Avoiding Trademark Headaches

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A small brewery based in Rutland, Vermont, was sued for trademark infringement by a large brewery based in Canada. In the case of Moosehead Breweries v. Hop’n Moose Brewing Company, Moosehead is claiming that Hop’n Moose’s use of the term “moose” as well as images of a moose in association with the sale of beer infringes Moosehead’s registered trademarks.

Regardless of how this dispute is ultimately resolved, this much is clear—this conflict was foreseeable.  In Trademark law, generally the first to use a mark for a type of goods is the one who holds the sole right to do so.  In this instance, Moosehead’s registered trademarks, which includes registrations to the marks MOOSE, MOOSEHEAD, and the image of a moose, all for beer, date back to the 1930’s while Hop’n Moose opened for business in 2014.  So…at the time Hop’n Moose launched its brewery, a trademark clearance search would have revealed that there was at least the potential for conflict regarding the use of anything to do with a moose being associated with beer.

In addition, Moosehead has been fairly aggressive in pursuing enforcement of its trademarks, and in all likelihood has substantially more resources to devote to trademark disputes than a newly started brewery.

Don’t Mix Your Drinks

The test for determining trademark infringement is whether there is a likelihood of people confusing two companies selling similar goods with similar marks.  A lot of people shrug and say, “you can tell the difference” or “it’s not a copy,” and figure they’re in the clear.  But it’s often not that simple. 

  • For one thing, marks do not need to be identical in order for infringement to occur—they just need to be similar.
  • A federal registration to MOOSE, in standard characters, covers all fonts, colors, and in many cases, any included designs and additional words or characters.  So the comparison of Hop’n Moose and MOOSE is based only on the words, not on any of the differences in imagery, color, or fonts and the penultimate question is whether the term HOP’N in front of MOOSE is enough to distinguish the source of the goods (ed. likely not).
  • Trademark law attempts to remove confusion as to the source of the products.  It is clear that a consumer would know that differently labeled beers are different beers, but would the consumer think two beers with the primary term “moose” in their name would come different breweries? (Consider how “Bud” is used in different ways and with different words, such as Bud, Budweiser, Bud Light, Bud Lime, etc., yet all of those are from the same company—that is the essence of trademark law, i.e., the consumer knows all those beers come from the same source.)
  • Lastly, there is an important distinction between technically not infringing a trademark and avoiding getting ensnared in a trademark dispute.  Even if an accused infringer is ultimately found not infringing, the trouble and expense required to demonstrate that in court can be overwhelming to any business. 

For many small businesses trying to get established, the last thing they need is to get a cease and desist letter (never mind having a lawsuit filed against them).  An accusation of trademark infringement can cause a major disruption to a business.  To hold your ground and prove there is no infringement could take years and exhaust the resources of the business.  The alternative is often to stop using the disputed trademark, which means a loss of substantial investments in developing a brand and having to redo a lot of hard work.  (In a very similar situation, Mooselick Brewing Co. was forced to stop use of “mooselick” by Moosehead Breweries, and ended up reopening as Granite Roots Brewing.)

Start with Clear(ed) Ingredients

Before starting any business, or launching a new product or service under a new mark (word, design, etc.), it is a good idea to perform a thorough trademark search.  A good trademark search will not only look at the USPTO trademark register—a thorough search will include a review of common law uses (uses online, corporate names, state registrations, etc.).  Importantly, your search should not be for only identical marks for the same goods/services, but instead should be for similar marks that are used on similar goods/services.

Even if your proposed trademark looks different and you have no intention of trying to tread on anyone else’s trademark rights, it is well worth making sure there are no potential trademark pitfalls before investing significantly in developing a market for a product with that trademark.  Knowing what marks are currently in use allows you to understand risks and hopefully avoid the hassle and expense of getting a cease and desist letter when you least can afford it (or at least not being surprised by it).

Trademark Basics – Tips, Tools, & Helpful Explanations for Navigating the Trademark Registration Process

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When clients come in to discuss their potential trademark filings, they often have misconceptions about what makes a “good” trademark and what value a trademark can bring to a business.  That’s partly because trademarks (or “marks” for short) are easily confused with other types of intellectual property, especially copyright, which is a related but completely separate type of protection over creative works.  Confusion also stems from the somewhat counterintuitive nature of trademark law and the rules regarding trademark registration.

One way to understand what makes a “good” trademark is to know what the U.S. Patent and Trademark Office (USPTO) looks for when granting or denying trademark registration.  To that end, this will be the first in a series of posts on the most common hurdles to trademark registration that we see in our everyday practice.

Whether you’re considering a potential mark to use in your business or you’re already using a mark that you’re thinking about registering, familiarity with these basic trademark issues will make it easier to navigate the registration process and get the most brand value for your business.

DISCLAIMER – These posts are only intended to offer basic information about trademarks and cannot be considered legal advice.  If you have any questions about your particular trademark, contact us.

Trademark Registration Hurdle #1: Descriptiveness

It’s fairly common (and understandable) that clients want to their mark to convey to their customers what their product or service is.  However, from a trademark perspective, this can be problematic as we often have to warn clients that their mark is potentially descriptive.

From a trademark perspective, descriptiveness means that the USPTO may find that the mark describes qualities, ingredients, or characteristics of some or all of the goods or services offered under the mark.  The situation can be serious because a Descriptive mark may not be registrable, and thus not protectable, without resorting to significant expense.

One of the fundamental principles of trademark law is that the more unusual a mark is (i.e. the more unique or different from the goods and services it covers) the stronger the protection the mark offers.  The inverse is also true; the more descriptive the mark is of the goods and services, the weaker the protection—or in the case of merely descriptive marks or generic terms, no protection at all since the USPTO will completely refuse registration.  It’s therefore in a trademark owner’s interest to make the mark as non-descriptive as possible.  The more non-descriptive, the better protection the mark carries and the easier it will be to register with the USPTO.

But what does non-descriptive mean?

Trademarks are divided into four categories: Fanciful, Arbitrary, Suggestive, and Descriptive.  Fanciful, Arbitrary, and Suggestive marks are considered inherently distinctive and are registrable, while Descriptive marks are generally not registrable without evidence of acquired distinctiveness.  There is also a category called Generic, but there is no such thing as a “generic” trademark because generic terms can never be used as a trademark.

Marks that are Fanciful or Arbitrary have no connection to the goods and services they represent (famous examples include APPLE for computers or XEROX for copiers).  The difference between Fanciful and Arbitrary marks is that Fanciful marks are typically made-up words, e.g. GOOGLE and XEROX, whereas Arbitrary marks are actual words that bear no relation to the goods sold or services offered, e.g. APPLE, TWITTER, etc.

With Suggestive marks, there is a connection between the mark and the goods and services, but it’s only “suggested,” meaning that it requires the consumer to think or use their imagination to find the connection.  Last year a federal court in California held that PINTEREST was a “textbook example” of a Suggestive mark for a website that allows users to pin their interests on a virtual board and share it with others.

As mentioned above, Descriptive marks describe some aspect of the goods or services they cover.  For example, a few weeks ago the USPTO refused to register the mark WEEPING ANGEL, finding it merely descriptive of funerary urns featuring (you guessed it) a weeping angel (see case summary and photos here), and a recent federal case upheld NOPALEA as descriptive for a dietary supplement containing nopal juice.  Depending on how descriptive the mark is, a Descriptive mark may be able to “acquire distinctiveness,” which typically requires the mark owner to show continuous, exclusive, and substantial use of the mark in commerce (not always an easy burden).  Really descriptive marks (also called merely descriptive) cannot even use acquired distinctiveness to become registered.

Generic words are a step beyond describing the goods and services in that they use the actual words or synonyms for the goods/services in the mark.  Websites are commonly found to be generic—Hotels.com, Sportsbetting.com, and Buyautoparts.com were all refused registration because they are generic for the services offered by the website. See the case summary for Hotels.com here.

Choosing a less descriptive mark will help you avoid a descriptiveness rejection at the USPTO.  Moreover, beyond registrability, the less descriptive your mark, the stronger it is.  We’ll cover this more in an upcoming post, but for now, the chart below should be a useful guide:


Bottom line: Choosing a mark is a challenging task, and business owners often want to pick something that will give customers a good idea about the product or services offered under the mark.  But the more descriptive a mark is, the less trademark protection you get and the harder it is to register.  This can make it even more challenging to distinguish a business in the marketplace and make it harder to compete for customers in the long run.

Stay tuned for our next post on: Names in Trademarks

B&B Hardware v. Hargis Industries and the implications for Trademark Law Practice

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Best in class…and infringed by SEALTITE

Imagine this situation: you have a trademark and someone else is using and trying to trademark a similar name. You decide to sue them for trademark infringement in district court and oppose the registration at the USPTO. Your opposition is successful and is based on likelihood-of-confusion grounds (the same grounds that will win the day in court) – does the district court judge have to abide by the USPTO’s determination? The U.S. Supreme Court’s recent decision in B&B Hardware, Inc. v. Hargis Indus., Inc., No. 13-352, 575 U.S. __ (2015), says yes, but only under certain conditions. The Court’s decision leaves trademark practitioners struggling to grasp = level of impact it will have, if any, on the everyday practice of trademark law.

The second of two trademark cases heard by the Court in 2014, B&B Hardware addresses the question of whether the doctrine of issue preclusion applies to registration decisions of the USPTO’s Trademark Trial and Appeal Board (TTAB) in later civil litigation over trademark infringement.  Issue preclusion prevents parties from re-litigating issues that have already been decided by a court (or in this case, an agency)—meaning that if a second case arises between the same parties related to the same issue as the first case, the first court’s decision on the issue stands, and the second court is precluded from finding differently on that issue. Registration opposition and an infringement action are two separate trademark proceedings that can be filed by a trademark holder over similarities between the same two marks, and thus there is the potential for issue preclusion to apply. Here, B&B Hardware opposed Hargis Industries’ registration of the mark SEALTITE on the basis that it was too similar to its own registered mark, SEALTIGHT— and while the TTAB was deciding the registration issue, B&B brought suit against Hargis for trademark infringement in District Court. Ultimately, the TTAB sided with B&B, barring registration of SEALTITE on the grounds that it was likely to be confused with SEALTIGHT. B&B then argued that the TTAB’s likelihood-of-confusion analysis should preclude the district court from conducting its own analysis and determining an opposite result.

In the 7-2 decision written by Justice Alito (with Justices Thomas and Scalia dissenting), the majority reversed the Eighth Circuit and held that issue preclusion does apply to administrative agencies such as the TTAB where the issue decided by the agency is “materially the same” as the issue before the court. The Court determined that even though the likelihood-of-confusion analysis conducted by the TTAB in the context of registration varies somewhat from the likelihood-of-confusion analysis conducted by a court in an infringement suit, they are not materially different standards.

Although, as Ronald Mann of SCOTUSblog points out, the decision may well be cited for its clear recitation of the doctrine of issue preclusion, the extent to which it will affect the everyday practice of trademark law is less clear.  The Court itself acknowledged that for “a great many registration decisions issue preclusion obviously will not apply because the ordinary elements will not be met”  (such as when there are different parties or issues presented).  And in her concurrence, Justice Ginsberg clarified her understanding that the decision would not invoke issue preclusion for contested registrations where the likelihood-of-confusion analysis only compared two marks in the abstract, and not their marketplace usage.

It appears that most legal commentators agree that the decision is unlikely to affect most trademark registrations. Laura Chapman and Toni Qui of the National Law Review suggest that litigants can attempt to bypass preclusion from a negative TTAB decision by appealing to the district court for a de novo review (which the Court also alluded to). John Welch of TTABlog agrees that the de novo review is a critical loophole, and adds that B&B Hardware may just be the very rare case where the opposition to registration and infringement action were simultaneous, and the TTAB’s decision was not appealed.

Thus, while the stakes of not appealing a negative decision from TTAB on registration have been raised somewhat in that TTAB’s analysis could carry forward into any future infringement litigation, the likelihood that issue preclusion will affect most trademarks seems pretty remote. There may be some carryover for patent law, says Dennis Crouch of PatentlyO, since the same reasoning the Court applied to the TTAB could likely be applied to the Patent Trial and Appeal Board (PTAB)—unless, unlike trademark’s Lanham Act, the Court views patent statutes as barring the application of issue preclusion. All in all, SCOTUSblog may be right that the biggest impact the case may have on trademark practice could well be the Court’s descriptions of the processes and procedures of trademark registration and infringement litigation as they get applied and interpreted in future litigation.