By Callie L. Pioli
In 2015 the U.S. Patent & Trademark Office (“USPTO”) received hundreds of thousands of trademark applications. While the USPTO did not face a scary number of cases in the candy and sweets industry, the ones that did appear addressed some very creative issues. As we prepare for this year’s Halloween and brace ourselves for the accompanying sugar-highs, we took a moment to trick-or-treat for the sweetest trademark cases of the year.
The Japanese mega-brand Lawson filed with the USPTO to extend trademark protection covering its Uchi Café Sweets product line, currently registered in Japan. Lawson is a well-known operator of 便利店, “convenience stores” whose product lines epitomize the trend of cute, or kawaii, designs and objects common in Japanese culture and gaining popularity in the U.S. as well. Unfortunately for Lawson, UCHI had already been registered in the U.S. by Austin, Texas’s Uchi, a Japanese restaurant. Because of the similarity of the goods at hand, the USPTO declared that there is a likelihood of confusion among consumers as to the source of the confections, and accordingly denied registration.
It is estimated that 1 of every 133 Americans suffers from Celiac disease; more still suffer from gluten-intolerance or gluten allergies. A great many delicious treats contain gluten-based sweeteners, such as barley malt, to sweeten the products (pure cocoa is devastatingly bitter.) Further, the tools and machinery used to harvest and process cocoa beans are often the same tools used to harvest and process wheat and other grains, creating cross-contamination issues for those with allergies. In response, entrepreneur KristAnn’s online store caters to those who are afflicted with Celiac disease, and offers shoppers the opportunity to purchase apparel and confections under the CELIABRATE (a combination of “celiac” and “celebrate”) brand. The issue that concerned USPTO was the use requirement. As trademarks are granted based on a mark’s use in commerce, a specimen demonstrating such use has to be submitted to the USPTO office during the registration process. In the specimen demonstrating use, KristAnn combined its mark with other phrases such as “Celiabrate Life,” “Celiabrate Love” and “Celiabrate Bliss.” The Examining Attorney felt that such combinations were inconsistent with the CELIABRATE mark for which KristAnn initially sought protection. Fortunately for KristAnn, the Trademark Trials & Appeals Board (“TTAB”) disagreed with the Examining Attorney based on the mark’s use with the variety of additional terms, as well as the mark’s independent significance. With the TTAB’s reversal of the Examining Attorney’s position, the mark will move on through the registration process and KristAnn may quite soon have another reason to Celiabrate!
Have we gone 2far in our trans4mation of letters in common words? German candy company August Storck seemed to think it could push the boundaries a little farther. August Storck, known primarily in the U.S. for their brand “Werther’s Originals,” sought protection for its latest product in the candy market: “2good”. It is 2bad however that the mark “toogood” is already registered for use by the French distribution company Triumph Snat. The TTAB issued an opinion that, while not visually identical, the two marks were phonetically identical, and as the goods sought to be protected are substantially similar (though connoisseurs of German and French chocolate may disagree), there is a high likelihood of confusion between the two marks. August Storck was just 2 L8 this time.