Recently, numerous news publications have rather gleefully reported that the Sussexes (a/k/a Harry and Meghan) intent-to-use trademark application for the word mark ARCHETYPES has been rejected by the USPTO due to the likelihood of confusion with a previously registered mark. The rejection has been viewed by many as a deserved comeuppance for the couple’s actions since leaving England’s royal family.
Quite apart from one’s personal opinions of the Sussexes, trademark law is trademark law. This blog discusses the USPTO’s rejection of the ARCHETYPES mark to emphasize the factors that the examining attorney relied on to reach her likelihood of confusion conclusion. The rationale for her rejection is instructive for those who are considering seeking registration of a trademark which is very similar to already existing registered mark(s). In particular, it is important to note that the applicant’s and registrant’s specified goods/services need not be identical for a likelihood of confusion finding by the USPTO.
- Actual Status of the Application
The news headlines have not been totally accurate regarding the status of the ARCHETYPES mark. The USPTO has issued only an initial rejection, not a final rejection of the mark. The initial rejection was on January 18, 2023. The applicant has until July 18th to respond to the initial rejection. If the USPTO’s examining attorney finds that the response overcomes her initial rejection, the application will receive a Notice of Allowance. After filing a Statement of Use which meets the USPTO’s requirements, the mark will then be registered.
On the other hand, if the examining attorney issues a final rejection, Archewell Audio will have the right to appeal the USPTO’s decision to the Trademark Trial and Appeal Board (TTAB ) and/or through federal courts of law. It is noted that the Trademark Trial & Appeal Board’s (TTAB) affirmance rate of examining attorneys’ final rejections is 95%. Accordingly, Archewell Audio will likely have a difficult road ahead to obtain registration of the ARCHEWELL mark.
- The Lack of the Applicant’s Verification Signature in the Application
The application, filed by an attorney, was cited by the examining attorney for being unsigned. As such, neither Archewell Audio’s authorized representative nor its attorney ever verified certain statements that must be verified in every application. Why not? This failure is an example of sloppiness on the part of the attorney representing Archewell Audio. Either that or Archewell Audio’s authorized representative or its attorney (based on personal knowledge) was unwilling to attest to the following:
The applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; the applicant believes applicant is entitled to use the mark in commerce on or in connection with the goods and service specified in the application; that to the best of the signatory’s knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such persons, to cause confusion, mistake, or to deceive, and that the facts set forth in the application are true.
- The Examining Attorney’s Likelihood of Confusion Analysis
Archewell Audio’s application (SN 97332048) included lengthy listings under both: 1) Class 9 for downloadable audio recordings, podcasts, webcasts, all in the fields of cultural treatment of women and stereotypes facing women; and Class 41 for entertainment service, namely, an ongoing podcast series in the field of cultural treatment or women and stereotypes facing women.
In finding likelihood of confusion, the examining attorney relied on registration no. 5481385, also for the mark ARCHETYPES. The registration date was May 29, 2018 and its first use in commerce was in 2012. The registration specifies services under Class 41: Providing a website featuring blogs and non-downloadable publications in the nature of articles in the field(s) of nutrition, fitness, sexuality, psychological self-improvement, personality identification and matching, personal relationships and dating, spiritually, horoscopes, and astrology, fashion, music, and reviews and recommendations for books.
A. The Two Marks are Commercially Identical.
The examining attorney first compared the marks, finding them to be identical in nature and in commercial impression. Accordingly, the marks were found to be confusedly similar just in looking at them, thereby engendering the same connotation and overall commercial impression. This means that consumers would be confused as to just who is providing the goods and/or services – the applicant or the registrant.
B. Archewell Audio’s Services Encompass the Registrant’s Services.
Next, the examining attorney compared the goods/services to determine whether they are similar, commercially related, or travel in the same trade channels. Under trademark law, it is important to understand that the goods and/or services need not be identical or even competitive to find a likelihood of confusion. Importantly, they need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken believe that the goods and or services emanate from the same source.”
The examining attorney noted the broad wording of Archewell Audio’s application to describe podcasts, downloadable and pre-recorded goods in Class 9 as well as ongoing podcast series, television series, and related services in Class 41. She concluded that the reference to services in the “fields of cultural treatment of women stereotypes facing women” encompasses all of the goods and services of the types described for the registered mark in the field of sexuality, personality, identification, personal relationships, dating, spirituality, and related topics. This is so even though the registered mark is for blogs and non-downloadable publications but not podcasts.
C. Podcasts and Blogs May Emanate from a Single Source Under a Single Mark Thereby Leading to Confusion.
Here, the examining attorney relied on third-party registrations to establish that blogs and podcasts on issues facing women are of a kind that may emanate from a single source under a single mark. The examining attorney did not interpret Archewell Audio’s reference to “cultural treatment of women and stereotypes facing women” as sufficient to distinguish its goods/services from the registrant’s services.
Additionally, the examining attorney provided evidence to establish that today it is common for bloggers to produce podcasts. This means that the same entity commonly produces or provides the relevant goods/services (podcasts/blogs) and markets the goods/services under the same mark. Accordingly, Archewell Audio’s and the registrant’s goods are considered related for likelihood of confusion purposes.
- Conclusions
It is not known whether Archewell Audio actually conducted a trademark search prior to filing the application to evaluate non-registration risks. If not, why not? Did their attorney provide any cautionary guidance? If so, perhaps the attorney and her clients thought that the specific reference to the cultural treatment of women and stereotypes facing women would be sufficiently limiting to overcome a likelihood of confusion analysis with registration no. 5481385 for the same mark. Also that podcasts and blogs are not related goods. The examining attorney concluded otherwise for the reasons discussed above as supported by numerous TTAB and court decisions.
The above discussion shows that there is much more to a likelihood of analysis than meets the eye, especially where the applied-for mark provides the same overall commercial impression. It is also important to understand how technology can “transform” a good/service into a more modern version of the good/service. For example, blogging transformed the content communication highway. No longer is content reserved for written publications such as hard-copy journals or magazines. And thanks to platforms such as Spotify and Apple, podcasts are now hugely popular. Consistent with the examining attorney’s opinion that a blogger is often a podcaster, the author receives emailed blogs from some her favorite podcasters.
Also puzzling is the fact that Archewell Audio’s application was not properly signed. Why not? It is not clear how the USPTO even accepted an unsigned application through its electronic filing system. The author has never filed an unsigned/unverified application. Procedures are in place for electronically sending the application to the applicant’s authorized representative for the verification signature.
- Where Do the Sussexes Go From Here?
Whether or not the mark is approved for registration remains to be seen presuming a response to the examining attorney’s office action is filed. Based on the likelihood of analysis factors relied on by the examining attorney as discussed above, it appears that registration of the Sussex’s ARCHETYPES mark is highly unlikely. If a response is not filed, the application will become abandoned.
One option available to Archewell Audio is to seek a consent or coexistence agreement with the owner of the registered mark, an Arizona limited liability company. If the registrant agrees, the USPTO will still need to approve the agreement before granting registration. Click here for a blog on requirements for such an agreement from the USPTO’s perspective.
Finally, since their application was filed, Spotify has cancelled the Archetypes podcast. If the USPTO grants a Notice of Allowance on this intent-to-use application, Archewell Audio will need to demonstrate the mark is in use to progress to actual registration of the mark.
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Thank you for your interest in this blog. As usual the content is for informational purposes only and is not legal advice.
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