Common Questions – Benefits of Trademark Searching

Searching for potentially competing trademarks before you go through the time and expense of developing a strong brand is a very worthwhile exercise, but it costs money – and sometimes clients can be reluctant to spend the money if it’s not technically “required” to do so.

Trademark searching is not required before you file an application for federal trademark registration with the U.S. Patent & Trademark Office (USPTO), but it is highly recommended. Here are a few reasons why:

1) The USPTO’s filing fees are non-refundable if an Examining Attorney refuses registration of your mark based on a pre-existing application or a registration owned by another;

2) The owner of the pre-existing mark could send you a cease and desist letter demanding that you stop using their mark, change your mark, perhaps destroy products or advertising material that uses the mark, seek disgorgement of profits for earnings using their mark or seek other remedies; and

3) The whole point of developing a valuable trademark (or service mark) is to create “source identification” – basically, to allow the consuming public to associate your unique mark with you. And only you. This value is undermined if there are lots of marks that are very similar to the one you ultimately adopt and use.

There are different levels of searching that can be beneficial – depending on your circumstances. They include:

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Yankees Successfully Oppose Registration of “BASEBALLS EVIL EMPIRE” Trademark

On February 8, 2013, the Trademark Trial & Appeal Board (“TTAB”) sustained the opposition filed by the New York Yankees Partnership (“Yankees”) against the registration of “BASEBALLS EVIL EMPIRE” filed by Evil Enterprises, Inc., on likelihood of confusion grounds and on the ground that the mark falsely suggests a connection with the Yankees baseball team.  New York Yankees Partnership v. Evil Enterprises, Inc., Opp. No. 91192764 at 25 (TTAB Feb. 8, 2013) (non-precedential).  The Yankees did not succeed on its claim that the mark would be disparaging.  Id.

Evil Enterprises (the “Applicant”) filed its application for registration of the mark BASEBALLS EVIL EMPIRE in connection with clothing (Class 25) on July 7, 2008, alleging a future intent to use the mark in commerce.  On its website, Applicant indicated that the goods would be directed to consumers who were looking for Yankees-related merchandise:  “If you are passionate about the New York Yankees then you have come to the right place.”  Id. at 5.

Record evidence also indicated that the Yankees had come to be known as the “evil empire” over the years, and even played the “ominous music from the soundtrack of the STAR WARS movies at baseball games.”  Id. at 5, 12.  Since being coined by a rival baseball club to refer to the Yankees, the “term EVIL EMPIRE has . . . been taken up by the media, Yankees’ fans, and detractors as a reference to the Yankees.” Id. at 5.

It was because of this implicit adoption of the phrase by the Yankees that the portion of its opposition alleging disparagement was denied.  Id. at 25.

In connection with the claims of likelihood of confusion under § 2(d) and false suggestion of a connection between the applicant’s goods and the Yankees under § 2(a), however, the Yankees’ opposition succeeded.

Likelihood of Confusion (§ 2(d))

In its opposition, the Yankees alleged that the applicant’s mark so resembled the mark “EVIL EMPIRE which has come to be associated with opposer [the Yankees] as to be likely to cause confusion.”  Id. at 8.  The court based its analysis on the du Pont factors, noting that not all of them would be relevant in every case, “and only factors of significance to the particular mark need be considered.”  Id. (citing In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973).

The Yankees, as the Opposer, bore the burden to introduce sufficient facts to allow the fact finder to conclude that confusion, mistake or deception was likely. 9 (citations omitted).  Notably, however, the Yankees were not required to actually use the mark in commerce in order to establish their rights to the mark.  All that was required was that the public associate that mark with their goods and services.  Id.  “[T]he public’s adoption of [the mark] to refer to [opposer] is enough to establish trade name and service mark use.”  Id. (quoting Martahus v. Video Duplication Servs., Inc., 3 F.3d 417, 27 U.S.P.Q.2d 1846, 1845 n.9 (Fed. Cir. 1993)).

In support of their position, the Yankees introduced hundreds of news articles, stories and blog entries, as well as admissions by applicant showing that the phase “Evil Empire” had come to be known by the public to refer to the Yankees Ball Club. 11.  Applicant even included the following sales pitch on its web site:  “Baseballs Evil Empire takes pride in our merchandise and our great task of alerting all baseball fans and the like to send the message out loud that the Yankees are Baseballs Evil Empire.”  Id. at 12.

The court went on to analyze whether the mark had become famous, the level of similarity between the goods, channels of trade and classes of consumers, as well as that of the marks themselves as to “appearance, sound, connotation and commercial impression” and the remaining duPont factors.  Id. at 17.

Notwithstanding the many duPont factors weighing heavily against its position, the applicant also argued that its use of the mark was a “spoof and parody of the New York Yankees baseball club, and thus no likelihood of confusion can be established . .  .,” an argument that the court rejected when it held that “[p]arody . . . is not a defense to opposition if the marks are otherwise confusingly similar, as they are here.”  Id. at 20 (citations omitted).  The court found that a likelihood of confusion had been shown.

False Association (§ 2(a))

To establish a claim of falsely suggesting a connection between the mark and the opposer, the opposer must prove “(1) that the applicant’s mark is the same or a close approximation of opposer’s previously used name or identity; (2) that applicant’s mark would be recognized as such by purchasers, in that the mark points uniquely and unmistakably to opposer; (3) that opposer is not connected with the goods that are sold or will be sold by applicant under its mark; and (4) that opposer’s name or identity is of sufficient fame or reputation that when applicant’s mark is used on its goods, a connection with opposer would be presumed.”  Id. at 20-21 (citations omitted).  Considering all of the evidence previously discussed in the opinion, the court concluded that the Yankees demonstrated that the mark falsely suggests a connection with the Yankees.


As mentioned above, the court concluded that there was a likelihood of confusion, that the mark falsely suggested a connection with the Yankees, and that the disparagement claim could not stand.  As a result, the court sustained the opposition on two of the three grounds, and registration was refused.

For more information about this decision, the following links may be of interest:

John L. Welch, “Yankees Win!  TTAB Sustains Opposition to BASEBALLS EVIL EMPIRE on Confusion and False Association Grounds,” TTABlog, Feb. 21, 2013.

Joan Schear, “TTAB Rules NY Yankees Baseball’s Only “Evil Empire,”” Boston College Legal Eagle Blog, Mar. 22, 2013.

Webinar Scheduled for February 12, 2013

Please join me for a webinar to be broadcast live by Thomson Reuters on February 12, 2013, entitled “Brand Protection: Ten Tips to Managing Trademark Rights Effectively.”  In this webinar, I will be joined by two of my colleagues, Christina N. Scelsi (Scelsi Entertainment and New Media Law, PL, Port Charlotte, FL) and Sharra Brockman (Verv, Pittsburgh, PA).

Our panel will address protecting trademark rights from conception to renewal and beyond, provide audience members with a basic grounding in trademark rights in the U.S. We will discuss areas where strategic thinking and planning ahead are beneficial, and give audience members some pointers in protecting their brand portfolios. This session will include a discussion of some recent opinions from the Trademark Trial and Appeal Board to provide some examples of common pitfalls.

Our panel will address the following topics:

1. Picking a Good Brand Name
2. Pre-Application Clearance Searches
3. Benefits of Federal Registration
4. Use and Bona Fide Intent to Use
5. Corrections to a Federal Application/Registration
6. Coping with Initial Refusals
7. Continued Consistent Use
8. Abandonment
9. Proper Use of a Trademark
10. Policing for Infringement/Enforcement

I hope you can join us.  If you are interested in joining us, please register through Thomson Reuters’ official site:   

Rosetta Stone and Google Announce Settlement of Trademark Infringement Suit

On Oct. 31, 2012, Rosetta Stone and Google announced their decision to settle their trademark infringement case relating to the sale and use of AdWords in Google’s search engine results. Rosetta Stone’s 10/31/12 Press Release.  The companies have agreed to work together to “combat online ads for counterfeit goods and prevent the misuse and abuse of trademarks on the Internet.” Id. The companies hope that by working together, they can “improve detection methods, and better protect from abuse brands like Rosetta Stone, advertising platforms like Google AdWords, and ultimately consumers on the Internet.” Id.

As a consequence of the settlement, the lawsuit Rosetta Stone Ltd. v. Google, Inc., Civ. A. No. 1:09-cv-00736-GBL-TCB (filed July 10, 2009) has been dismissed. Doc # 238 (Oct. 31, 2012) (Order and Stipulation to Dismiss), available on Justia. The complaint originally alleged claims of direct trademark infringement (15 U.S.C. § 1114(1)(a)); contributory trademark infringement; vicarious trademark infringement; trademark dilution (15 U.S.C. § 1125(c)(1)); and unjust enrichment.

Related Information

Recent E.D. Pa. Case: No “Likelihood of Confusion” from Competitor’s Marks in AdWords

In CollegeSource, Inc. v. AcademyOne, Inc., Civ. A. No. 2:10-cv-03542 (MAM), slip op. (E.D. Pa. Oct. 25, 2012), the U.S. District Court for the Eastern District of Pennsylvania analyzed a claim of trademark infringement based on the purchase and use of a competitor’s trademarks in AdWords to increase search engine results. (The case dealt with other issues such as contract formation under Pennsylvania law, trademark cancellation due to fraud on the PTO, false advertising, violation of the Computer Fraud and Abuse Act, and others. This blog post will focus solely on the AdWords issue.)

The court ultimately concluded that in an environment of increasingly sophisticated Internet advertising, a claim of trademark infringement based on the use of a competitor’s marks in sponsored links fails, when those marks do not appear in the actual advertisement and when the advertisements are set off in a separate section of the search results (under the heading “Sponsored Links,” set off with a different color than the rest of the search engine results). In these cases, modern Internet users are unlikely to be confused by this type of use.

In order to prove trademark infringement and unfair competition under the Lanham Act, plaintiffs must demonstrate that they own the mark in question, that the mark is valid and legally protectable, and that the defendant’s use of its own mark is likely to create confusion. Id. at 39 (citing Checkpoint Systems, Inc. v. Check Point Software Tech., Inc., 269 F.3d 270, 279 (3d Cir. 2001)). In the CollegeSource case, the defendant did not dispute the ownership of the mark or its validity, but instead challenged whether its mark was likely to create confusion.

The Lapp Factors

In the Third Circuit, the likelihood of confusion analysis is governed by Interpace Corp. v. Lapp, Inc., 721 F.2d 460, 463 (3d Cir. 1983) – the so-called “Lapp Factors.” These factors are: 

(1) the degree of similarity between the owner’s mark and the alleged infringing mark;
(2) the strength of the owner’s mark;
(3) the price of the goods and other factors indicative of the care and attention expected of consumers when making a purchase;
(4) the length of time the defendant has used the mark without evidence of actual confusion arising;
(5) the intent of the defendant in adopting the mark;
(6) the evidence of actual confusion;
(7) whether the goods, though not competing, are marketed through the same channels of trade and advertised through the same media;
(8) the extent to which the targets of the parties’ sales efforts are the same;
(9) the relationship of the goods in the minds of consumers because of the similarity of function; and
(10) other facts suggesting that the consuming public might expect the prior owner to manufacture a product in the defendant’s market, or that he is likely to expand into that market.

Id. at 463. Originally adapted from Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir. 1961), these factors were applied in the Lapp case for the very limited purpose of considering likelihood of confusion where the products did not directly compete. Id. at 462-63; see also A&H Sportswear, Inc. v. Victoria’s Secret Stores, Inc., 237 F.3d 198, 206 (3d Cir. 2000) (“In Interpace Corp. v. Lapp, Inc., 721 F.2d 460, 463 (3d Cir. 1983), this Court established a ten-factor test (the ‘Lapp’ test) to determine the likelihood of confusion for direct confusion claims between goods that do not directly compete in the same market, but we have never decided what factors should be considered in the case of directly competing goods.”). 

In a later opinion, the Third Circuit applied these factors more broadly, including in cases where the goods competed in the same channels of trade. A&H Sportswear, 237 F.3d at 207 (“Though a court need not look beyond the marks when goods are directly competing and the marks virtually identical, we conclude that the factors we have developed in the noncompeting goods context are helpful tools and should be used to aid in the determination of the likelihood of confusion in other cases.”). The Third Circuit made clear, however, that the “ten-factor Lapp test [was developed] only as a guide” and the Lanham Act does not require that each of the ten factors must be evaluated in every case. Id.

Application of the Lapp Factors to Use of Competitor’s Trademarks as AdWords
In the CollegeSource case, the court relied on a Ninth Circuit opinion that identified the “key” factors to consider in cases where the goods directly compete and where a competitor’s trademarks were purchased as AdWords to generate search engine hits. Id. at 40 (discussing Network Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137, 1154 (9th Cir. 2011). Specifically, the Network Automation case held that in the context of AdWords cases, four of these factors were most relevant: “[1] strength of the mark, [2] evidence of actual confusion, [3] types of goods and degrees of care likely to be exercised by the typical purchaser, and [4] the labeling and appearance of the advertisements.” Network Automation, 638 F.3d at 1154.

The CollegeSource court agreed with this conclusion, and focused primarily on these four factors in determining whether the defendant’s use of the mark was likely to confuse. CollegeSource, No. 2:10-cv-03542, slip op. at 41. With respect to the first two factors, the CollegeSource court concluded: 1) the plaintiff’s mark (COLLEGESOURCE) was suggestive and commercially strong; and 2) plaintiff failed to provide significant evidence of actual confusion. Id. at 40-43. The court addressed the last two factors in reverse order, but these two provided the crux of the court’s analysis.

With respect to factor 4 (labeling and appearance of the advertisements), the court focused on the placement of ads in search engine results, noting that these ads are generally partitioned under a section of “sponsored links” and appeared separately from regular search results, sometimes in shaded boxes. Id. at 43-44. The plaintiff’s mark did not appear in the language of the advertisement. In this context, the court concluded that the offset of sponsored ads decreased the likelihood of confusion. Id.
With respect to factor 3 (types of goods and degrees of care exercised by typical purchasers), the court considered “whether an ordinary consumer seeking college transfer information via the Internet is expected to exercise diligence in his research.” Id. at 44-45. The court concluded that Internet users are exercising increasing care as the “novelty of the Internet evaporates and online commerce becomes commonplace.” Id. at 45. “Modern Internet users ‘are accustomed to such exploration by trial and error.'” Id. This increasing level of experience with search sites (i.e., the increasing sophistication of the targeted consumer) decreases the likelihood of confusion with respect to Internet advertisements like these. Id.

The Court continued to evaluate the remaining Lapp factors, finding that there was no evidence of an intent to confuse, that the Internet is not an obscure marketing channel, and that AdWords are an increasingly prolific form of advertising. Id. at 46-49. The Court ultimately concluded that plaintiff failed to introduce sufficient evidence to demonstrate a likelihood of confusion; the Court then granted defendant’s motion for summary judgment on the trademark infringement claim.