Branding Life

Almost anything that catches the public’s attention for more than a few minutes ends up as the subject of a trademark application by someone trying to capitalize on the moment and own a piece of the public discourse.  So it is not surprising that today’s solar eclipse spawned quite a few filings, some directly relating to the event itself others simply capitalizing on the spike of the word in consumer’s consciousness.

There were 80 eclipse marks filed in the U.S. in 2016-2017, including:

The most questionable trademark strategy is that of Sinclair Finance Group, application on SUN VALLEY SOLAR ECLIPSE AUGUST 21, 2017 was filed on August 4, 2017.

They won’t get an Office Action until November, longer after the August 21 date they included in their mark.  The most well planned strategy has to be that of Southern Illinois University, whose Reg. No. 5177673 on ECLIPSE 2017-2024 SOUTHERN ILLINOIS ECLIPSE CROSSROADS OF AMERICA plans ahead for the next great solar eclipse in 2024:

There will always be those who try to “own” by trademarking a piece of our common human experience.  Some are just better at it than others.





When is July 4 this year? When is North Carolina’s FIRST TUESDAY Lottery? and Descriptiveness

In In re North Carolina Lottery, [2016-2558] (August 10, 2017), the Federal Circuit affirmed the refusal of registration of FIRST TUESDAY in connection with lottery services and games on the first Tuesday of each month.

Like the examining attorney, the TTAB reasoned that N.C. Lottery’s promotional materials make clear that “new scratch-off games are offered on the first Tuesday of every month” and found that such fact would “be so understood by the relevant consumers who encounter the designation FIRST TUESDAY in the marketplace.”

The Federal Circuit said that a mark is merely descriptive if it immediately conveys information concerning a feature, quality, or characteristic of the goods or services for
which registration is sought.  The Federal Circuit rejected the NC Lottery’s argument that its was error to rely on the explanatory text in its specimens to supplement the meaning of the mark and conclude that it is merely descriptive. The Federal Circuit said that it was proper to determine the descriptiveness in the context of its use.  The Federal Circuit also rejected the NC Lottery’s argument that the fact that explanatory text was needed on the specimens showed that the mark itself was not  descriptive.

The Federal Circuit found that the commercial context demonstrates that a consumer would immediately understand the intended meaning of FIRST TUESDAY. The Federal Circuit sajd that the evidence shows that the mark is less an identifier of the source of goods or services and more a description of a feature or characteristic of those goods or services, and concluded  that substantial evidence therefore supports the TTAB’s finding that FIRST TUESDAY is a merely descriptive mark. registered.u.r.not

In In re I.AM.SYMBOLIC, LLC, [2016-1507, 2016-1508, 2016-1509] (August 8, 2017), the Federal Circuit affirmed the decision of the TTAB affirming the Trademark Examiner’s refusal of registration of the mark I AM on grounds of likelihood of confusion.

After initial refusals of registration of the I AM mark  in Classes 3, 9, and 14, I AM SYMBOLIC amended its description of goods to include the limitation that the goods were “associated with William Adams, professionally known as ‘’”  The Examiner maintained the refusal, and the Board affirmed, noting “we do not see the language as imposing a meaningful limitation on [Symbolic’s] goods in any fashion, most especially with respect to either trade channels or class of purchasers.

Before the Federal Circuit I AM SYMBOLIC argued Symbolic argues that the Board erred in its likelihood of confusion analysis by: (1) holding that the restriction is “precatory” and “meaningless” and therefore not considering it in analyzing certain DuPont factors; (2) ignoring third-party use and the peaceful coexistence on the primary and supplemental registers and in the marketplace of other I AM marks; and (3) finding a likelihood of reverse confusion.

Regarding the restriction, the Federal Circuit said I AM SYMBOLIC failed to show that the Board erred in finding that the restriction does not impose a meaningful limitation in this case for purposes of likelihood of confusion analysis.  Under a proper analysis of the du Pont factors, the goods are identical or related and the channels of trade are identical, and thus there is a likelihood of confusion.

The Federal Circuit agreed with the Board that the purported restriction does not (1) limit the goods “with respect to either trade channels or class of purchasers”; (2) “alter the nature of the goods identified”; or (3) “represent that the goods will be marketed in any particular, limited way, through any particular, limited trade channels, or to any particular class of customers.”  In the absence of meaningful limitations in either the application or the cited registrations, the Board properly presumed that the goods travel through all usual channels of trade and are offered to all normal potential purchasers.

Regarding other I AM marks, the Federal Circuit rejected the argument that because applicant’s class 25 registration had co-existed with the cited class 3, 9 and 14 registrations that there was no likelihood of confusion. The ownership of a registraiton on one class does not give a right to register the same]mark on an expanded line of goods, where the use of the mark covered by such registration would lead to a likelihood of confusion, mistake or deception.

With respect to third party marks, the Federal Circuit found that I AM SYMBOLIC did not show sufficient third party use to raise an issue in classes 3 and 9, and in class 14, the Federal Circuit found that the strength of the similarity of the marks and of the goods was sufficient to any error in
failing to specifically analyze the potential weakness of registrants’ marks based on limited third-party use.

Regarding the alleged finding of “reverse confusion,” the Federal Circuit  attributed the Board’s comments to a response to the arguments about the fame of the applicant being insufficient, not to an express finding of reverse confusion.

Overall, the Federal Circuit found sufficient evidence to support the Board’s finding I.AM confusingly similar to the cited registrations, and sustain the refusal of registered.