Cisco Sysco

Sysco Corporation has been using SYSCO since the early 1970s.

Cisco Technology, Inc. started using CISCO in the 1990s.

CISCO sounds exactly like SYSCO.

Why is that OK?

For long-time readers, you know the answer has to do with those darn du Pont factors.  Here are the two du Pont factors that are considered the most important:

  • The similarity or dissimilarity of appearance, sound, and connotation of the marks.
  • The relatedness of the goods or services.

The first of the two key factors is a problem for Cisco Technology, Inc. The marks are identical in sound. It’s kinda interesting that the words look quite different but the complete identity of the sound is what’s going to control here. I can’t start a band and call it GHOTI* without running afoul of the band PHISH.

It’s the second bullet that gets Cisco Technology off the hook. It’s hard to imagine two more different areas of endeavor:

Distributing food products to restaurants and other foodservice companies.                       vs.Developing, manufacturing and selling networking hardware and telecommunications equipment

I find it very hard to imagine a restaurant owner called Cisco Technology to order eggplant for her moussaka. I find it equally hard to imagine her calling Sysco to buy a new router.

And that’s why it’s OK.

 

 

 

Shout out to Julie W. for the suggestion that led to this post.

Photo by Raysonho @ Open Grid Scheduler / Grid Engine [CC0], from Wikimedia Commons

*GHOTI = FISH if you pronounce GH as in “rough”; O as in “women”; and TI as in “friction.”

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Big Ass Trademarks

Delta T is clearly the BIG ASS® trademark leader: It owns twelve trademark registrations* including ones for BIG ASS, most of them for fans and lighting.

Plenty of BIG ASS corpses litter the Trademark Office database. Between May 2016 and December 2017, nine applications died because of the registrations owned by Delta T. Those applications were for a huge variety of goods, most of them having nothing to do with fans and lighting. Here’s the info on those dead applications:

Trademark Goods What happened Date of Death
Big Ass Pizza Clothing Trademark Office refused to register because of Delta T’s registrations. December 2017
Big Ass Bulbs Light bulbs Trademark Office refused to register because of Delta T’s registrations. November 2017
Big Ass Bowl Bowls Delta T opposed the application. Applicant abandoned. July 2017
Big Ass Candles Candles Trademark Office refused to register because of Delta T’s registrations. May 2017
Big Ass Floors Retail store services Applicant abandoned the application before it was ever reviewed. November 2016
Big Ass Bar Soap Soap Delta T opposed the application. Applicant abandoned. December 2016
Big Ass Flask Flasks Trademark Office refused to register because of Delta T’s registrations. October 2016
Big Ass Air Freshener Air freshener dispenser Delta T opposed the application. Applicant lost because he never responded. October 2016
Big Ass LEDs Electronic signs Delta T opposed the application. Applicant abandoned. May 2016

What are the lessons here?

  • You don’t necessarily have to be selling the same or similar stuff to be considered “confusingly similar” to another trademark. It depends on the strength of the other trademark.
  • Delta T’s ability to fight off new applicants is enhanced by the rareness of its mark. Delta T would NOT be having as much success with its oppositions if it had stuck with HVLS Fan Co., its original name.
  • Delta T is committed to protecting its mark and is willing to spend the time and money to fight when necessary.
  • It’s rarely a good idea to go up against a company that’s as committed as Delta T to fighting for its trademark rights.

All excellent lessons.

 

Big shout out to Irv L. for the suggestion that led to this post. Photos courtesy of and © Big Ass Fans.

*Twelve registrations as of August 2018. Several of the registrations are for HAIKU®, the fan in the featured photo for this post and another great trademark. Delta T also has trademark rights in the yellow on the ends of the blades of their industrial fans. This is a company that really understands branding and trademark law.

Big-Ass-Fans-Industrial

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It’s Harder Than You Think

Beeline®_fullcolor_h Buzzfeed.jpeg“I already checked the Trademark Office and it’s OK for me to use FELINE as a trademark for legal services.”

Sigh.

Figuring out whether your trademark is available isn’t easy.

Suppose you want to use WAISTED TALENT as a trademark for weight loss services. You go to the Trademark Office website and search for WAISTED and TALENT.

  • False Negative: You find nothing but your search missed the registration for WASTED TALENT for weight loss services, a complete bar to your application and use of WAISTED TALENT.
  • False Positive:: Your search found a registration for WAISTED TALENT for spark plugs so you decide to think up another trademark. Actually,  you’d probably be fine.

“The domain name is available, so I’m good to go.”

Double sigh.

The availability of the domain name (or the name for a legal entity) doesn’t mean anything.

  • False Negative: The domain name waistedtalent.com may be available, but you’re still going to have trouble with WASTED TALENT weight-loss services.
  • False Positive: The entity name Waisted Talent, Inc. is being used by that spark plug company but you’re still probably fine.

The spelling of a trademark also doesn’t matter. The former mayor of New York City can’t use his name to sell soda because some people pronounce KOCH as COKE.

There are no easy answers when it comes to trademark availability. It takes me up to three hours to check for availability. It you did it in 10 minutes, you probably don’t have the full answer.

 

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Wild Flower and du Pont

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.”[1]

  • 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.[2]

“Confusingly similar” is both a difficult and complicated concept and pure common sense.

 

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[1] 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.

[2] 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.