Look Beyond the Registration to Determine Likelihood of Confusion
Friday, November 28, 2014
Just in time for the holiday shopping season, the Trademark Trial and Appeal Board's recent decision in Anthropologie, Inc. and Urban Outfitters Wholesale, Inc. v. Happy Green Company LLC is a good reminder of why, when clearing a new trademark for use and registration, it is important to (1) consider the totality of the circumstances of how marks are actually used in commerce, and (2) not rely on a search of the U.S. Patent and Trademark Office database alone to determine if a mark is available.
Anthropologie opposed registration of the mark for bath salts, bath soaps, cosmetics and fragrance, among other things, in International Class 3, on the ground that the Applicant's mark, when applied to their goods, is likely to cause confusion with their own mark, ANTHROPOLOGIE, for retail department store services, and their previously used common law mark, ANTHRO, for their loyalty card program.
The Board found that although Anthropologie did have common law rights to the mark ANTHRO for its customer loyalty card program, it did not establish additional rights in the mark for any goods or services beyond the loyalty program. However, the Board did find that the ANTHRO loyalty card, when combined with Opposer's retail services featuring beauty and cosmetic products, is similar enough to the beauty and cosmetic goods offered under the mark to weigh in favor of Anthropologie. The Board concluded that purchasers familiar with Anthropologie and the products offered in the course of their retail services would be likely to mistakenly believe that goods using the mark originate from the same entity, and sustained the opposition to the mark.
Ms. Durkin leads the Mechanical Patent and Trademark Group. With over twenty years of experience obtaining and enforcing intellectual property rights, she melds her expertise with utility and design patents, trademarks, and copyrights to create a unique IP protection strategy to meet her clients' individual needs. Ms. Durkin’s experience includes helping clear new products and trademarks for use in the marketplace, selecting appropriate IP protection, and enforcing such protection through mediation, litigation and licensing. She is sought out for her knowledge of...
Ms. Estoesta is an associate in the Mechanical and Design practice group at Sterne Kessler. Ms. Estoesta’s practice focuses on trademarks, design patents, and copyrights. Her legal experience, which began at the firm, and academic background provide her a multidimensional perspective in securing comprehensive IP rights for an array of clients in various industries, including pharmaceuticals, dietary food and beverages, footwear, electronic devices, and household cleaning products.
Ms. Estoesta joined the firm in 2006 as a legal assistant in the Biotechnology/Chemical practice group. Her combined interest in science and art drew her to the firm’s Mechanical and Design practice, and she formally transitioned to the firm’s Mechanical and Design practice group as a legal assistant in 2007. At that time, Ms. Estoesta’s practice focused exclusively on trademarks, and she assisted with the prosecution and maintenance of U.S. and foreign trademark rights. Subsequently, Ms. Estoesta transitioned to a Student Associate in 2008, during which she gained significant experience in clearing, prosecuting and enforcing trademark rights in the U.S. and abroad. To date, Ms. Estoesta has more than 5 years of experience in drafting opinions on trademark registerability and infringement, cease and desist letters, trademark applications and other communications filed with the U.S. Patent & Trademark Office and various foreign offices. She also has experience in Oppositions and Cancellations before the U.S. Trademark Trial and Appeal Board.
Monica Talley brings more than 17 years of experience protecting some of the world's most recognizable brands to her role as a Director in the firm’s Trademark practice. Ms. Talley specializes in strategic trademark counseling and portfolio management, developing anti-counterfeiting solutions and strategies, and trademark enforcement.
Ranked as one of the leading trademark prosecution and strategy attorneys in Washington, DC, Ms. Talley is particularly noted for her global brand protection and commercialization strategies, and is lauded by clients for utilizing “her broad IP savvy...