Establishing First Use of a Trademark Using Legal Equivalent

Whether or not one trademark is the legal equivalent of another or just similar can make a big different to a likelihood of confusion analysis or an acquired distinctiveness under 2(f) or secondary meaning claim in order to overcome an office action from the USPTO. Here are some examples from the USPTO Trademark Manual of Examining Procedure (TMEP) defines the words ‘tacking’ and the concept of ‘legal equivalent.’

TMEP 1212.04(b) “Same Mark”

A proposed mark is the “same mark” as a previously registered mark for the purpose of 37 C.F.R. §2.41(b) if it is the “legal equivalent” of such a mark. “A mark is the legal equivalent of another if it creates the same, continuing commercial impression such that the consumer would consider them both the same mark.” In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1347, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001); see also In re Brouwerij Bosteels, 96 USPQ2d 1414, 1423 (TTAB 2010) (finding three-dimensional product packaging trade dress mark is not the legal equivalent of a two-dimensional design logo); In re Nielsen Bus. Media, Inc., 93 USPQ2d 1545, 1547-48 (TTAB 2010) (finding THE BOLLYWOOD REPORTER is not the legal equivalent of the registered marks THE HOLLYWOOD REPORTER, THEHOLLYWOODREPORTER.COM, and THE HOLLYWOOD REPORTER STUDIO BLU-BOOK); In re Binion , 93 USPQ2d 1531, 1539 (TTAB 2009) (finding BINION and BINION’S are not the legal equivalents of the registered marks JACK BINION and JACK BINION’S); Bausch & Lomb Inc. v. Leupold & Stevens Inc., 6 USPQ2d 1475, 1477 (TTAB 1988) (“The words GOLDEN RING, while they are used to describe the device, are by no means identical to or substantially identical to the gold ring device trademark.”); In re Best Prods. Co., 231 USPQ 988, 989 n.6 (TTAB 1986) (“[W]e infer in the instant case that the differences between the marks BEST & Des. and BEST JEWELRY & Des., and between the identifications of services in their respective registrations, were deemed to be immaterial differences.”); In re Loew’s Theatres, Inc., 223 USPQ 513, 514 n.5 (TTAB 1984), aff’d, 769 F.2d 764, 226 USPQ 865 (Fed. Cir. 1985) (“We do not, however, agree with the Examining Attorney that a minor difference in the marks (i.e., here, merely that the mark of the existing registration is in plural form) is a proper basis for excluding any consideration of this evidence under the rule.”); In re Flex-O-Glass, Inc., 194 USPQ 203, 205-06 (TTAB 1977) (“[P]ersons exposed to applicant’s registered mark ... would, upon encountering [applicant’s yellow rectangle and red circle design] ..., be likely to accept it as the same mark or as an inconsequential modification or modernization thereof.... [A]pplicant may ‘tack on’ to its use of the mark in question, the use of the registered mark ... and therefore may properly rely upon its registration in support of its claim of distinctiveness herein.”).

See, e.g., Van Dyne-Crotty, Inc. v. Wear-Guard Corp., 926 F.2d 1156, 1159, 17 USPQ2d 1866, 1868 (Fed. Cir. 1991) regarding the concept of “tacking” with reference to prior use of a legally equivalent mark.

When an applicant is claiming §2(f) in part as to only a portion of its mark, then the previously registered mark must be the legal equivalent of the portion for which the applicant is claiming acquired distinctiveness. See TMEP §1212.02(f) regarding claims of acquired distinctiveness as to a portion of a mark.

More on Tacking

“Trademark Rule 2.41(b) provides that ownership of a registration of "the same mark" on the Principal Register may be accepted as prima facie evidence of acquired distinctiveness. In relying on this rule, an applicant is essentially seeking to tack the use of the registered mark to its use of the present mark for purposes of transferring distinctiveness to the new mark. See In re Flex-O-Glass, Inc., 194 USPQ 203 (TTAB 1977). Thus, the analysis used to determine whether applicant's present mark is "the same mark" as its previously registered mark, for purposes of the rule, is the analysis used in tacking cases, i.e., whether the marks are legal equivalents. See Van Dyne-Crotty, Inc. v. Wear-Guard Corp., 926 F.2d 1156, 17 USPQ2d 1866, 1868 (Fed. Cir. 1991). See also In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001) and In re Nielsen Business Media Inc., 93 USPQ2d 1545 (TTAB 2010). To meet the legal equivalents test, the marks must be indistinguishable from one another or create the same continuing commercial impression such that the consumer would consider both as the same mark. See Van Dyne-Crotty, Inc. v. Wear-Guard Corp., 17 USPQ2d at 1868; and In re Dial-A-Mattress Operating Corp., 57 USPQ2d at 1812. “(Emphasis added.  In RE Brouwerij Bosteels (TTAB 2010))

More Legal Equivalent Examples

Humble Oil & Refining Co. v Sekisui Chemical Co., 165 USPQ 596, 603 (TTAB 1970) (the marks S-LON and ESLON convey the same significance and would be recognized as the same marks); see also In re Cox Enterprises Inc., 82 USPQ2d 1040, 1043 (TTAB 2007) (THEATL is the compressed version of THE ATL they are equivalent in sound, meaning and impression); In re Planalytics Inc., 70 USPQ2d 1453, 1456 (TTAB 2004) ("gasbuyer" is the equivalent of "gas buyer"); (Ex parte Pocket Books, Inc., 91 USPQ 182, 183 (Pat. Off. Ex.-in Chief 1951) (in an application where original drawing displayed the mark as two words and the substitute drawing displayed the mark as one word, the presence or absence of the space was immaterial).

Same Continuing Commercial Impression

    “To establish its first use of CAPITAL CITY BANK through its use of CAPITAL CITY BANK GROUP, "[t]he previously used mark [CAPITAL CITY BANK GROUP] must be the legal equivalent of the mark in question [CAPITAL CITY BANK] or indistinguishable therefrom, and the consumer should consider both as the same mark." Van Dyne-Crotty, Inc. v. Wear-Guard Corp., 926 F.2d 1156, 17 USPQ2d 1866, 1868 (Fed. Cir. 1991). In other words, CAPITAL CITY BANK must create the same, continuing commercial impression as CAPITAL CITY BANK GROUP. Ilco Corp. v. Ideal Security Hardware Corp., 527 F.2d 1221, 188 USPQ 485, 487 (CCPA 1976). CAPITAL CITY BANK GROUP and CAPITAL CITY BANK engender the same continuing commercial impression. The word "group" means "1. any collection or assemblage of persons or things; aggregation: a group of protestors; a remarkable group of paintings. 2. a number of persons or things ranged or considered together as being related in some way."[fn42] The commercial impression engendered by CAPITAL CITY BANK GROUP is merely a collection of CAPITAL CITY BANKS. The word "Group" adds nothing to the origin-indicating significance of CAPITAL CITY BANK and, therefore, CAPITAL CITY BANK and CAPITAL CITY BANK GROUP are essentially the same marks. See American Security Bank v. American Security and Trust Co., 571 F.2d 564, 197 USPQ 65, 66-67 (CCPA 1978) (AMERICAN SECURITY is the legal equivalent to AMERICAN SECURITY BANK). In view of the foregoing, we find that applicant may rely on its use of CAPITAL CITY BANK GROUP to establish its priority date and that applicant has been using CAPITAL CITY BANK GROUP since 1975, the year CAPITAL CITY BANK GROUP was formed. “(Emphasis added. Citigroup Inc. v. Capital City Bank Group, 94 U.S.P.Q.2d 1645, (TTAB 2009)).

Questions of Similarity With Regards to Legal Equivalents are Questions of Law

 A determination by the [TTAB] Board that two marks are so confusingly similar that they constitute legal equivalents is a legal determination, and is not entitled to the same deference as a factual finding on review. Cf. Sweats Fashions, Inc. v. Pannill Knitting Co., Inc., 833 F.2d 1560, 1565, 4 USPQ2d 1793, 1797 (Fed. Cir. 1987) ("The uniform precedent of this court is that the issue of likelihood of confusion is one of law."); In re Bed & Breakfast Registry, 791 F.2d 157, 158, 229 USPQ 818, 818-19 (Fed. Cir. 1986) (likelihood of confusion, on appeal from the Board, is reviewed for correctness as a matter of law). Van Dyne-crotty, Inc. v. Wear-guard Corp., 926 F.2d 1156 (Fed. Cir. 1991).

“T[]he standard of legal equivalence used in re viewing efforts to "tack" the prior use of one mark onto that of another is higher than that used in evaluating two competing marks.(Citation omitted) The previously used mark must be the legal equivalent of the mark in question or indistinguishable therefrom, and the consumer should consider both as the same mark. Compania Insular Tabacalera v. Camacho Cigars, Inc., 167 USPQ 299, 303-04 (TTAB 1970). However, for the purposes of "tacking," even if the two marks are confusingly similar, they still may not be legal equivalents. Id. Instead, the marks must create "the same, continuing commercial impression," Ilco Corp. v. Ideal Security Hardware Corp., 527 F.2d 1221, 1224, 188 USPQ 485, 487 (CCPA 1976), and the later mark should not materially differ from or alter the character of the mark attempted to be "tacked." See 1 J. Gilson, Trademark Protection and Practice § 3.03[1] at 3-67-68 (1990) ("What may seem minor to the trademark owner modifying his mark may, from the standpoint of maintaining continuous priority rights, result in an entirely new mark with its own, and later, priority.").” (Paragraph from Van Dyne-crotty, Inc. v. Wear-guard Corp., 926 F.2d 1156 (Fed. Cir. 1991))

 

Please call Not Just Patents for Trademarks, Patents, and Cease and Desist communications at

1-651-500-7590 or email us at W@TMK.law.