For a few months now, the Minneapolis skyway system has been flooded with a variety of fresh, creative, eye-popping advertising to promote Pepsi’s new bubly sparkling water collection:

Although not a lie (the bottles I’ve seen clearly reference Pepsi), you’d never know from this ad or the trademark registration that Pepsi is behind bubly, since an Irish entity located in Bermuda owns the mark.

Thoughts about Pepsi’s line of reasoning for having ownership rest with an Irish entity located in Bermuda? Taxes maybe?

Yet, it is clear the market knows this is a Pepsi launch, wonder what Coke, owner of Tab, thinks?

Sipping a bubbly drink, like sparkling water, necessarily has bubbles, explaining why the USPTO required a disclaimer of the word “bubbly,” even though the mark includes bubly, not bubbly.

Although it might be nice to own a standard character registration for the misspelled and un-disclaimed wording bubly, that hasn’t been attempted, as the misspelling is likely not distinctive.

Holding a word only registration for bubly doesn’t appear possible any time soon, since the double entendre is only apparent from the stylized bubly sparkling water mark, not bubly standing alone.

Double entendre? Yes, the description of the stylized mark notes the “u” in “bubly” is “depicted as a smile,” which ties into the additional meaning of “bubbly” — lively, cheerful and talks a lot.

If the words “bubbly” and “bubly” can’t be owned here, may that inspire a truncation to bub, especially given this pending intent-to-use trademark applications for bub and Bub Sparkling Water?

More than three months ago, we sounded the alarm about an important trademark case to consider the interplay between the right to register and the right to use a trademark:

“Every so often there is a moment when trademark types, marketing types and brand owners need to pay close attention to where the law could be headed. Today, I’m sounding the alarm.

If the U.S. Supreme Court decides to follow the advice it recently sought and received from the U.S. Solicitor General (SG) of the Department of Justice, those of us who care deeply about the enforcement and protection of brands and trademarks could be facing a real paradigm shift.

The SG’s amicus brief encourages the Supreme Court to review the case, and it seems likely the Court will do so. If so, let’s hope the Court is flooded with thoughtful amicus briefs to help it get this important issue right. At a minimum, INTA should weigh in as a friend of the court.”

By way of follow-up to that discussion, the Supreme Court has agreed to decide the B&B Hardware case, it is hearing oral arguments on December 2, 2014, and I’m pleased to report that we weren’t the only ones recognizing the importance of having the Supreme Court reach the right answer to this question: “The impact (if any), of a prior win or loss (on the issue of likelihood of confusion) at the USPTO’s Trademark Trial and Appeal Board (TTAB) on a later federal district court trademark infringement case involving the same marks and parties.”

Although the Court wasn’t “flooded” with amicus briefs, it does appear to have received four briefs from some heavy-hitter amici:

The SG’s amicus brief, as well-written as it is, fails to appreciate the very limited scope of TTAB jurisdiction, the full extent of its unique practices and procedures in deciding likelihood of confusion for purposes of registration, and unfortunately the influential SG takes the following misguided position (without respecting the TTAB’s own view of its limited jurisdiction, much less appreciating the negative impact that the threat of preclusion will have by necessarily escalating the stakes, intensity and expense of administrative Board proceedings going forward):

“When the Board concludes in an opposition proceeding that a likelihood of confusion does or does not exist with respect to particular usages, that determination precludes relitigation of the likelihood of confusion question in a subsequent infringement action between the same parties for the same usages.”

IPLAC’s amicus brief oddly concluded:

“[T]he Supreme Court should be aware as follows: (1) a significant dichotomy exists in the nature of cases resolved by the Trademark Trial and
Appeal Board, (2) TTAB cases routinely function as typical federal litigation cases, with discovery and trial, pursuant in part to the Federal Rules of Civil
Procedure and Evidence, and (3) the Seventh Amendment may be implicated and trump any other consideration in the case.”

AIPLA’s amicus brief eschewed a bright line test, noting preclusion is possible, but rare:

“AIPLA respectfully requests that the Court clarify that a TTAB decision on likelihood of confusion can, in appropriate and narrow circumstances, have a preclusive effect, and that if a TTAB decision is denied preclusive effect because the issue is not the same, then no deference is due. However, deference may be appropriate where a TTAB decision is denied preclusive effect for other reasons.”

INTA’s amicus brief correctly concluded a bright line test is appropriate, no preclusion:

“INTA urges this Court to rule that: (1) TTAB determinations on the likelihood of confusion do not have preclusive effect in subsequent civil court proceedings; and (2) district courts should determine, on a case-by-case basis, whether, and to what extent, TTAB’s determinations should be afforded deference, but such deference should be limited to fact issues that were identical and fully litigated and should not prevent a party from offering other evidence and arguments that may nevertheless compel a different result.”

In my opinion, INTA’s amicus brief is the only one to score an A. INTA’s amicus brief did a very impressive job of communicating the clear difference between how likelihood of confusion is addressed at the TTAB in determining the right to register, as compared to how likelihood of confusion is addressed in federal courts across the country — with brand owners having far more at stake in the latter, including injunctive relief, damages, and attorneys fees.

What I don’t recall seeing in any of the amici briefs is the impact on likelihood of confusion in deciding requests to register standard character marks at the USPTO, a potentially much broader right than those acquired through actual use in commerce. (I double-checked, and it appears there is one small reference in AIPLA’s brief, and none in the other amici briefs). In any event, my experience is that the vast majority of oppositions and cancellations involve standard character marks of at least one of the parties, so it seems like a point worth making.

Simply stated, being denied a request for a broader registered right does not automatically warrant a finding of infringement. As we’ve said before: “[J]ust 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.”

It seems to me that the TTAB’s frequent focus on the registration of standard character marks, in oppositions and cancellations, reinforces INTA’s point about how the 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. See In 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.

How do you see the Supreme Court deciding this important case for brand owners who enforce their trademark rights or have their right to register challenged at the TTAB?

John Welch, over at the TTABlog, reported on a recent trademark specimen of use case (pdf here); one near and dear to my heart, since I represented the Applicant seeking to register the composite word-only mark DELI EXPRESS SAN LUIS for sweet rolls. At issue in the case was whether the product label specimen (appearing below) shows use of the DELI EXPRESS SAN LUIS word-only mark as set forth in the standard character drawing of the trademark application:

The Trademark Trial and Appeal Board (TTAB), in what it admitted to be a "necessarily subjective" analysis, examined the product label specimen — and on that basis alone — concluded it does not show use of the claimed DELI EXPRESS SAN LUIS mark:

Here, we agree with the examining attorney that the specimen depicts the two literal portions DELI EXPRESS and SAN LUIS in such a manner that consumers would not perceive them as constituting a single composite mark. First, the DELI EXPRESS portion is not only in a different font but is contained within a yellow-background, and then a larger red background, separated from the remainder of the packaging design by a black bar outlining the top left corner of the package. The other literal portion, SAN LUIS, is outside of that border area and is further separated by a fanciful triangle design and placed upon a green background. The term CONCHA appears below these two elements in a lighter green box. Taken together, we find that the impression left by this specimen is that the two elements, DELI EXPRESS and SAN LUIS, are two separate trademarks rather than the single mark shown on the drawing page (emphasis added).

I respectfully submit that these kinds of determinations — especially since they are admittedly and "necessarily subjective" — are not binary, either-or propositions. For example, it is entirely possible for a single specimen to show two trademarks that function as separate individual trademarks and also function together in the same specimen as a unitary word-only composite mark (see third-party registration examples below the jump).

Here, it seems to me, that the specimen in question shows multiple word-only marks (among others too, when designs and stylization is considered), including DELI EXPRESS, SAN LUIS, and the composite of those words, DELI EXPRESS SAN LUIS. Indeed, if a consumer were shown the product label and asked what brand of concha or sweet roll this is, it would be entirely reasonable and appropriate to answer: DELI EXPRESS SAN LUIS. If so, how can it be that the specimen does not show use of the claimed mark?

Given that the drawing shows the mark sought to be registered by applicant (TMEP 807; 37 CFR 2.52), given that applicants enjoy some latitude in choosing the mark to register and include in the drawing (TMEP 807.12(d)), given that the main purpose of the drawing is to provide notice of the nature of the mark sought to be registered (TMEP 807), given that the mark shown in a standard character word-only drawing need not appear on the specimen in the same font, style, size, or color (TMEP 807.03(e)), given that the USPTO actually encourages applicants to use standard character drawings (TMEP 807.04(b)), given that a standard character drawing is a quick and efficient way of showing the essence of a verbal mark (TMEP 807.04(b)), and given the "necessarily subjective" nature of the determination, I submit that the appropriate test for determining whether the specimen shows use of the verbal, word-only mark claimed in the standard character drawing, is whether it would be reasonable for consumers to request applicant’s product by the claimed trademark, given what actually appears on the specimen.

In other words, how might consumers request applicant’s sweet roll product? Again, I submit it is entirely reasonable that consumers who have seen the product label would request the product by asking for a "DELI EXPRESS SAN LUIS concha or sweet roll." Now, while they might also request a "DELI EXPRESS" concha or sweet roll, or perhaps a SAN LUIS concha or sweet roll, the most complete, accurate, and precise way to request the product would be to ask for a "DELI EXPRESS SAN LUIS" brand concha or sweet roll, and also thereby treat the words as a unitary composite mark, because:

  1. The DELI EXPRESS house brand (and primary brand) and the SAN LUIS secondary or sub-brand are the only brands and word-marks on the entire label;
  2. They appear proximate to one another, side-by-side on the same horizontal plane, at the top of the label, for easy, conventional reading from left to right;
  3. They form the dominant portion of the label since the design elements can’t be spoken;
  4. The DELI EXPRESS phrase appears in solid black lettering on a yellow-background, and the SAN LUIS phrase has a black-outlined border and it stems from a triangle design element matching the same yellow-background carrying the DELI EXPRESS phrase;
  5. There is no requirement to include generic words as part of the claimed mark, i.e., concha or sweet roll;
  6. Consumers familiar with applicant’s products are accustomed to similar label formats where the DELI EXPRESS house brand is proximately positioned with other sub-brands like SUPER MEGA, SNACKERS, COFFEES OF THE WORLD, and SUB SELECTS, to form federally-registered word-only standard character trademarks: DELI EXPRESS SUPER MEGA, DELI EXPRESS SNACKERS, DELI EXPRESS COFFEES OF THE WORLD, and DELI EXPRESS SUB SELECTS; and
  7. Consumers of packaged food products have been conditioned to perceive house marks and secondary marks as not only having separate trademark significance from each other, but also significance together, in the same specimen, even when different colors, styles and fonts may be used for each or portions of each, and even when other matter or wording may appear between them(see third-party registration evidence below the jump).

Continue Reading Trademark Specimens of Use: A “Necessarily Subjective” Standard

 

One of Minneapolis’ most recent hotel additions, Aloft Hotel, branded as a "hip" hotel and a "vision" of Starwood’s W, apparently features the WXYZ Bar. Or is it XYZ?

I’m not sure, and I’m not sure if Starwood or W have made up their minds yet either (as there appears to be different font, size, and spacing between the W and the lower case xyz). In any event, Starwood has registered both XYZ and WXYZ as standard character service marks.

The Mpls reviews appear to be generally quite good and confirm the promised hipness. Given my previous "confession of a lamer," in admitting to being "out of touch with modern fads or trends," I haven’t had an occasion to step foot inside XYZ or WXYZ, at least yet.

The San Francisco W clearly shows use of XYZ alone, but at Aloft in Minneapolis (and perhaps other Aloft locations), given the minimal spacing shown above on exterior signage and the definite compression of letters shown below, it appears both the three and four letter versions actually are in use.  

 

As I understand it, W, one of the most well-known single-letter brands (and the only single-letter with three syllables), spawned the XYZ and WXYZ brands just over a decade ago. Starwood and W must have wanted to get the concept just right before making the debut in Minneapolis!

You may recall my previous blog post on Exposing Single-Letter Envy in Hotel Branding. We also have covered other contexts where single-letter branding continues to make "a" mark.

Can you think of a better single-letter brand than W?