Choosing a trademark may be more difficult than you think. You might be focusing on the catchiness of the name, but there are legal considerations that should be considered as well, such as the possibility of infringing some other trademark.
People often think that if they aren’t aware of anyone else using the same trademark, it’s okay. They may rely on a quick search of the US Patent and Trademark Office database for the exact mark.
One problem with relying on a search like this is that a mark is protected by trademark law whether or not it is registered. In addition, a trademark doesn’t have to be identical to another mark in order to be found infringing.
The test for infringement is whether the marks are confusingly similar. This is determined not just by comparing the marks themselves, but by reviewing various other factors, including the types of goods or services and the channels of sale.
Sometimes a trademark user knows the mark is very similar to someone else’s but thinks it’s okay because they’re using it in a humorous way.
While there is a parody defense to trademark dilution claims, parody isn’t a defense to an infringement claim. The only way a parodic use of a trademark won’t be infringing is if there is no likelihood of confusion between the two marks.
The Trademark Trial and Appeal Board (TTAB) recently found that the mark PISSTERINE for mouthwash is confusingly similar to the mark LISTERINE, registered by Johnson & Johnson for a number of products, but, most famously, for mouthwash.
As Pissterine LLC’s own website says, Pissterine is “exactly what you think it is!” Yes, this product is marketed as a urine-flavored mouthwash. Don’t worry, though, you’re not expected to actually put it in your mouth. The site makes clear that it’s “meant to sit on a shelf as a silly conversation starter.”
Despite this, it’s not just a bottle of yellow water. As the site says, “Water and food coloring is boring! I want to have the accuracy of the main ingredient of urine, Urea, as well as the legitimacy of Hydrogen Peroxide, an actual mouthwash! … Add in some salt, riboflavin, (the vitamin that turns your pee bright yellow) and you’ve got a recipe!”
We were not surprised to learn that the Pissterine Kickstarter failed. The company did, however, apply for registration of its mark in 2019. The description of the product in the trademark application is “Mouthwashes, not for medical purposes; Non-medicated mouthwash and gargle; Non-medicated mouthwashes.”
Also not surprisingly, Johnson & Johnson quickly objected to registration of PISSTERINE, arguing that PISSTERINE is confusingly similar to LISTERINE.
In its ruling on the matter, the TTAB pointed out that Pissterine admitted that Johnson & Johnson is the prior user, then addressed the similarity of the marks.
After finding that LISTERINE is a strong and famous mark, the TTAB noted that the marks are similar in appearance, sound, and connotation, and that the parties’ products are related. The TTAB went on to find that the channels of trade and the classes of consumers overlap.
Johnson & Johnson argued that Pissterine’s intention for its mark to be a parody doesn’t necessarily negate a finding of likelihood of confusion, and the TTAB agreed, though it did not find that Pissterine’s intent to create a parody, by itself, evidenced bad faith.
In the end, the TTAB held that Johnson & Johnson had demonstrated a likelihood of confusion and, therefore, refused to permit registration of PISSTERINE.
To help avoid problems like this when you choose a trademark for your product or service, obtain the opinion of an experienced trademark lawyer before concluding that you can rely on a parody defense.
Further, anyone choosing a new trademark should have a thorough trademark search conducted, covering not only the US Patent & Trademark Office’s registrations, but other databases and the Internet.
It would also be prudent to check the Canadian and Mexican registrations, as well as those of other pertinent foreign jurisdictions, particularly if you use your mark online.
Please feel free to contact us if you have any questions about or need assistance with conducting a trademark search or protecting your trademarks.
Photo by Mishaal Zahed on Unsplash
