Trademarks and Confusion – What is an Overlapping Market?

I saw a good writeup from Dennis Crouch of Patently-O, an award-winning patent law blog. Professor Crouch's article talks about the key requirement for a trademark registration — the applied-for mark can't be likely to cause confusion with a previously-registered trademark. This is the same test juries must apply in trademark infringement cases. 

Most courts use a 6- or 8-part test to determine whether confusion is likely. You may be surprised to learn that actual confusion is not required and is usually pretty far down the list.

In Professor Crouch's article, he discusses a recent case involving an application for the word TakeTEN, which is used for a hospital's 10-day inpatient "lifestyle shift" program (for things like tobacco use, diabetes, weight control, etc.). The application was rejected due to a likelihood of confusion with Take 10!, a registered trademark used to encourage kids to have 10-minute classroom intervals involving physical activity. The two marks appear below:

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On appeal, the rejection was reversed because the trademark examiner didn't meet the required burden of substantial proof that the two marks were likely to be confused with one another. The appeals court found that the services were sufficiently different, even though both owners advertise on the Internet. Did the court get it right? Do you think these two uses are likely to be confused with one another?

Trademark law invariably involves judgment calls over whether two names or symbols are likely to be confused with one another, taking into account things like relevant markets; similarity in sight, sound, and meaning; industry significance of all or portions of the two marks; intent; instances of actual confusion; and the type of product and its conditions of purchase. These factors are discussed in perhaps my favorite trademark infringement case, Gaston's White River Resort v. Rush.

It's important to select a trademark lawyer with experience in both registration and infringement matters to assist you in the trademark procurement process — experience helps a lawyer predict what a trademark examiner or jury would do with any given case.

The Power of Perseverance

All of the Chaneys except my wife, who's from Virginia, are University of Arkansas alumni. Those in Razorback country know well the struggles of our football team. For those that don't, here's a recap:

• 2010 – BCS appearance in the Sugar Bowl, where we were defeated by a bunch of tattooed (and ineligible) players from Ohio State. Bobby Petrino's third year. The game was close, and we all looked forward to Petrino's recruits maturing.
• 2011 – A dominating Cotton Bowl victory over K-State in Bobby Petrino's third year. 10 wins on the season. Truly, a cause for celebration and optimism.
• 2012 – Ah, 2012. Truly, this was a year to forget. April Fool's Day brought a headline worthy of the day but, alas, it was no joke. Coach Petrino had a wreck on his Hog-red Harley with a woman not his wife on the back. He then lied about it to his boss, repeatedly, who fired him during a press conference televised on national TV. A bankrupt interim coach took over for the season. 3 players were charged before the season started with nine felonies EACH, making the Hogs the winner of the 2012 Fulmer Cup (an offseason tally of criminality, so not something you want to be winning). Still, we carried a top-10 ranking into the season, but many fans were uneasy. They proved to be right, as a lowly directional school in Louisiana-Monroe beat us in overtime the second game of the season and we tumbled out of the rankings. We finished 4-8. One of the four was against Kentucky in what would be the last SEC win for a long while.
• 2013 – Athletic Director Jeff Long hired Bret Bielema to take over the program. The fanbase collectively said, "Huh"? Reactions were of two varieties when fans learned of his track record at Wisconsin (three consecutive Rose Bowl appearances, but no wins in two coaching appearances). Some fans thought he'd be great at putting together a running team like he had at Wisconsin with Russell Wilson, who won the 2014 Super Bowl at Seattle. Other fans thought he was only good playing with the players of his mentor, Barry Alvarez. The season was a long one, ending with a 3-9 record and 0 wins in conference play.
• 2014 – A long offseason saw quarterback Brandon Allen's name besmirched daily on talk radio and his truck torched before the season started. The schedule was brutal. Most of Petrino's recruits were gone, and the ones that stayed were losing jobs to more talented youngsters. Every SEC school played through last weekend ranked in the top 17, and five of six were in the top 10 at game time. The season picked up where last season left off — a slew of conference losses. There were bright spots, to be sure, in dominating non-conference wins over inferior opponents and close games against superior opponents.

This 5-year history brings us to the present. Last weekend brought LSU to town, a team that is usually in the top two of the SEC West. LSU was ranked 17. Arkansas was on a 17-game SEC losing streak. Arkansas dominated from start to finishing, winning 17-0. The 17-degree windchill* didn't stop jubilant fans from rushing the field to celebrate with the players.

Who has been kicked in the teeth 17 times in a row by their peers? How does that affect one's psyche? Most folks would really be down on themselves after such a long period without success. It really says something for the leadership abilities of Coach Bielema to keep his players motivated during such a long losing streak. The players haven't quit this season and have played most teams close with the exception of Georgia. They have broken the cycle. #WPS

There is a corollary to trial work. People like me who represent individuals against insurance companies and other big corporations often face repetitive and distasteful behavior. A common tactic of insurance company lawyers is to ask questions to clients about things that happened 17 years ago, then try to find a piece of paper from a doctor to make the client out to be a liar. For example: "Have you ever been treated for neck pain or headaches?" If you went to the doctor 17 years ago after a waterskiing fall with headaches and neck pain, you better believe the insurance company will point to it in denying your claim. Nevermind the hypocrisy of arguing, on one hand, that soft-tissue injuries should heal within 6-8 weeks, but, on the other hand, the treatment 17 years ago was to the same body part so the defendant couldn't have caused the injury.

The toughest clients are the ones willing to take their case to a jury of their peers. A jury trial is grueling on clients in its own right: everything in the client's life is placed under a microscope — work history, social life, tax returns. However, a jury is sometimes the only way clients are ever able to persevere after a life-altering injury. A jury has the power to make right all the things that went wrong for the client. The jury is the difference between what could have been, and what is.

*I may or may not have made the windchill up, but it was in the 20s during the game.

Nathan selected to Super Lawyers for 4th year straight

Nathan was selected as one of Super Lawyers’ Rising Stars for 2014. You can view the 2014 Mid_South Super Lawyers Magazine online here.

Super Lawyers is a nationwide “rating service of outstanding lawyers from more than 70 practice areas who have attained a high-degree of peer recognition and  professional achievement. The selection process is multi-phased and  includes independent research, peer nominations and peer evaluations.

Nathan P. Chaney

Super Lawyers magazine features the list and profiles of selected attorneys and is distributed to attorneys in the state or region and the ABA-accredited law school libraries. Super Lawyers is also published as a special section in leading city and regional magazines across the country.”

Columbia County votes wet after 71 years

We're proud of client Vote for Growth in Columbia County, whose local option campaign resulted in a 56%-44% win on November 4. As in 2010, the wet day foreshadowed the wet vote. Columbia County joins Saline County as newly-wet counties, bringing the total number of wet counties in Arkansas to 40. 35 counties remain dry.

The Arkansas Times has a report on the alcohol elections that took place in Arkansas earlier this week, including the failure of the statewide ballot initiative to make the entire state wet. The measure failed in all but 6 counties.

I've helped several counties with varying aspects of the local option process over the last five years, including Boone, Clark, Columbia, and Sharp Counties. Benton and Madison Counties voted wet in 2012 with Walmart support.

A local option election requires collecting signatures from 38% of registered voters in the county for submission to the county clerk. I've previously written an overview of the process, and we have several blog posts on local options/Vote for Growth and general election law for additional reading.

Today is Election Day – Please Vote!

“A man without a vote is a man without protection.” — Lyndon B. Johnson.

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There are a ton of interesting and important races on the ballot this election cycle. We have one of two U.S. Senate seats up for grabs today, and the winner will head to the U.S. Capitol (pictured above).

Meanwhile, in Arkansas, the constitutional offices are closely contested. Governor, Lt. Governor, Attorney General, Secretary of State, and many others have seen tight polling over the last few weeks. Quite a few House seats are close, including one sought by a long-time friend, Jeremy Ross.

Many state races, including our local house race between incumbent Richard Womack and challenger Damon Daniels, have turned into a de facto referendum on President Obama's policies — particularly the Affordable Care Act. It will be interesting to see how Arkansas handles Medicaid expansion, since Arkansas is one of few southern states to see a substantial drop in the percentage of uninsured. Here in Clark County, we went from 25% uninsured to 13% uninsured — a 12% drop. That's phenomenal. 

There are 5 issues on the statewide ballot, and you can see my thoughts on those elections here. Two counties are holding local option elections (links to results for Columbia and Saline Counties) in an attempt to change from dry to wet. If Issue 4 on the statewide ballot passes, the whole state will go wet. That would certainly be in line with what's happened in Arkansas over the past 6 years on a county-by-county basis; however, it would make Arkansas somewhat of an outlier in the South, since most other Southern states have similar wet/dry laws. I wonder if, as it did in 2010, if today's wet weather foreshadows the results of these wet/dry elections?

Out in Virginia, Hilary's brother, Brad Martin, is running for a seat on the Virginia Beach City Council.

I'll be watching closely as the evening progresses. Here's the link to the Arkansas Secretary of State's website, where voting will be reported once the polls close. Good luck to all the candidates out there.

What races have you most interested in this election?