Is trademark registration pointless?

Simple answer: NO. It’s important.

But I have some issues.

Last month, the Trademark Trial and Appeal Board denied registration to an applicant who applied to register the mark MARIJUANAVILLE in classes 25 and 35 for clothing and retail services, respectively. The gist of the denial was that MARGARITAVILLE is a registered and famous mark, and MARIJUANAVILLE is likely to cause consumer confusion with that mark. Therefore, no mark for you.

(As a side note, reading through the Boards decision, in Jimmy Buffet’s declaration he state that he has played Margaritaville at every single one of his concerts since 1977—that’s impressive, and kinda hard to believe.)

Anyway, I won’t belabor the reasoning, but essentially, the marks were too similar.

One thing struck me—and then raised my ire for differences in registration and infringement—the applicant didn’t contend that the MARIJUANAVILLE mark was a parody.

A parody is like a joke. I wrote a post about the My Other Bag… business, which is a parody on expensive bags, and was recognized as such (multiple times). Most important, as it relates to the issues here, if something is a parody, it, by definition, does not cause confusion!

In assessing parody for infringement purposes (which are the only purposes, because the Board doesn’t assess parody), consumer confusion is analyzed. Parody is parody only if, 1) the mark in some way leads someone to believe that it is or is supposed to be another mark; and 2) it is clear that it is actually not that other mark, but is a joke about that mark. Parody cannot be present—at least in trademark law—if a person may be confused about source, association, etc.

Time and time again the Board claims to not accept or assess parody, but simply states that it decides if there is a likelihood of confusion between marks. (But parody looks to confusion, but, ok, whatever.)

I can understand the reasoning why. Registration is an ex parte process and therefore any third party that may be harmed by registration doesn’t get to way in, unless they oppose the mark. If a response to an Office action includes parody, the third party doesn’t get to weigh in. 

But an opposition is a valid procedure. If the parody contention seems valid to an examining attorney, let it move on to opposition. Both sides can present evidence, and the Board can decide if the mark is valid or not. The process is not identical to infringement in federal courts, but it’s similar.

So here, with MARIJUANAVILLE, both should have been able to present evidence for why the mark is parodic and why it is not. (the application was for an intent to use, which I agree makes a parody determination more difficult, but it still could be raised.)

In my opinion, trademark registration and trademark infringement go hand-in-hand (or hand-in-glove, whatever the correct expression is). Well, they should, but apparently they don’t. And parody is not the only time registration and infringement don’t align.

Look at The Slants case. If denied registration (which is still under review) they may still be able to fully enforce their mark in court. Or maybe not. Why deny registration, yet allow for enforcement in court? The dichotomy does not make sense to me.

To be sure, the vast majority of the time, trademark registration and infringement align. But not all the time, and I think that’s a problem. And I’m not talking about the factual decision by either the Board or a federal court. Of course the outcome could differ, but the process should be the same.

As far as I understand registration, one of its purposes, if not its main purpose, is to determine a person’s rights in a mark. If that determination is different at the Board than it is at federal courts, the system is weakened.

Registration is also supposed to be a means for giving notice to third parties. Notice that the mark is a source identifier for a business, and third parties shouldn’t use it (or something that would cause confusion). But even if a mark doesn’t or can’t obtain registration, a third party may still be accountable for infringement in a federal court—in the same way that they would be held accountable for a registered mark (with some procedural differences).

And to gum it up even more, SCOTUS has held that decisions at the Board can create issue preclusion. So the outcome there may apply to a federal court. Presumably it would not apply where the Board and court take different approaches in their assessment, but maybe (in B&B the likelihood of confusion tests were different, and issue preclusion still applied).

For me, registration and infringement need to better align. If a federal court decides that a party can use a certain mark, and has rights in that mark, then the Trademark Office should at least go through the same process when deciding if that same party has rights in the same mark (likelihood of confusion tests aside—or maybe not). Otherwise, there’s cause for confusion. And isn’t the whole point to reduce confusion?