Our trademark attorneys regularly advise new business owners and entrepreneurs launching a new product or service whether their brand names, product lines and brand designs are available for use in their intended marketplace and can be properly registered and protected (see trademark search).
A business owner or entrepreneur’s brand identity (aka trademarks) can be among a business’ most valuable assets. Trademarks identify the products and/or services of a business, to enable consumers and potential clients to distinguish between its products and/or services from different businesses in the same or similar business industry. A trademark is a word, phrase, symbol, design, logo, or a combination of elements that identify and distinguish the source of the goods of one business or individual from those of another business or individual. A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than the source of the goods.
In order to avoid a potential trademark infringement lawsuit, it is important that a new business owner or entrepreneur select a trademark that is distinguishable from any pending or registered state and federal trademarks. In other words, it is important that a new business owner or entrepreneur avoid launching a brand that would be identical or confusingly similar to any pending or registered state and federal trademarks. The “likelihood of confusion” standard is often a confusing concept to understand for many business owners.
In a likelihood confusion analysis, the Trademark Act set forth the following factors as the most relevant in determining if a trademark is confusingly similar to a pending or registered trademark: 1) similarity of the marks, 2) similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services.
Similarity of the Trademarks
When comparing trademarks, the test is not whether the marks can be distinguished by a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods and/or services offered under the respective marks is likely to result.
Similarity of the Goods
Where the goods and/or services of an applicant and registrant are similar in kind and/or closely related, the degree of similarity between the marks required to support a finding of likelihood of confusion is not as greats as in the case of diverse goods and/or services.
Similarity of Trade Channels
Where the channels of trade for the applicants and registrants goods and/or services are similar or will overlap (i.e., goods will be distributed, found and sold in the same, similar stores), a finding of likelihood of confusion will likely exist.
With cannabis legalization sweeping the country, the number of trademark filings for marijuana-related products have increased significantly. But when a trademark applicant recently tried to register Marijuanaville, Jimmy Buffet company contested the trademark, claiming that it was too close to the registered trademark Margaritaville. And the US Patent and Trademark Office agreed.
The Trademark Trial and Appeal Board (“TTAB”) addressed the issue of likelihood of confusion between the applied-for trademark “Marijuanaville” and Jimmy Buffet’s registered trademark “Margartiville” in connection with clothing, namely t-shirts, hats, sweatshirts, sweat pants, jackets, socks and drive through retail store services, featuring coffee and related goods – Margaritaville Enterprises, LLC v. Rachel A. Bevis. Margaritaville Enterprises, LLC opposed the registration of the Marijuanaville mark based on a claim of likelihood of confusion with its registered Margaritaville trademark. Margaritaville Enterprises argued: 1) Jimmy Buffet, an internationally famous musician, songwriter and entertainer, is an owner of Margaritaville’s parent company; 2) the Margaritaville trademark is a coined term based on Jimmy Buffet’s famous Magartiaville song; 3) the Margaritaville trademark has been used on a wide variety of goods and services for many years. As a result the trademark is a commercially strong source indicator for Magaritaville’s various goods and services; 4) By virtue of Magaritaville’s continuous and exclusive, and widespread use of the trademark, it is entitled to a broad scope of protection for the trademark; and 5) Marijuanaville and Margaritaville, which share the same first three and last six letters, are similar in appearance.
In sum, Margartiaville’s trademark attorneys successfully argued: …the overall connotation and commercial impression of the marks is highly similar – a chemically induced mental paradise. The public is likely to perceive the Marijuanaville mark as an extension of Margaritaville’s lifestyle brand. Based on this evidence the TTAB found that the mark Margaritaville and the mark Marijuanaville are similar in connotation and commercial impression and cannot coexist in the marketplace
On a side note, Jimmy Buffett’s Margaritaville Enterprises LLC won a similar trademark dispute in 2012, when it filed a trademark infringement suit against a Florida Restaurant Owner. The restaurant owner in that case had named his establishment the “Martiniville Liquor Bar and Kitchen.” Apparently the restaurant owner decided to change the name of his restaurant to the “Martini Bistro” rather than defend legal actions.