Question about likelihood of confusion

[Jakedrake]

What is the name of your state (only U.S. law)? Kentucky

Hi there, I am creating a new health snack product within a line of products under our brand name and came up with a great name to describe them. This name, madeupversion: happy snacks, is not our brand name and would only appear in combination with our brand. However there is a mark existing on the USPTO TESS search results for "Happy Snacks" as a brand name for a candy manufacturer. This seems like possible confusion but...Double However!, there are multiple Happy Snacks marks that exist for other brands in the form of: "Frito's Happy Snacks", "Doritos Happy Snacks", etc.

The basic "Happy Snacks" mark page actually shows the mfg logo while the frito's, etc. happy snacks only show a simple text for the image on the mark page.

My question is: Does this evidence suggest that we would be able to trademark "[Our Brand] Happy Snacks" without issue? Trying to avoid a costly USPTO search that may end in failure.

What do you think?

Thanks!
Jake

 

[quincy]

What is the name of your state (only U.S. law)? Kentucky

Hi there, I am creating a new health snack product within a line of products under our brand name and came up with a great name to describe them. This name, madeupversion: happy snacks, is not our brand name and would only appear in combination with our brand. However there is a mark existing on the USPTO TESS search results for "Happy Snacks" as a brand name for a candy manufacturer. This seems like possible confusion but...Double However!, there are multiple Happy Snacks marks that exist for other brands in the form of: "Frito's Happy Snacks", "Doritos Happy Snacks", etc.

The basic "Happy Snacks" mark page actually shows the mfg logo while the frito's, etc. happy snacks only show a simple text for the image on the mark page.

My question is: Does this evidence suggest that we would be able to trademark "[Our Brand] Happy Snacks" without issue? Trying to avoid a costly USPTO search that may end in failure.

What do you think?

Thanks!
Jake

There are several factors looked at when determining if a mark infringes on the rights of another or others.

Many of the factors come from a 1961 case, Polaroid Corp v. Polarad Elecs. Corp, 287 F.2d. 492 (2d Cir. 1961). These factors are applied differently by different courts, and these are not the only factors looked at by a court, but the primary factors will be the similarity of the marks, the strength of the senior user's mark (how distinctive), the similarity of the products and services being offered and whether the senior user is likely to expand into another product or service area that will conflict with the junior user's intended or actual market and the quality of the goods/services offered by the junior user, the junior user's intent on choosing the mark in the first place, the likelihood of consumer confusion and evidence of actual confusion generated, and the sophistication of the buyer's looking to purchase the goods/services.

Generic words cannot be protected under trademark law, however generic words can be combined to form a protectable trademark or, as appears in your example, can be combined to form a protectable slogan that works to identify a specific product or service.

It is always best to choose a name or slogan that is known not to be in use by others and that does not use generic words that can be used by anyone. Whenever you choose a trademark, or slogan or logo, you want to do a thorough search to make sure your use is unlikely to cause consumer confusion (and a possible lawsuit).

I am not sure, after all this, that I actually answered your question.

 

[Jakedrake]

Thanks for the quick reply! Yes that's what I had thought about generic words as well...I think I've figured it out though. The "happy snacks" mark has this designation:
Mark Drawing Type: 3 - AN ILLUSTRATION DRAWING WHICH INCLUDES WORD(S)/ LETTER(S)/NUMBER(S)

To me that is saying the mark is simply for the logo and not the phrase or name. Would you come to that conclusion as well?

Thanks

 

[quincy]

Thanks for the quick reply! Yes that's what I had thought about generic words as well...I think I've figured it out though. The "happy snacks" mark has this designation:
Mark Drawing Type: 3 - AN ILLUSTRATION DRAWING WHICH INCLUDES WORD(S)/ LETTER(S)/NUMBER(S)

To me that is saying the mark is simply for the logo and not the phrase or name. Would you come to that conclusion as well?

Thanks

Ah. I didn't catch in your first post that you were using real names for your example. Sorry.

Generic words that are used to describe a product or service must be disclaimed when registering a trademark as generic words can be used by everyone (although generic words used in an arbitrary or fanciful name - like Penguin for books - can be offered protection).

However the way the generic words are presented (using color, design, script, etc) can make the presentation one that can be trademark-protected. And, if the presentation is original and creative enough, copyright protection is also available.

Here, just because, is a link to the Polaroid case mentioned earlier, from where the factors used by courts in determining likelihood of confusion come:

http://law.justia.com/cases/federal/district-courts/FSupp/182/350/1902964/