No “Zilla” Confusion: Zillow Loses Opposition to LoanZilla Trademark Application

No “Zilla” Confusion: Zillow Loses Opposition to LoanZilla Trademark Application

The online real estate database Zillow flexed its muscle recently with the announcement that it will acquire its competitor Trulia for $3.5 billion, giving it about 61% of total home listing internet searches. With such power Zillow is established as a force to be reckoned with. Unfortunately for Zillow, its might doesn’t hold much influence over the U.S. Patent and Trademark Office (USPTO), which recently rejected Zillow’s opposition to LoanZilla’s trademark application. The Office determined that there is no likelihood of confusion between Zillow’s registered trademark and the LoanZilla mark that LoanZilla applied to register.

The dispute began when LoanZilla filed a trademark application on its name in 2011 in the class covering mortgage brokerages. It claimed use in commerce back to May of 2010. The mark was examined and no conflicting marks were found by the trademark examiner. But before a trademark application can mature into a trademark registration, the mark must be published. This provides notice and an opportunity for anyone to oppose registration of the trademark. LoanZilla’s trademark application published in October of 2011. During the publication period, Zillow filed a Notice of Opposition claiming that the similarity of the names would cause confusion between the real estate database and the mortgage broker.

An opposition proceeding is adjudicated by the USPTO’s Trademark Trial and Appeal Board (“TTAB”). In an opposition, the TTAB evaluates likelihood of confusion between the two marks using the “DuPont factors”. These are established factors, including similarity of services and names that are applied to evaluate whether consumers are likely to be confused between the brands.
In the case of LoanZilla, the TTAB compared the services and found that although not identical, there is some overlap between the services of the two companies. While the TTAB held that the similarity of the services weighed in favor of a finding of a likelihood of confusion, it also found that many of the other DuPont factors weighed against a finding of likelihood of confusion. In particular, the TTAB found that the term “zilla” found in the LoanZilla mark is most often associated with Godzilla and stated “as a result the two marks create substantially different overall commercial impressions.”

The difference between the marks in commercial impression weighed against a finding of a likelihood of confusion. Determining that consumers are not likely to be confused between the two brands, the TTAB rejected Zillow’s opposition to LoanZilla’s trademark application, allowing the mortgage broker to move forward with its trademark registration.

Duck Dynasty Facing Trademark Infringement Lawsuit over Use of “My Favorite Color is Camo”

Duck Dynasty, the popular A&E television program, is big on camouflage. But the Dynasty crew may have overstepped its camo bounds when it proclaimed that “My Favorite Color is Camo.” This proclamation and use of the phrase on branded merchandise has recently led to a lawsuit. The Duck group is facing a trademark infringement challenge from a Florida company claiming Dynasty’s use of the phrase “My Favorite Color is Camo” infringes on its trademark registration.

“My Favorite Color is Camo” was first used on the show by Uncle Si Robertson and then subsequently printed on a Duck Dynasty line of clothing. Unfortunately for Duck Dynasty however, Hajn LLC, received a trademark registration on the phrase in 2011 in the class covering among other things, athletic apparel. In the suit, Hajn stated that it sent Duck Dynasty cease-and-desist letters, but that they went unheeded. Now the LLC is escalating things by filing suit in federal court to enforce its trademark rights.

Hajn originally filed a trademark application on the phrase in 2010. The company filed an intent-to-use trademark application. This means that at the time of the initial trademark application the company had not yet used the trademark in commerce, but was planning to do so. Its trademark registration indicates that the group began using the mark in commerce near the beginning of 2011. Upon showing use in commerce, the Florida group received a full trademark registration on the phrase. Having a trademark registration should give Hajn a presumption that it has the exclusive right to use the trademark in commerce in connection with the goods described in the trademark registration. This also means that Hajn may prevent others from using any confusingly marks similar for the same or related goods. This is where Duck Dynasty ran into trouble.

Hajn claims that Duck Dynasty’s commercial use of the phrase infringes its trademark registration, causes consumer confusion, and in addition, is causing reverse confusion. Reverse confusion is where consumers are likely to be confused and mistakenly believe that the initial, often smaller user of the mark is playing off the goodwill of the second, larger user of the mark. Because Duck Dynasty is so popular, consumers believe that the phrase originated with Duck Dynasty and Hajn’s use is a copy. Hajn’s lawsuit demands that Duck Dynasty stop using the phrase and pay Hajn for damages. The suit claims that the branded apparel has been sold in major retailers like Wal-Mart and Target and has rung up $400 million in revenue. This could amount to a hefty damages bill for Duck Dynasty.

Will the Real Comic-Con Please Stand Up? San Diego Comic-con Exerts Trademark Registration against Salt Lake Comic Con

Comic-Con has become a big deal. Multiple conventions are held annually throughout the country. Thousands of people attend. But the San Diego installment of the event wants to make sure that everyone knows that it is the real, original Comic-Con and is taking action to do so.

San Diego Comic-Con (“SD Comic-Con”) recently sent Salt Lake Comic-Con (“SL Comic-Con”) a cease-and-desist letter exerting its trademark registration on the term “Comic-Con” and demanding that the Salt Lake convention stop using the name for its event. In response, Salt Lake argues that it is being unfairly singled out among all the other events calling themselves Comic-Con and states that it will continue using the name.

SD Comic-Con has a long history. It began in 1970 and was attended by a couple hundred people. The most recent edition of the convention was attended by over 130,000. With this incredible growth in popularity, SD Comic-Con took steps to protect its Comic-Con brand. In 2005, the group filed a trademark application on “Comic-Con” in the class “Education and entertainment services, namely, organizing and conducting conventions in the fields of animation, comic books and popular art.” In the application, SD Comic-Con claimed use in commerce back to the original 1970 convention.

To SD Comic-Con’s dismay, the U.S. Patent and Trademark Office rejected its trademark application claiming that the mark was merely descriptive. A mark will not be granted trademark registration if the mark merely describes an element or characteristic of the product or service. This is to prevent a situation where other competitors can’t accurately describe their product because someone has a trademark registration for a descriptive term needed to describe a relevant feature of the goods or services. The U.S. Patent and Trademark Office argued that “Comic-Con” was merely short for Comic Convention and exactly described what the event was.

SD Comic-Con apparently conceded this argument and sought trademark registration on the Supplemental Register. The Supplemental Register does not grant all the benefits of a trademark registration on the Principal Register, but does allow some protection. Moreover, if the mark is used long enough and acquires distinctiveness, then the mark may be able to be registered on the Principal Register. This is exactly what SD Comic-Con did.

In 2006, SD Comic-Con responded to the merely descriptive rejection to its trademark application with evidence in the form of a declaration to demonstrate acquired distinctiveness. SD Comic-Con claimed that even though “Comic-Con” is a descriptive term, consumers had come to associate the name with its convention. The U.S. Patent and Trademark Office accepted the evidence and SD Comic-Con’s argument and in 2007 granted SD Comic-Con a trademark registration for the mark Comic-Con.

Fast-forward to 2014 when SD Comic-Con is exerting its trademark registration against the Salt Lake City event. It’s not clear whether SD Comic-Con intends to take action against all of the other Comic-Cons, but several cities have sought to register their own “Comic-Con” trademarks with the inclusion of their city names. For example, in 2013 a group in Denver filed a trademark registration application for the mark “Denver Comic Con” SD Comic Con has filed an opposition to registration of the mark. So it appears that Salt Lake isn’t the only one being targeted.

University of Arkansas Receives Sound Trademark Registration on “Woo Pig Sooie” Cheer

Sports chants seem to be all the rage lately. This summer, the US Men’s National Soccer Team chant “I Believe That We Will Win!” became a surprise hit at the World Cup tournament in Brazil. In addition, universities across the country are preparing for crowd chants and cheers as the college football season approaches. As the popularity of these chants increase, it’s not too surprising that people are starting to think about commercially protecting these cheers. Several groups are going about this through trademark registration.

The “I Believe” chant is the subject of a 2011 trademark application by San Diego State University with a trademark registration currently pending. SDSU is not intending to receive a trademark registration on the actual chant though, rather they are just hoping to protect the phrase as used on clothing – t-shirts, hats, etc. There is one school however that is looking to protect the actual sound of its chant by receiving a trademark registration on a recording of the cheer.

The University of Arkansas’ mascot is the razorback, a type of wild hog. As part of the school’s culture, fans perform a hog call using the words, “Woooooooo. Pig. Sooie! Woooooooo. Pig. Sooie! Woooooooo. Pig. Sooie! Razorbacks!” According to the school’s trademark application, the chant has been used since 1929. Now the university wants to make sure that it can control the commercial use of the cheer through a trademark registration.

Most trademark registrations are for phrases, slogans, and logos, but the intent of a trademark registration is to protect the source identifier of goods or services from consumer confusion. A sound trademark can be very distinctive and indicate to consumers the source of products or services. Sound trademark registrations are not very common, but do exist. NBC owns the trademark registration on its distinctive chime sound. MGM’s roaring lion that plays before the opening credits of its movies is protected by trademark registration as well.

Arkansas apparently believes that its hog call is a unique source identifier similar to these other sound trademarks. It is very distinctive and indicates a connection with the University of Arkansas. As the business of college football increases, the University understandably would want to be sure that it can protect the use of the famous hog call and that it is used appropriately. The University likely didn’t obtain a trademark registration to prevent fans or others from using the hog call. It most likely just wants to be sure that it has control of how it is used commercially.

Without a trademark registration, local businesses might try to use the hog call to capitalize on consumers’ connection with the school. In so doing, they might misuse the call or present it in a tasteless light. With a trademark registration, Arkansas will be able to license the sound and monitor its use on Arkansas’ terms. So when you hear the Woo Pig Sooie cheer commercially, you will know that it has likely been authorized by the University of Arkansas.