another sheriff in town, at least when it comes to looking for guidance on best practices and strategic considerations for a brand owner’s clearance, registration, protection and enforcement of trademark rights in the United States.

As if us dedicated trademark types didn’t already have enough likelihoods (confusion, dilution, success, jurisdiction) to consider, weigh and balance. Dabblers probably best step aside.

Now, thanks to the recent Supreme Court decision in B&B Hardware, Inc. v. Hargis Industries, Inc., we must factor in the likelihood of preclusion too, throughout the trademark life cycle.

After noting that “the idea of issue of preclusion is straightforward,” but admitting it “is challenging to implement,” the Court broadly held that “a court should give preclusive effect to TTAB decisions if the ordinary elements of issue preclusion are met.” (emphasis added)

This broad holding begs the question of what other types of issues decided by the TTAB — beyond the likelihood of confusion question before the Court — may result in the application of issue preclusion. Priority? Inherent Distinctiveness? Genericness? Functionality? Descriptiveness? Acquired Distinctiveness? Fame? Dilution? Intent to Deceive? Bona Fide Intent to Use? Fraud? Intent to Deceive the USPTO? Intent to Resume Use? Abandonment? Laches? Deceptiveness for False Advertising? False Suggestion of Connection for Right of Publicity Violations?

As to the likelihood of confusion question (which the Court found to be fundamentally the same for registration and infringement purposes), the Court unclearly directed: “So long as the other ordinary elements of issue preclusion are met, when the usages adjudicated by the TTAB are materially the same as those before the district court, issue preclusion should apply.” (emphasis added) As is typical when the Supreme Court speaks, more questions are raised than answered.

Does the Court contemplate anything other than the potential for unregistered common law rights and restricted channels of trade when it refers to “usages adjudicated by the TTAB”? What about applications and registrations for typed drawing marks versus stylized marks? What about the presence of house marks and/or famous trade dress on packaging, but not included in the drawing of the applied-for mark? What about goods listings that are appropriate under USPTO rules (e.g., jewelry), but broader than what might be in actual use to support the registration or application (e.g., lapel pins)? Does a cautious following of B&B Hardware counsel in favor of seeking to register narrower trademark claims that include only the stylized version of a mark used with the sleekest description of goods possible?

Exactly what does the Court mean by materially the same usages? Does it contemplate partial preclusion scenarios? Does the materially the same reference invoke the material alteration standard? Does it invoke the “can’t materially differ” standard in trademark tacking cases? If so, under Hana Financial, doesn’t that question go to a jury? Yet, in B&B Hardware (argued to the Supreme Court on the very same day as Hana Financial), the Court wasn’t troubled by the absence of juries in TTAB decisions.

Perhaps most notably, the word “should” appeared twenty-six times in the majority opinion of the Supreme Court’s B&B Hardware decision, and the word “shall” only appeared five times (each of the five references related to specific statutory language), leaving me to ask, must a district court apply issue preclusion when the Supreme Court thinks it should, when the Court specifically avoided use of the words shall and must? In other words, is the decision of preclusion left to the sound discretion of the district court?

One of the other million dollar unanswered question remains: How does one predict the likelihood of preclusion?

For those looking for absolute certainty, don’t clear and adopt a mark for use you can’t federally register, don’t apply to register a mark likely to be opposed unless you can win and you’re prepared to see it though, don’t start defending an opposition if you aren’t prepared to see it through, but if you do and lose, by all means take a de novo appeal to federal district court if you’re a losing opposer who may want to force the use to stop, or if you’re a losing applicant who wants to keep using the applied-for mark.

For the rest of us who are comfortable living with some level of uncertainty, it’s time to read the tea leaves with a view to predicting not only likelihood of confusion, but the likelihood of preclusion too.

Let’s suppose you’re a non-profit like the NRA, you sell stuff on your NRAstore.com, and you’d like to promote the fact that your website has over 30 product demonstration videos available that can easily be viewed online by potential consumers before they buy stuff from you.

Let’s also suppose that when you sell stuff, 100% of your profits go directly toward supporting your non-profit mission and its vital programs. Impressive numbers, that’s really good stuff.

To encourage the sale of stuff on your website, you might be tempted to promote the existence of the product demonstration videos by calling them “flix,” or you might even refer to the video library as your “NRA FLIX,” but would you create an email promotion that looks anything like this?

Upon further reflection, might you expect to hear from the good folks at Netflix, the owner of a federally-registered trademark looking like this?

What do you think, is there a plausible case of likelihood of confusion? Is Netflix a famous mark for dilution purposes? If so, is there a likelihood of dilution? Would you surrender?

John Welch over at the TTABlog recently reported that oral argument will be heard by the TTAB later this month in McDonald’s opposition of McSweet LLC’s application to federally register McSweet for pickled vegetable products.

It appears many resources have been invested on both sides of this battle for more than six years; it is unclear to me why this dispute wasn’t taken to federal district court since the issue of use could be decided, in addition to the issue of whether registration should be permitted. Having said that, McSweet is claiming use since 1990 for some of the goods. Perhaps a lawsuit will follow, if McDonald’s is successful in the opposition to registration.

McDonald’s is asserting likelihood of confusion and likelihood of dilution based on McDonald’s famous Mc-family of marks. I’m thinking that this looks like an uphill battle for McSweet, so I’m not sure they’ll be lovin it when the Board rules. But see for yourself, here is McDonald’s trial brief, here is McSweet’s trial brief, and here is McDonald’s rebuttal brief.

This excerpt from McDonald’s trial brief caught my attention:

“Though McDonald’s has filed hundreds of applications covering individual marks in its ‘Mc’ formative family, the individual marks in use at any given time are constantly changing. Some family members are temporarily retired . . . (showing over 60 former registrations for Mc formative marks by McDonald’s), while new family members are being introduced. The family also includes various marks that McDonald’s uses, but for which it has not sought registration.” (citations to record and most parentheticals omitted).

McSweet appears focused on arguing for peaceful coexistence with the specific federally-registered Mc-formative trademarks asserted by McDonald’s in the proceeding, and McDonald’s wants to be able to rely on the fact that members of its Mc-family of marks come and go (finessing the question of abandonment as to temporarily retired members), which increases the likelihood of confusion and dilution, according to McDonald’s.

Although McDonald’s didn’t use the term, the concept reminds me of all the recent discussion about fluid trademarks — might this case produce the newest type of fluid trademark, i.e., a fluid family of trademarks?

Teaming up with Susan Upton Douglass of the Fross Zelnick firm is always fun, so don’t miss our upcoming webinar on September 11, 2013.

It is entitled “Structuring Trademark Clearance Opinions: Assessing Search Results to Identify Infringements, Overcoming Clearance Challenges, and Preparing Opinions to Reduce Legal Risks,” and it is offered by Strafford Publications.

We’ve done this program a few times now, and both legal and marketing types have learned a lot, so we hope you’re able to join us for a lively discussion.

By the way, first three to post a comment here will enjoy the benefits of free attendance!

As Chick-fil-A enters the Twin Cities market, it has begun another creative billboard campaign touting the “End of Burgerz — Koming Soon,” with no sign of the “Eat Mor Chikin” campaign, as of yet anyway. Bo Muller-Moore of Vermont — owner of the “Eat More Kale” trademark — probably would prefer that the billboards read: “The End of Trademark Bullying — Koming Soon!”

As you know, we’ve been writing about the highly publicized trademark bullying allegations associated with Chick-fil-A’s unrelenting pursuit of Vermont-Native Bo Muller-Moore’s “Eat More Kale” trademark, for a couple of years now:

I’m on record as viewing the “Eat Mor Chikin” v. “Eat More Kale” trademark enforcement claim as baseless and an example of overreaching, yet Chick-fil-A has succeeded in obtaining the USPTO’s powerful assistance in preventing registration of the Eat More Kale trademark. First, with the granting of a dubious Letter of Protest, then with a registration refusal being made by the Examining Attorney who had previously seen no trademark conflict, and most recently with the Managing Attorney at the USPTO taking over the file to reinforce the likelihood of confusion refusal and add even more substantive bases for refusal.

Given those developments, it’s presently looking like a tough road at the USPTO, so I’ve been wondering outloud whether Mr. Muller-Moore will ask a federal district court judge to declare that the “Eat More Kale” mark is not infringing or diluting Chick-fil-A’s “Eat Mor Chikin” mark, since a federal court decision declaring no likelihood of confusion would compel the USPTO to withdraw the likelihood of confusion refusal based on Chick-fil-A’s “Eat Mor Chikin” mark. Doing so also could provide a forum where monetary relief could be awarded to Bo if Chick-fil-A’s claim are found baseless and overreaching.

A couple of weeks ago Bo Muller-Moore updated his trademark counsel of record information at the USPTO to add Ashlyn J. Lembree of the University of New Hampshire IP & Transaction Clinic.

The current USPTO prosecution file shows that Mr. Muller-Moore has a September 7, 2013 deadline to respond to the Managing Attorney’s latest bases for registration refusal, so we’ll know soon enough whether Muller-Moore suspends his pending application to bring a declaratory judgment action in federal district court in search of a more friendly forum or whether he tries once more at the USPTO with his newly expanded legal team.

Where do you come down on the “Eat Mor Chikin” v. “Eat More Kale” trademark dispute? And, what action would you recommend to Bo?

When the “trademark bully” epithet is hurled at a trademark owner “caught in the act” of enforcing or otherwise protecting its intellectual property rights, another common accompaniment is the expressed outrage and indignation that no one could ever possibly be confused.

Here are a few points worth noting:

  1. The test of infringement is likelihood of confusion, not actual confusion.
  2. Likelihood of confusion is not only to source, but sponsorship, affiliation, etc.
  3. If a famous mark is involved, likelihood of confusion isn’t even required.

And, perhaps most importantly, as the Trademark Trial and Appeal Board recently reminded, likelihood of confusion determinations must be based on “the least sophisticated potential consumers.”

Let’s just say, look around, that’s an awfully low threshold.

So, when hurling the epithet it’s probably a good idea to make sure your conclusion to apply the label is based on what the law is, and not what you think the law should be.