I hand you a box of WILD FLOWER brand gumdrops and a box of WILD FLOWER brand donuts.
Do you think the gumdrops and the donuts came from the same company?
You’re probably thinking something like this:
Candy and donuts are sort of related and it’s not hard to imagine a candy company also selling donuts but, off hand, I can’t think of a company that sells both under the same brand.
Would your answer have been different if I had given you a box of candy and a bag of cement mix? What if I had handed you a box of gumdrops and a box of jelly beans?
You’ve just done an analysis similar to what trademark attorneys do all the time. You considered the “relatedness of the goods and services” to figure out whether trademarks are “confusingly similar.”
- Do the goods/services feel related? Would you find them in the same type of store, like handbags and jewelry? Would you find them in the same department of a store like pants and belts?
- Can you think of a company that sells both under the same brand?
Both of the bulleted question-types are important. Sometimes goods are closely related even if there’s no company that does both. Other times, there can be one brand used for lots of really different stuff: Yamaha Corporation uses the YAMAHA® trademark to sell everything from motorcycles to trumpets and lots of stuff in between.
“Confusingly similar” is both a difficult and complicated concept and pure common sense.
 There are a bunch of these question tools. Trademark attorneys call them the “du Pont Factors” because they come from a case involving E. I. du Pont de Nemours & Co. Here are the most important ones:
- 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.
- 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.
 Here’s a partial list of the stuff Yamaha Corporation sells under its YAMAHA brand: Musical instruments, skis and ski bindings, motorcycles, motorboats, eyeglasses, golf clubs, badminton rackets, robots, semiconductors.
What’s been happening at the Trademark Office since the floodgates to immorality and scandal were opened?
You may remember that the United States Supreme Court ruled that it was unconstitutional to refuse to register trademarks that include disparaging words. Soon after, the Circuit Court of Appeals for the Federal Circuit applied the reasoning in the Supreme Court decision to shitcan rejecting trademarks with immoral or scandalous words.
Here’s a rundown of applications filed in the first year following the Supreme Court’s decision that have a least one of the Seven Words You Can’t Say On Television:
SHIT: 80 applications filed. My favorite: EAU SHIT for cologne.
PISS: Not a popular choice. Only 3 applications. Fave: PISSPERFECT for “artificial penises that release fluid.”
FUCK: 82 applications. I’m sorry to report that most of them are boring AF but I do rather like NAMASTE AS FUCK.
CUNT: Only 2 applications and both filed a full year after oral argument.
COCKSUCKER: 0. Zip. Nada. Zilch. I’m sure there are some missed branding opportunities here.
MOTHERFUCKER: Only 2, but you gotta love Y’ALL MOTHERFUCKERS NEED JESUS for clothing. The applicant has been using the trademark since 2011. A real groundbreaker.
TITS: Only 8 applications, including CHECK YOUR TITS AND PITS for “charitable projects . . . to promote breast cancer detection.”
I also checked on filings of applications containing disparaging words. There were only a handful. Several were filed by Snowflake Enterprises, LLC with an address on King Street in Alexandria, VA, just a short walk from the Trademark Office. Cool.
Big shoutout to Cody B., who asked me a question that led to this post. What do you want to know about?
I’ve written a ton of blogs on how to figure out whether a word is available for use as a trademark, but how do you know if a logo is safe to use?
Each registered trademark that includes a logo has a description of the logo as part of the registration. For example, here’s the description of Happy Bee that Beeline uses:
The mark consists of a stylized side view of a bee comprised of: a semi-circle outlined in grey, filled with a gradient of color ranging from orange to yellow with three vertical grey lines depicting stripes and a grey circle depicting the eye; emerging from the semi-circle are two curved grey lines depicting the antennae and a small grey triangle depicting the stinger; and above the semicircle are two overlaid blue stylized wings.
Yup. I actually get paid to write stuff like that.
Every registered trademark with a logo also has design codes assigned to it by the Trademark Office. Here are the design codes for Happy Bee:
03.23.06 – Bees; Hornets; Wasp; Yellowjackets
26.01.06 – Circles, semi; Semi-circles
26.17.01 – Bands, straight; Bars, straight; Lines, straight; Straight lines, bands or bars
26.17.04 – Bands, vertical; Bars, vertical; Lines, vertical; Vertical lines, bands or bars
The process for searching for “confusingly similar” logos is something like this:
- Search for key words in logo descriptions.
- Search for relevant codes in design codes.
- Look at the actual pictures that the search brings up.
- Apply judgment using the DuPont factors. Two logos might use similar words to describe them and yet be totally distinctive.
Each of these trademarks uses the phrase “bird in flight” in the description, but they are not similar in appearance.
Can you guess these incredibly famous trademarks from their descriptions? Scroll down for answers.
- The mark consists of a circular seal with the design of a siren (a two-tailed mermaid) wearing a crown.
- The mark consists of a red circle and a yellow circle that interlock to create the color orange.
- The mark consists of lower case letter “B” in a circle.
Next you’ll want to know how to check the availability of a sound mark. Yikes!
Big shout out to Ava, for suggesting this topic! What do you want to know about?
The three trademarks described are:
- The Starbucks® siren.
- The Mastercard® logo.
- Beats® headphones logo.