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Tag: trademark infringement

Trademark Likelihood of Confusion, in Triathlon Products

Today, a basic primer on trademark infringement and an example of something that seems pretty clear. A registered trademark gives the owner the right to prevent anyone from using a mark in a way that is likely to cause confusion. This “likelihood of confusion” is fleshed out in a multi-factor analysis of the similarity of the marks, the products, the channels of commerce, and other aspects of the use.

Importantly, a likelihood of confusion analysis is not solely based on whether two marks have a similar name or appearance. The strength of the registered mark, the similarity of the goods or services on which the marks are used, the similarity in the sight, sound and meaning of the marks, evidence of actual confusion, the similarity of the channels through which the products or services are marketed, the sophistication of the consumers and their ability to distinguish between two marks, intent of the other party, and the likelihood of market expansion by the parties are all considered. However, frequently, the two most important factors in the analysis are: 1) the similatiry of the marks, in sight, sound, and appearance, and 2) the similarity of the goods or services on which the marks are used. Indeed, strong similarity, or even identity, between two the appearance of two marks can dominate the analysis and reduce the need for similarity in the other factors.

Occasionally, you will see two marks that are identical, and infringement is clear. This is often the case where a product is copied wholesale. However, you will often see unfortunate coincidences. I believe the below is an example of that.

Polar is a company that manufactures fitness electronics, such as GPS watches, cadence and power meters, and heart rate monitors. It is well known in the running, cycling, and triathlon communities as one of the leading electronics developers. A lot of athletes use and love Polar products. Polar has a registered trademark (No. 1,836,604) for a stylized design of its name, shown here:

Mark Image

The mark is registered in connection with “computer interfaces and software to be utilized with heart rate monitors for athletic and medical use” and for “heart rate monitors for athletic and medical use.” You most often see the mark in this form:

On the way to Ironman 70.3 Oceanside in California last March, my racing buddy was looking through a triathlon magazine. He was thumbing through the pages looking for his national ranking. Out of the corner of my eye, I spotted what I thought was that distinctive black-red-black logo Polar, and I looked over. I saw this:

ROLA trademark

Now, these marks are not identical. But they are close! First of all, the literal element of the mark is nearly the same: POLAR versus ROLA. Three letters the same, with the only different letter R being only very, very slight different from the letter P. Then, the same second letter is red, contrasted with black in the rest of the word. Arguably, the POLAR trademark registration makes no claim of color, but one can’t argue that the same colors typically used don’t contribute to at least a first impression, perhaps causing an initial interest based on color confusion. Once the colors have grabbed the onlooker’s attention, then the protected aspects of the trademark registration play a heavier role. Lastly, both marks have a negative strikethrough element running through all of the letters, and at the same height in each mark. All of these elements combined present a case of near identity between the marks.

Now, the products are not that similar. POLAR is used for heart monitors, and ROLA is used for cargo baskets. But they do both have an athletic focus. Further, both products are routinely marketed, as seen here, through triathlon channels. The case of infringement is strong here, but I think (or hope) that ROLA’s adoption of the mark was coincidental or perhaps was unknowingly, subconsciously inspired by POLAR.

Angelo’s, In-N-Out Burger, and their Confusingly Similar Signs

A few weekends ago I competed at Ironman 70.3 Oceanside in California. Oceanside has some restaurants I’ve not seen anywhere else before, in the country or even in California. One of those was a place called Angelo’s, which served everything from burgers to gyros to Mexican. It was decent enough, though probably not the best race food. What struck us was the sign out front. The friend I traveled with is not a lawyer, but he is in sales, so he may be more sensitive to logos than the average bear. We both noticed the sign immediately:

The color scheme and prominent shape of the stylized “A” instantly conjured up the iconic In-N-Out Burger sign.  You know the one:

ironman oceanside triathlon in n out

I have no idea how there has not been a lawsuit over this sign. In-N-Out hasn’t shied away from suing others for trademark infringement in the past.  The Angelo’s logo above is interesting because it appears only on the signs that face the road – the signs on the top sides of the restaurant had upstanding As (think Alvin and the Chipmunks “A”).  The road signs are in a place where motorists will catch only a quick glimpse of it from afar or as they pass by.  And with that quick glimpse, the color combination, the angled A, and the writing superimposed through the middle of the A could easily confuse the customer.  It did us, even after we knew we were going to Angelo’s.

Next post: the other incredibly similar trademark infringement we saw during this triathlon trip: ROLA v. POLAR.

Skee-Ball Trademark Dispute

I received my latest bit of trademark happenings from this weekend’s Saturday Night Live Weekend Update, not a colleague’s blog. Skee-Ball, Inc., the owner of Skee-ball games filed suit against a company that runs Skee-ball tournaments under the moniker “Brewksee-Ball.” Whoops. Looks like the tourney company didn’t get a lawyer’s clearance on this one before they came up with the name. Not only is the Skee-ball mark an incredibly famous one, but it is highly distinctive trademark because it incorporates a fanciful word that has no meaning, and thus, no connection to the game on which it is applied. The obvious defense is that the Skee-ball mark has become generic, but I’m not so sure there are other manufacturers of this style of game, even though the public certainly knows the game by that particular name. I, myself, have trouble coming up with a generic name for the Skee-ball game without delving into a long patent-type description like a game including an upstream ramp and a downstream arrangement of concentric annular goals….

While I think there is otherwise a pretty clear prima facie case of infringement here, the transformative nature of the mark should add a slight wrinkle to the case.  Does the addition of “Brew” to create “Brewskee,” a slang term for a beer, push this new phrase far enough away from the trademark that is clearly different?  Of course, this may not even be brought up given that the mark has very likely become generic.

Trademark Opposition

A trademark opposition can be part of the registration application process. Typically, a successful application proceeds through the Trademark Office in a predictable manner: the application is filed, the applicant and examiner communicate and work on the application, and the application is approved and published in the Official Gazette. Generally, thirty days of publication go by without incident and the registration certificate then issues. However, sometimes, a member of the public decides to intervene by filing a trademark opposition.

A senior trademark owner can use an opposition proceeding to challenge a registration, as can a common-law trademark holder. The opposing party will attack the registration if it believes the registration will cause damage, usually on the theory that the applied-for-mark is confusingly similar to the challenger’s mark. Other bases for opposing the mark exist but are less common. The opposition is similar to litigation in court, but it occurs before the Trademark Trial and Appeal Board – the TTAB – and does so almost entirely by paper. An opposition involves pleadings, discovery, motion-work, trial periods, and post-trial work.

An opposition is sometimes considered an attractive “alternative” to litigation. A trademark infringement lawsuit goes after allegedly infringing use of a mark, while an opposition seeks to prevent registration of the mark from the get-go. And while a trademark infringement suit can produce monetary damages or an injunction preventing the defendant from using their mark, a trademark opposition attempts to block the applicant from ever getting federal rights in the mark.

While it can be an effective tool, an opposition is not necessarily mutually exclusive from trademark. Trademark maintenance and strategy can encompass many different aspects of monitoring and activity. An opposition can prevent registration of an infringing mark, but the TTAB does not issue an order for the applicant to cease using the mark. The TTAB’s decision only goes so far as to say registration is proper or improper. Therefore, the applicant can technically continue to use its mark, albeit without federal registration protection. An infringement lawsuit may be necessary to actually get the applicant to stop using the mark. Of course, other less severe options, such as cease-and-desist letters, may accomplish this goal more efficiently.

Some trademark lawyers specialize in opposition work, while others make it only a small part of their practice. A trademark attorney with experience in trademark oppositions and general trademark strategy should be consulted if you are considering filing an opposition or have to defend one.

Reproduction of Trademarks in Photos

Have you ever taken a photo of a busy city street filled with billboards and neon signs?  Or maybe a shot of your new car to show it off to your friends?  Have you gone around your home identifying photographing all your possessions for insurance?  If so, you’ve probably taken a picture of items bearing trademarks.  Are you worried you’re infringing the rights of those marks’ owners?

Well, if you’re sticking the pics in your family album, don’t worry – you are almost certainly not violating anyone’s trademark. The situation grows more complicated when your photos are used more publicly or commercially, however.

Trademark law is all about customer confusion – the likelihood that a customer will be confused by the display of a mark on a product or service – and thus generally requires some sort of sale or advertisement of a product or service along with the display of the mark.

When you take photos for your own personal use and show them only to family and friends, there is no sale or ad, there is no customer, there is no confusion – your images don’t really suggest a trademark owner is sponsoring your photo just because its logos appear in it.

Putting your photos on Flickr is safe as well. Again, no one would assume that there is a link between the trademark owner and the picture, so there is no confusion and no trademark liability.

However, let’s say you took a photo of an old-fashioned, rusted, shot-filled Coca-Cola sign like this one that you thought was especially interesting.  Put that picture in your photo album or use it on your computer desktop, and you’ve got no problem.  Start printing the image up on postcards and selling it at a local festival, and you may be violating Coke’s rights in the trademark.  Why the difference?  Because someone buying the card might conclude that Coke, and not you, created the postcard for sale.  Your use of the Coca-Cola mark has moved from a mere personal, or perhaps artful, use of the mark, and has transformed into a commercial taking that suggests that Coke could be the source of the postcard.

The distinction between infringing and non-infringing use is, of course, less apparent between these two extremes.  For example, painting a Rockwellian mural on the side of a building and drawing Coke bottles in the hands of the children isn’t as likely to suggest that Coke had a role in the creation of the mural as the postcard situation, but it isn’t as clear cut as a simple photo in a family album.  Is it better to leave off the Coke symbol on the bottle altogether?  Maybe, maybe not.  These are the grey area scenarios that require more detailed, situation-specific examination.