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socrateaser
socrateaser, Lawyer
Category: Intellectual Property Law
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Hi, We filed a trademark for Neck Tie Koozies and during

Resolved Question:

Hi,

We filed a trademark for Neck Tie Koozies and during the opposition window the company Norwood filed an opposition to the word "Koozie". Which Norwood claimed they had a trademark on "Koozie". Norwood does in fact have a trademark for "Koozie" despite our beliefs and those of many others that Koozie is a generic term and it was issued in error by the USPTO.

We then filed a trademark for Neck Tie Koolies, and the USPTO said "Koolies" is a generic term which we could not make any claim to just the word "Koolies" by itself but instead as a whole. We were fine with making no claim to "Koolies" outside of Neck Tie Koolies. We then sent the USPTO our revised trademark claim and were awarded Neck Tie Koolies. The opposition window started and Norwood again filed an opposition against "koolie"

Given that the USPTO told us it was a generic term we couldn't trademark it seems as though Norwood has no claim on it as well. I feel as though all we need to do is reference and send the letter the USPTO sent us about Koolie being generic and case closed?

How do we go about doing so and making our case that Koolie is too generic for them to fight our full trademark Neck Tie Koolie?

Thanks
Michael
Submitted: 1 year ago.
Category: Intellectual Property Law
Expert:  socrateaser replied 1 year ago.
Hello,

Norwood's objection presumably is that the term "koolie" is so close to the term "koozie" that when combined with the use as an insulation device, the ordinary consumer may be confused as to the source or affiliation of the product.

If that's the objection, then you may need to conduct a statistical market survey to determine whether or not the ordinary consumer actually does see an association when confronted with the two different terms, and then use that survey as proof that there is no actual or likely confusion. See, e.g., this link.

If that's not the objection, then you will need to clarify, so that I can comment further.

Hope this helps.
socrateaser, Lawyer
Satisfied Customers: 34856
Experience: Retired (mostly)
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Customer: replied 1 year ago.

Norwood's objection filed with the USPTO is pretty lengthy and broad. However at the very end there is a specific area that makes claims to your question:


 


Defendant’s application appears to be an obvious attempt to extort the goodwill


established by Plaintiff and/or an attempt to trick the consuming public into believing that its

goods are the same as or sponsored by Plaintiff.

30. As such, the registration of Defendant’s NECK TIE KOOLIES Application is likely to cause confusion, mistake and/or deception among consumers as to the source of each

party’s services in violation of 15 U.S.C.§1052(d).

31. Additionally, registration of Defendant’s NECK TIE KOOLIES Application will

cause consumers to infer the existence of an affiliation, connection or association between the parties when none exists. Accordingly, Plaintiff respectfully XXXXX XXXXX this Opposition be sustained and that

Defendant’s NECK TIE KOOLIES Application


 


The ridiculous thing is the actual product is called a koozie by several major website, dozens of other start ups, and most people. I bet if you asked 1000 people what company makes koozies they wouldn't have a specific answer just the fact you can buy them at various locations. We never even heard of these people until we received a letter.


 


It seems it would be a long costly battle to use "koozie" but is there any merit to the fact that the USPTO already said "Koolies" is generic and couldn't be claimed, and only issued us the trademark when using the entire phrase? Seems if its generic and anyone can use it then we should be fine in doing so?

Expert:  socrateaser replied 1 year ago.
In Basel Action Network v. International Ass'n of Electronics Recyclers, 793 F.Supp.2d 1200 (USDC WD WA 2011), the U.S. District Court for the Western District of Washington writes:

  • In most circumstances, no one can assert a confusion-of-origin claim arising from a competitor's use of a generic term. This is implicit in the legal meaning of "generic," because generic terms are by definition those which designate a class of products rather than the source of a specific product. See supra Part III. A; see also Liquid Controls Corp. v. Liquid Control Corp., 802 F.2d 934, 936 (7th Cir.1986) ("Unlike a trademark, which identifies the source of a product, a generic term merely specifies the genus of which the particular product is the species."). Where confusion arises solely from the use of a generic term, courts have found that confusion to be beyond the scope of the Lanham Act. E.g., Liquid Controls, 802 F.2d at 940 (affirming summary judgment where court did "not believe that plaintiff ha[d] alleged or shown evidence of confusion resulting from anything other than the similarity of [generic] names"); Blinded Veterans Ass'n v. Blinded Am. Veterans Found., 872 F.2d 1035, 1043 (D.C.Cir.1989) ("If the name of one manufacturer's product is generic, a competitor's use of that name, without more, does not give rise to an unfair competition claim under section 43(a) of the Lanham Act.").

  • On the other hand, several courts have recognized an unfair competition claim where confusion arises from something more than the use of a generic term. For example, in Genesee Brewing Co., Inc. v. Stroh Brewing Co., 124 F.3d 137, 146 (2d Cir.1997), the court found the term "honey brown" was a generic term when used to describe a class of beers. The court thus found that the plaintiff, who made "JW Dundee's Honey Brown Lager" had no trademark infringement claim against the defendant, who marketed "Red River Valley Honey Brown Ale." Id. at 149 (affirming denial of preliminary injunction). But the court noted that the defendant still could have engaged in unfair competition. Id. It considered the plaintiff's allegations that the defendant "market[ed] its beer in such a way as to lead consumers to believe they are getting [plaintiff]'s product," and had issued coupons designed to confuse customers as to the source of its beer. Id. at 150-51. Similarly, in one of the landmarks of the light/lite beer feud of the 1970s, the Seventh Circuit held that while the Miller Brewing Company's use of "Lite" to designate its light beer was generic, [1206] Miller could nonetheless state a claim for unfair competition against another light beer producer if it could allege confusion arising from something other than the use of the term "light." Miller Brewing Co. v. Jos. Schlitz Brewing Co., 605 F.2d 990, 997-98 (7th Cir.1979) (discussing confusion arising from coloring and styling of labels, "advertising calculated to lead to confusion," or "any cause except [defendant's] use of the word light in [its] product name"); see also Murphy Door Bed Co. v. Interior Sleep Sys., Inc., 874 F.2d 95, 102 (2d Cir.1989) (holding that term "Murphy bed" was generic, but competitor engaged in unfair competition "by passing off products of his own manufacture as [plaintiff] Murphy Co.['s] products.").5

As can be seen from the discussion, the question is whether or not there is a reasonable likelihood of actual confusion -- not whether one name is XXXXX XXXXX the other is not. Your position is valid -- the name "Koolie" is beyond the scope of trademark infringement. But, this won't stop the plaintiff from suing you for actual confusion under an unfair competition theory. So, you could win this battle, but ultimately lose the war. Regardless, you have a far better case this time than you did the first time.

Hope this helps.
socrateaser, Lawyer
Satisfied Customers: 34856
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