April 13, 2018

Is a Design Mark Worth a Thousand Words?

Someone said a picture is worth a thousand words. If true, that would make it really difficult to compare a design mark and a word mark for likelihood of confusion purposes. Fortunately, a recent case from the Trademark Trial and Appeal Board (the "TTAB") provides clearer guidance.

Aquitaine Wine USA, LLC sought to register the mark below in connection with certain French wines protected by an appellation of origin:

Mackay Laroque

It was refused registration on the grounds of likelihood of confusion with the registration for the mark CHATEAU LAROQUE for use with wines having a different controlled appellation. Aquitaine appealed.

In this case, the TTAB had to analyze whether there was a likelihood of confusion between a mark comprised of both literal and graphic elements against a standard character mark. The TTAB began its analysis emphasizing the factors involving similarity of the marks and relatedness of the goods. The TTAB observed that when comparing a mark with a design element, the words are normally accorded greater weight because they make the greater impression on consumers and consumers use them to request the goods.

Applying this logic to the marks before it, the TTAB concluded that LAROQUE is the dominant element in Aquitane's mark because of the size, placement and font of the word in the mark. Similarly, it concluded the term LAROQUE is the dominant element of the registrant's mark because "chateau" was disclaimed as descriptive. Furthermore, the word 'chateau,' which refers to a large French country house or castle, and appears in registrant's mark, corresponds with the image displayed as part of Applicant's mark.

The TTAB emphasized its obligation to confine its analysis to the manner in which the marks appear in the drawings of the registration and application respectively (rather than the way the marks might be used in commerce). For what it's worth, below is a copy of the specimen the registrant submitted when renewing its registration last year alongside an image of the specimen submitted by Aquitane in its application:

Mackay Laroque Shateua Png
Mackay Laroque Pinotnoir Png

This may explain why the examining attorney focused on the 'possibility' that the registered mark could appear alongside the image of a chateau.

The TTAB spent some time reviewing the way it must analyze the similarity of the marks when one of the marks is a standard character mark. Registrations for standard character marks afford protection for the words (or letters or numbers) for use in any font, style, or color. Thus, when considering the similarity of the marks factor of the likelihood of confusion analysis, the TTAB considers that the words in the standard character mark could appear in various fonts, styles, or colors.

The parties disagreed about the scope of variations this would allow the TTAB to consider. Aquitaine argued that it would be impossible for the registered mark to appear in the same manner of display as its own because that would necessarily lead to copyright infringement of its artwork. The examining attorney argued that the registered mark could easily be displayed alongside an image of a house and vineyard in a way that would underscore the similarities between it and Aquitaine's mark. The TTAB noted that both parties seemed to be arguing over the correct interpretation of a reasonable manners test. But this test was rejected by earlier precedent, which did not identify a replacement.

The TTAB took this opportunity to articulate such a test. The TTAB held that when comparing a standard character mark to a word + design mark, it would consider variations of the depicted standard character mark "only with regard to 'font, style, size, or color' of the 'words, letters, numbers, or any combination thereof.'" At the same time, when the word + design mark includes a graphic representation of a word in the standard character mark, that fact will be considered in the analysis to determine the overall connotation and impression of the marks.

The TTAB found that the similarity of the marks in this case weighed in favor of a finding of likelihood of confusion. After considering the other likelihood of confusion factors at issue, the TTAB ultimately affirmed the examining attorney's refusal to register the mark on likelihood of confusion grounds. The concurring opinion criticized the holding to the extent it seemed to limit the possibility or depiction of designs from its analysis of standard character marks.

So is a picture really worth a thousand words? Perhaps before the TTAB, a standard character mark is worth a thousand font, color, and style variations.