By: Paige Mankin
What happens when a pizza company bases its logo on a highway sign? It turns out that the owner of that highway (in this case, the New Jersey Turnpike Authority or “NJTA”) will file multiple actions before the Trademark Trial and Appeal Board or “TTAB.”
Boardwalk Pizza, Inc., the owner of the the JERSEY BOARDWALK PIZZA mark already had a registered trademark and was applying for a second issue. Both of those marks were challenged by NJTA for being confusingly similar to the Garden State Parkway sign shown above.
If someone has or is applying for a trademark that is too similar to your trademark, you have one of two options to stop them. The first is called an “opposition proceeding” which is used to defeat a pending trademark application. The other is called a “cancellation proceeding” which is used when someone can cancel a trademark that has been approved and registered.
In this instance, NJTA filed both a cancellation proceeding and an opposition proceeding against Boardwalk Pizza’s two logos (one of which was pending, the other of which was already registered). The Board ruled in favor of NJTA on the first request to cancel the registered trademark as Boardwalk did not dispute the first proceeding to cancel registered logo. They admitted that the first logo is no longer in use, and claimed that they were applying for a new and modified trademark logo precisely to “avoid potential litigation or other legal issues.”
For that reason, the TTAB was primarily focused on the opposition to prevent Boardwalk’s pending trademark application from being registered. Interestingly, the TTAB decided to allow Boardwalk’s pending application to be allowed even though there is a striking similarity between the two marks. How they arrived at this decision is discussed in detail below.
In short, the TTAB has two main considerations when rendering their opinion: (1) similarity between the two trademarks; and (2) the relatedness of goods and services offered by the two parties.
1. Similarity Between Two Trademarks
When comparing the similarity of two marks themselves, the TTAB looks to the “appearance, sound, connotation and commercial impression” of each mark. Based on those considerations, the TTAB stats that indeed the two logos look similar.
The TTAB also recognized the strength of NJTA’s trademark. NJTA made a subargument that their logo should be considered a “famous mark.” While that seems like a made-up term, when a trademark is considered “famous” it is granted additional rights over standard trademark registrations. Although Boardwalk tried to argue that NJTA’s mark is simply a “traffic control marker”, the TTAB acknowledged that the Parkway logo “reflects some degree of renown of the mark and shows widespread exposure to [NJTA]’s mark.”
The Board agreed that NJTA has a strong mark, and Boardwalk Pizza’s logo looked very similar to its Parkway sign. So, why did NJTA lose the proceeding? Keep reading to find out.
2. Relatedness of Goods and Services
NJTA argued that their trademark covered “longstanding and continuous of [its] logo since 1956 in connection with a wide variety of goods and services, including restaurant services”. However, the TTAB found that NJTA did not provide sufficient evidence to prove that they used the trademark to provide restaurant services prior to Boardwalk Pizza’s application for their trademark.
The TTAB recognized that NJTA clearly had priority in the registration of their trademark, but that they did not offer direct restaurant services using this mark. NJTA registered for the Garden State Parkway logo in 1965. However, their “restaurant services” were simply landlord-tenant relationships with third party restaurant service providers like McDonalds® and Dunkin Donuts®. Since they did not provide any evidence of directly operating their own restaurant services using the logo, the TTAB held that NJTA “failed to establish prior use of its mark in connection with such services”, therefore, the services provided between the two parties were not related.
Although the two logos looked very similar, since one can hardly mistaken a pizza restaurant for the Parkway, the TTAB dismissed NJTA’s opposition and allowed Boardwalk’s mark to proceed to registration. That said, there is a high likelihood of NJTA appealing the decision, so this dispute may not be fully resolved.
Interestingly, the TTAB found that two very similar marks and co-exist provided they cover very different services. That said, this is an extreme case and aspiring entrepreneurs who planning to apply for a trademark should take this decision with a grain of salt and should strongly consider having a trademark clearance search done by a professional before filing anything with the USPTO.
2) pizza image: https://pixabay.com/en/pizza-cheese-mozzarella-dough-3199081/
3) full court decision: http://ttabvue.uspto.gov/ttabvue/v?pno=91219067&pty=OPP&eno=52