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Proving a Weak Mark Convincingly

Posted by Thomas P. Howard | Sep 22, 2021 | 0 Comments

By James Juo.

In applying for a trademark registration, the U.S. Patent and Trademark Office (“USPTO”) may refuse registration under Section 2(d) of the Lanham Act because of a perceived likelihood of confusion with another entity's existing trademark registration. One argument often made to overcome such as rejection is that the marks are weak formatives for the relevant goods and services. In other words, use of similar marks by others in the field can be evidence of the narrower scope of protection for a weak mark, such that customers would distinguish between such marks on the basis of minute distinctions. Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. v. Millennium Sports, S.L.U., 797 F.3d 1363, 1374 (Fed. Cir. 2015) (finding paw prints were widely used on clothing, such that “consumers are conditioned to look for differences between paw designs and additional indicia of origin to determine the source of a given product” such as clothing); Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334 (Fed. Cir. 2015) (evidence of third-party use can be “powerful on its face”); Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1373 (Fed. Cir. 2005) (“Evidence of third-party use of similar marks on similar goods is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection”).

If successfully argued, you will obtain a trademark registration for your mark. But, to take the bitter with the sweet, it also would suggest that yours is a weaker mark entitled to a narrower scope of protection. Nonetheless, it often is better to get a bird in hand rather than worry about the bush.

The Trademark Trial and Appeal Board (“TTAB”) has recently decided two cases where the relative weakness of the marks was at issue, which respectively came to different outcomes.

In one case, In re Stella & Chewy's LLC, Serial No. 88916952 (TTAB Sept. 20, 2021), the applicant appealed a Section 2(d) refusal against CRAV'N BAC'N BITES for “edible pet treats” (where “BAC'N BITES” was disclaimed) in view of the registered mark CRAVIN' CHICKEN DINNER for “pet food” and “pet treats” (with “CHICKEN DINNER” disclaimed).

The applicant submitted evidence of registrations and/or use by about a dozen third parties of other marks such as CRAVE, CRAVEABLES, CRAVERS, CRAVINGS, and KRAVES, to show that CRAVE-formative marks are so weak that the CRAV'N and CRAVIN' could be distinguishable.

The TTAB, however, noted that this “reflects a more modest amount of evidence than that found convincing in Jack Wolfskin and Juice Generation.” For context, about a hundred examples of third-party use and registrations were submitted in the Jack Wolfskin case; and about thirty such examples were submitted in the Juice Generation case.

In addition, some of the third-party registrations and other uses consist of different CRAVE formative terms, namely, “other the same colloquial or non-standard speech form of CRAVING appearing in the marks at issue, i.e., CRAV'N or CRAVIN'.” So, among all of the CRAVE formative marks of record, the CRAV'N or CRAVIN' marks at issue “are the most similar.”

Although the TTAB found “that CRAVE formative marks are somewhat weak in that they suggest the desirability to pets of the goods at issue,” it also held this did not weigh significantly one way or the other, and even weak marks are entitled to protection against confusion. “Despite some weakness in CRAVE formative marks, this weakness is outweighed by the other factors, and by the fact that none of the other CRAVE formative marks comprise the same colloquial spelling.” Accordingly, the TTAB affirmed the Section 2(d) refusal of CRAV'N BAC'N BITES.

In the other case, In re Weber State Federal Credit Union, Serial No. 88675314 (TTAB Sept. 14, 2021), the applicant appealed a Section 2(d) refusal of ASCENT FEDERAL CREDIT UNION for “Credit union services,… excluding providing lease financing for private student loans” (with FEDERAL CREDIT UNION disclaimed), in view of the registered mark ASCENT (stylized) for “providing lease financing for private student loans.”

With respect to the claimed services, notwithstanding the exclusion of lease financing for private student loans by the applicant, the TTAB noted that this was “not controlling of public perception,” citing In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1188 (TTAB 2018) and In re The Clorox Co., 578 F.2d 305 (CCPA 1978), and held that “the services are related, travel in the same channels of trade, and are offered to the same customers who exercise only ordinary care.” But this is only one of the DuPont factors for evaluating likelihood of confusion.

Arguing that ASCENT is weak or diluted, the applicant introduced about a dozen examples of actual use by third parties, and another dozen examples of third-party registrations, of ASCENT-formative marks for various financial services. The TTAB found that these two dozen examples in evidence “establishes that ASCENT-formative marks are both conceptually and commercially weak and, therefore, are entitled to a narrow scope of protection.”

“Regarding conceptual strength, the fact that ASCENT-formative marks have been registered by different financial service providers indicates that ASCENT in this context suggests increasing, raising, or advancing one's financial goals,” and thus conceptually weak because of this suggestive meaning.

“Regarding commercial strength, the evidence establishes that it is common for financial service providers, including lenders, to comprise or incorporate ASCENT-formative terms,” noting that widespread third-party use, in a particular field, of marks containing a certain shared term suggests that purchasers have been conditioned to look to other elements of the marks as a means of distinguishing the source of the goods or services in the field. Furthermore, “evidence regarding third-party use of ASCENT-formative marks is relevant regardless of whether registration was sought.”

The TTAB found that the cited mark falls on the lower end of the “spectrum from very strong to very weak,” and that minute differences between ASCENT-formative marks used in association with financial services are sufficient to distinguish them. The Board also noted that because the applicant's mark “contains the additional wording FEDERAL CREDIT UNION which designates Applicant's entity, we think it likely that consumers would be able to distinguish the marks based on this difference,” and reversed the Section 2(d) refusal.

The trademark attorneys at Thomas P. Howard, LLC are experienced at prosecuting trademark applications before the USPTO, as well as enforcing trademarks or defending against infringement claims in litigation nationwide including in Colorado.

About the Author

Thomas P. Howard

Thomas Howard is an experienced trial lawyer that handles intellectual property litigation nationwide, including copyright, trademark, trade secret and patent litigation, as well as complex civil litigation, including breach of contract, interference with contract, breach of fiduciary duty, conspiracy, fraud and fraudulent transfer of assets.


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