Trademark Trial and Appeal Board

Another update on my long-running series of posts following the NHL’s newest hockey team, the Las Vegas Golden Knights, and their embattled trademark applications for VEGAS GOLDEN KNIGHTS that were filed nearly two years ago.

Most recently I posted about a challenge to the trademark applications by the U.S. Army, who opposed registration of the VEGAS GOLDEN KNIGHTS marks in connection with professional ice hockey exhibitions. The Army alleged likelihood of confusion, among other claims, based primarily on the Army’s prior use of a GOLDEN KNIGHTS mark in connection with the Army’s parachute demonstration team.

The hockey team announced last week that they had settled the dispute by executing a co-existence agreement, in which the Army agreed to withdraw the opposition proceeding and allow the hockey team to register the VEGAS GOLDEN KNIGHTS marks, while the hockey team agreed the Army would continue using the Golden Knights name for its parachute team.

This type of settlement involving a co-existence agreement is quite common in opposition proceedings. It is also not surprising for a couple other reasons. As discussed in my last post, the Army would have had a difficult time establishing the necessary “relatedness” factor for its likelihood-of-confusion claim. Although both parties technically are offering types of “entertainment” services, it would have been difficult to show that professional ice hockey exhibitions and parachute demonstrations are sufficiently related to cause likely confusion.

Furthermore, the financial support for the Army by Bill Foley (the owner of the hockey team) may have been a factor that encouraged an amicable settlement. Foley is a graduate of the U.S. Military Academy at West Point, and is the biggest donor to its athletic program. Due to his $15 million donation, Foley’s name is on West Point’s athletic center.

Now that the Army has withdrawn its opposition, the VEGAS GOLDEN KNIGHTS marks will likely register in the next couple months. This was a difficult road to registration in light of the various Office Actions and other challenges discussed in previous posts. But it was well worth the effort, in light of the high value of the team’s brand, especially due to the team’s quick competitive success and business growth. The Golden Knights made it to the Stanley Cup in their first season, and the team sold more merchandise last year than any other other NHL team.

My first post on this blog, nearly two years ago, was about a trademark dispute between the State of Michigan, and a Michigan company, M22, LLC.  M22 sells a variety of merchandise bearing an “M22” mark that appears similar to the route marker signs on Michigan Highway M-22, see photos below.

U.S. Registration No. 3992159

Posted to Flickr by Larry Page. License: CC BY 2.0.

M22 was granted several federal trademark registrations, including an “M22” word mark and several M22 design marks. The dispute escalated began back in 2013, when Michigan filed a petition for cancellation at the Trademark Trial and Appeal Board (TTAB) on several grounds, including that the registration violates federal regulations related to the Manual on Uniform Traffic Control Devices (MUTDC) (among several other grounds which are now less relevant). In August 2016, the TTAB denied Michigan’s motion for summary judgment.

Shortly after the TTAB denied summary judgment, Michigan turned to a different venue, filing a lawsuit in Michigan state court (ultimately resulting in suspension of the TTAB proceeding), against M22 seeking declaratory relief. M22 quickly removed the case to federal court. In its complaint, Michigan alleged that trademark protection for the M22 design in Michigan’s M-22 route marker signs is prohibited based on Federal Highway Administration standards under MUTCD, which provide that any road signage designs (“traffic control devices”) required on federally funded highways, including the M-22 signs, are in the public domain and shall not be protected by patent, trademark, or copyright.

However, last year, the federal court issued an opinion in favor of M22, dismissing the case for lack of jurisdiction. The court held that it lacked jurisdiction over Michigan’s claim for declaratory relief. Furthermore, the court held that Michigan lacked standing as there was no concrete injury alleged. Michigan’s main argument as to concrete injury was that Michigan risks losing federal highway funding if it does not comply with and enforce state and federal laws and regulations, including the MUTCD. The court disagreed, determining Michigan had not alleged facts showing how the registration of M22’s marks would prevent Michigan from complying with the MUTCD, that there was any risk of losing federal funding, or that Michigan has any power to enforce the MUTCD against private third parties.

But Michigan still didn’t give up after losing the federal court ruling. The case was remanded back to state court, where extensive motion practice ensued. The state court ultimately concluded that: (1) Michigan has standing; (2) the MUTCD has the force and effect of Michigan law; (3) M22 LLC is subject to Michigan law; and (4) the M-22 highway sign is a traffic control device under the MUTCD. However, the court declined to determine whether M22’s trademark registrations and use were unlawful under the MUTCD (as Michigan argued), and held the TTAB may lift its stay.

So now the dispute is right back where it started over five years ago, in the trademark cancellation proceeding at the TTAB.  The TTAB lifted its stay last year, and recently granted an extension of discovery to allow M22 to take a deposition of a designee for Michigan. Most recently–just yesterday in fact–Michigan moved again for leave to file a partial summary judgment motion, on Michigan’s claim that M22’s registration should be cancelled for unlawful use in commerce, based on violations of the MUTCD standards. However, the Board had already ruled twice that Michigan was prohibited from filing further motions for summary judgment. Today, M22 filed a request for a telephone conference with the Interlocutory Attorney, stating that briefing on Michigan’s third motion for summary judgment should be unnecessary based on the Board twice prohibiting such a motion.

This has been an interesting saga so far, and it’s fascinating that Michigan has been willing to invest so much time and money vigorously contesting this registration, when it is unclear (as it was to the Michigan federal court) whether there is a significant risk of any concrete injury to Michigan in allowing this mark to remain registered. How do you think this dispute will end up? Stay tuned for updates.

 

Another update on my series of posts following the trademark troubles of the NHL’s newest expansion team, the Las Vegas Golden Knights.

Most recently, I posted about the USPTO’s decision to maintain a refusal to register the team’s marks in connection with clothing, LAS VEGAS GOLDEN KNIGHTS and VEGAS GOLDEN KNIGHTS (Applicant Nos. 87147236, 87147265), based on likelihood of confusion with another registered mark, GOLDEN KNIGHTS THE COLLEGE OF SAINT ROSE & Design.  Those two applications are now suspended.

Now the team is facing another challenge, this time from the U.S. Army. Last week, the Army filed two Notices of Opposition (see here and here) against the team, opposing registration of both of the team’s marks in connection with its entertainment services, namely, professional ice hockey exhibitions (Application Nos. 87147269, 87147239).  (Technically, the applicant and defendant is the team’s business entity Black Knight Sports and Entertainment LLC, but I’ll just refer to “the team”). The Army alleges grounds of likelihood of confusion, dilution by blurring, and false suggestion of a connection, based primarily on the Army’s prior use of the GOLDEN KNIGHTS mark in connection with the Army’s parachute demonstration team.

Notably, the team’s owner, Bill Foley, was quite vocal about the Army inspiring the team name, since he had graduated from West Point. During the process of selecting his hockey team’s name, Mr. Foley had initially considered “Black Knights,” which is also the name of the hockey team at West Point. However, the team eventually landed on “Golden Knights,” and Mr. Foley implied on a radio show that the name was based on the “Golden Knights for the parachute team” at West Point. Mr. Foley also noted in a newspaper article that he had tried to have the Golden Knights parachute team make an appearance at the team’s name-announcement ceremony, but they “couldn’t make it work.” No wonder why, at this point.

Regarding the likelihood of confusion ground, the Army may have a difficult time establishing the necessary “relatedness” factor. Although both parties technically are offering types of “entertainment” services, it may be difficult to show that professional ice hockey exhibitions, and parachute demonstrations, are sufficiently related to cause likely confusion, despite the nearly identical mark. However, the Army’s ground of dilution and false suggestion of a connection do not require relatedness, although those grounds may also be difficult to establish, for other reasons. For one reason, regarding the dilution ground, the Army would need to establish that its mark is nationally famous, which is a high bar. Nevertheless, regardless of how this proceeding turns out, it will be another significant cost and delay in the team’s quest to register its name.

On the bright side, the hockey team itself is having a record-breaking inaugural season, currently with 29 wins and 11 losses, which puts the team in first place in the NHL’s Western Conference. The team also is the first in NHL history to have won eight of its fist nine games ever. I’m sure the team hopes that its success on the rink will follow through to these trademark proceedings, but that remains to be seen. Stay tuned for updates.

The energy drink businesses is big, big business. From Red Bull and Monster to that strange 35 ounce purple can that you saw in a gas station once, consumers love energy drinks. Along with Red Bull and Monster, 5-Hour Energy is one of the most successful and recognizable brands. Innovation Ventures, LLC, the owner of the 5-Hour Energy® brand of energy drinks, recently lost its attempt to register the mark “HOURS OF ENERGY NOW.” (Decision available here).

We’ve discussed the pros and cons of descriptive versus distinctive names before. The 5-Hour Energy® brand is a prominent example of how marketing, advertising, and commercial success can turn a bland, descriptive name into a strong, memorable brand. It also helps if your product is one of the first of its kind on the market. It’s hard to believe that the product has been around since 2004, making this year the tenth year anniversary (I’m crossing my fingers for a limited edition 10-Hour Energy anniversary product). Even though the 5-HOUR ENERGY mark is not inherently distinctive, Innovation Ventures was able to obtain a federal registration by claiming that it had acquired distinctiveness among the public based on its advertising, volume of sales, and commercial success.

Unfortunately for Innovation Ventures, though, it doesn’t matter how many bottles are sold, advertisements seen, or dollars made, if you are not using the name/term/phrase as a trademark, you won’t obtain a registration.  In this case, the Board ruled that the applied-for mark HOURS OF ENERGY NOW would not be perceived as a trademark, but instead merely an informational phrase. It appears that this isn’t the first time Innovation Ventures has run into specimen problems, having abandoned trademark applications based on specimen refusals for their FIX THE TIRED, TIRED SUCKS, BEAT THE 2:30 BLUES marks and not even submitting statements of use for their abandonded  NO 2:30 FEELING LATER. and NOT A DRINK JUST ENERGY marks.

The Lanham Act does not preclude slogans from registration, but the slogan must be used as a source identifier. The test is whether the public would perceive the term or phrase as a mark (as used on the goods). For example, JUST DO IT versus PROUDLY MADE IN THE USA. The public’s perception is determined by examining the specimens submitted with the application. Innovation Ventures submitted the three specimens below:

On the bottle and the carton, the phrase appears as part of a four bullet point list:

  • Hours of energy NOW
  • No crash later
  • Sugar free
  • 0 net carbs

The same “Hours of energy now. No crash later.” appears on the point-of-sale display as well.  Based on these specimens, the Board concluded that consumers would perceive the mark as merely informational, informing consumers that the products “will provide an immediate boost of energy upon consumption and that the increased levels of energy will last for several hours.” (based on their other filings, I wonder if Innovation will want to apply to register this phrase too?)

The situation is another in a long line of examples of a two important lessons be careful when submitting specimens of use. There are numerous refusals that could have been easily avoided had the applicant taken more time to select an appropriate specimen of use. The only thing worse than making a mistake is making an avoidable mistake.  In this case, it may have been difficult to fix.

The mark is so descriptive that it would have been tough to get around. However, Innovation Ventures dug itself a pretty big hole for their attorneys to attempt to scratch and claw their way out. The specimens do not capitalize any term other than the “Hours,” there is no use of a TM symbol, the phrase appears as part of a list of four other information phrases (I’m guessing not even Innovation Ventures attempted to register “O NET CARBS” as a mark….), and the text is displayed in the same font, size, and location as these other informational phrases. This brings us to the second lesson: get your attorney involved early. It doesn’t have to be extensive involvement. Ideally, the initial proposed packaging and advertisements would be shared with your attorney to review for red flags, but at a minimum get a quick review before finalizing packaging for production.

Working with a trademark attorney early on in the process can help you avoid costly (and unnecessary) legal fees, which in turn could help you avoid that 2:30 feeling when you receive the bill…

EPILOGUE: if anyone knows where I can buy a can of Surge, please let me know. I wouldn’t need 5-Hour Energy if I could my hands on some Surge. I’m not picky, any vintage will do, although I recall 1999 being an excellent year for Yellow-5 dye. Just make sure the can or bottle is still factory sealed.

John Reinan, Senior Director at Fast Horse, a Minneapolis marketing agency

I love “orphan” cars — the marques that have gone out of business. Most of them are barely remembered by Baby Boomers, much less anyone younger. Packard, Hudson, Nash, Studebaker, Willys – these and other automakers often were stylistically and technically more advanced than Detroit’s Big Three, but they just couldn’t match the economies of scale that Ford, Chrysler and General Motors enjoyed.

I saw a number of orphan vehicles at the annual classic car show at Lake Harriet over the Memorial Day weekend, and it got me thinking: Could someone resurrect these old brands and use them in a modern marketing program?

Looks like I’m not the first one to have that thought. In researching the issue, I discovered an interesting recent case from the TTAB. It seems that an entrepreneur had been floating some design concepts for a custom-built car, to be called the Rambler. The last Rambler was produced in 1969 by American Motors, later absorbed by Chrysler.

Chrysler objected to the use of its predecessor brand mark. And, in a decision somewhat mystifying to a layman, the TTAB agreed – even though it smacked down Chrysler on nearly every aspect of the case.

The board found that Chrysler had abandoned the Rambler mark for autos; had no plans to ever build another car by that name; didn’t sell parts or services using the name; and had not established rights in the mark relating to some replica models marketed by the Franklin Mint and others.

All Chrysler could show was that a third-party licensing agency had produced and marketed a few tchotchkes using the Rambler name: key rings, calendars, decals and assorted other items. But those tchotchkes saved Chrysler’s bacon.

The TTAB held that those items created a likelihood of confusion — that the buyer of a newly reborn Rambler automobile would ascribe a single source to the products.

Thus, even though the board specifically found that Chrysler had abandoned the Rambler mark for automobiles, its preservation of the mark in the form of third-party key rings was enough to prevent anyone else from using the mark in the arena in which Chrysler had abandoned it.

The likelihood of anyone successfully building and selling a custom car is pretty small, no matter whether they call it a Rambler or anything else. So I don’t see this decision as a horrible miscarriage of justice. Still, it does seem a shame that these old brand marks can be retained by companies that have let decades go by with no evidence that they give a damn about them.

The people who care most about Ramblers and Packards and Studebakers are the ones who have invested their own time, money and sweat in keeping alive the memories – and the physical manifestations – of these once-great marques.

Who’s got a better moral right to these brand marks: the people who killed them or the people who are keeping them alive?

—Karen Brennan, attorney

I found Fig. 1 (from what I am sure was a very valuable patent, although I could not locate it) to be very fitting for this post.  After three and half years, four Office Actions, a Petition to the Director and finally an appeal, our client’s product configuration mark for the PPK handgun design (below) will finally take its place on the Principal Register.

Mark Image

Although the design mark application originally faced a functionality refusal as well, the only issue on appeal was whether applicant had established that the PPK design had acquired distinctiveness.  Despite the Board’s less than favorable track record with product configuration marks (the TTABlog noted two reversals in the last four years), the Board reversed the registration refusal for the PPK design mark, finding the applicant had proven acquired distinctiveness in the design.  In re Carl Walther GmbH, Serial No. 77906523 (Oct. 26, 2010) (download decision here).

By way of brief summary, the Board recognized the direct evidence submitted in support of acquired distinctiveness, including an online survey where 54% of the relevant consumers surveyed associated the PPK design with a single source and 33% correctly identified the source.  The decision also emphasized a declaration from the author of the Blue Book of Gun Values as direct evidence.  In addition to the direct evidence, the Board carefully considered the extensive circumstantial evidence submitted, including unsolicited media coverage for the PPK design as James Bond’s weapon of choice for forty years, as well as evidence of advertising expenditures and licensing of the design for replica products.  Additional evidence submitted, but not mentioned in detail included other industry declarations, blogs and websites dedicated to the PPK design and its fame, advertising and promotional pieces emphasizing the PPK design, evidence of expansion of the design mark into other products such as replicas, use of the mark on promotional products, and unsolicited use of the PPK design in other movies, television shows and video games.

A few blogs (here and here) have commented that the “cinematic fame” was the reason for the reversal.  In my opinion (admittedly biased), the Board once again reiterated a totality of the evidence approach for product configuration marks.  While the Board did appear to focus on the online survey, after evaluating its results, the Board clearly noted that no single piece of evidence was determinative; rather each was “considered in conjunction with the entire record before us.”  As for the Bond evidence, the Board questioned whether Bond’s obvious effect on the public’s PPK recognition was carried over into evidence of a similar effect on the relevant consumers (handgun owners or potential owners as compared to movie fans), but found that some of the survey responses clearly demonstrated that the films have “influenced handgun consumers and their recognition of the PPK handgun design.”

Check out the TTABlog and The Hollywood Reporter blogs for more on the PPK Design decision.

–Sharon Armstrong, Attorney

If there is any trademark case this year that has the media clamoring to create cute headlines, it may just be this one – In re Chippendales USA, Inc., decided by the Federal Circuit just six days ago. “Federal Circuit Leaves Chippendales Nearly Naked,” said The American Lawyer, “Judge ‘strips’ Chippendales of bid to beef up trademark,” stated the Boston Herald, and “Chippendales Can’t Trademark ‘Cuffs And Collar’ Costume,” noted Reuters (as republished by the Huffington Post).

       

Back here on Earth, however, it is plain that Chippendales already owns a trademark registration for its “collar and cuffs” trade dress and continues to be eligible to obtain additional federal protection in its trade dress.

So what does everyone have their collars and cuffs in a twist about?

The crux is that, in obtaining its existing trade dress registration, Chippendales argued that its trade dress had acquired distinctiveness over a long period of use, such that consumers have come to recognize the trade dress with Chippendales. The Supreme Court has held that certain types of trade dress can be inherently distinctive. In prosecuting the current applications that are the subject of the Federal Circuit opinion, Chippendales has maintained that its trade dress is actually inherently distinctive, such that it should be registered on the Trademark Office’s Principal Register without any accompanying evidence of long-term use. In short, Chippendales has been arguing that its trade dress is automatically capable of identifying a source of goods and services, in this case Chippendales.

The Federal Circuit, like the Trademark Trial and Appeal Board before it, concluded that Chippendales’ trade dress is not inherently distinctive, primarily because the collar-and-cuffs look is a type of “common basic shape design” that has been in use in connection with exotic dancing for quite some time. Specifically, the Court noted that the use of “collar and cuffs” outfits by Playboy bunnies constituted “substantial evidence supporting the Board’s determination that Chippendales’ Cuffs & Collar mark is not inherently distinctive.”

Nevertheless, the Court also pointed out that Chippendales current registration has achieved incontestable status and that marks that obtain registration on the Principal Register due to acquired, rather than inherent, distinctiveness enjoy the same benefits as their inherently distinctive brethren.

Chippendales remains free and capable of obtaining the benefits of federal registration with the caveat that, at this point in time, they must claim acquired distinctiveness in their marks.

The Federal Circuit also addressed questions about the time at which to measure acquired distinctiveness and whether the existence of a registration obtained via acquired distinctiveness moots the inquiry into whether a new application for the same mark can claim inherent distinctiveness. You can read the opinion here.

Aaron Keller was busy yesterday making weighty predictions about the basis for our next economy: The Designed Economy.

As I prepare to provide attendees at the Midwest IP Institute tomorrow with a trademark fraud update — today, I thought I’d provide a preview — and even go out on a small limb — making a couple of predictions of my own, relating to the far more scintillating topic of trademark fraud before the United States Patent and Trademark Office (USPTO).

As you may recall last year, I wrote about the Court of Appeals for the Federal Circuit’s (CAFC) groundbreaking decision In re Bose, here, here, here, and here, in which the CAFC rejected the Trademark Trial and Appeal Board’s (TTAB) less stringent "knew or should have known" negligence standard of fraud, instead coming down in favor of a much more stringent — and difficult to prove standard — subjective intent to deceive the USPTO.

Over the last year, much attention has been given to the fact that the CAFC left open and chose not to decide, in In re Bose, the question of whether a "reckless disregard for the truth" may suffice in proving the necessary subjective intent to deceive. Many argue that "reckless disregard" should suffice in proving fraud for the sake of the integrity of the U.S. trademark system, to ensure that trademark owners and their counsel are kept honest and/or don’t become lazy or complacent about the solemnity of the oath in their trademark filings.

Reading the tea leaves, I’m predicting that the TTAB will not wait for the CAFC to decide the issue and the TTAB will rule that "reckless disregard" constitutes a sufficient level of culpability to infer a specific intent to deceive. If so, what does that mean? What kind of trademark conduct might satisfy a "reckless disregard" standard?

Continue Reading Trademark Fraud = Reckless Disregard For The Truth?

Now that kids are back to school and summer is coming to a close, this billboard advertisement has disappeared from I-94 just outside of downtown Minneapolis. Before it vanished from the roadside, however, I thought to capture it to tell a little trademark tale here, one from years past, but one that remains relevant, important, and applicable to trademark claims involving the color black. 

As we have discussed before, a single color can function as a trademark and be the basis of exclusive ownership, so long as it is not functional and has acquired distinctiveness for the goods in question. As it turns out, however, and as the billboard reminds me, due to some unique attributes of the color black, it is a tricky one to own as a trademark.

The tale begins back in 1988, after accumulating 25 years of use and allegedly "substantially exclusive" use in commerce, Mercury-Brunswick commenced efforts to register, own and exclude others from using the color black on the surface of internal combustion engines for boats.

As can tend to be the case when claiming exclusive rights in single colors or other non-traditional trademark rights, others within the industry who are paying close attention to what goes on at the Trademark Office come to life and consider getting in the way of these efforts. 

British Seagull Ltd. did just that and filed an opposition lasting six years, ending with and resulting in the final rejection of Mercury-Brunswick’s claimed trademark rights in black, based on the functionality doctrine. You might be wondering, how on earth is the color black functional when applied to the entire surface of internal combustion engines for boats? 

The longer answer can be found in two decisions: The decision of the Trademark Trial and Appeal Board (TTAB) in British Seagull Ltd. v. Brunswick Corp., 28 USPQ2d 1197 (TTAB 1993), and the decision of the Court of Appeals for the Federal Circuit (CAFC), affirming the TTAB’s registration refusal, in Brunswick Corporation v. British Seagull Limited, 35 F.3d 1527 (1994).

The shorter answer is "competitive need" as found in this excerpt from the TTAB’s decision: 

[A]lthough the color black is not functional in the sense that it makes these engines work better, or that it makes them easier or less expensive to manufacture, black is more desirable from the perspective of prospective purchasers because it is color compatible with a wider variety of boat colors and because objects colored black appear smaller than they do when they are painted other lighter or brighter colors. The evidence shows that people who buy outboard motors for boats like the colors of the motors to be harmonious with the colors of their vessels, and that they also find it desirable under some circumstances to reduce the perception of the size of the motors in proportion to the boats.

And the CAFC’s affirmance, here:

Turning to the present case, the Board determined that "black, when applied to [Mercury’s] outboard marine engines, is de jure functional because of competitive need." British Seagull, 28 USPQ2d at 1199. The color black, as the Board noted, does not make the engines function better as engines. The paint on the external surface of an engine does not affect its mechanical purpose. Rather, the color black exhibits both color compatibility with a wide variety of boat colors and ability to make objects appear smaller. With these advantages for potential customers, the Board found a competitive need for engine manufacturers to use black on outboard engines. Based on this competitive need, the Board determined that the color was de jure functional. This court discerns no error in the Board’s legal reasoning and no clear error in its factual findings

So, it’s important to keep in mind this notion of competitive need when a business desires to own exclusive trademark rights in a color, and it is equally important to keep in mind as a defense when such rights are being asserted against your client’s use of a color. 

And, when it comes to asserting or refuting a claim of exclusive trademark rights in the color black, it is well worth exploring competitive need by asking whether black’s unique attributes of color compatibility and/or visual perception have any application to your facts, since those facts already have been found to support a successful functionality defense.

On a related note, I recently came across King Innovation’s announcement of being "granted" a trademark in black underground waterproof electrical connectors. Of course, I’m left wondering whether color compatibility and/or visual perception might impact this claim of rights. I’m also hoping they aren’t referring to this little guy right here, since the application to register this claimed mark was abandoned last year and appears to be deader than a doornail, following a functionality refusal:

 Oh, what do you know, here is another application, filed a year later, that matured to registration and  issued just months ago. Proof that persistence pays dividends!

Last, as I recall Dan’s post entitled I See Black Labels, I’m left wondering what social science data might exist to support a functionality defense, if one was inclined to require such a defense.

Can you think of other unique attributes to the color black that might establish a successful functionality defense to a trademark claim in black?

–Dan Kelly, Attorney

Quiz time.  Here’s the setup:

Company A owns the following registered trademarks for use in connection with the listed goods:

  • MAXSTAR for “electric lanterns”
  • MAGNUM MAX for “hand-held electric spotlights”
  • MAXFIRE for “portable, battery-operated lighting products, namely flashlights”

Company B owns these registered trademarks:

  • MAG-LITE and MAGLITE for “flashlights”
  • MAG for “flashlights”
  • MAG-NUM STAR for “flashlight bulbs”

Assume that the above registered trademarks for both companies have coexisted on the trademark register and in the marketplace for a substantial period of time–fifteen years or more.

Now, here are the questions:

  1. Can Company A register MAGNUM MAXFIRE for use on “hand-held portable lamps, namely flashlights and spotlights” in view of Company B’s registered trademarks?
  2. Can Company B register MAG STAR for use on “flashlights” and related goods in view of Company A’s registered trademarks?

Answers after the jump…

Continue Reading An Illuminating Tale of Likely Confusion