USPTO Pulling Up the Ladder on Picture-Word Equivalency in Assessing Trademark Rights?

by Winthrop & Weinstine, P.A.
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CNBLadderLogo

A recent stroll through the Minneapolis skyway and the above construction billboard reminded me that we haven’t discussed the picture-word equivalency doctrine in trademark law for some time.

Judging from the supersize nature and precise placement of the ® federal registration symbol next to the ladder logo shown above, you’d think that City National Bank is the proud owner of a federal service mark registration for the ladder logo — standing or leaning all alone — in connection with banking and financing services. And, you’d be correct. It owns this lock-up too:

CityNationalBankLadderReg

TMEP 1207.01(c)(i) spells out the intended power of the picture-word equivalency doctrine — also known as the doctrine of legal equivalents — in assessing the scope trademark rights:

“Under the doctrine of legal equivalents, which is based on a recognition that a pictorial depiction and equivalent wording are likely to impress the same mental image on purchasers, a design mark may be found to be confusingly similar to a word mark consisting of the design’s literal equivalent. See, e.g., In re Rolf Nilsson AB, 230 USPQ 141 (TTAB 1986) (holding applicant’s mark consisting of a silhouette of a lion’s head and the letter “L,” for shoes, and registrant’s mark, LION, for shoes, likely to cause confusion); Puma-Sportschuhfabriken Rudolf Dassler KG v. Garan, Inc., 224 USPQ 1064 (TTAB 1984) (holding applicant’s marks featuring a design of a mountain lion, for clothing items, and opposer’s marks, a puma design and PUMA (with and without puma design), for items of clothing and sporting goods, likely to cause confusion); In re Duofold Inc., 184 USPQ 638 (TTAB 1974) (holding mark consisting of a design of an eagle lined for the color gold, for sports apparel, and mark consisting of GOLDEN EAGLE and design of an eagle, for various items of clothing, likely to cause confusion).”

So, having the non-verbal ladder design separately registered as a service mark in its own right should prevent the use and registration of the verbal equivalent, LADDER, for banking and financing services, and visa versa, right? Then, how did this one coexist with this one?

And, how is it that the USPTO did not at least initially refuse registration of the currently pending LADDER CARD application for online financing and loan services among other financial services, based on the prior City National Bank registration of the non-verbal ladder design?

I’m left wondering how rigorous the USPTO is in affording prior registrants the full benefit of picture-word equivalency. Has the USPTO pulled up the ladder in applying the doctrine?

What is your experience?

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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