New Jersey Trademark Matters

If your business is not protecting any of these aspects of its business, then your business is leaving value not counted for and not calculated. We can perform a thorough trademark search to find potential confusing marks. The federal trademark registration process is fraught with pitfalls and mistakes can derail trademark protection under federal law.  If a trademark owner has a federal registration on the Principal Register, the trademark owner doesn’t need to prove its proprietary rights if involved in litigation in court or before the Trademark Trial and Appeal Board (“TTAB” or the “Board”). In other words, if you only have common law rights or a mark on the Supplemental Register, you will need to spend time and resources to first prove you have proprietary rights in the trademark before attempting to enforce your rights in an infringement action on the federal level or under a claim for likelihood of confusion of a similar mark at the Trademark Trial and Appeal Board. 

For an example of the complex process that is filing a trademark application, a refusal to register based upon a likelihood of confusion is difficult to overcome.  Receiving an Office Action that refuses your trademark application due to a 2(d) Likelihood of Confusion Refusal can be daunting. To effectively respond, it’s essential to grasp some key principles. If the marks are legally or virtually identical, a lesser degree of similarity between the goods or services will suffice to find a likelihood of confusion. Similarly, if the goods or services overlap or are identical, a lesser degree of similarity between the marks is necessary. Even if only one good or service overlaps, confusion is likely for the entire class. The Board presumes the same distribution channels and consumer classes for overlapping or identical goods and services. When the relatedness of goods and services is not obvious, additional evidence is required beyond mere coexistence. Examining Attorneys rely on the identifications in the application or registration to compare goods, services, and trade channels, and precise language is needed to restrict their scope.

Evidence of relatedness may include news articles, advertisements, or third-party registrations showing that the goods or services are marketed together. The subject application and cited registration can serve as evidence of relatedness. Whether additions or deletions to marks significantly change the commercial impression depends on whether the shared terms are descriptive or diluted. Lastly, evidence of similar third-party marks can demonstrate a mark’s weakness and justify narrow protection. Understanding these principles can help craft effective responses to likelihood of confusion refusals.

Verna Law, P.C. explains these issues to its clients.  

Is someone in New Jersey using your trademark?  Verna Law, P.C. can explain litigation to its clients.  To prove trademark infringement under the Lanham Act, a plaintiff must establish three key elements: a valid and legally protectable mark, ownership of the mark, and a likelihood of confusion. For registered marks, ownership is generally straightforward, while unregistered marks require proof of distinctiveness in the marketplace. Ownership can be shown through registration or by demonstrating common law rights via prior use in commerce. The likelihood of confusion is assessed through factors like similarity of marks, relatedness of goods/services, strength of the mark, evidence of actual confusion, marketing channels, defendant’s intent, and consumer care.

To prove use, the plaintiff must show the defendant used the mark in a way that violates the Lanham Act, impacting interstate commerce. Defenses against infringement claims include equitable defenses (laches, estoppel, unclean hands), fair use, and collateral use. Remedies for infringement can include injunctive relief, damages, attorney’s fees, and litigation costs. Notable legal standards and cases, such as the Polaroid factors and the A&H Sportswear, Inc. v. Victoria’s Secret Stores, Inc. case, highlight the complexities in assessing likelihood of confusion. Trademark infringement cases are typically heard in federal court, though state courts may handle cases involving unregistered or common law trademarks.

TTAB Decision on Concurrent Use Registration in New Jersey in Boi Na Braza LLC v. Terra Sul Corporation

The 2014 TTAB precedent involves concurrent use registration, allowing two unrelated trademark owners to coexist with legally identical trademarks in distinct geographic areas. Concurrent use decisions by the TTAB are rare and even fewer are precedential, making Boi Na Braza LLC v. Terra Sul Corporation, Concurrent Use No. 94002525 (March 26, 2014), particularly significant.

In 2002, Boi Na Braza Inc. (“Plaintiff”) registered two marks for the term BOI NA BRAZA (one word mark and one design mark) for restaurant services. Terra Sul Corporation (“Defendant”) petitioned to cancel the word mark for BOI NA BRAZA based on the priority of its mark BOI NA BRASA for restaurant services. The Board granted the cancellation petition. Subsequently, Plaintiff initiated a concurrent use proceeding for a geographically restricted registration.

Concurrent use proceedings are governed by Section 2(d) of the Trademark Act, 15 U.S.C. §1052. The issuance of concurrent registrations requires two conditions: (1) the parties must be entitled to concurrent use of the marks in commerce, and (2) there must be no likelihood of confusion, mistake, or deception as to the source of the goods or services in the marketplace. Additionally, the Plaintiff’s use must have commenced before the filing date of the Defendant’s trademark application.

The first requirement necessitates that one adopts the trademark in good faith, without knowledge of a prior user in another geographical area, and there must be a level of public recognition. The Plaintiff met this condition. The second requirement is the absence of a likelihood of confusion if a geographic restriction is applied to the registration. The Board examines how long the parties coexisted without actual confusion. Here, there had been 15 years of coexistence without confusion, favoring concurrent use. Furthermore, for restaurant services, confusion can often be avoided with geographic restrictions due to their localized nature.

The Board determined the geographic scope of each registration, following the rule that a prior user is entitled to trademark rights in the entire U.S. except in the area of actual use by the subsequent user if no likelihood of confusion exists. This presumption can be overcome if the prior user remains static while the subsequent user filed first for registration. Key factors considered include previous business activity, expansion or lack thereof, dominance of contiguous areas, planned expansion, and possible market penetration.

Ultimately, the Board granted nationwide rights to the Plaintiff, the first to file for registration and the party to expand, but the subsequent user of the trademark. The Defendant’s rights were geographically restricted to New York and New Jersey. The Defendant, first to use the mark but only in New Jersey, did not expand outside of New Jersey over 18 years. New York was included in the Defendant’s territory as it was within its zone of natural expansion.

Concurrent use registration proceedings are rare due to their expense and time consumption. It is practical to resolve such disputes during the Office Action phase of trademark prosecution by entering into a voluntary agreement to restrict use to certain geographic areas, which can be submitted to the Examining Attorney along with persuasive arguments to proceed with the application.