It is becoming increasingly difficult to trademark your brand

LEGAL ENTERTAINMENT

Protecting your brand is becoming more difficult each day. Each year more people are filing applications with the U.S. Patent and Trademark Office. To enjoy receiving the federal registration of your mark, your brand needs to be original in relation to the goods and services that are offered. The more original, the less likely your brand will be confusingly similar to another's. Even if you have been using the mark for some time, if you have not registered it, you risk someone else taking your mark or one very similar. This ultimately could block your registration and restrict your protection to the areas of actual use in commerce prior to the other's registration.

Last month, the musician Will.i.am, known as a member of the Black Eyed Peas and more recently his solo career, lost a five-year battle against the USPTO attempting to register the mark #WILLPOWER in class 25 for clothing. The original application was filed as a 1(b) intent to use, meaning that Will had yet to use the mark in commerce at the time of filing. The application was filed in April 2013. The USPTO denied the application due to a likelihood of confusion with a prior registered mark and design for the words WILLPOWER WEAR HAVE THE WILL... in class 25 for clothing. The conflicting mark was registered in 2010 which at this time means that the mark is incontestable and thus more difficult to argue against the strength and validity of the mark.

After the USPTO issued a final office action for the likelihood of confusion, Will filed an appeal for reconsideration of the application. This initiated an ex parte appeal proceeding between the applicant and the USPTO in attempt to convince the office that the mark should be registered. Will submitted a brief in which an examining attorney responded. The Trademark Trial and Appeal Board review the briefs in light of the evidence and application. Generally, the proceeding is decided without a formal hearing and rather everything is done through the website. However, the rules allow the applicant to request an oral hearing, which Will utilized and was granted. After review of the evidence and completion of the oral hearing, the board came with the final decision affirming the refusal of registration due to a likelihood of confusion.

To decide whether there would be a likelihood of confusion, the board looks to factors set out by the In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). The most important factors are the similarity between the marks and the similarity between the goods and/or services. The board first looked to the similarity of the goods -- clothing. The board can only consider what was listed in the application/registration. Thus, the goods are legally identical in the perspective of the board.

The analysis of the similarity of the marks was a little more difficult in light of the circumstances of this proceeding. The board analyzes the similarity of the sight, sound, connotation and commercial impression of the mark. Initially, the board found that the marks shared the same dominant elements of WILLPOWER. The hashtag has no major significance compared to the rest of the mark and does not provide any distinctive element, while the registered mark begins with WILLPOWER and the slogan "have the will" was found to reinforce the dominance of "willpower." Will argued that the marks were visually distinctive enough so to alleviate any likelihood of confusion. The board agreed that the marks were visually different, however, the analysis does not focus on the side by side comparison of the marks, but rather the overall commercial impression of the mark. The board considers how the reasonable consumer would see and hear the mark in commerce. Most consumers will hear the mark rather than see it, and when said out loud, the marks dominant feature of WILLPOWER is shared by the two parties. The board found that the similarities of the marks outweighed the dissimilarities.

In one last attempt to convince the board to grant registration, Will argued that "willpower" is a weak mark in the field of clothing and that the USPTO shouldn't grant such a broad scope of protection. The board considers the number and nature of similar marks in use on similar goods. This bears on the analysis of the strength of the marks. Will failed to convince the board that the prior registrations submitted as evidence were an indication that consumers would be able to distinguish the registrations and his own mark.

Registration of your trademark, whether already in use in commerce or not, can be a tricky and long process. It's important to make sure to do a diligent search for any potentially confusing marks to avoid future costly disputes. No matter how rich or famous you are, the USPTO will protect the registration from all potential confusing applicants so choose wisely.