On May 28, Paula Hopkins was quoted in a World Trademark Review article examining a recent Trademark Trial and Appeal Board (TTAB) decision involving the mark GRUPPO VAVA. The following is an excerpt:
Paula Hopkins, a trademark and brand protection attorney at Venable LLP, says the case highlights how difficult connotation arguments can be, particularly where the shared term dominates the mark and supporting evidence is thin.
Rather than substantiating its theory (eg, through consumer perception evidence, marketplace use or Italian fashion branding conventions), ADG Vanguard relied on the relatedness of the goods, which weakened its position.
The “sexiness” framing was specifically vulnerable, “because ‘sexy’ or ‘sexiness’ is wildly subjective”, Hopkins continues.
“One of the mistakes here was trying to argue a very fuzzy concept [of ‘sexiness’] as though consumers would narrowly associate it only with lingerie,” she notes.
“If you are going to win on connotation, the connotation needs to be well-supported,” Hopkins says. “Here, the Board basically said: interesting theory, not enough evidence.”
According to Hopkins, ADG Vanguard could have:
- offered evidence such as distinct purchasers and price points;
- leaned harder into different channels of trade; or
- been more creative in its name.
Without evidence such as dictionary definitions, consumer evidence, marketplace use or other reliable sources, “connotation arguments can get mushy fast”, Hopkins says. “And mushy is not where you want to be before the TTAB.”
Businesses should also run a thorough trademark and marketplace search, including slang, foreign-language meanings and cultural references, Hopkins urges. Applicants should provide “competent translations and evidence” of consumer perception of a word, not just a technical translation, she says, and should not assume that a disclaimer solves everything.
For the full article, click here.