Clients often ask me if they can avoid a U.S. Trademark Office refusal to register their brand names (“marks”) by using design or logo elements if it turns out that the words they’ve come up with aren’t available to use as marks. They hope that by adding these additional elements to the words in their marks, they can freely use and register them without risking an infringement claim by a third party or a U.S. Trademark Office refusal to register. Unfortunately, as the recent case discussed below highlights, what I call a trademark “makeover”—adding design elements to words to assure freedom to use and register—is not an option. The best path forward is to come up with a new mark.
First, some background on what we trademark folk call the “clearance search.” Once a client comes up with a mark it would like to use in the U.S., our standard practice is to conduct a quick online search of U.S. Trademark Office records and other sources such as Google to confirm there are no obstacles to use or registration. But the search doesn’t stop there, as the quick search may not uncover all relevant references—that is, those third-party marks that are confusingly similar phonetically or visually (even though they are not spelled the same way as the client’s proposed mark), and third-party marks that may not be the subject of a U.S. trademark application or registration. So we proceed to commission a “full search” that provides this information. When we review the results, we examine whether the client’s proposed mark poses any “likelihood of confusion” with any of the references uncovered in the search. In other words, are consumers likely to believe the client’s mark originates, is associated with, or is sponsored by the same source as the marks uncovered in the report? That depends upon whether the client’s mark and the ones uncovered by the search are confusingly similar (in sight, sound, or commercial impression) and cover the same or similar goods or services. If the search uncovers such third-party marks, we cannot clear the mark for use and registration. If the search doesn’t disclose any third-party marks, we can.
And now to return to the focus of my post: does a “trademark makeover” adding design elements help avoid the likelihood of confusion when the word elements of a mark are the same or similar? In the case in question, the applicant sought to register the mark on the left for “food preparation services featuring fresh, properly proportioned, healthy meal kits and made to order for delivery.” The problem? You guessed it—the DO FOOD mark, which had been registered by the U.S. Trademark Office for “prepared food kits composed of meat, poultry, fish, seafood, and/or vegetables and also including sauces or seasonings, ready for cooking and assembly as a meal.” A good clearance search (or even a preliminary quick search) would have readily disclosed the problem, and the applicant should have adopted another name.
The applicant unsuccessfully argued that the commercial impression of the registered mark was “do food” as in “they make or prepare food for me,” and that the applicant’s mark conveyed the applicant’s name, DooJin Kim. The U.S. Trademark Office Trademark Trial and Appeal Board (“TTAB”) was not persuaded that consumers were aware of the meaning of applicant’s mark, or reference to applicant’s name. And more to the point, the TTAB found that the words DOOFOOD and DO FOOD are the most prominent elements of the marks for purposes of analyzing whether consumers would be likely to be confused. Given the identical pronunciation and near-identical spelling of the words in the respective marks and the highly-related nature of parties’ food preparation/delivery services, the TTAB found that applicant could not register its mark.
The lesson: before investing time or money in a mark, have an attorney conduct and commission a good trademark search. If the mark is unavailable, move on; don’t try to do a trademark “makeover” by adding design elements. Picking another mark and having it cleared will ensure that you can proceed without risk of a third-party claim of infringement or a Trademark Office refusal to register your mark.
If you have any questions about this issue, or about trademark, copyright, or trade dress issues generally, please feel free to contact me at firstname.lastname@example.org.