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Tag: likelihood of confusion

AIRIA Nightclub has Trademark Problems

John Welch questions whether you would have appealed the recent rejection of Gila River’s application for AIRIA.  Local Arizona tribe and gaming enterprise Gila River has a night club named Airia, but unfortunately, there is an Area nightclub in LA that beat them to the Trademark Office punch.  The Examining Attorney, upon receiving Gila River’s application for AIRIA, twice refused to register the mark in light of AREA.  Gila River appealed, but the Trademark Trial and Appeal Board sided with the Examiner.  It first noted that the marks were used in connection with identical services, and as such, a lesser finding of similarity in the marks themselves would be required to make a likelihood of confusion determination.  The TTAB next found that the marks sounded the same, or at least could sound the same, because there is no correct or absolute pronunciation of AIRIA.  The Board discounted Gila River’s argument as to the geographic separation of the LA and Phoenix clubs, since the applications themselves were not limited geographically.

I’ll keep an eye out for a possible name change for the club in the future.  For what it’s worth, the name is currently advertised as AiRIA.

Sight, Sound, Meaning, and Fame

When the Trademark Office receives a new application, one of the first things it does is conduct a search for similar marks.  The Trademark Examiner often searches for identical mark and homonyms in all goods and services classifications and for similar marks in the same goods or services classification.  Famous trademarks are often given broad protection, to an extent where they may block the registration of marks in unrelated goods or services classification.

On a recent run, my wife and I saw that a house near ours had some work being done.  The workers had pulled their trucks and trailers up along the curb outside the house.  The trailers all carried the word HAULMARK on the front.  “Interesting” my wife said – “what about Hallmark?  Seems like they would have a problem with that.”

Hallmark may indeed have a problem with it.  While the marks aren’t spelled the same, there is no discernible difference in how they sound.  A listener can’t tell if she just heard HAULMARK or HALLMARK.  And the HALLMARK brand is an incredibly famous one, no doubt entitled to protection beyond its typical greeting card and storefront business.  However, there just likely isn’t any possibility that Hallmark is ever going to enter the work trailer business, or at least, not under the HALLMARK brand name.  So the marks can coexist, and indeed, there is a registered trademark for HAUL MARK.