Wednesday, March 25, 2009

Wal-Mart Bests Loufrani in TTAB Battle over "Smiling Face" Mark

A long-running TTABattle over the ubiquitous "smiling face" mark ended in victory for Wal-Mart over Franklin Loufrani. The Board sustained Wal-Mart's opposition to registration of the SMILEY & design mark shown below left, and dismissed Loufrani's opposition to Wal-Mart's version shown below right. Wal-Mart Stores, Inc. v. Franklin Loufrani, Oppositions Nos. 91150278, 91154632, and 91152145 (March 20, 2009) [not precedential]

Loufrani sought to register his SMILEY & design mark under Section 1(b) for "hundreds of goods and services" in 23 different classes, ranging from cosmetics for animals, to mosquito nets, to transportation by ferry, boat, rail, land, and air. Loufrani disclaimed the "right to use the representation of a smiling face apart from the mark as shown."

Wal-Mart first opposed one application in 2001 and the other in 2003, alleging alternative grounds: (1) that the Loufrani mark is a ubiquitous icon that is incapable of functioning as a mark; and (2) if it is capable of functioning as a trademark, then Wal-Mart has priority and acquired distinctiveness, and the Loufrani mark is likely to cause confusion with Wal-Mart's mark.

In 2002, Wal-Mart filed an application to register its mark (in the color yellow) for "retail department store services." Loufrani opposed, alleging that the mark "does not serve any trademark function." The three oppositions were subsequently consolidated.

Priority: The Board first addressed the issue of priority, pointing out that Wal-Mart must show that its common law mark is distinctive, either inherently or via acquired distinctiveness. The Board agreed with the parties that the "smiling face" design is a "ubiquitous, non-inherently distinctive design." The question then was whether Wal-Mart acquired distinctiveness prior to Loufrani's priority date (his filing date) of June 3, 1997. Said the Board: "Considering that we have already determined that the smiling face is a common feature of modern American culture, this will not be something easily achieved."

Nonetheless, Wal-Mart proved that it began use of the mark in January 1996 and spent a "truly impressive" amount of money on advertising, including prime time network and cable television, "even in the short period before applicant's priority date."

The Board noted that "there is little evidence of any substantial use by other retail department stores of a similar smiling face design." It concluded that "because of the very extensive use and advertisement of the smiling face design for Wal-Mart’s retail department store services, opposer’s mark acquired secondary meaning for retail department store services prior to applicant’s priority date."

Distinctiveness of Loufrani Marks: The question of distinctiveness required a consideration of Loufrani's mark as a whole. The Board observed that "[n]ormally, we would be hesitant to conclude that the word 'Smiley' is not inherently distinctive in an intent-to-use application." But the evidence showed that the word "smiley" is the "commonly used name of the symbol."

Therefore, when consumers encounter applicant's mark, they will view the entire mark as ornamental inasmuch as it consists of a ubiquitous, non-distinctive symbol and the commonly used name of the symbol. This conclusion appears inescapable.

The Board therefore sustained Wal-Mart's oppositions on the ground of non-distinctiveness.

Likelihood of Confusion: Loufrani's goods and services include many items that would be available in Wal-Mart's retail department stores. The "small differences" in the parties' marks are "unlikely to be noteworthy."

Loufrani argued that the likelihood of confusion issue is "moot because the claimed design cannot function as a mark." However, just because Loufrani disclaimed the design in his applications does not mean that the design is removed from consideration in the Section 2(d) analysis. Moreover, the word "smiley" describes the design, and it is unlikely that a consumer would rely on this word to distinguish the marks.

The Board therefore held that confusion is likely as to the goods and services in many of the classes in Loufrani's applications (17 out of the 23 classes). [Of course, the non-distinctiveness finding applied to all of the classes].

We add that this unusual case presents a rather close case involving a symbol that the parties agree is "ubiquitous." In our analysis, we have also considered the last two du Pont factors (177 USPQ at 567) that concern "the extent of potential confusion, i.e. whether de minimis or substantial" and "any other established fact probative of the effect of use." In effect, applicant is seeking to register his marks for a large number of goods that either are sold in opposer's stores or are the types of goods that would be sold in department stores. This fact increases the likelihood of confusion to the extent that applicant's mark, if used by a competitor, could result in a department store that used a confusingly similar mark throughout its store on hundreds of items as its house brand. We have little doubt that under such circumstances, confusion would be likely.

TTABlog note: See the July 2006 post at the Trademark Blog (here), which links to a New York Times article regarding this dispute. Oh yes! And have a nice day!

Postscript: Ryan Gile comments on the decision here at his Las Vegas Trademark Attorney blog

Text Copyright John L. Welch 2009.


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