This week’s post presents a good example of why trademark registration owners cannot merely rely on the Trademark Office to prevent the registration of confusingly similar trademarks. On August 15, 2010, a Texas resident named Charles Caudle filed an intent-to-use trademark application for the mark GREATERADE. The identification of services listed in the application states that the mark will be used in connection with a “dietary supplement beverage for energy, promoting digestion and hydration.” The Trademark Examining Attorney assigned to the application approved it and the application was published for opposition on February 1, 2011.
Hmmmm, does this GREATERADE trademark remind you of a certain product that you see in every grocery store, convenience store, supermarket, and gas station? Perhaps you’ve noticed professional, collegiate, and high-school athletes gulp it down during a timeout or while they’re resting on the bench? Maybe you’ve seen an advertisement for the product while watching television, reading a magazine, or surfing the Internet? OK, now raise your hand if you guessed that I’m referring to the Gatorade sports drink. Wow! It’s unanimous! I see 100% of readers with their hands up! I always knew my readers were geniuses. You should all be trademark attorneys.
Of course, it’s not surprising that the Gatorade company has federally registered its GATORADE trademark. In fact, Gatorade owns a whopping 23 trademark registrations for marks that incorporate the word GATORADE, including its very first one dating back to 1968 (Reg. No. 848245). Most of these marks are registered for either beverages, sports supplements, or food products, and almost all of them were in existence at the time Mr. Caudle filed his application for GREATERADE. So, I’m sure you’re wondering why the Trademark Examining Attorney failed to cite any of Gatorade’s registered trademarks as a basis for refusing registration of Caudle’s mark. I mean, don’t you think that GATORADE and GREATERADE are extremely similar in both appearance and sound? Can there really be any question that the energy drink listed in Caudle’s application is, at a minimum, strongly related to the products listed in Gatorade’s various registrations?
Well, the Trademark Examining Attorney’s approval of Caudle’s GREATERADE application left Gatorade with no choice but to take matters into its own hands. On May 13, it filed an opposition against the GREATERADE application on the basis of its long-standing prior rights in the GATORADE trademarks. In addition to the standard likelihood of confusion allegations you would expect to see in an opposition of this nature, Gatorade also claims that GATORADE is a “famous” mark entitled to broad dilution protection for which proof of likely consumer confusion is not required. If this isn’t a slam dunk case, I don’t know what is.
As a trademark attorney who almost exclusively represents small and start-up businesses, I find this entire situation disheartening. Although large companies (like Gatorade) have the money and resources to closely monitor the federal trademark records and to challenge applications that they believe should not have been allowed for registration, most small companies simply do not have that luxury. They are counting on the Trademark Office to protect their rights and to prohibit the registration of confusingly similar marks. If Gatorade only had annual revenues of $50,000 and not $5,000,000,0000, I can almost guarantee that Gatorade would have never learned of the application for GREATERADE, and even if it did, it wouldn’t have the bankroll to do anything about it. Yes, it is true that reasonable minds can differ as to what is confusingly similar, but when the GREATERADE application was being examined, shouldn’t any doubt have been resolved in favor of Gatorade, especially considering that it has owned a federal registration for GATORADE for 43 years and that the Trademark Examining Attorney was likely personally familiar with Gatorade products? I certainly think so.
But what do you think? Definitely let me know if you disagree and your reasons for doing so. In the meantime, I’ll go drink a few Gatorades to prepare for the impending onslaught of comments…