By Bert Andia, Member/Manager, Higgins Benjamin, PLLC
          In the Greensboro area, there have been numerous news reports about the Notice of Opposition filed by Anheuser Busch LLC, claiming that the registration of “NATTY GREENE’S” will damage Anheuser Busch.  This article attempts to address some of the issues and questions that have arisen since the filing of that opposition.
What is a Notice of Opposition?        The process for obtaining registration of a trademark or service mark is fairly straightforward.  In the initial step, the Trademark Office ensures that the application has met the minimum filing requirements; if so, the application if assigned to a Trademark Examining Attorney.  The Examining Attorney reviews the application for a number of specifics, but is primarily tasked with determining whether there are any marks which conflict with the mark for which registration is sought.  In the case of NATTY GREENE’S, the Examining Attorney “searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration” of NATTY GREENE’S.
            The Examining Attorney then approves the mark for publication in the Trademark OfficialGazette, a weekly publication of the United States Patent and Trademark Office.  The purpose of publication in the Official Gazette is to put the public on notice of the potential registration of the proposed mark, and to allow any party who believes it may be damaged by registration of the mark to file a Notice of Opposition.  On June 18, 2014, Anheuser-Busch, LLC filed its Notice of Opposition to the mark NATTY GREENE’S, claiming that registration might damage their marks;  NATTY LIGHT; FATTY NATTY; and NATTY DADDY.
            The process that follows the filing of a Notice of Opposition is an administrative proceeding conducted within the Trademark Office before a board called the Trademark Trial and Appeal Board.  Typically, a case is heard by three Administrative Trademark Judges .In an opposition proceeding, the Board may refuse to register the opposed mark, or may modify the application or registration by limiting the goods or services specified therein.  See 15 U.S.C. § 1068.
What Factors are Considered in an Opposition?        The most common ground for an opposition and the likely basis for the opposition in this case, is an allegation that consumers are likely to be confused between the respective marks of the parties.  The determination involves a consideration of a number of factors, including (1) the relationship of the parties’ goods sold under their respective marks; (2) the channels of distribution of the goods; (3) the methods of advertising and promotion of the parties; (4) the class of purchaser of the goods; and, (5) an analysis of the sound, appearance, and meaning of the marks.  Where there is doubt, the doubt must be resolved against the newcomer and in favor of the prior user.  See, e.g. TBC Corp. v. Holsa Inc., 126 F.3d 1470, 44 U.S.P.Q.2d 1315 (Fed. Cir. 1997);
            When looking at whether the marks are similar in their appearance, sound, meaning, or connotation and commercial impression, the similarity in any one of those elements may be sufficient to find a likelihood of confusion.  In re White Swan Ltd, 8 U.S.P.Q.2d 1534, 1535 (TTAB 1988)(the mark SHAKE SCATTER & GROW is not registrable in light of the registration for SHANK-N-GROW).  Similarity in the first word, prefix, or syllable is significant when evaluating likelihood of confusion.  Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 U.S.P.Q.2d 1895, 1897 (TTAB 1988)(it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered when making purchasing decisions).  Thus, the fact that both marks begin with “NATTY” weighs against the registration for NATTY GREENE’S.
            When looking at the goods that are to be sold under each of the marks, the goods need only be “related in some manner and/or if the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that the [goods] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 U.S.P.Q.2d 1713 (Fed.Cir. 2012).  The fact that both marks are to related to “beer” and likely would be sold to the same class of purchasers and encountered under similar circumstances are factors that weigh against the registration of NATTY GREENE’S. 
Does it Matter that Natty Greene’s Is The Name of a Historical Figure?      Some people have attempted to argue that because Natty Greene’s trademark is based on a historical figure, i.e. Nathanael Greene, that is cannot be confusing with NATTY LIGHT in which the word “NATTY” is a slang term for “Natural.”
            The answer may best be answered by an analogy that demonstrates that someone cannot use his own name if that name is confusingly similar to a registered trademark.  In the case of E&J Gallo Winery v. Gallo Cattle Co., 12 U.S.P.Q.2d 1657 (E.D.Cal. 1989), aff’d, 955 F.2d 1327, amended by 967 F.2d 1280 (9th Cir. 1990).  Ernest and Julio Gallo sued the Gallo Cattle Company for trademark infringement of, among other things, their trademark GALLO for wine, prepared meat products, and cheese.  The Gallo Cattle Company was operated by Joseph Gallo, a brother of Ernest and Julio Gallo and a person that spent his career in farming.  Joseph started the Gallo Cattle Company and began making cheese under the trademark “Joseph Gallo.”
            The court found that there was substantial evidence of actual consumer confusion.  The court weighed the other factors relevant to “confusion” and determined that Joseph Gallo could not use his own name as a trademark to sell cheese.  The court pointed out that surnames, when used as trademarks, are inherently weak trademarks.  Such marks only become strong after they become well known to the community through extensive use, significant advertising, and public recognition.  The GALLO mark was found to have secondary meaning and to be a strong mark.
            This type of analysis demonstrates that it doesn’t matter who NATTY GREENE’S is named after.  The issue is whether it is confusing to consumers in light of the use of NATTY LIGHT.
 Does it Matter That NATTY GREENE’S is Primarily Local?          Some people have argued that there is not a likelihood of confusion because NATTY GREENE’S is a small brewery specializing in craft beers; therefore, people would not confuse NATTY LIGHT (a mass-produced and mass-marketed beer) with NATTY GREENE’S.
            One of the factors to consider when analyzing ”likelihood of confusion” is the “quality” of the junior user’s product (in this case, NATTY GREENE’S product).  Court’s recognize that a difference in the products’ quality may affect the likelihood of confusion.  When the senior user and the junior user have products that are similar, comparable quality that supports the consumers’ belief that the products emanate from the same source and thus contribute to consumer confusion.  Morningside Group, Ltd. v. Morningside Capital Group, L.L.C., 182 F.3d 133, 142, 51 U.S.P.Q.2d 1183 (2d Cir.1999).  A marked difference in quality, on the other hand, may reduce the likelihood of confusion.
            A related factor in the “likelihood of confusion” analysis examines the sophistication of typical consumers and the level of care they exercise when purchasing the products at issue.  Sports Auth. v. Prime Hospitality Corp., 89 F.3d 955, 965, 39 U.S.P.Q.2d 1511 (2d Cir. 1996).  The courts generally consider that consumers exercise greater care in purchasing expensive products than in purchasing cheap products and purchasers of expensive products are less likely to be confused.  Id. 
            In reviewing these factors regarding quality and “sophistication of consumers,” there is no clear indication that either of these factors will weigh heavily in the ultimate determination.  However, if NATTY GREENE’S can demonstrate that its consumers look for a higher quality product, these factors are potentially in favor of NATTY GREENE’S.
Who will Win?            The last survey reviewed by this author demonstrated that only 5% of oppositions filed eventually go to a hearing.  While much of this case will depend on the quality of the evidence presented, I am fearful that NATTY LIGHT may be able to prove that it has a strong mark, and may be able to provide some survey evidence that confusion is likely.  If they do that, I believe that NATTY GREENE’S will be denied their registration.

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            Those in the furniture industry who invest in new designs are in a constant fight to protect those designs from others who would rather spend money on designs after they have proven popular.  Historically, design patents have been one tool used by companies trying to protect their new designs.  The expense is relatively minor for obtaining design patents, and the value can be extremely important in, at a minimum, deterring companies from the potential exposure of infringement.
            This article is designed just to introduce you to the requirements for obtaining a design patent.
            The Patent Laws.        When most people discuss “patents,” they are typically referring to “utility patents.”  A utility patent covers a “new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof….”  35 U.S.C. § 101.   A utility patent is considered as protection for the “function” of an item; it is valid for up to twenty (20) years from the date of application subject to certain conditions.

           A design patent can be issued for “any new, original, and ornamental design for an article of manufacture….”  35 U.S.C. § 171(a).  A design patent, therefore, protects the way an item “looks.”  A design patent is valid for up to fourteen (14) years from the date of the patent grant.

            “The language ‘new, original and ornamental design for an article of manufacture’ set forth in 35 U.S.C. 171 has been interpreted by the case law to include at least three kinds of designs: (A) a design for an ornament, impression, print, or picture applied to or embodied in an article of manufacture (surface indicia); (B) a design for the shape or configuration of an article of manufacture; and (C) a combination of the first two categories. Best Lock Corp. v. Ilco Unican Corp., 94 F.3d 1563, 40 USPQ2d 1048 (Fed. Cir. 1996) (Newman, dissenting); Manual of Patent Examining Procedure § 1504.01 (8th ed. 2001 rev. Oct. 2005).
To qualify for patent protection, a design must be inseparable from the article to which it is applied and cannot exist alone merely as a scheme of surface ornamentation. It must be a definite, preconceived thing, capable of reproduction and not merely the chance result of a method.  Manual of Patent Examining Procedure§ 1502 (8th ed. 2001 rev. Oct. 2005).
A broad definition has been given to the phrase “article of manufacture” to include a “sarcophagus monument” (Crier v. Innes, 170 F.324 (2d Cir. 1909)), a “grandstand” (In re Hadden, 20 F.2d at 276 (D.C.Ct. Appeals ), but not a water fountain which was believed to be merely “a fleeting product of nozzle arrangements” (In re Hruby, 373 F.2d 997 (CCPA 1967).

Requirements for a Design Patent.      The Manual of Patent Examining Procedure establishes that “ornamentality, novelty, nonobviousness, enablement, and definiteness” are prerequisites to the grant of a design patent.  Manual of Patent Examining Procedure (8th ed. 2001 rev. Oct. 2005) §1504. 

            To be ornamental, a design must present a pleasing aesthetic appearance and must not be dictated solely by functional considerations.  See, e.g., In re Stimpson, 24 F.2d 1012, 1012, 58 App. D.C. 86 (D.C. Cir. 1928) (design of rivet-setting machine not patentable; “There is nothing about the assembled mechanical device which serves to beautify, embellish, or adorn it. …The design in issue may be new and original as to form, but it is not ornamental, inasmuch as it does not please the senses or excite the emotions by its color effects, or by its proportion of form. It is not necessary that the design … should be a work of the fine arts, but it is necessary that the design should be … either embellished or adorned, or distinguished by its grace of symmetry of form.”).
               The requirement of “novelty” or “nonobviousness” is determined by a review of the ornamental shape or configuration of the article in which the design is embodied or the surface ornamentation which is applied to or embodied in the design.  Id.  In other words, the Patent Office will search other designs, catalogs, and trade journals to determine whether the applied-for design is “new” and not obvious in light of previous designs.  The claim must be nonobvious when compared with prior art using two tests:  (A) if an ordinary observer purchases an article supposing it to be the other; it is obvious; and (B) if the design appropriates the point of novelty that distinguishes the patented design from other prior art, it is obvious.  Bernhardt, L.L.C. v. Collezione Europa USA, Inc., 386 F.3d 1371, 1373, 72 U.S.P.Q.2d 1901 (Fed. Cir. 2004).
Design Must be Nonfunctional           A design that is dictated by considerations of function is not a proper subject for a design patent.  Further, if the sole points of novelty over prior designs are dictated by functional improvement or alteration, a design is not patentable.
Parts of Articles can be Protected      Section 171 also authorizes a patent claiming the design for a part of an article.  In In re Zahn, the court determined that a design need only be embodied in some article, but did not need to be a design for a complete article.  In Zahn, the design patent was embodied in the shank portion of a drill.  As seen in the figure, below, design patents are available on  just the “table leg” which would protect the use of the table leg with any type of table top.
Conclusion.     If you invest in new designs for furniture, and you are tired of having your new designs copied and sold at lower cost, protecting your new designs with a design patent can prove beneficial.  A later article will address the question of infringement of such patents, but most decisions would prevent an exact knock-off of your design.   A design patent can significantly help in your pursuit of such knock-offs, provide enhanced damages for such infringement, and thereby protect your investment..
If you would like to discuss the availability for design patent protection or a dispute arising from the alleged infringement of a design patent, please contact Bert Andia at (336) 273-1600 or bandia@greensborolaw.com.

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