B&B v. Hargis: just one reaction

When I read the SG's brief advocating for preclusion as an ordinary result, I was concerned that there was limited understanding of what a registration/opposition proceeding actually is compared to an infringement case.  For example, the SG assumed that in every case, the right at issue in an infringement case could only be bigger than the registration, because the right might also be based on uses on goods for which there wasn't a registration.  This is of course completely wrong: the registration covers all the goods listed, traveling in all the channels in which such goods ordinarily travel unless there's an explicit restriction, at any price, and also covers the mark as registered and does not include matter that's not part of the registration.  Thus, it is both possible and indeed commonplace for a registration cited as a 2(d) bar to have a bigger footprint than it would in an infringement case, where differences in actual sales channels, price, house marks, and other marketplace features that in fact distinguish the two uses in question can prevent a finding of likely confusion.  See, e.g., J.T. Colby & Co. v. Apple Inc., No. 13-2227 (2d Cir. Sept. 29, 2014) (finding no likely confusion between Apple’s iBooks mark for electronic books and plaintiff’s ibooks mark for electronic books, because plaintiff’s mark was “frequently surrounded by contextual information that associates it with a publishing company, including the publishing company's name and location, the title of a book and its author, and other copyright information, while Apple’s mark “appear[ed] exclusively on Apple-branded hardware.”).

But it got worse at oral argument, when the Assistant SG, who I'm sure was just doing his job but seems not to be a subject matter expert, talked about the role of consumer surveys and completely misstated the law:

The only other, I think, difference or purported difference identified in one of the amicus briefs was consumer surveys and the idea that they will only accept a consumer survey where it has the word on a blank card.  That's true ­­ you know, just the word "Sealtite" on a blank placard.  That's true when what is sought to be registered is a word mark, not a design mark with a particular color.  The idea being that you can't skew the survey by adding colors and things when  actually what you're seeking registration for is just the word.
But the same thing could happen in an infringement court.  If the defendant was sued based on their registered word mark, I think a factfinder in an infringement court would say a survey that has design elements ­­ color, font, and so forth ­­ when you're asserting the right to use this word in any context, that sort of survey is not going to be as probative as a survey that just uses the word, since you're seeking the right to just use the word.

Unfortunately for anyone depending on the SG for guidance, that's just wrong.  Without presenting the mark as it's actually used in context, your survey is not worth very much and might even face exclusion, since it doesn't test the question at issue: will this use, with all its attendant circumstances, cause confusion? See, e.g., THOIP v. Walt Disney Co., 690 F. Supp. 2d 218 (S.D.N.Y. 2010) (“[T]he closer the survey methods mirror the situation in which the ordinary person would encounter the trademark, the greater the evidentiary weight of the survey results.”) (quoting 6 J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION §§ 32:163 (4th ed. 2014)).

One could say that he's talking about a defendant who has a registration ("their" word mark), but even if that's true, he's still wrong: the defendant's registration, even if it can't be cancelled, doesn't give it the "right" to use the mark "in any context."  Imagine, for example, Motorola using its registration of its word mark to argue that it could use McDonald's golden arch for its M.  The defendant in an infringement case isn't seeking the "right" to use its word mark in the abstract; it's defending against a claim that it's infringing somebody else's mark, and that is a question about actual use.

Disclosure: I mooted respondent's counsel, for which I was compensated.  My views, however, are entirely my own.

Side note: I'd be remiss not to note the classic Breyer hypo here.  

Suppose I want to [register a particular shade of green for dry cleaning pads, Qualitex] and I own the trademark, a junior person comes in and he has a different shade of green. Okay? Seems different. Can I introduce evidence that the people who use these particular kinds of dry cleaners are colorblind? And so they won't recognize the difference. It has nothing to do with the use. It has only to do with the customers or the conditions in which they are used. Can I introduce that at the board or not?

Well, it makes more sense than the hairbrush shaped like a grape from Wal-Mart.