September 11, 2018
Two weeks ago, the Trademark Trial and Appeal Board (“TTAB”) denied a petition for cancellation in a trademark dispute involving the company formerly known as Ask Jeeves, refusing to cancel the trademark application of a smaller company that applied to register “ASKBOT” with the United States Patent and Trademark Office (“USPTO”). The petition for cancellation was filed on September 25, 2014 by IAC Search & Media, Inc. (“Petitioner”) (which has a federal trademark registration for the term “ASK” (among other variations)). Petitioner asserts that the term ASKBOT is likely to be confused with its ASK mark.
Respondent ASKBOT, Spa (“Respondent”) is a company located in the Republic of Chile. Since 2012, Respondent has offered services that are used to create online forums featuring questions and answers on a particular subject. Respondent opposed Petitioner’s request for cancellation.
Did you Ask what happened?
“Asking” for a Trademark Dispute
According to Petitioner in this trademark dispute, ASK is the leading provider of online information, question/answer services, and search services. Dating back to the late-1990s, Petitioner offered its goods and services via ASK-formative marks by and through its website, www.ask.com. Petitioner argued that Respondent’s application should be cancelled because: (1) the ASK mark is inherently and commercially strong; (2) ASKBOT is similar in sound and appearance to ASK; (3) Respondent offers similar goods and services: (a) in the same trade channels; and (b) to the same customers as Petitioner. Therefore, Petitioner claimed, ASKBOT is likely to cause confusion with the ASK mark and as to the source of Respondent’s goods and services.
Ask and You Shall Receive
The TTAB found in favor of Respondent, ruling that the ASKBOT mark is not likely to cause confusion with the ASK mark. The trademark dispute ruling allows Respondent’s application for federal trademark registration to proceed before the USPTO. The TTAB generally conducts its likelihood of confusion analysis through use of the thirteen factors set forth in In re E.I. du Pont de Nemours & Co. Given that the du Pont factors are evaluated on a sliding scale relevant to the facts and evidence of each case, the TTAB emphasized that the following factors were dispositive in evaluating the case at hand: (1) the weakness of the term ASK; (2) differences in the parties’ respective trade channels; and (3) the sophistication of consumers.
The TTAB examined the strength of the ASK mark based on the nature of the term itself, as well as the commercial strength of the mark in the marketplace. The TTAB found that the ASK mark is not inherently strong because “one must ‘ask’ a question in order to get an answer, [thus] ‘ask’ is suggestion of the function of online information products.” As to commercial strength, Petitioner failed to support its claims that ASK alone was a strong mark compared to ASK JEEVES!, which it retired in 2006. With respect to channels of trade, the TTAB acknowledged that offering goods and services over the Internet “is not a sufficient basis to find that [the parties’ services] are sold through the same channels of trade.” Importantly, Respondent offered its subscription-based services via its website and/or third-party software development websites, while Petitioner’s services were offered for free via its website. Finally, the TTAB found that Respondent’s consumers (nonprofit organizations, teachers, and hobbyists), which use its services for question and answer forums, are unlikely to confuse ASKBOT with the general search engine services offered by Petitioner.
Seek Advice Before a Trademark Dispute Occurs
Many trademark-related legal risks can be minimized or eliminated entirely by working with experienced intellectual property counsel. A well-planned legal strategy can help protect trademark owners from substantial liability or even complete loss of a valuable trademark.
The material contained herein is provided for informational purposes only and is not legal advice, nor is it a substitute for obtaining legal advice from an attorney. Each situation is unique, and you should not act or rely on any information contained herein without seeking the advice of an experienced attorney.
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