In far too many of the trademark disputes we cover here, those disputes center around two competing logos or trade dress that look nothing alike, save for one very generic component. To get a sense of what I mean, you can refer back to the Chicago Cubs and Washington Nationals bullying a financial services company because its logo used a capital “W.” Or the time one sausage company sued another because both logos had, sigh, a pig in them.
Or, now, when clothier Roots Corp. tried to nullify a trademark held by YM, Inc. because both had clothing lines with logos that included log cabins.
Roots had applied to strike YM’s registered trademark for a logo that featured a cabin surrounded by two trees and the words “Cabin Fever” beneath it, arguing that it was invalid for several reasons. According to a federal court document, Roots said the logo was confusing with its existing trademarks, that the YM Inc. trademark was not distinctive, and that the mark was only being used on some of the goods listed in the application. YM disputed all of Roots’ arguments.
And it’s easy to understand why the moment you take a look at the two logos in question.
Here again we have one single aspect that can be said to be similar about each logo: both include a cabin set against trees. Beyond that, nothing else is similar. The cabins themselves aren’t similar. Neither are the trees. Nothing in the rest of the images — from colors to shapes to wording to font — is even remotely similar. It’s enough to make you wonder if any public confusion was really the worry here, or if this was just one rival clothing company trying to push around another.
It seems the judge overseeing the request had similar concerns.
In the end, Federal Court Justice George R. Locke dismissed Roots’ application to strike YM’s trademark registration, concluding that the rival’s mark “was not confusing” with any of the Roots’ cabin-related trademarks, despite some similarities in the trademark and products sold by both companies.
“The cabin image itself used in YM’s Cabin Fever Design Mark is not particularly similar to either of the cabin images used by Roots,” Locke wrote in his January 8 decision, adding that using an image of a cabin was “no more distinctive” than using the word cabin.
“The word ‘cabin’ suggests a small house in the woods, and trees are inherent in such an environment. It is not distinctive to incorporate trees in an image of a cabin.”
Roots also suggested that YM’s entire trademark should be cancelled because it had applied for the mark with far more market designations than it was in fact using. The judge disagreed, however, taking the much more common sense approach of simply limiting the trademark to the markets in which YM is using it, of which there are something like ten. This again seems to indicate that this is all simple bullying, rather than any true concern for customer confusion.
And so we end up with a good ruling, one which actually takes care to address the tests for trademark infringement rather than simply looking at two logos that both have log cabins and deciding that infringement must have occurred. It would have been nice for the legal staff at Roots to have taken such care as well.
Permalink | Comments | Email This Story
Techdirt.
