October 31,2007
Trademark Practice Assignment VI
Written Assignment VI
To: The Best Lawn Care Company
From:
Date: October 29, 2007
Re: Risk Assessment of the OMS Investments, Inc. Issue
To: The Best Lawn Care Company
From:
Date: October 29, 2007
Re: Risk Assessment of the OMS Investments, Inc. Issue
Dear Client,
I. General Information
The OMS Investments, Inc. (hereinafter “OMS”) sent a cease-and-desist letter alleging that your mark “EZGONE” is likely to cause confusion with OMS’ “B-GON” marks, such as “WEED-B-GON,” which has two registrations for herbicides and for herbicides mixed with fertilizers, “ BRUSH-B-GON,” “GRASS-B-GON,” ”BUG-B-GON,” “BIRD-B-GON,” “ANT-B-GON,” “MOSS B GON,” and “MOSQUITO-B-GON.” Generally, these marks are for herbicides, pesticides, or fungicides.
After reviewing OMS’ “B-GON” marks, I recommend two defenses against OMS’ assertions. First, the “unregistrability” defense bases on the observation that the “B-GON” marks, when associated with the goods, are descriptive such that the marks are unregistrable. Secondly, “no likelihood of confusion” defense bases on a fact that your mark “EZGONE” and any of the “B-GON” marks are very different in many aspects such that the “EZGONE” cannot cause any possible confusion with the B-GON” marks when the customers are trying to distinguish these marks. However, for each defense, there are some weaknesses which should be taken into consideration. Thus, I preliminarily suggest the evaluation of whether to change the mark or whether to conduct the legal dispute should be considered carefully.
II. Discussion of the Defenses
A. “Unregistrability” Defense
Under 15 U.S.C. § 1052(e)(1), no trademark shall be allowed for registration on the principal register if it consists of a mark which, when used on or in connection with the goods of the applicant, is merely descriptive of the goods. Here, most of OMS “B-GON” marks are merely descriptive when they are associated with the goods.
(1) “WEED-B-GON” (Reg. No. 0903317, registered December 1, 1970) is for herbicides, and “weed” in the mark describes the product’s nature of removing weeds.
(2) The other “WEED-B-GON” (Reg. No. 2088157, registered August 12, 1997) is for herbicides mixed with fertilizers for domestic use, and “weed” in the mark describes the product’s nature of removing weeds.
(3) “GRASS-B-GON” (Reg. No. 1995777, registered August 20, 1996) is for pesticides and herbicides for home and garden use, and “grass” in the mark describes the product’s nature of removing weeds or insects from a grass.
(4) “BUG-B-GON” (Reg. No. 2073033, registered June 24, 1997) is for insecticides for home and garden use, and “bug” in the mark describes the product’s nature of removing bugs or insects.
(5) “BIRD-B-GON” (Reg. No. 2562771, registered April 23, 2002) is for pest repellents devices, and “bird” in the mark describes the product’s nature of repelling birds.
(6) “ANT-B-GON” (Reg. No. 2646066, registered November 5, 2002) is for insecticides for agricultural and domestic use, and “ant” in the mark describes the product’s nature of removing ants.
(7) “MOSS B GON” (Reg. No. 2863145, registered July 13, 2004) is for fungicide for domestic use, and “moss” in the mark describes the product’s nature of removing mosses.
(8) “MOSQUITO-B-GON” (Reg. No. 2952817, registered May 17, 2005) is for insecticide for domestic use, and “mosquito” in the mark describes the product’s nature of removing mosquitoes.
(9) However, “BRUSH-B-GON” (Reg. No. 1301169, registered October 23, 1984) is for pesticide-namely, herbicide, and October 23, 1984, and no parts in the mark can be used to describe the product’ nature. But this mark can still be defended by “no likelihood of confusion.”
Although, except for “BRUSH-B-GON,” other “B-GON” marks can be defeated under the unregistrability issue by asserting that these marks are descriptive, there are two concerns kept in mind. First, several marks have last for a long time in the market, such as “WEED-B-GON” (Reg. No. 0903317, registered December 1, 1970), “WEED-B-GON” (Reg. No. 2088157, registered August 12, 1997), “GRASS-B-GON” (Reg. No. 1995777, registered August 20, 1996), and “BUG-B-GON” (Reg. No. 2073033, registered June 24, 1997). So they may have acquired a secondary meaning so as to be registrable.
Secondly, the incontestability issue is uncertain. If a trademark is in the incontestability situation, even though it is merely descriptive, it cannot be cancelled on the ground of descriptiveness. See 15 U.S.C. §1065. According the Trademark Electronic Search System (TESS), these OMS’ marks are not labeled as “incontestable right.” But for some marks such as “BIRD-B-GON” (Reg. No. 2562771, registered April 23, 2002) and “ANT-B-GON” (Reg. No. 2646066, registered November 5, 2002), MOS may have filed the incontestability application for them.
Therefore, regarding the “unregistrability” defense, I suggest the further research should be conducted to clarify the strength of these marks. Alternatively, we can file a cancellation against one of the “B-GON” marks to test their strength.
B. “No Likelihood of Confusion” Defense
When the trademark owner wants to assert likelihood of confusion, he must show several factors: “1. strength of the mark; 2. proximity of the goods; 3. similarity of the marks; 4. evidence of actual confusion; 5. marketing channels used; 6. type of goods and the degree of care likely to be exercised by the purchaser; 7. defendant's intent in selecting the mark; and 8. likelihood of expansion of the product lines.” See AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979) (citation omitted). Here, all the “B-GON” marks have some weak factors in evaluating likelihood of confusion
(1) “Strength of the mark”: The strength of the “B-GON” marks is as questionable as what was discussed in the “unregistrability” defense. Thus, this factor is in favor of your mark.
(2) “Proximity of the goods”: Your mark “EZGONE” is used for herbicides and insecticides for agricultural and domestic use. On one hand, among the “B-GON” marks, “BIRD-B-GON” and “MOSS B GON” are for the different products from yours. One of “WEED-B-GON” marks is for herbicides mixed with fertilizers, and this type of herbicide seems to be different from your product. On the other hand, some “B-GON” marks are not for different markets, such as “GRASS-B-GON” and “BUG-B-GON” which are for home and garden use. Besides, the rest of the “B-GON” marks are for the identical products that your mark “EZGONE” is for. Thus, for the cases of “BIRD-B-GON,” “MOSS B GON,” and “WEED-B-GON,” the proximity factor is in favor of your mark “EZGONE.” But for the rest of the “B-GON” marks, it is unlikely to claim no proximity of the goods.
(3) “Similarity of the marks”: The basic structure of the “B-GON” marks is one word plus “-B-GON” or “B GON.” When average consumers see your mark “EZGONE” and any of the “B-GON” marks, they will never feel confusion because of difference impressions of these marks. For example, if “BRUSH-B-GON” (Reg. No. 1301169) is compared with “EZGONE,” average consumers should clearly identify they are two different marks when seeing them. Moreover, the pronunciations of “EZGONE” and any of the “B-GON” marks are surely different. For instance, “BRUSH-B-GON” is pronounced differently from “EZGONE.” Therefore, for the cases of all “B-GON” marks, the similarity factor is in favor of your mark “EZGONE.”
(4) “Evidence of actual confusion”: We are not sure whether OMS has any evidences to show the actual confusion, for example, customer complaint. Thus, we have to address this issue when replying to OMS.
(5) “Marketing channels used”: The products having your mark “EZGONE” are only sold at Orchard Supply Hardware (OSH) in California and Nevada. However, OMS is a Delaware company which is located in the east coast of the United States. The geographic scope of the “B-GON” products is not clear now. If OMS only sells goods in the eastern United States, it is difficult to claim likelihood of confusion in the western United States. Additionally, the products for home and garden use may use different marketing channels from what the products for agricultural and domestic use may use. That is the case for “GRASS-B-GON” and “BUG-B-GON.” And even if your products are with OMS’ products in the same store, they will be put in different shelves for the customer’s convenience to locate the desired products. There will be no likelihood of confusion in view of marketing channels. So, this factor is in favor of your mark “EZGONE.”
(6) “Type of goods and the degree of care likely to be exercised by the purchaser”: “BIRD-B-GON,” for pest repellent devices, and “MOSS B GON,” for fungicide fro domestic use, are different in the type of goods from your mark “EZGONE.” Therefore, the degree of care likely to be exercised by the purchaser should be lower. As for the rest of the “B-GON” marks, since the consumers in this market may be usually aware of various products, they will not get confused. But we have no solid data to show that. However, OMS bears the burden of proof. Thus, we can address this issue to OMS. Right now, this factor may be favorable or not.
(7) “Defendant's intent in selecting the mark”: It should be no doubt that you selected the mark “EZGONE” in a good faith.
(8) “Likelihood of expansion of the product lines”: This factor is hard to evaluate because we have no information of OMS’ market strategies. Since OMS bears the burden of proof, we may address this issue when replying to OMS.
In sum, the “no likelihood of confusion” defense may work, but there are some factors that cannot be evaluated due to lack of information. However, some factors, such as “strength of the mark,” “similarity of the marks,” “marketing channels used,” “defendant's intent in selecting the mark,” are in favor of your mark “EZGONE.” Thus, it is highly possible that the claim of OMS concerning its trademark rights is without any merits.
III. Suggestions
According to the discussion above, my general suggestions are as followed:
(1) The “unregistrability” defense is likely successful. Maybe we can file a cancellation for one “B-GON” mark to test the strength of the marks while imposing some pressure over OMS to withdraw its claims.
(2) There is no likelihood of confusion based on the current information. But we still kindly reply to OMS and address these issues because we need to show our good faith in concerning the legal dispute mentioned by OMS.
(3) Since the outcome of the dispute is uncertain, maybe some resources can be used to create or innovate a new mark.
Sincerely,
I. General Information
The OMS Investments, Inc. (hereinafter “OMS”) sent a cease-and-desist letter alleging that your mark “EZGONE” is likely to cause confusion with OMS’ “B-GON” marks, such as “WEED-B-GON,” which has two registrations for herbicides and for herbicides mixed with fertilizers, “ BRUSH-B-GON,” “GRASS-B-GON,” ”BUG-B-GON,” “BIRD-B-GON,” “ANT-B-GON,” “MOSS B GON,” and “MOSQUITO-B-GON.” Generally, these marks are for herbicides, pesticides, or fungicides.
After reviewing OMS’ “B-GON” marks, I recommend two defenses against OMS’ assertions. First, the “unregistrability” defense bases on the observation that the “B-GON” marks, when associated with the goods, are descriptive such that the marks are unregistrable. Secondly, “no likelihood of confusion” defense bases on a fact that your mark “EZGONE” and any of the “B-GON” marks are very different in many aspects such that the “EZGONE” cannot cause any possible confusion with the B-GON” marks when the customers are trying to distinguish these marks. However, for each defense, there are some weaknesses which should be taken into consideration. Thus, I preliminarily suggest the evaluation of whether to change the mark or whether to conduct the legal dispute should be considered carefully.
II. Discussion of the Defenses
A. “Unregistrability” Defense
Under 15 U.S.C. § 1052(e)(1), no trademark shall be allowed for registration on the principal register if it consists of a mark which, when used on or in connection with the goods of the applicant, is merely descriptive of the goods. Here, most of OMS “B-GON” marks are merely descriptive when they are associated with the goods.
(1) “WEED-B-GON” (Reg. No. 0903317, registered December 1, 1970) is for herbicides, and “weed” in the mark describes the product’s nature of removing weeds.
(2) The other “WEED-B-GON” (Reg. No. 2088157, registered August 12, 1997) is for herbicides mixed with fertilizers for domestic use, and “weed” in the mark describes the product’s nature of removing weeds.
(3) “GRASS-B-GON” (Reg. No. 1995777, registered August 20, 1996) is for pesticides and herbicides for home and garden use, and “grass” in the mark describes the product’s nature of removing weeds or insects from a grass.
(4) “BUG-B-GON” (Reg. No. 2073033, registered June 24, 1997) is for insecticides for home and garden use, and “bug” in the mark describes the product’s nature of removing bugs or insects.
(5) “BIRD-B-GON” (Reg. No. 2562771, registered April 23, 2002) is for pest repellents devices, and “bird” in the mark describes the product’s nature of repelling birds.
(6) “ANT-B-GON” (Reg. No. 2646066, registered November 5, 2002) is for insecticides for agricultural and domestic use, and “ant” in the mark describes the product’s nature of removing ants.
(7) “MOSS B GON” (Reg. No. 2863145, registered July 13, 2004) is for fungicide for domestic use, and “moss” in the mark describes the product’s nature of removing mosses.
(8) “MOSQUITO-B-GON” (Reg. No. 2952817, registered May 17, 2005) is for insecticide for domestic use, and “mosquito” in the mark describes the product’s nature of removing mosquitoes.
(9) However, “BRUSH-B-GON” (Reg. No. 1301169, registered October 23, 1984) is for pesticide-namely, herbicide, and October 23, 1984, and no parts in the mark can be used to describe the product’ nature. But this mark can still be defended by “no likelihood of confusion.”
Although, except for “BRUSH-B-GON,” other “B-GON” marks can be defeated under the unregistrability issue by asserting that these marks are descriptive, there are two concerns kept in mind. First, several marks have last for a long time in the market, such as “WEED-B-GON” (Reg. No. 0903317, registered December 1, 1970), “WEED-B-GON” (Reg. No. 2088157, registered August 12, 1997), “GRASS-B-GON” (Reg. No. 1995777, registered August 20, 1996), and “BUG-B-GON” (Reg. No. 2073033, registered June 24, 1997). So they may have acquired a secondary meaning so as to be registrable.
Secondly, the incontestability issue is uncertain. If a trademark is in the incontestability situation, even though it is merely descriptive, it cannot be cancelled on the ground of descriptiveness. See 15 U.S.C. §1065. According the Trademark Electronic Search System (TESS), these OMS’ marks are not labeled as “incontestable right.” But for some marks such as “BIRD-B-GON” (Reg. No. 2562771, registered April 23, 2002) and “ANT-B-GON” (Reg. No. 2646066, registered November 5, 2002), MOS may have filed the incontestability application for them.
Therefore, regarding the “unregistrability” defense, I suggest the further research should be conducted to clarify the strength of these marks. Alternatively, we can file a cancellation against one of the “B-GON” marks to test their strength.
B. “No Likelihood of Confusion” Defense
When the trademark owner wants to assert likelihood of confusion, he must show several factors: “1. strength of the mark; 2. proximity of the goods; 3. similarity of the marks; 4. evidence of actual confusion; 5. marketing channels used; 6. type of goods and the degree of care likely to be exercised by the purchaser; 7. defendant's intent in selecting the mark; and 8. likelihood of expansion of the product lines.” See AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979) (citation omitted). Here, all the “B-GON” marks have some weak factors in evaluating likelihood of confusion
(1) “Strength of the mark”: The strength of the “B-GON” marks is as questionable as what was discussed in the “unregistrability” defense. Thus, this factor is in favor of your mark.
(2) “Proximity of the goods”: Your mark “EZGONE” is used for herbicides and insecticides for agricultural and domestic use. On one hand, among the “B-GON” marks, “BIRD-B-GON” and “MOSS B GON” are for the different products from yours. One of “WEED-B-GON” marks is for herbicides mixed with fertilizers, and this type of herbicide seems to be different from your product. On the other hand, some “B-GON” marks are not for different markets, such as “GRASS-B-GON” and “BUG-B-GON” which are for home and garden use. Besides, the rest of the “B-GON” marks are for the identical products that your mark “EZGONE” is for. Thus, for the cases of “BIRD-B-GON,” “MOSS B GON,” and “WEED-B-GON,” the proximity factor is in favor of your mark “EZGONE.” But for the rest of the “B-GON” marks, it is unlikely to claim no proximity of the goods.
(3) “Similarity of the marks”: The basic structure of the “B-GON” marks is one word plus “-B-GON” or “B GON.” When average consumers see your mark “EZGONE” and any of the “B-GON” marks, they will never feel confusion because of difference impressions of these marks. For example, if “BRUSH-B-GON” (Reg. No. 1301169) is compared with “EZGONE,” average consumers should clearly identify they are two different marks when seeing them. Moreover, the pronunciations of “EZGONE” and any of the “B-GON” marks are surely different. For instance, “BRUSH-B-GON” is pronounced differently from “EZGONE.” Therefore, for the cases of all “B-GON” marks, the similarity factor is in favor of your mark “EZGONE.”
(4) “Evidence of actual confusion”: We are not sure whether OMS has any evidences to show the actual confusion, for example, customer complaint. Thus, we have to address this issue when replying to OMS.
(5) “Marketing channels used”: The products having your mark “EZGONE” are only sold at Orchard Supply Hardware (OSH) in California and Nevada. However, OMS is a Delaware company which is located in the east coast of the United States. The geographic scope of the “B-GON” products is not clear now. If OMS only sells goods in the eastern United States, it is difficult to claim likelihood of confusion in the western United States. Additionally, the products for home and garden use may use different marketing channels from what the products for agricultural and domestic use may use. That is the case for “GRASS-B-GON” and “BUG-B-GON.” And even if your products are with OMS’ products in the same store, they will be put in different shelves for the customer’s convenience to locate the desired products. There will be no likelihood of confusion in view of marketing channels. So, this factor is in favor of your mark “EZGONE.”
(6) “Type of goods and the degree of care likely to be exercised by the purchaser”: “BIRD-B-GON,” for pest repellent devices, and “MOSS B GON,” for fungicide fro domestic use, are different in the type of goods from your mark “EZGONE.” Therefore, the degree of care likely to be exercised by the purchaser should be lower. As for the rest of the “B-GON” marks, since the consumers in this market may be usually aware of various products, they will not get confused. But we have no solid data to show that. However, OMS bears the burden of proof. Thus, we can address this issue to OMS. Right now, this factor may be favorable or not.
(7) “Defendant's intent in selecting the mark”: It should be no doubt that you selected the mark “EZGONE” in a good faith.
(8) “Likelihood of expansion of the product lines”: This factor is hard to evaluate because we have no information of OMS’ market strategies. Since OMS bears the burden of proof, we may address this issue when replying to OMS.
In sum, the “no likelihood of confusion” defense may work, but there are some factors that cannot be evaluated due to lack of information. However, some factors, such as “strength of the mark,” “similarity of the marks,” “marketing channels used,” “defendant's intent in selecting the mark,” are in favor of your mark “EZGONE.” Thus, it is highly possible that the claim of OMS concerning its trademark rights is without any merits.
III. Suggestions
According to the discussion above, my general suggestions are as followed:
(1) The “unregistrability” defense is likely successful. Maybe we can file a cancellation for one “B-GON” mark to test the strength of the marks while imposing some pressure over OMS to withdraw its claims.
(2) There is no likelihood of confusion based on the current information. But we still kindly reply to OMS and address these issues because we need to show our good faith in concerning the legal dispute mentioned by OMS.
(3) Since the outcome of the dispute is uncertain, maybe some resources can be used to create or innovate a new mark.
Sincerely,
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