Will This RED NOT CHILI PEPPERS Trademark Application Receive a Likelihood of Confusion Refusal?

I'll admit, when I first saw it I was confused.  I wondered why a sole proprietor filed a RED HOT CHILI PEPPERS trademark application and alleged a first use date of only 2009.  Then I saw it - Red NOT Chili Peppers.  The federal trademark application, filed on November 14th, was filed by a guy in California for the mark RED NOT CHILI PEPPERS in Class 41 for a variety of entertainment services related to a musical band.

Guess who already owns a registration in Class 41 for entertainment services related to a musical group?  A California partnership called the Red Hot Chili Peppers consisting of Anthony Kiedis, Chad Smith, John Frusciante, and Michael Balzary.  You may have heard of them.  That registration alleges a first use date of 1983.

When an application is likely to cause confusion with a previously filed application or registration, the Trademark Office will refuse registration to the most recent application under Section 2(d) of the Trademark Act.  That section prohibits the registration of a mark that, as used on or in connection with the goods or services specified on the application, so resembles a registered mark as to be likely to cause confusion.  TMEP 1207.01.  The two critical factors (but not the only factors) in making such a determination are the similarity of the marks and the relatedness of the goods or services.

But what about the parody defense?  Does that permit the registration of RED NOT CHILI PEPPERS?  Not exactly.  The Trademark Office makes it clear that "the fact that a mark is intended to be a parody of another trademark is not, by itself, sufficient to overcome a likelihood of confusion refusal..." TMEP 1207.01(b)(x).  The "right of the public to use words...in a humorous and parodic manner does not extend to use of such words as trademarks if such use conflicts with the prior use and/or registration of the substantially same mark by another."  Columbia Pictures Indus., Inc. v. Miller, 211 U.S.P.Q. 816, 820 (TTAB 1981).  For example, the Trademark Trial and Appeal Board found a likely of confusion between LESSBUCKS COFFEE and STARBUCKS COFFEE when used with identical goods and services, despite the parodic nature of LESSBUCKS COFFEE.  Starbucks U.S. Brands, LLC v. Ruben, 78 U.S.P.Q.2d 1741 (TTAB 2006).

Will the Examining Attorney who reviews the RED NOT CHILI PEPPERS trademark application experience the same confusion I did and issue a 2(d) refusal?  We will find out in approximately three months when this application is assigned to an attorney at the Trademark Office.

Physician Files Trademark Application for WEB MD, But That's Not The Only Issue

Every so often I find a trademark application that provides a great learning experience for applicants and demonstrates that importance of working with a qualified trademark attorney. An application for WEB MD filed by a physician in Mississippi on May 26th is one of those applications.

First, the obvious. The applicant's services listed in this application are in Class 044 for "[u]rology medical care services." You may have heard of a popular website called WebMD. That website has a trademark registration in a variety of classes related to healthcare, including a registration in Class 044 for "Consulting and counseling services in the field of preventative health care..." Given the similarity of the marks and the relatedness of the services, I believe the Trademark Office will refuse to register applicant's application, in part, for a likelihood of confusion with the pre-existing WebMD registration.

While it's true the services listed in the applicant's WEB MD application are not exactly the same as the services listed in the WebMD website registrations, they are in the same class and are related. See TMEP 1207.01(a)(i) ("...the goods and/or services do not have to be identical or even competitive in order to find that there is a likelihood of confusion."). 

Additionally, the WebMD website's services in Class 044 are worded broadly and could encompass the applicant's narrowly identified urology medical care services. See TMEP 1207.01(a)(iii) ("if the cited registration has a broad identification of goods or services, an applicant does not avoid likelihood of confusion merely by more narrowly identifying its related goods."). Finally, since the marks are identical, a likelihood of confusion can be found even if the services are not closely related. See TMEP 1207.01(a) ("... the more similar the marks at issue, the less similar the goods or services need to be to support a finding of likelihood of confusion.").

There are several other issues with this application, including:

• The applicant filed the application on a 1(a) basis but the specimen submitted is a letter to the examining attorney arguing against a likelihood of confusion refusal;
• Applicant added a translation statement stating "the English translation of MD in the mark is physician," but MD is not a word in a foreign language;
• Applicant filed an unnecessary 2(f) claim (and a 2(f) claim would not be available anyway given the limited use of the mark);
• Applicant addressed the unnecessary letter submitted with the application as "letter to patent attorney";
• Applicant invited examining attorney to text her.

In sum, this application is riddled with issues that could have been easily addressed by a trademark attorney. Unfortunately for the applicant, this means her $225 nonrefundable filing fee is all but lost.

SUNDIAL FILM FESTIVAL Confusable with SUNDANCE FILM FESTIVAL for Film Festivals?

On May 2, the Active 20-30 Club of Redding Foundation, Inc. d/b/a Sundial Film Festival filed a federal trademark application for SUNDIAL FILM FESTIVAL. The applicant filed the application in Class 041 for "[e]ntertainment services, namely, planning and conducting a series of film festivals[.]"

According to the Applicant's website, the Sundial Film Festival is a California-based film festival in its eighth year. This coincides with the April 7, 2008 first use date listed on the trademark application.

However, there is a pre-existing registration for the well-known SUNDANCE FILM FESTIVAL, which was filed in 1996 and registered in 1998. The services listed on the Sundance registration are also in Class 041 for "entertainment services, namely, planning, managing, and conducting an international film festival."

It's well known that Section 2(d) of the Trademark Act prohibits the registration of a mark that is confusingly similar to a previously filed mark that matures to a registration. In determining whether two marks are confusingly similar, the Trademark Office will consider several factors, known as the du Pont factors. Those factors are:

• The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression;
• The relatedness of the goods or services as described in the application and registration(s);
• The similarity or dissimilarity of established, likely-to-continue trade channels;
• The conditions under which and buyers to whom sales are made, i.e., "impulse" vs. careful, sophisticated purchasing;
• The number and nature of similar marks in use on similar goods;
• The existence of a valid consent agreement between the applicant and the owner of the previously registered mark. See TMEP 1207.01.

The first two factors - the similarity of the marks and relatedness of the goods or services - are considered the most important. The more similar the marks at issue are, the less similar the goods or services need to be to support a finding of likelihood of confusion, and vice versa. TMEP 1207.01(a).

Will the Trademark Office refuse to register SUNDIAL FILM FESTIVAL due to a likelihood of confusion with SUNDANCE FILM FESTIVAL? Probably. Not only are the marks almost exactly the same, differing only in the last few letters of SUN-, but the services are in the same class and nearly identical. 

Note - it's interesting the Sundial Film Festival has been around for 8 years while the Sundance Film Festival has held a federal trademark registration for almost twenty. Sundance may not be opposed to Sundial. If that is the case, Sundial might use a consent agreement with Sundance to overcome a Section 2(d) refusal. See TMEP 1207.01(d)(viii). However, the record does not reflect such a consent agreement at this time.

GRONKIN' GONUTS Trademark Application Is Out of Bounds

On November 24, a man from New Hampshire (who I assume is a big Patriots fan) filed a federal trademark application for the mark below as it relates to "[h]ats; [h]ooded sweatshirts; [s]hirts; [s]weatshirts[.]"

Unfortunately for the applicant, he did not appear to work with an attorney and his nonrefundable filing fee for this application is lost.

Why? First, this application is clearly based on the DUNKIN' DONUTS logo, slogan, and business name. The main purpose of trademark laws is to prevent others from confusing customers as to the source of a good or service and to prevent others from riding off the goodwill of more established companies. Specific to trademark registrations, Section 2(d) of the Trademark Act prohibits the registration of a mark that "[c]onsists of or comprises a mark which so resembles a mark [previously] registered...as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive..."

Dunkin' Donuts owns several trademark registrations, some of which fall within the same class of goods listed on this GRONKIN' GONUTS application. Given the similarity of this application to those DUNKIN' DONUTS applications, the Trademark Office will issue an office action refusing to register this mark due to that likelihood of confusion.

But that is not the applicant's only problem. The mark also clearly incorporates Rob Gronkowski's likeness. Whenever a trademark application incorporates the "name, portrait, or signature...[of] a particular living individual..." that person's consent must be of record with the Trademark Office. 15 U.S.C. 1052(c). This applies to stage names and nicknames as well. TMEP 1206.03. The purpose of this requirement is to "protect rights of privacy and publicity that living persons have in the designations that identify them." TMEP 1206. This applicant did not file Rob Gronkowski's consent to registration this mark, so the Trademark Office will also refuse to register it for that reason.

This application highlights the complexities of filing a federal trademark application and demonstrates the importance of working with a trademark attorney. Any qualified trademark attorney would have told this applicant right away that this particular trademark could not be registered for the reasons stated above. Luckily, this application was filed on an intent-to-use basis, which means the applicant is not actually selling anything containing this mark yet. If he was doing so, any money he spent on marketing and producing the goods would also be lost, and the actual sale of these items could have opened him up to further liability.

How to Lose Your Trademark Filing Fee - File IPHONE mark

In another lesson on what not to do, an individual in Texas (without the help of an attorney, it seems), filed a federal trademark application for IPHONE AIR as it relates to cell phones, cell phone software, cell phone accessories, and a variety of other related products. This application is in serious trouble considering when I first clicked on it, I thought Apple was in the process of developing an "Air" version of the iPhone, only to find out this application was not filed by Apple, Inc. (this is the kind of confusion trademarks laws are designed to prevent).

It goes without saying that Apple, Inc. holds many, many trademark applications or registrations for both iPhone and the iPad Air and that the above application clearly conflicts with Apple's previous registrations. Given that Section 2(d) of the Trademark Act prohibits the registration of any mark that so resembles a previously registered mark that it is likely to cause confusion among consumers, the Trademark Office will surely issue the above application an Office Action refusing to register it on those grounds.

Even if the Trademark Office did not issue an office action (which is impossible), Apple would file an opposition to this mark during the publication phase at the end of the registration process. During this phase, a pending trademark application is published in the Trademark Office's Official Gazette for 30 days. During that time, anyone who feels they may be damaged by the registration is allowed to file an opposition to the application. Filing this opposition will initiate a lawsuit-like proceeding in front of the Trademark Trial and Appeal Board (TTAB).

The lesson? Work with a trademark attorney who can help you identify issues like the above. At the very least, an attorney can help you reduce the risk of losing your nonrefundable filing fee like the applicant above. His $225 fee is all but lost.

DOLLAR TOOTHBRUSH CLUB Confusable with DOLLAR SHAVE CLUB?

Following the trend of monthly subscription services, an individual in Colorado (hopefully a dentist) filed a federal trademark application for DOLLAR TOOTHBRUSH CLUB on October 30th. The services specified In the application are "online ordering services in the field of oral and dental products; online retail store services in the field of oral and dental products; online retail store services featuring oral and dental products."

According to the specimen submitting with the application (seen above), this service works similar to Dollar Shave Club or Dollar Beard Club in that a customer can receive a new toothbrush every month for a low subscription price. The application indicates this individual has been selling these toothbrushes since May 25, 2015.

However, if the current status of the DOLLAR BEARD CLUB applications are any indication, this application may be at risk of receiving a likelihood of confusion office action from the Trademark Office. The Trademark Office issued an office action refusing to register DOLLAR BEARD CLUB for various beard grooming products due to, among others, a registration for DOLLAR SHAVE CLUB for shaving products. If the Trademark Offices believes oral and dental products are related to shaving products, the DOLLAR TOOTHBRUSH CLUB application will receive a likelihood of confusion office action as well. We will find out in approximately three months when this application gets assigned to an examining attorney.

Today's Tip for Saving Your Trademark Filing Fee - Don't File an NFL-like Logo

Any trademark attorney will advise you to avoid filing or using any trademark that resembles a professional sports team's colors, name, and/or logo. These leagues and teams are aggressive about policing their intellectual property and typically have trademark registrations for a variety of goods and services.

Unfortunately the applicant that recently filed a LOS ANGELES CHARGERS design mark did not appear to work with an attorney.

On October 17th, an individual in California filed a federal trademark application for the logo below as it relates to "[e]ducation and entertainment services, namely, production and distribution of ongoing television programs in the field of family management and relationships; Educational and entertainment services, namely, a continuing program about football games accessible by means of radio, television, satellite, audio, video, web-based applications, mobile phone applications, computer networks, etc."

I'm not even a big football guy and immediately recognized this logo as almost exactly resembling the San Diego Charger's logo. Undoubtedly the team and NFL will take notice as well, especially considering that the specified services are related to entertainment and football.

When this application is assigned to an examining attorney at the Trademark Office in approximately three months, that attorney will almost certainly issue an office action refusing to register the above mark due to its similarity with a previously filed San Diego Charger's mark. 

If for some incredible reason this application slips past the examining attorney, you can be sure the NFL will file an opposition or otherwise fight this attempted registration. Unfortunately for the applicant, this means his $275 nonrefundable filing fee, and any other money he spent on designing and marketing this logo, is almost certainly lost. This is another instance in which the applicant could have benefited from working with an experienced trademark attorney who would have recognized these issues right away and advised against this application.

Today's Tip For Saving Your Trademark Filing Fee - Don't File Trademark for BURGER QUEEN

In questionable move, an individual in Puerto Rico filed a federal trademark application on October 9th for BURGER QUEEN as it relates to "[b]eef patties; [f]rench fried potatoes; [f]ried meat; [and] [b]urgers contained in bread rolls[.]" The applicant filed the application on an intent-to-use basis.

Does BURGER QUEEN remind you of another entity selling burgers and fries? If so, this trademark application is in serious trouble. 

Trademark laws are designed to prevent customer confusion regarding the source of a product and to prevent junior users from riding off the goodwill of more established senior users. To that end, Section 2(d) of the Trademark Act prohibits the U.S. Patent and Trademark Office from registering any mark that is confusingly similar to a previously filed mark. Although several factors are considered when determining whether two marks are confusingly similar, the analysis generally boils down to (1) the similarity between the marks and (2) the relatedness of the goods and services.

In this case, BURGER QUEEN is very, very similar to BURGER KING and the goods are exactly the same. Also, by last count there are approximately 88 previously filed trademark applications containing BURGER KING owned by the Burger King corporation. When the BURGER QUEEN trademark application is assigned to an Examining Attorney in approximately three months, that attorney will almost certainly issue an Office Action refusing to register this mark due to the many previously filed BURGER KING applications.

Surprisingly, the applicant used an attorney to file this application. Because trademark filing fees are nonrefundable (and due to infringement issues), an attorney should always conduct a clearance search before filing an application to account for issues like the above. Whether a search was done in this case is unclear, but it is clear that the applicant's $450 filing fee (and whatever fee it paid its attorney) has been wasted.

Today's Tip - Don't File LIVEMOMSTRONG for Apparel

In the case of another unfortunate pro se trademark applicant, a women in California filed a federal trademark application for the mark LIVEMOMSTRONG! as it relates to "[s]hirts; [s]horts; [and][w]ristbands[.]" These goods are in class 25.

Unfortunately, as most of you know, there is another very popular trademark for LIVESTRONG owned by the LiveStrong Foundation. The LiveStrong Foundation is the owner of two trademark applications in class 25 and many others in various other classes (see below for examples of LIVESTRONG apparel).

Because these marks are for the same types of goods, and are extremely similar, the LIVEMOMSTRONG! application will almost certainly receive an Office Action refusing to register the LIVEMOMSTRONG! mark pursuant to Section 2(d) of the Trademark Act. This section prevents the registration of any mark that is confusingly similar to a previously registered mark.

Trademark Office filing fees are almost always nonrefundable, so this applicant's $225 filing fee is all but lost.

This case demonstrates the importance of conducting a proper clearance search before filing a trademark application. By working with a trademark attorney, you can avoid Section 2(d) Office Actions and maximize your chances of receiving a federal trademark registration.

SOUTHERN TIER BREWING Trademark Filed For Cornhole Boards

On October 1st, the Southern Tier Brewing Company, LLC filed a federal trademark application for the stylized SOUTHERN TIER BREWING COMPANY logo seen below as it relates "[e]quiment sold as a unit for playing tossing games" (aka cornhole).

Why does the Southern Tier Brewing Company feel the need to file a trademark application specifically for cornhole boards? The move is probably designed to give them a leg up in fighting any unauthorized distributors of cornhole boards that bear the company's trademark. 

While Southern Tier would have some legal rights to prevent such unauthorized use even without this registration, the registration will act as an extremely persuasive deterrent if attached to a cease and desist letter. Additionally, the Trademark Office will use this application as a basis for denying the registration of any similar names and logos if used on anything related to cornhole boards (because Section 2(d) of the Trademark Act prohibits the registration of a trademark that is confusingly similar to a previously filed mark).

This trademark filing is also an important warning to individuals and companies that create cornhole boards, apparel, or other items bearing the trademarks of others. Most companies are very aggressive in protecting their brand and will go after sellers of unauthorized products. Such sales can even result in criminal liability. Do not create items bearing the trademarks of others without seeking a license from the trademark owner (or at least speaking with a trademark attorney first).

PEEPLE v. PEEPPL - Trademark for Controversial Peeple App in Serious Jeopardy

Yesterday the Internet was in an uproar about a new app called Peeple, which is set to hit Apple's App Store this November. The Canadian based app has been dubbed a "creepy, Yelp-like app that lets you rate people like restaurants." That screams lawsuit to me.

However, the controversy surrounding the ethics of the app isn't the only issue currently facing the developers. The company's U.S. trademark applications are also in serious jeopardy. The U.S. Patent and Trademark Office suspended the applications due to a previously filed, conflicting application. Such a suspension indicates another company may have priority in the name, which will prevent PEEPLE from obtaining a federal trademark registration and potentially result in liability for trademark infringement. 

On February 6, 2015, Peep, Inc., the company that owns the app, filed two different federal trademark applications for PEEPLE. The first application is in Class 9 for "[d]ownloadable software, namely, to read, post, recommend, rate and share opinions on referrals relating to individual persons for the purpose of consumer information[.]" The second is in Class 35 for "[p]roviding a website, namely, to read, post, recommend, rate and share opinions on referrals relating to individual person for the purposes of consumer information[.]"

On May 17, 2015, the Trademark Office issued an Office Action suspending both applications due to a conflict with an earlier filed and similar application. The company's attorney submitted arguments claiming a likelihood of confusion with the earlier application did not exist but the Trademark Office issued suspension letters on June 8, 2015 for both applications, indicating it was not persuaded by the attorney's arguments.

Peeple's nemesis in the Trademark Office is PEEPPL (see the similarity?). This trademark, also filed by a Canadian company, lists a number of services that are similar to those offered by PEEPLE and listed on the PEEPLE application. Namely, PEEPPL listed on its application "[i]nternet social networking services...[c]omputer social networking software for uploading, downloading, retrieval, discussing and sharing of information, video, text and other media or multi-media...[d]ata transmission, namely, transmission of e-mails, personal profiles and information via the internet and messaging services via the internet; providing electronic bulletin boards for users to transmit messages, information, videos and text" and various related services.

PEEPPL filed its U.S. trademark application on April 3, 2014 but is basing its priority on a Canadian application filed December 13, 2013. PEEPLE also claimed priority based on a Canadian application, but its Canadian application was filed on December 8, 2014. Both PEEPPL's U.S. filing date and Canadian filing date clearly precede PEEPLE's, which means the PEEPLE trademark is in serious trouble.

The PEEPLE trademark application will remain suspended until the PEEPPL trademark registers. If it does register, Peep, Inc. will need to again try to convince the Trademark Office that a likelihood of confusion between the two marks does not exist. Given the substantial similaiarity between the marks and the relatedness of the goods and services, this will be very difficult. If Peep, Inc. cannot change the Trademark Office's mind, it will not be entitled to a U.S. trademark registration and won't be able to use the PEEPLE mark in the United States without risking liability for trademark infringement.

Peep, Inc.'s saving grace may be that the PEEPPL trademark application is also suspended. Because the PEEPPL trademark's priority is based on a foreign registration, the owner is required to submit the foreign registration to the U.S. Trademark Office. The owners of PEEPPL have until March 28, 2016 to submit ithe foreign registration or the application will be deemed abandoned (unless it states their foreign registration is still pending, in which case it will be given additional time to respond). If the application is abandoned, it will clear the way for the PEEPLE trademark to finally register.

Peeple is currently causing a stir in the United States but the name might not be around long if it cannot maneuver its way around its suspension in the Trademark Office or work out a deal with the owners of the PEEPPL mark.

Tip For Saving Your Trademark Filing Fee - Don't File a MUNCHIN DONUTS Trademark

In a lesson on what not to do, a California company called Munchin Donuts, LLC filed federal trademark applications in two different classes for MUCHIN DONUTS. The underlying goods are listed as "donuts; coffee" and "catering of food and drinks; coffee shops."

Does the term MUCHIN DONUTS, especially when used in conjunction with coffee shops and donuts, remind you of anything? Maybe a huge brand named Dunkin' Donuts? If so, you just experienced what trademark law is designed to protect against: customer confusion as to the source of certain goods. 

In general, trademark infringement occurs when the same or similar term is used on related goods and services. Additionally, the Trademark Office will not register a mark that is confusingly similar to a mark that is already registered (and Dunkin' Donuts has multiple federal trademark registrations). See Section 1207 of the Trademark Manual of Examining Procedure.

Both MUNCHIN DONUTS trademark applications were filed on an intent-to-use basis, meaning the company is not using the name in commerce yet (and I doubt they ever will). Luckily, since the company is not yet using the term and appears to be early on in the branding phase, it should be fairly easy to come up with a new name (or at least easier than re-branding after several years of use).

When these applications are assigned to an examining attorney at the Trademark Office in approximately three months, that attorney will almost certainly cite Dunkin' Donuts' trademark registrations as a basis to refuse registration to MUNCHIN DONUTS. If not, I feel confident that Dunkin' Donuts will file an opposition to these registrations if the marks are actually published for opposition. In either case, both filing fees for these applications are likely lost (a total of $550).

The lesson - don't file an application that is confusingly similar to a pre-existing trademark. And use qualified trademark counsel.

Today's Tip for Saving Your Trademark Filing Fee - Don't File a Trademark That Sounds Like Another

Say "Wheaties." Now say "Weedies." Without knowing the spelling, could you tell the difference? Probably not.

One of the most common reasons the United States Patent and Trademark Office (USPTO) refuses to register a trademark is because an applicant files a mark that is likely to cause confusion with a mark that has already been registered for similar goods or services.

There are many factors that the USPTO uses to determine if there is a "likelihood of confusion" between an existing mark and a mark sought to be registered (see TMEP 1207 et seq.), but, in general, a likelihood of confusion exists when one uses the same or similar mark that another is already using and uses it on goods or services related to those sold by the senior user.

This standard means that the two trademarks do not need to be exactly the same or used on the same goods or services to trigger a likelihood of confusion refusal by the USPTO.

For example, the similarity between how two trademarks are pronounced, even if they are spelled completely different, can still cause a likelihood of confusion refusal. Unfortunately for the applicant that filed WEEDIES for "[b]reakfast cereals" on August 7th, this means his application is doomed and his filing fee lost.

Since these two marks are phonetically equivalent, and the applicant for WEEDIES filed in the exact same class and for the exact same goods contained in General Mills' Wheaties registration (which has been using the term on breakfast cereals since 1924, by the way), this application will be receiving an office action refusing to register WEEDIES when it is assigned to an examining attorney at the USPTO in approximately three months. The applicant's $225 filing fee is almost certainly lost.

How do you reduce the risk of a likelihood of confusion refusal from the USPTO? Work with a trademark attorney who can conduct a proper search and identify any possible conflicting marks before you file your application. Otherwise, your nonrefundable filing fee is in jeopardy.