Arbitrary / Fanciful & Registered Trademarks Likely To Be Protected By Courts

When branding your company and product, always remember that a strong trademark, one that is arbitrary or fanciful, is more likely to be protected by the courts.  Of course, registering your marks with the USPTO also provides considerable advantages as illustrated in the J&B case analyzed below.

J&B Wholesale Distributing, Inc., a Minnesota corporation, Plaintiff, v. ReduxBeverages, LLC, Redux Inc., Redux, LLC, and James Kirby. Defendants.Civil No. 07-4570, UNITED STATES DISTRICT COURT FOR THE DISTRICT OF MINNESOTA, 2007 U.S. Dist. LEXIS 93586,  (December 20, 2007).

Ownership/Validity of the Trademarks: J&B has submitted documentation that it has obtained federal and state registrations for the marks No Name(R) and No Name Steaks(R). Under the Lanham Act, registration constitutes prima facie evidence of ownership and validity. 15 U.S.C. § 1057(b). Redux does not appear to challenge this element of the infringement  claim. Accordingly, J&B has met its burden of demonstrating that the marks are entitled to protection.

A. Strength of the Mark:

"Generally, the strength of the mark depends on two factors - the distinctiveness of the mark and the extent to which the mark is recognized by the relevant consumer class." Aveda Corp. v. Evita Mktg, Inc., 706 F. Supp. 1419, 1428 (D. Minn. 1989). The distinctiveness of a mark is determined by whether the mark is generic, descriptive, suggestive or arbitrary/fanciful. Frosty Treats, Inc. v. Sony Computer Entm't Am., Inc., 426 F.3d 1001, 1004 (8th Cir. 2005). An arbitrary mark is one that bears no relation to the product. Deltona Transformer Corp. v. Wal-Mart Stores, Inc., 115 F. Supp. 2d 1361, 1366 (M.D. Fla. 2000). Such marks are entitled to protection whether or not they have acquired secondary meaning. Frosty Treats, 426 F.3d at 1005. J&B asserts that its marks are arbitrary, as they bear no relation to the product. J&B further asserts that the marks have also acquired a significant degree of recognition in the marketplace, resulting in a mark that is strong and entitled to protection.

J&B asserts that its marks are arbitrary, as they bear no relation to the product. J&B further asserts that the marks have also acquired a significant degree of recognition in the marketplace, resulting in a mark that is strong and entitled to protection.

Redux argues that "No Name" suggests three subtle connotations: that the products are sold without a brand name; they are inexpensive and affordable and they  come from humble beginnings. Thus, Redux argues, the mark is suggestive and should not be afforded much protection.

The Court disagrees. J&B has demonstrated that it uses "No Name" to sell high quality meat and other food products, and that its brand name is "No Name." Furthermore, standing alone, "No Name" does not bear any relation to the product - that is it does not tell the consumer anything about the product. The Court thus finds that "No Name" is an arbitrary mark that is entitled to protection.

c. Degree of Competition

Redux argues this factor weighs in its favor because its product does not directly compete with J&B's product. Redux asserts there can only be a likelihood of confusion if the products are sufficiently closely related that consumers are likely to think that the products come from the same source. Products are sufficiently close if they complement one another, such as pancake mix and pancake syrup. Aunt Jemima Mills Co. v. Rigney & Co. 247 F. 407 (2nd Cir. 1917). On the other hand, if the products are not closely related, there is no competitive proximity and confusion is less likely. Davis v. Walt Disney Co., 430 F.3d at 904. In this case, Redux asserts that products are not closely related, they are not sold in the same stores and they do not complement each other. In addition, the products are targeted to different consumers. A showing of direct competition is not required for a finding of likelihood of confusion. Kemp v. Bumble Bee Seafoods, Inc., 398 F.3d 1049, 1056 (8th Cir. 2005). "Where products are wholly unrelated, this factor weighs against a finding that confusion is likely. Where products are related, however, it is reasonable for consumers to think that the products come from the same source, and confusion therefore, is more likely." Id. (citation omitted).

Courts have found that food and drink products may be closely related for purposes of determining likelihood of confusion. See eg. Frank Brunckhorst Co. v. G. Heileman Brewing Co., Inc., 875 F. Supp. 966, 979 (E.D.N.Y 1994). In assessing this factor, the court should consider "the extent to which the products differ in content, geographic distribution, market position and audience appeal." Id. In this case, the record shows that the geographic distribution of the parties' products overlap. While J&B sells a food product, and Redux an energy drink, "it constitutes no great stretch of the imagination for consumers" to reasonably believe that J&B decided to launch an energy drink in addition to its meat products, as companies frequently cross product lines. Id. As for methods of distribution, both J&B and Redux offer their products online. While Redux has not sold its product in grocery stores to date, other energy drinks are sold in grocery stores, and it is likely  that consumers who shop in grocery stores will also shop in convenience stores. See eg. Deltona Transformer Corp, 115 F. Supp. 2d at 1369 (finding those who shop at plaintiff speciality retail shops also shop at Wal-Mart). Based on the similarity of the channels through which the product is sold, and the fact that a consumer could reasonably believe J&B had launched into the energy drink market, the Court finds this factor weighs if favor of finding a likelihood of confusion.

d. Intent to Confuse
Intent to confuse is not an element of trademark infringement, but evidence of an intent "on the part of the
alleged infringer to pass off its goods as the prod uct of another raises an inference of likelihood of confusion." SquirtCo v. Seven-Up Co., 628 F.2d 1086, 1091 (8th Cir. 1980). J&B asserts that Redux had constructive notice of J&B's marks, as J&B has obtained federal registration of the marks. 15 U.S.C. § 1072. J&B thus asserts it is entitled to the benefit of such notice. In addition, J&B asserts that Redux has acted in bad faith with respect to this litigation, and that such bad faith should weigh in favor of an intent to confuse. Redux responds that there is no evidence that it intended to cause confusion by adopting the "No Name" mark. Redux did a trademark search  prior to adopting the mark, and the numerous records that revealed the use of "No Name" weighs against a finding of intent to confuse. The Court finds that based on the record currently before it, this factor does not weigh in favor of either party.

e. Degree of Consumer Care
Consumers tend to exercise less care when purchasing lower costs items, making confusion more likely. E & J Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1293 (9th Cir. 1992). With respect to food products, courts have found that consumers generally leave their sophistication at home. Brunckhorst, 875 F. Supp. at 983 (citation omitted). As the products at issue in this case are food and drink products, that are purchased at a relatively low price, this factor weighs in favor of a finding of likelihood of confusion.

f. Actual Confusion
As Redux only recently started using the No Name(R) mark, lack of actual confusion is not to be given significant weight. See MSP Corp. v. Westech Instruments, Inc., 500 F. Supp.2d 1198, 1211 (D. Minn. 2007) (citing Advantus Capital Mgmt, Inc. v. Aetna, Inc., No. 06-CV-2855 (JMR/FLN), 2006 U.S. Dist. LEXIS 77448, 2006 WL 2916840, at *5 (D. Minn. Oct. 11, 2006) ("The test for infringement lies in the likelihood [*16] of confusion, not actual confusion; therefore, plaintiffs are not required to prove any instances of actual confusion. The absence of demonstrated confusion, especially when plaintiff has prudently attempted to forestall it, does not weigh for or against either party on the issue of confusion."). As the factors discussed above weigh in favor of a finding of likelihood of confusion, the Court concludes that J&B has demonstrated a likelihood of success on the merits of its trademark infringement claim.

5. It is further ordered that the party acting as Registrar of the following domain names shall immediately suspend them from further use: www.drinkcocaine.com, www.drinkcocaineshop.com, www.drinknoname.com, and www.drinknonameshop.com.

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[Trademark brand]

While a trademark can be either generic, descriptive, suggestive, or arbitrary/fanciful, life is easier as a trademark holder and a trademark attorney when the trademark is suggestive or arbitrary/fanciful. The courts have provided the guidance needed to choose a trademark and brand that will be suggestive or arbitrary/fanciful, and therefore distinctive and entitled to greater protection. While descriptive marks can be protected, the trademark holder must prove secondary meaning. When choosing a trademark, remember that protecting it down the line depends upon its classification. As such, a trademark attorney can help select a suggestive or arbitrary trademark and advise you if you are considering a descriptive, or even worse, generic trademark.