[gnso-rpm-wg] Text/design marks

[Rebecca Tushnet]

Let me try my question about different kinds of word marks again by
asking a couple of people who participated in the chat if they could
elaborate.



Martin Silva mentioned “mixed marks” in the civil law countries, “text
marks that are represented in an specific figurative way (form+color)
and are only protected in those designs.”  Do you have any particular
countries in mind? That sounds like an important concept for this
discussion.



John McElwaine said: “Many countries apparently require ‘a depiction’
of the mark with no distinction between text, stylization or included
designs.”  Do you have specific countries in mind?  I think that could
offer useful information to figure out what distinctions are or aren’t
available.



Sorry if I missed others, especially in the audio portion—the
transcript isn’t up yet.



Michael R Graham asked me in the chat: Please provide cases supporting
"weaker" protection statement for stylized word registered marks.



As I said on the call, there’s a distinction between protection and
infringement.  Koke infringes Coke for soft drinks, but Koke isn’t a
“protected” mark of Coca-Cola’s.  Unless the TMCH is supposed to
expand coverage of marks beyond what’s registered or validated by a
court, the fact that a stylized mark might (or might not) be infringed
by a use that doesn’t have the same stylization isn’t relevant.  I
agree with Greg Shatan that “strength” of the mark isn’t relevant to
what goes into the TMCH, but precisely because that’s true we should
be particularly careful to ensure that marks that are only valid
because of elements that can’t go into the TMCH—that is, stylization
or design elements—can’t have their textual portions in the TMCH.



For US jurisprudence on the limited scope of stylized marks v.
standard character marks:

Kelly–Brown v. Winfrey, 95 F.Supp.3d 350, (S.D.N.Y. 2015) (dealing
with special form mark whose words were unprotectable absent
stylization), aff’d, Kelly–Brown v. Winfrey, 659 Fed.Appx. 55 (2d.
Cir. 2016); Time, Inc. v. Petersen Pub. Co., LLC, 173 F.3d 113, 118-19
(“[T]he law of trademark accords stronger protection to the stylized
version of certain words used as trademarks than to those words
themselves ….[T]rademark rights in the stylized appearance of a word
are distinct from trademark rights in the word itself”) (2d Cir.1999);
Gruner + Jahr USA Publ'g Div. of Gruner + Jahr Printing & Publ'g Co.
v. Meredith Corp., 991 F.2d 1072, 1077–78 (2d Cir. 1993) (observing,
for purposes of a likelihood of confusion analysis, that “the district
court ... properly distinguished between the strength of the
[composite] trademark PARENTS [consisting of those words rendered in a
particular visual style] and the weak, descriptive nature of what it
called the ‘mere word ‘parents,’ ' ”); King of the Mountain Sports,
Inc. v. Chrysler Corp., 185 F.3d 1084, 1090–91 (10th Cir.1999)
(holding that two differently stylized marks using the same two words
were not similar); Neopost Industrie B.V. v. PFE Intern., Inc., 403
F.Supp.2d 669 (N.D. Ill. 2005) (registration of stylized mark didn’t
extend protection to nonstylized uses); Federation Internationale De
Football Ass'n v. Nike, Inc., 285 F.Supp.2d 64, 72-73 (D.D.C. 2003)
(“[E]ven after a descriptive term has become distinct, its power to
preclude other uses of closely related descriptive terms is diminished
where the senior owner has used its mark only in a particular,
stylized way. For even if that overall stylized mark is strong, the
trademark value of the words themselves may be quite weak.”); see also
In re K-T Zoe Furniture, Inc., 16 F.3d 390 (Fed. Cir. 1994) (stylized
form was registrable, but words alone were descriptive and
unregistrable); Igloo Products Corp. v. Brantex, Inc., 202 F.3d 814
(5th Cir. 2000) (registration of composite mark didn’t provide
presumption of validity for words alone); In re Box Solutions Corp.,
79 U.S.P.Q.2d 1953 (TTAB 2006) (finding no likelihood of confusion
between two stylized marks despite identical goods and overlap in
words BOX and BOX SOLUTIONS).



Rebecca Tushnet
Georgetown Law
703 593 6759