Relevancy of Third-Party Marks on the Register – Judicial Perspective

The presence of third-party marks on the trademark register often plays a significant role in trademark disputes. Courts and trademark authorities recognize that third-party marks—especially if they are similar or identical—can influence the distinctiveness, validity, and scope of a trademark. However, whether the third-party marks are considered relevant depends on the context and the issue at hand.

Here’s a breakdown of how the courts and judiciary treat the relevancy of third-party marks in trademark disputes:

1. Third-Party Marks and Likelihood of Confusion

One of the most common contexts in which third-party marks become relevant is in assessing whether there is a likelihood of confusion between a new trademark and an existing one.

Role of Third-Party Marks in Confusion Analysis

• Descriptive or Generic Use: If third-party marks are similar but used in a descriptive or generic sense, it may help establish that the mark at issue is weak and thus less likely to cause confusion.
• Wide Use of Similar Marks: If numerous third-party marks similar to the contested mark already exist, courts might view the mark as being part of a common practice in the marketplace, reducing the likelihood of confusion.

Judicial Precedent

• Case Example: Polaroid Corp. v. Polarad Electronics Corp. (1961):
  • Issue: In determining the likelihood of confusion between the marks “Polaroid” and “Polarad”, the court allowed evidence of third-party uses of similar marks in the relevant industry.
  • Court's View: The court recognized that the existence of third-party marks could indicate that consumers may have become accustomed to distinguishing between similar marks in the marketplace. This could reduce the likelihood of confusion.
• Case Example: In re E.I. DuPont de Nemours & Co. (1973):
  • Issue: The DuPont case is often cited for its analysis of the likelihood of confusion test, which includes factors like third-party registrations. One key factor in the decision was whether there were any similar marks already registered.
  • Court's View: The court held that the relevance of third-party marks lies in whether the public has been exposed to such marks and how distinctive they are. If numerous third-party marks are similar and used on related goods, it may suggest that the new mark is weak or not distinctive.

Third-Party Registrations and Their Relevance to Dilution

In cases involving claims of dilution, especially under the Federal Trademark Dilution Act (FTDA) or the Trademark Dilution Revision Act (TDRA), third-party marks can be relevant to demonstrate that a mark is not as famous as the plaintiff claims.

• Case Example: Tiffany (NJ) Inc. v. eBay, Inc. (2010):
  • Issue: Tiffany sued eBay for selling counterfeit Tiffany products. The court looked at the number of third-party uses of the Tiffany mark and its perceived distinctiveness in determining whether dilution claims were valid.
  • Court's View: The court noted that the relevancy of third-party marks was critical in assessing whether the Tiffany mark was truly "famous" for dilution purposes. A high degree of third-party use could indicate that the mark wasn't as distinctive or famous as Tiffany claimed.

2. Third-Party Marks and Descriptive Use

Third-party marks are particularly relevant when analyzing the descriptiveness or genericness of a trademark. If multiple third-party marks are registered with similar descriptive terms, this could support the argument that the mark is not distinctive or is descriptive.

Relevance of Third-Party Marks in Establishing Descriptiveness

When the USPTO or a court evaluates whether a mark is descriptive or suggestive, third-party marks that use similar terms can be relevant. If many third-party marks use the same or similar descriptive terms, this could help establish that the term or mark is commonplace in the industry and does not uniquely identify the source of the goods or services.

• Case Example: In re Nett Designs, Inc. (2002):
  • Issue: The USPTO rejected the mark "Architectural Mailboxes" for a line of mailboxes, arguing that the term "Architectural" was descriptive of the goods.
  • Court's View: The court took into consideration the number of third-party marks using the term “architectural” to describe similar goods. This evidence supported the conclusion that the mark was merely descriptive and lacked distinctiveness.

3. Third-Party Marks and Fame of the Mark

In cases involving famous marks or claims of trademark dilution, the fame of the mark is central to whether dilution occurs. Courts often look at the number of third-party registrations for marks that are similar or identical to the plaintiff’s mark, as this can impact the public’s perception of the mark’s distinctiveness.

Relevance in Dilution Analysis

• Case Example: Starbucks Corporation v. Wolfe’s Borough Coffee, Inc. (2009):
  • Issue: Starbucks filed for trademark dilution against a coffee company using the mark “Charbucks”. Starbucks argued that the use of the name was likely to dilute its famous mark.
  • Court's View: The court considered the existence of third-party marks using the prefix “Star” in the coffee industry. These third-party marks were significant in assessing whether the Starbucks mark had acquired sufficient fame for dilution purposes. The court ultimately ruled in favor of Starbucks, but the relevancy of third-party marks showed that evidence of widespread third-party use of similar marks could affect a dilution claim.

4. Third-Party Marks and the Scope of Protection

In cases where a party seeks to expand the scope of protection for a mark, the presence of third-party marks can influence whether the mark can claim exclusive rights over its use.

Relevance to Scope of Protection

The third-party use of similar marks can show how weak or broadly used a mark is in the industry. Courts will often use the number of third-party registrations to determine whether a mark should be given broad exclusive protection.

• Case Example: AMF Inc. v. Sleekcraft Boats (1979):
  • Issue: The court was tasked with determining the likelihood of confusion between the mark “Sleekcraft” and another mark. The defendant argued that there were numerous third-party marks in the same industry, which weakened the distinctiveness of “Sleekcraft”.
  • Court's View: The court took into account the number of third-party registrations for similar names in the boating industry. This influenced the analysis of whether the mark was sufficiently distinctive to warrant exclusive protection.

5. The Role of Third-Party Evidence in Proving Non-Use or Abandonment

In some trademark disputes, third-party marks can be relevant in establishing whether the plaintiff's mark has been abandoned or is not in continuous use. This is especially true when the defendant claims that the mark is generic or not in active use.

• Case Example: LaTouraine Coffee, Inc. v. Lorraine Coffee, Inc. (1976):
  • Issue: The court considered whether a third-party use of a similar mark could indicate that the mark had lost distinctiveness and was no longer in active use.
  • Court's View: The court found that the presence of third-party marks using the same or similar names could support the defendant’s claim that the plaintiff’s mark had been abandoned.

Conclusion:

Courts and trademark authorities recognize that third-party marks on the register can provide critical evidence in a trademark dispute. Third-party registrations can:

1. Show the weakness or commonality of a mark, reducing the likelihood of confusion or dilution.
2. Support claims that a mark is descriptive or generic.
3. Inform the scope of protection for a mark, especially in cases where the mark is common in the marketplace.
4. Help establish the fame or distinctiveness of a mark in dilution and confusion analyses.

The key to understanding the relevancy of third-party marks lies in the context in which they are introduced and how they affect public perception, consumer confusion, and the legal strength of the mark at issue. The presence of numerous third-party marks often weakens the protection available for a mark, especially if the marks are descriptive, common, or in widespread use within the industry. Courts carefully balance the public interest and consumer protection when deciding how much weight to give third-party evidence in trademark cases.