Tesla CEO Elon Musk has seen his share of lawsuits, but a recent trademark dispute was anything but “boring.” In fact, it involved one of the entrepreneur’s other ventures — an infrastructure firm named The Boring Company (TBC). When the Delaware-based construction services startup discovered that a Brooklyn snack company filed a trademark application with a similar name, it filed an opposition based on the likelihood of confusion.
The Boring Company LLC’s trademark application for “The Boring Snack Company” was abandoned in October 2021, pursuant to a decision of the Trademark Trial and Appeal Board in an inter partes proceeding. However, there are several critical takeaways from the dispute. The case raises the essential question of whether — or when — a likelihood of confusion can exist between two very different companies.
The Boring Company claimed in its opposition to the snack company’s trademark application that it had been using the double entendre in connection with its construction services since 2006. Subsequently, The Boring Company was founded in 2017 “with the objective of reimagining urban commute through use of underground tunnels,” as stated in the Notice of Opposition. While the services offered by The Boring Company are not likely to be confused with cookies, candy, chocolate covered pretzels, or ice cream, Musk’s firm made a compelling argument to halt the snack company’s filing, nevertheless.
In its opposition to the snack company’s trademark, The Boring Company asserted that it had been successful in selling a variety of goods under the name, ranging from hats to products dubbed “not-a-flamethrowers.” Accordingly, it argued that food goods offered under what was purportedly an identical mark would cause consumers to believe they were promotional or novelty items offered by the company.
The infrastructure company also contended that there were no restrictions or limitations regarding The Boring Snack Company’s channels of trade. Accordingly, this raised the concern that the trade channels in which each company sells their goods could potentially overlap. The Boring Company also noted that the trademark application was filed as an use-in-commerce basis — with a first use date of just two days prior to the filing.
The United States Patent and Trademark Office permits similar trademarks to be filed if they are registered in different industries. In such cases, the guiding principle is that consumers would not likely be confused if two unalike businesses share the same name. For example, it’s highly unlikely that a consumer would confuse Delta airlines with Delta faucets.
However, there are certain situations in which the use of one name for two businesses would constitute infringement. To determine which party would be permitted use of the mark if a conflict arises, the following factors would be considered:
In the opposition proceeding, Musk’s infrastructure firm undoubtedly had priority rights in that it was both first to use the mark and register it with the USPTO. Although both companies were selling their goods in interstate commerce, the snack company might have effectively argued that the industries were not related. Importantly, the remaining question in the case was whether consumers would think snack foods offered by The Boring Snack Company were a unique offering by the well-known business, “The Boring Company.”
One of the most crucial lessons trademark owners can learn from the case is the importance of monitoring and maintaining a trademark. While the USPTO registers trademarks, confusingly similar trademarks can sometimes be missed during the application examination process. Critically, the USPTO does not notify owners if a similar mark has been published in the Official Gazette — it is the owner’s responsibility to defend their brand against unauthorized use, infringement, or potential dilution.
When a trademark is properly monitored, an owner is alerted in the event they may need to take action to protect their brand. Any party with a legitimate interest in the mark can file a Notice of Opposition within 30 days of publication. Opposition proceedings are heard by the Trademark Trials and Appeal Board and are administrative trials. Discovery is permitted and the parties may request an oral argument.
If you discover that another business has filed a USPTO trademark application with a mark that is similar or identical to yours, it’s vital to take the necessary measures to safeguard your brand. Located in Ann Arbor, Michigan, the Trademark Lawyer Law Firm, PLLC works with business owners and entrepreneurs in a wide variety of industries to help ensure their trademarks and bottom lines are protected. Contact us today to schedule a free 15-minute consultation.
Suspensions are when your application is on hold. There are various reasons a trademark application can be suspended. However “likelihood of confusion” with prior application(s) filed and submission of foreign application are the most common reasons the USPTO may suspend an application. During a trademark suspension period, your lawyer will provide guidance on the next steps and whether it might be best to file an argument or pursue a coexistence agreement.
A disclaimer usually refers to a statement which indicates that you are not claiming exclusive rights to use the word(s) or a design element in your trademark application. A disclaimer allows for registration without creating a false impression of the registrant’s rights.
A good example of this is disclaiming “café” if your services are for a café.
If a trademark is not eligible for the Principal Registry, there is sometimes an option to register on the Supplemental Registry.
In cases where the USPTO finds the trademark application is merely ornamental, merely descriptive, or primarily geographically descriptive, the USPTO may allow the application to be registered on the Supplemental Registry. However, over time, the mark may acquire distinctiveness and possibly become eligible for the Principal Registry.
Two dates must be specified in a trademark application:
Date of First Use Anywhere: The “anywhere” refers to use in the U.S. or elsewhere. This is the date the goods were first sold or transported, or the services were first rendered under the mark. The use must also have been bona fide and in the ordinary course of trade.
Date of First Use in Commerce: This is the date when the goods were first sold or transported, or the services were first rendered under the mark in interstate or international commerce. The use of the mark must have been bona fide and in the ordinary course of trade.
The renewal timeframe for a trademark is between the 9th and 10th year anniversary of the trademark registration, and then in ten-year intervals. It is important to be aware that the USPTO also requires a registrant to provide an affidavit at the 5th and 6th years of ownership stating that the trademark is still being used in commerce. Failure to comply with the renewal timeframes or the affidavit requirements will result in the cancellation of the trademark registration.