Likelihood of Dilution

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.

The New York Times has been following a trademark battle between Christy Prunier’s body and beauty care start-up business apparently geared toward preteen and teenage girls (Willagirl LLC) and industry giant Procter & Gamble, owner of the well-known, if not famous, more than century old WELLA hair care brand, with U.S. trademark rights dating back at least to the early 1930s.

The dispute has the most important hallmarks of what popular culture has dubbed “trademark bullying“: Big Business v. Small Business, Established v. Newcomer, basically, David v. Goliath.

For me, however, the trademark bullying label ought not be applied here, especially since, in my estimation, P&G wins the dispute over the right to register, at the Trademark Trial and Appeal Board (TTAB) (where the litigation between the parties started), probably 9 out of 10 times.

It’s good to see that Lara Pearson over at The Brand Geek Blog agrees this is not a bona fide case of “trademark bullying.” Seattle Trademark Lawyer similarly writes this isn’t the best example of “trademark bullying.” What do you think, legitimate trademark enforcement or overreaching?

From my vantage point, the goods clearly overlap and those that don’t are closely related, and the only difference between WILLA and WELLA is a short vowel sound between “i” and “e” — when spoken, kind of like the difference between “ick” and “eck” when someone is about to hurl, so let’s call it a distinction without a meaningful difference.

In a dispute over the right to register a trademark — at the TTAB anyway — upper case v. lower case won’t matter, distinctly different associated designs won’t help (because the words will be considered dominant), differing trade dress won’t be considered, and differing actual channels of trade won’t matter either, as the federal registrations owned by P&G for the WELLA brand and mark don’t specify any channel of trade limitations. As a result, all reasonable channels of trade for hair care products will be presumed, leading to a direct overlap of the channels of trade.

Perhaps this explains why Ms. Prunier took the fight to federal district court and sought suspension of the trademark opposition proceeding before the TTAB. This approach is actually a very smart strategy if you can afford it, or, if you have an insurance policy that will defend against any likely counterclaim for trademark infringement. Here is a copy of Willagirl’s successful motion to suspend the TTAB proceeding, which includes a history of the dispute, a copy of the declaratory judgment action filed by Willagirl in federal district court, and P&G Wella’s counterclaim for infringement and dilution, among other state law claims.

The strategy apparently worked, although at great financial cost to Ms. Prunier, because just a couple of days ago, the New York Times reported that the Wella/Willa trademark dispute between Ms. Prunier’s company and P&G has settled prior to a trial being held on the merits.

The settlement is reported to be confidential, as they always are, so we’ll have to monitor the trademark filings and the market place to determine what kinds of restrictions P&G may have imposed on Willagirl. I suspect we’ll never know whether money changed hands, and if so, how much, and the direction it flowed, but if I had to hazard a guess, it seems likely to me that Ms. Prunier won’t be absorbing the entire cost of the estimated $750,000.00 in attorneys fees she has incurred to date.

So, if Willagirl were to try this case ten times in federal district court, how many times does she win, with products looking like these?

 

Without knowing anything about what was learned by the parties during discovery, and assuming there are no smoking guns on either side, I’m thinking Willagirl wins no more than three times.

Let’s just say, settlement is the price of certainty — for both sides.