Trademark for concealed carry opposed by soda manufacturer. COCA-COLA v. HOFF

A trademark is something on a product which indicates to consumers the identity of the manufacturer. A trademark can be registered with the United States Patent and Trademark Office to strengthen the rights associated with the trademark, but registration of a trademark is not necessary for a trademark owner to gain some rights to the trademark.

A trademark owner who does not jealouly guard their trademark can lose the right to the trademark if consumers stop associating products with the trademark owner. When a new application to register a trademark is filed with the United States Patent and Trademark Office a search is performed to see if there is a likelihood of confusion between the new trademark and existing registered trademark. Sometimes there isn’t a likelihood of confusion, but the senior trademark owner still believes registration of a new trademark will damage their existing trademark. This is known as dilution. In that case, it is up to the owner of a registered trademark to object to the registration of the new trademark.

Dilution by blurring is ‘association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark.’ Trademark Act Section 43(c)(2)(B). Dilution may be likely regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.

The Federal Circuit has a four element test which a plaintiff must prove in a Board proceeding in order to prevail on a claim of dilution by blurring: (1) the plaintiff owns a famous mark that is distinctive; (2) the defendant is using a mark in commerce that allegedly dilutes the plaintiff’s famous mark; (3) the defendant’s use of its mark began after the plaintiff’s mark became famous; and (4) the defendant’s use of its mark is likely to cause dilution by blurring or by tarnishment.

The Coca-Cola Company v. Robert Troy Hoff, Opposition No. 91244286 (TTAB 2021) is an example of a trademark application which was denied because it would dilute an already registered trademark.

This case begins when the applicant filed Application Serial No. 87822744 on March 6, 2018. Applicant says his trademark consists of the stylized words ‘CONCEAL-CARRY’ positioned directly above the stylized words ‘REGISTERED HANDGUN’. An example of applicant’s mark is reproduced above. Applicant sought to register the stylized mark shown on the bottom of the above image for “Hats; Hoodies; Jackets; Jerseys; Sweaters; T-shirts; Graphic T-shirts; Short-sleeved or long sleeved-t-shirts; Sports jerseys,” in International Class 9.

Opposer is an internationally known soft drink manufacturer. Opposer’s trademark is reproduced above. Opposer asserted both likelihood of confusion and likelihood of dilution as reasons why applicant’s trademark should be refused registration.

The Trademark Trial and Appeal Board sustained the opposition because it found that dilution of the Coca-Cola Script trademark was proven by a preponderance of the evidence. The TTAB found that Opposer’s trademark qualified as a famous trademark. The Opposer was using its trademark before the Applicant. The similarities between the two trademarks was likely to dilute the Opposers trademark. And finally that there were countless ways in which Applicant could have displayed the words “Conceal Carry” on his goods to communicate his claimed messages regarding gun rights, but he chose to display those words in a script that we have found above immediately conjures up the famous Coca-Cola Script. Based on these findings Applicant’s trademark was denied registration.

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