Unless you’re living under a rock, you’ve heard about the story of the young lady who put Gorilla Glue in her hair. Many indicated that she thought it was the same as the hair gel, Gorilla Snot.
When hearing about this, my trademark attorney ears perked. And I decided to do my own analysis on whether there is confusion between the two trademarks.
If you’ve ever thought about registering a trademark, likelihood of confusion is one of the analyses that a USPTO trademark examiner goes through to determine whether or not to register a trademark.
When looking for likelihood of confusion, the USPTO looks at many factors when deciding whether or not this would be an issue among consumers.
These are called the duPont factors, which were first listed in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
The duPont factors are as follows (as cited in TMEP 1207.01):
The similarity or dissimilarity of the marks in their appearance, sound, connotation and commercial impression
The relatedness of the goods or services
Thee similarity or dissimilarity of established, likely-to-continue trade channels
The conditions under which and buyers to whom sales are made, i.e., “impulse” vs. careful, sophisticated purchasing
The number and nature of similar marks in use on similar good
The existence of a valid consent agreement between the applicant and the owner of the previously registered mark
The first two are heavily weighted, and the rest are considered in a likelihood of confusion determination, if there is evidence in the record.
In this blog post, we are only going to analyze the first two factors (similarity and dissimiliarity of the marks and the relatedness of goods/services).
Is there a similarity or dissimilarity of the marks in their appearance, sound, connotation and commercial impression when looking at Gorilla Glue and Gorilla Snot Gel (Moco de Gorila).
Note: Although Moco de Gorila is the registered trademark, in English, it means Gorilla Snot.The USPTO uses the Doctrine of Foreign Equivalents which means that if it translates to a similar registered trademark or pending trademark application, it can still be confusingly similar.
First, I am going to lay out the definitions of confusingly similar that we get through case law. These are some of the laws that the USPTO adheres to when going through your trademark application.
“Marks may be confusingly similar in appearance where there are similar terms or phrases or similar parts of terms or phrases appearing in both applicant’s and registrant’s mark. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689 (TTAB 1986).
Additionally, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). And greater weight is often given to the dominant feature when determining whether marks are confusingly similar.
Marks are also compared in their entirety. Although a disclaimed portion of a mark cannot be ignored, and the marks must be compared in their entirety, one feature of a mark may be more significant in creating a commercial impression. Disclaimed matter is typically less significant or less dominant when comparing marks. See In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp., 753 F.2d 1056, 1060, 224 USPQ 749, 752 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).”
In this case, both trademarks have Gorilla in them. Also, when looking at Gorilla Glue vs Gorilla Snot Gel, the USPTO would likely establish that the primary/dominant part of the trademark is Gorilla.
Additionally, “Glue” would be disclaimed because Gorilla Glue is described as an all purpose industrial glue and an all purpose household glue according to the trademark application that was filed. Snot wouldn’t have to be disclaimed because few people reference “snot” when talking about gel, but gel would. This means we are left with Gorilla and Gorilla Snot.
“Even where marks incorporate substantially identical terms, there is no likelihood of confusion if the marks convey different commercial impressions. See In re Hearst Corp., 982 F.2d 493 (Fed. Cir. 1992).”
The argument can be made that even though both have Gorilla, the marks are used with different services which result in a different commercial impression. Additionally, one would argue that “Gorilla Snot” is unitary with two words that can’t be separated and thus portrays a different commercial impression from Gorilla Glue.
Now let’s just take a quick look at the labels.
When looking at the labels, Gorilla Glue has a realistic looking Gorilla drawing on it. And the Gorilla Snot gel has a more cartoon-like gorilla who’s gesturing his spiky hair.
Additionally, the Gorilla Snot label has the additional Spanish translation Moco De Gorila.
And even though one of the Gorilla Snot packaging has similar coloring to the Gorilla glue, the shape and dominant colors are different.
Regarding the similarities of the trademark, the USPTO may find them similar, however there are good arguments that can be made to overcome that position.
Relatedness of goods and services
When looking at relatedness of goods and services, the question that needs to be answered is: Would a reasonable consumer mistake that the trademarks come from a common source, affiliation, or connection?
Below is a table of the goods being sold in association with the respective marks.
Moco de Gorila (translated to Gorilla Snot)
CLASS 001: all purpose industrial glue
CLASS 016: all purpose household glue
CLASS 003: Hair styling gel; Hair styling preparations; Hair styling spray; Shampoos; Hair conditioners; Hair mousse; Hair care preparations.
With respect to the goods here, I don’t believe a reasonable consumer would mistake the two to share a common source.
When going to the store to buy hair gel, you are likely not going to look in the home improvement aisle where Gorilla Glue is sold or go to a store like Home Depot where Gorilla Glue is sold.
Even if you go to a store like Target or Walmart, where both products are sold, you would not find these two products in the same area.
It would be unreasonable to believe that an adhesive for industrial and household glue could also be used in hair. Especially, because this type of glue is hazardous to the skin, as warned on the labels of their products.
In conclusion, I do not believe there is a likelihood of confusion between Gorilla Glue and Gorilla Snot Gel.
After analyzing both products, there are arguments on both sides, however, I do not believe that the USPTO would have a reasonable argument against Gorilla Glue and Gorilla Snot gel co-existing.
This is also demonstrated by both trademarks being registered without issue from the USPTO.
As someone who has used both products, I would never believe that I could have used Gorilla Glue in my hair, nor did I ever connect the two as coming from the same source.
What are your thoughts? Do you believe a consumer would believe that both of these products came from the same source?
A USPTO trademark application can be confusing when trying to determine not only the difference between filing basis (“in use” and “intent to use” applications), but which best suits your needs. The primary difference between these two versions comes down to whether your trademark is already in use commercially, or not, at the time of your application. Ultimately, the circumstances around your mark and how you plan to use it will determine the best trademark application to submit.
Want to learn more about working with Wilson Murphy Law to register your trademark? Fill out the form below and get your client prospect guide.
What are the Differences Between “Intent to Use” and “In Use” Trademark Applications?
Much like their names infer, the main difference between “intent to use” and “in use” trademark applications involves the current usage of it. Are you already using it in commerce, or do you not have a need to do so yet but want it ready for future use? These are the questions you need to ask yourself when submitting a trademark application.
Below is a quick overview of these two trademark application options:
In Use (Actual Use)
When applying for a trademark that is already in use for commerce relating to goods or services currently sold with this mark, Section 1(a) Actual Use Application is the correct option to choose for your trademarking plans. This means that you have put your product out on the market for customers to purchase or consume (if it’s a YouTube channel or blog).
Intent to Use Application
If you have plans to use your trademark in the future, but as of yet have not, a Section 1(b) Intent to Use application is ideal for your situation. If you have a coming soon sign on your website, you have not launched, never sold a product, or have not put any blog posts or videos out for consumption (if filing for your blog or YouTube channel), then you’ll have to file an Intent to Use application.
USPTO Trademark Application Process and Qualifications
Trademark owners that are currently using their trademark will apply by using an “in use application basis. For its registration to be accepted, a Trademark Examining Attorney must have an example of it showing its use in commerce when filed. Failing to do so will delay the process because an Office Action goes to the applicant demanding an active example of the trademark.
The owner will also have to share with the United States Patent and Trademark Office (USPTO) when the mark was first introduced into commerce and used. This means that the trademark is currently in use commercially when relating to products and services listed on the application. For example, if you were to submit an “in use” application for belts and hats, but you only show the mark used for hats, then belts do not qualify for this option.
In this scenario, one can apply under “intent to use” concerning the belts since the trademark has not yet entered commercial use. This flexibility has helped many up and coming entrepreneurs develop branding for products, slogans, and even product names, and have the trademark protection they need before ever entering commercial use.
Don’t Underestimate the Power of a Trademark
Protecting current and future business initiatives and products is of critical importance to maintain competitiveness, highlighting the importance of trademark law. Whether you decide to use an “intent to use” trademark application option or “in use”, this process helps support your efforts to protect your property in a competitive marketplace. And don’t forget, before even starting the trademark process, you need to do a trademark search first.
In December of 2019, I was about to pull the trigger on the $5k club coaching program. My biz girlfriend highly recommended it, but I was over investing in my business and not getting ANY results. I was investing in other coaches, copywriters, FB ads, and everything else with little to no results and I was OVER IT.
I know what it’s like to make these investments in your business, and it’s nothing to take lightly. And registering your trademark is no different.
By the end of this post, you’ll get a glimpse of what happens when you invest in your trademark, and how it advances your business.
1.Positive trademarks generate customer loyalty
We all have brand loyalty to certain companies. Mine? Target and Chik-Fil-A. Why? Because these companies have INCREDIBLE customer service. Any time I go to these companies, I know I’ll feel a certain way after I leave. They’ve built their trademarks on goodwill. But those aren’t the only ways that you can build brand loyalty with your trademarks.
One way to do this is to produce quality products consistently, so that your customer can’t imagine going to anyone else. A company that has done a great job of this is Subaru. They have a cult like following and their customers repeatedly buy their cars. When you have a registered trademark, you can protect your brand from infringers who try to use your good name. Many times they are trying to confuse your customers so that the customers buy from them thinking it’s your business
2. You can expand into other product types and new markets
Are you only selling luxury or high ticket offerings?
Would you like to sell a lower tier offering so that you can expand your mark even more? Having a registered trademark and a brand that you’ve already established helps with expanding your products and market.
Most registered trademark owners have a certain type of consumer buying their product. It’s easier to increase your client/customer base because the brand has already established a reputation. So what does this look like?
A brand like Mercedes started producing a less pricier car so that people who’s budget was lower could still purchase their product.
But maybe you’re on the other side of this, and mostly sell lower tiers, and want to offer a higher tier product.
A company that’s been able to do this is Toyota through their Lexus brand. Toyota also has a loyal following, so when they came out with their luxury brand, they were able to expand their market to customers who had bigger budgets and loved the Toyota quality. For my service based businesses, most of you have a high ticket offering, but you can expand your client base and allow people to test the water by offering lower ticket items before they invest in the big ones.
3. Investors are more likely to fund your business
Investors love trademark registration. They are risking their own money because they believe in your business. They want to ensure that their money isn’t going down the toilet.
Investors don’t want your competition swooping in and registering the trademark. They don’t want to risk their money going to a lawsuit because you didn’t do the due diligence to get a trademark search and file the trademark application. Investors want to be assured that their money will continue to grow and make money.
If you invest in your trademark, investors interpret it as you not believing in your business. If you’re not protecting your business’s future, why should they?
According to a 2018 study, Trademarks in Entrepreneurial Finance: Empirical Evidence from Venture Capital Investments in Private Firms and Venture-Backed IPOs, found that registering trademarks help with business health, venture capital investment, and even IPO success.
4. Registered trademarks increase in value over time
The longer your business is open, the more likely you’ll have business growth, and an increase in customers/clients. This means more people are becoming aware of your brand. More brand awareness = More clients
More clients = More money
More money = Increase in value in your business
Consumers and investors look at your business as a whole, and your intellectual property portfolio is included. If you ever wanted to sell your business, the buyer will want to know the valuation of your company including your trademarks. That’s why it’s so important to invest in your trademark.
A company like HoneyPot had less value 10 years ago than it does today because there is more brand awareness. And now, just the name HoneyPot, brings value to the company.
5. Don’t use the trademark any more? Then sell it!
The best part about your investment is that it lasts as long as you’re still using it. You’ll have to “renew” it every 10 years through the USPTO website, but as long as you’re using the trademark as stated on the application, you should have no issue.
And you know what you can do if you decide you don’t want to use the trademark any more?
You can sell it!
Trademarks are running out, and some people are dying to use ONE NAME because of emotional ties. Now you’re getting a return on your investment from selling off your trademark that you no longer use because you own it.
When you invest in your trademark, the sky’s the limit. There are so many opportunities and advantages of registering your trademark, and you can get started today for free.
By grabbing the trademark process roadmap! This roadmap is a step by step guide that discusses what to expect when going through the trademark registration process. It also includes common mistakes that I see with trademarks and filing your trademark applications.
Have you ever looked into trademark registration whether through Google or Facebook Groups? There are so many trademark myths floating around and it’s unclear what’s true and what’s not. So many business owners hesitate to take this step because they aren’t sure what to believe.
One fact about trademark registration is that there are many benefits to owning your trademark.
In this post, I’ll be busting the trademark myths so that you know the truth about trademark registration and how it will help your business.
1. Copycats are going to copy regardless, so trademark registration is pointless.
Yes, I totally agree with the statement that copycats are always going to copy. But with a registered trademark, you can send a cease and desist letter or file DMCA takedowns with social media companies like Facebook and Instagram.
There’s a mindset issue that arises if you don’t think it’s worth protecting your brand. Why start a business, if you’re ok with anyone copying you?If you’re willing to defend your trademark, then trademark registration will always be worth it.
There are so many benefits to registering your trademark. For example, with a registered trademark, you get national ownership rights and the presumption that you own the name if you have to go to court. Not only that, but you also have confidence that the registered symbol will deter other companies from trying to copy. Don’t get trapped into believing this trademark myth because you’ll be missing out on opportunities with investors, especially if you’re expanding.
2. Trademark registration is easy and I can do it by myself.
Trademark registration is NOT easy. I do it for a living and there are many, MANY nuances and variables when filing your trademark application.
The application looks easy but you also have to make sure that you’re sending in the correct specimen that meets Trademark Office standards.
Certain requirements must be met depending on whether you sell products or services. Additionally, you need to be choosing the correct class for what you sell. Doing either of these incorrectly on your application will result in a denial letter, that you’ll have to correct.
3. I need to file trademark applications for EVERYTHING in my business.
No, just no.
Unless EVERY single product in your business is making bank, then you don’t have to trademark everything. At that point, you’re wasting a lot of money. If you are a high 6 figure or million-dollar corporation, then, by all means, get your Taylor Swift or Kardashian on and trademark everything. But if not, it’s best to choose the products that are making you money.
If you have no intention of keeping the names or logos, then hold off on trademark registration.
There’s a whole lot of maintenance that you’ll have to keep up with if you file a trademark application for everything in your business. It’s admirable that you think everything you create is genius, but it’s best to be intentional about registering your trademarks.
4. I can’t afford it.
Ahhhh… the one I hear quite often when I’m talking to a potential client. This is one of the trademark myths that can be resolved with a little bit of mindset work. I believe that someone can afford what he or she wants to afford. It truly depends on what is important to you.
At the beginning of my business journey, I couldn’t “afford” a business coach, but I came up with the money. Unfortunately, I didn’t do enough research on this coach, and it was a bust. But it was something I wanted and felt I needed to progress in my business. The lesson I learned was to do more research and ask the right questions.
If your business is important to you, and you couldn’t bear changing the name or doing a rebrand, then there are a few options to look into for investing in trademark registration.
You could use a credit card and pay it off.
You can ask your attorney to put you on a payment plan (I offer them and most attorneys do.)
You can budget and save for it. I’m a huge fan of Profit First. I now save for my investments so I can pay in cash and not skip a beat on paying bills.
If protecting your business name, logo, courses, and whatever else is important to you, then you’ll find a way to get the money for it. Don’t go in blindly and make sure you ask the right questions. You’ll find a list of the questions to ask in The CEO Legal Kit.
And remember, trademark registration is an investment that will grow in value. It’s the long game, not the short one when registering.
Now that I’ve debunked these trademark myths, you can make a better decision on registering your trademark. Make sure you grab the step by step trademark process roadmap below. This roadmap discusses what to expect when going through the trademark registration process.
This guide will help you make a decision to start the trademark process
Often, clients come to me really excited to work together to register their trademark. We hop on a phone call, and I ask them some questions. At that moment, I’m trying to gauge whether it’s a good fit and the likelihood of trademark approval.
Of course, I have to do my own research, but I’ve also picked up on some cues that raise red flags. When I hear one of those cues, I have to let the client know that maybe they aren’t ready or it’s time to go to the drawing board with their trademark.
Knowing whether or not you should register your trademark is difficult. There’s also this underlying pressure that you feel from other business owners to take the next step, but you’re not even sure if this is the route you want to take.
It takes some research but there are also mindset issues that clients need to work on to make this decision. This 5 step guide will give you the clarity on whether you want to take that next big step in your business and register your trademark.
Name you chose is similar to another registered trademark
First, if the registered trademark owner is monitoring the trademark, then you’re bringing unwanted attention to yourself. The trademark owner can and should send you a cease and desist letter. With that letter, sometimes come with a demand for money. Additionally, if you refuse to change the name and go forth with filing, you’ll also receive an office action from the trademark office. This office action will state they are rejecting your trademark for likelihood of confusion. Likelihood of confusion is when your mark is very similar to a registered trademark or pending trademark application. The ™ office believes that consumers will confuse your trademark with the registered one.
The trademark you’re using is a common phrase
So many businesses and celebrities try to register viral phrases. It’s getting much harder to register these phrases because the Trademark Office considers them common. If you are trying to trademark a viral phrase, make sure you register it immediately before it becomes “common”.
If you wait a while, then it’s best not to register, because the ™ Office will likely reject it. They do not believe that these phrases are source indicators for a product or service and therefore, not registrable. Usually you’ll be issued an office action. You have the option to respond and argue that your phrase isn’t common.
You are only selling your product or service locally
If you have no intention of expanding outside of your city and you don’t sell online, then you don’t need to register your trademark. Trademark registration gives you the national rights to your brand, but there are certain guidelines you have to meet.
One of those guidelines is that your trademark needs to be used in commerce. Use in commerce refers to the product being sold and shipped within the United States in the ordinary course of trade with the mark preferably displayed on the product itself or on external materials such packaging, tags and labels.
This means if you’re only selling to locals, then you would not qualify for trademark registration. There are some exceptions, but we won’t be discussing that in this post.
You haven’t found your forever name
If you don’t like the name of your business, then don’t waste your time or money registering a trademark. Once you’ve chosen a name that sticks, then you can start the registration process.
I’d also add that if you don’t love your logo, hold off on trademark registration for the logo.
You won’t monitor or defend your trademark
Trademark registration isn’t over once you get the certificate. Now is the hard part. Now you have to stop people from using your trademarks without your permission.
If you have no intention on keeping up with others and forcing them to remove your registered trademark from their products or services, then you’ve wasted a whole lot of time and money.
If that’s just something you don’t want to do or hire your attorney to do it for you, then skip out on trademark registration. Not monitoring and defending your trademark can lead to a generic mark, which no longer has legal protection. See the guy that registered the trademark for “escalator” and look at how that turned out for him. *Spoiler alert* Escalator is no longer a registered trademark.
If you’ve gone through all of these points, you should now have a better understanding about trademark registration. And as a trademark attorney, I honestly believe that not every business needs one. If one of these reasons resonates, take a step back and really think about whether it’s right for you.
Do you think your business needs one?
If you’d like to learn a bit more about the trademark process, then grab the roadmap below. It’s a step by step guide of what to expect when going through the registration process.
When you hire a trademark attorney, most will conduct a comprehensive trademark searches and opinion letters
Most attorneys that you hire will perform a comprehensive search. A comprehensive trademark search is a search that is conducted by a company that has access to federal and state databases, secretary of state databases, domains, and social media. When a comprehensive search is conducted, you’ll receive a report with names and rankings of similarity. An attorney will analyze the results and determine the risk of the trademark. She or he will let you know the likelihood that your trademark will receive registration. That means you aren’t wasting time or money on a mark that’s already taken. Additionally, you’re not putting yourself at risk by being sued by a registered TM owner.
When you hire a trademark attorney, you’ll receive a recommendation from an authority that you can trust.
You’re hiring an attorney whose focus is on trademark law
I don’t remember where I saw this but, would you hire an orthopedic surgeon to do heart surgery? No.
The concept is the same when hiring an attorney for your legal issues. Most TM attorneys exclusively practice trademark law and have the education and skills so that you can rely on them. Most people believe companies like Legal Zoom who charge much lower prices can handle their TM issues. However, they are not practicing attorneys. Don’t believe me? Here ya go.
This is directly from their website. If you have a trademark that has complications, they are likely not going to be able to help you.
Applications that are filed by attorneys are 50% more likely to be successful than ones that aren’t filed by attorney
I love statistics and believe that they really put things into perspective. When you hire a trademark attorney, you’re increasing your likelihood of approval. Most people are risk averse and don’t want to take the chance of rejection. Not only that, you are wasting money if you try to do it yourself and receive a rejection. It’s best to do it right the first time, because if you don’t, you still have to hire someone to fix it. In most cases, it costs more to fix it than to do it right the first time around.
Attorneys have strategies that they utilize so that your trademark has the best chance of approval. Unlike business consultants who state they can file your trademark for you (btw that’s illegal and your application could be void if caught), attorneys understand the law and have a good take on whether or not your mark will be successful.
83% of applications received an initial rejection letter
Read that again. 83% OF APPLICATIONS ARE REJECTED INITIALLY. Many times these rejection letters are avoidable because they are preventable. Some reasons include: similar trademark (that’s why attorneys do comprehensive searches), descriptive (an attorney can usually tell right off the bat), or an incorrect specimen (an attorney will give you the guidelines or grab your specimen for you). If you have no idea how to respond to this rejection letter, then you’ll have to hire an attorney anyway. Once again, that’s more money that has to come out of your pocket anyway.
Now that you have a better understanding of why you need to hire a trademark attorney, you can make a better decision on whether or not you’re ready to move forward with the process. If you’d like a better understanding of the trademark process, don’t forget to grab The Trademark Roadmap below.
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