First posted on July 15, 2011.
Letters, we get letters.
Sometimes people just want to share their trademark woes with me. Sometimes they want free advice, or cheap advice, or just a broad, powerful if round trademarky shoulder to cry on. I am a man, and no one’s crying towel, yet — surely even a litigator can have feelings.
Carl Vennitti is no crybaby, but he has been sharing the story of nearly seven years of trademark-registration and opposition adventures with your tender-hearted blogger. His adversary: A little outfit called Nestle, another brutal chocolate-pusher but also famous as maker of — yes —
What do I know? Let’s ask the TTAB, which after dealing with some flaky procedural business — deftly addressed, as was the substance of the case, by (of course) John Welch shortly after the decision issued in May of 2011 — pulled that yummy concoction (one imagines) out of the microwave and laid it before us on a stiff wax-coated paper plate. Starved as we are for rich, IP-blawgy goodness, we reached for our heavy-duty plastic fork and knife and …
Ah, but first we must address the substantive crust of the matter before we bite into the hot, steaming mass and taste of the LIKELIHOOD OF CONFUSION analysis within. The better to let it cool off just a tad anyway, no?
It turns out that the opposer, Nestle, isn’t exactly quite the registrant of the trademark. It is a licensee of some foreign outfit that owns that piece of paper. Well, being a licensee is the same as being the real guy, right? Well, not necessarily. Certainly not necessarily in copyright… and also not in trademarks if you are before the TTAB. The Board noted that, even in the related District Court litigation, it had been recognized that, in a regular court, an “exclusive licensee of a trademark has the right to enforce the trademark” — but that this rule does not apply in the specialized context of a TTAB opposition proceeding:
We do not interpret the definition of “registrant” in Section 45 of the Trademark Act, 15 U.S.C. §1127, to include exclusive licensees to the extent that they may rely on Section 7(b) presumptions [of priority based on a first-use date in the trademark registration]. Licensees may enforce trademark rights, but must establish priority through evidence of use and may not rely on their licensor’s registrations.
That’s something to know and remember, right there! But before the inside of this hot sandwichy-type thing cools down too much, can’t we dig into the LIKELIHOOD OF CONFUSION (LOC) question?
Not so fast, hungry boy. Look, isn’t a Hot Pocket just, you know, a hot pocket? If it is, that’s a pretty weak trademark you have there! How can the opposer even oppose registration if it doesn’t even have a real trademark — i.e., a distinctive one?
Applicant argues that opposer’s mark, HOT POCKETS, is merely descriptive and the evidence of record is not sufficient to establish that it has acquired distinctiveness. . . .
Based on [a] survey in the first quarter of 2004 the HOT POCKETS brand commanded 96 percent brand awareness, meaning that when asked if a consumer had heard of the HOT POCKETS brand 96 percent responded yes. . . This evidence is sufficient to establish, at a minimum[,] that HOT POCKETS had acquired distinctiveness for frozen stuffed sandwiches by the first quarter of 2004, prior to applicant’s filing date.
Ninety-six percent? Yes, I’d agree — “at a minimum,” that’s distinctive, at least in the acquired sense, and that’s some rights you got there.
In view of the above, opposer has shown rights in the mark HOT POCKETS prior to applicant’s filing date and, thus, has established priority. We turn then to consider whether there is a likelihood of confusion.
My favorite part! Are you going to finish yours?