For applicants considering filing for a trademark, an important criterion for granting registration is the legal standard of “likelihood of confusion.” Accordingly, the trademark examining attorney can refuse a trademark application under Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d) on the basis that the applicant’s mark, “as used on or in connection with the specified goods or services, so resembles a registered mark as to be likely to cause confusion.” Trademark Manual of Examining Procedure § 1207.01. See also In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993), a case where Shell’s RIGHT-A-WAY and arrow design for “service station oil and lubrication change services” was refused registration over a prior registrant’s mark relating to “distributorship services in the field of automotive parts.”
Another lesser-known criterion concerns the legal concept of “dilution by blurring,” which can be raised when a party opposes a recently allowed trademark application in an opposition proceeding. In an opposition proceeding, an Opposer starts a legal proceeding with the Trademark Trial and Appellate Board (TTAB), opposing an allowed trademark application from registering as a trademark. An illustrative decision from the Trademark Trial and Appellate Board, although not precedential, is the recently issued Sony Group Corporation v. Neil A. Campbell, a case in point.
In this case, Neil A. Campbell had applied for the standard-character mark SoniStream relating to goods identified as “[d]ownloadable computer software for Internet and broadcast radio scheduling and audio playout” in International Class 9. Sony Grp. Corp. v. Campbell, 2022 TTAB LEXIS 391 (Trademark Trial & App. Bd. October 28, 2022) at * 1.
Under § 1125(c) of the Trademark Act, an “owner of a famous mark . . . shall be entitled to an injunction against another person who, at any time after the owner’s mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.” Sony Grp. Corp. at *29-30.
The TTAB noted that “dilution by blurring is ‘an association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark.’” Sony Grp. Corp. at *40 citing Spotify AB v. U.S. Software Inc., 2022 USPQ2d 37, at *27-28 (TTAB 2022) (other citations omitted for simplicity). The TTAB further noted that “[i]t ‘occurs when a substantial percentage of consumers, on seeing the junior party’s mark on its goods, are immediately reminded of the famous mark and associate the junior party’s mark with the owner of the famous mark, even if they do not believe that the goods emanate from the famous mark’s owner.’” Id. citing Spotify at *28 (other citations omitted for simplicity).
Under the Trademark Act, there are six factors to be considered for determining whether an applicant’s mark is likely to dilute a famous mark by blurring:
1) the degree of similarity between the mark . . . and the famous mark;
2) the degree of inherent or acquired distinctiveness of the famous mark;
3) the extent to which the owner of the famous mark is engaging in substantially exclusive use of its mark;
4) the degree of recognition of the famous mark;
5) whether the user of the mark . . . intended to create an association with the famous mark; and
6) any actual association between the mark . . . and the famous mark. Sony Grp. Corp. at *40-41.
As the following shows, the TTAB reviewed each factor in its analysis. Now turning to the first factor, the TTAB, although noting some visual differences between the marks, found the appearance of the marks overall sufficiently similar such that Applicant’s mark SoniStream will “trigger consumers to conjure up’ Opposer’s famous mark [SONY®] and thus supportive of Opposer’s position of dilution by blurring.” Sony Grp. Corp. at *49-50. The TTAB further noted that “consumers encountering Applicant’s mark will immediately be reminded of Opposer’s famous [SONY®] mark and associate the two.” Sony Grp. Corp. at *50 (other citations omitted for simplicity.)
With respect to how the mark “SoniStream” sounded, the TTAB noted that while “’SonyStream’ is certainly not the only possible pronunciation of ‘SoniStream,’ and may not even be the most likely one, it is at least among ‘all the reasonable possibilities’ for its pronunciation.” Sony Grp. Corp. at *68. This finding was met despite Opposer providing expert testimony that related to only 15% of the American population that spoke Spanish or other Romance languages and who are likely to pronounce “SoniStream” as “SonyStream.” Id. As a whole, the TTAB found that the marks are sufficiently similar in sound, meaning and commercial impression as well to cause consumers to conjure up Opposer’s famous SONY® mark and thus supportive of Opposer’s position of dilution. Sony Grp. Corp. at *70.
With respect to the second factor concerning likelihood of dilution, the TTAB found that “Opposer’s [SONY] mark is nothing if not distinctive. It is coined, fanciful, registered on the Principal Register without a disclaimer or resort to Section 2(f) of the Act, and is among the most highly recognized marks in the United States.” Sony Grp. Corp. at *70 (other citations omitted for simplicity.) Accordingly, the TTAB found that this second factor also weighs in favor of finding dilution by blurring.” Id.
With respect to the third factor concerning likelihood of dilution, Opposer provided unchallenged evidence that it has used its SONY® mark in the United States for more than 60 years, and that it has controlled use of that mark through extensive licensing as well as substantially exclusively used the mark with respect to competitive, as well as non-competitive goods and services. Sony Grp. Corp. at *71-72 50 (other citations omitted for simplicity.)
With respect to the fourth factor concerning likelihood of dilution, the TTAB held that Opposer’s SONY® mark is among the most widely recognized marks in the United States. Sony Grp. Corp. at *72. This factor weighs heavily in favor of finding dilution by blurring. Id.
With respect to the fifth factor concerning likelihood of dilution, the TTAB found this dilution factor neutral on the basis that Applicant did not intend to associate his mark with Opposer’s SONY® mark. Sony Grp. Corp. at *72-73. This finding was based on Applicant’s testimony concerning the creation of the name SoniStream from “sonic” and “stream” with the intention to suggest the functionality of a completely integrated radio broadcast system including music scheduling, commercial scheduling/billing, and audio playout, with no intention to sound similarly to other companies and other testimony. Id.
With respect to the final sixth factor concerning likelihood of dilution, there has been no use of Applicant’s mark, or public exposure so accordingly the TTAB found this dilution factor neutral. Sony Grp. Corp. at *74-75.
In summary, the TTAB found four factors to support Opposer’s contention asserting that Applicant’s mark SoniStream is likely to dilute Opposer’s famous SONY® mark by blurring, while the other two were neutral. Sony Grp. Corp. at *75-77. Sony Group Corporation had also raised a likelihood of confusion claim but the TTAB did not need to address that issue, as the Opposer proved, by a preponderance of the evidence, that Applicant’s SoniStream mark is likely to dilute Opposer’s famous SONY® mark by blurring. Id.
What can we learn from this case? The take-home message is that trademark applicants should be aware of potential issues of diluting a registered well-known trademark even though their proposed marks may not necessarily cause a likelihood of confusion with that mark.
Jay Pattumudi is an IP partner at Lucosky Brookman, LLP, a corporate/securities law firm, where he assists clients in IP due diligence, patent and trademark prosecution. He is a registered patent attorney and has over 15 years of experience in professional services relating to intellectual property. He can be reached at jpattumudi@lucbro.com. His biography is found at https://www.lucbro.com/our-professionals/member/8854/jay-s-pattumudi and the firm website is https://www.lucbro.com/.