PHOTO CREDIT: Peter Speyer/Special to the Tribune

Dierks Bentley and his Whiskey Row pub chain succeeded in a trademark infringement claim brought by The Row, a Nashville pub. The Row brought the case in federal court when Whiskey Row announced it would be opening a location in Nashville. The Row did not agree with the lower court judge’s decision and appealed and now Whiskey Row asks the appellate court to uphold the lower court decision claiming that it was unrealistic to think that customers would be confused between the two businesses and marks.

This case is interesting because one of the issues raised was that Whiskey Row filed its application more than a year before The Row filed. The argument was that since The Row had constructive knowledge of the earlier application and still proceeded to file its application for its mark, it inherently took the position that it was not confusingly similar when it sought to register its junior mark.

Another argument made by Whiskey Row’s attorneys was that the association of Whiskey Row with the country singer celebrity made confusion unlikely.

The United States Patent and Trademark Office’s website has some great information about confusingly similarity:

The USPTO conducts a search for conflicting marks as part of the official examination of an application only after a trademark application is filed. In evaluating an application, the examining attorney conducts a search of USPTO records to determine whether there is a conflict between the mark in the application and a mark that is either registered or pending in the USPTO. The principal factors considered in reaching this decision are the similarity of the marks and the commercial relationship between the goods and services identified by the marks. To find a conflict, it is not required that the marks and the goods/services be exactly the same; instead, it is sufficient if the marks are similar and the goods and or services related such that consumers would mistakenly believe they come from the same source.

Similarity in sound, appearance, or meaning may be sufficient to support a finding of likelihood of confusion. The following are some examples of marks that would be considered similar:

Sound

Although spelled differently, the marks sound alike; i.e., they are “phonetic equivalents.”

Appearance

The marks look very similar, even though the one on the right uses a stylized font.

Meaning

The marks are similar because, when the Italian word “LUPO” is translated into English, it means “WOLF.”

Commercial Impression

Because the marks include the same design element, they create a similar overall commercial impression, even though the one on the right also includes words plus the design.

General Meaning

The marks convey a similar general meaning and produce the same mental reaction.

Even if two marks are found to be confusingly similar, a likelihood of confusion will exist only if the goods and/or services upon which or in connection with the marks are used are, in fact, related. To find relatedness between goods and/or services, the goods and/or services do not have to be identical.  It is sufficient that they are related in such a manner that consumers are likely to assume (mistakenly) that they come from a common source.

The following are some examples of related goods and/or services:

Goods

Services

Goods and Services

When a conflict exists between the applicant’s mark and a registered mark, the examining attorney will refuse registration of the applicant’s mark on the ground of likelihood of confusion. If a conflict exists between the applicant’s mark and a mark in an earlier-filed pending application, the examining attorney will notify the applicant of the potential conflict. The applicant’s mark will be refused on the ground of likelihood of confusion only if the earlier-filed application becomes registered.  Therefore, it is critical that you conduct a search for conflicting marks before you file, as the existence of a mark that is confusingly similar to yours and used with related goods and/or services may bar registration of your mark.

The Tracy Jong Law Firm team can help your business obtain a federal, state or foreign trademark by working with you to develop a custom brand strategy for your company. We have significant experience working with small companies, as well as state and federal trademark agencies. For more information about our services, and how we can assist your company, please contact us at tjong@tracyjonglawfirm.com.