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Just Kidding: “NoJoke” Brand for E-Cigarettes Not Confusing with “Joker” for Cigarette Paper

The Trademark Trial and Appeal Board (TTAB) found the mark JOKER for cigarette paper dissimilar with the mark NOJOKE for e-cigarettes. Republic Technologies, owner of the mark JOKER and related federal trademark registration, opposed an application to register the mark NOJOKE for e-cigarette liquid.

During the federal trademark application process, after examination by the Examining Attorney, a trademark application is published in the Official Gazette for 30 days. During these 30 days, a third party can oppose the trademark application with the TTAB presuming there are grounds to challenge the application. Until the opposition is resolved, the application process is stalled. Often oppositions are based on a likelihood on confusion between the opposer’s mark and the applied for mark, as was the case with Republic Technologies. A TTAB opposition is effectively litigation within the TTAB, but the fight is over the right to register the applied for mark, as opposed to damages in typical litigation.

Some trademark owners engage watch services to monitor what marks are applied for with the United States Patent and Trademark Office (USPTO) and what marks reach the publication period. This is critical so the potential opposer can either contact the applicant directly, or formally oppose the application during the 30 day publication window with the USPTO. If this window is missed, the opposer would have to wait and seek cancellation of any resulting registration. The opposer may also have grounds to assert trademark infringement if or when the applicant begins using the applied for mark in business.

In some cases, the opposer and applicant agree to enter into a co-existence agreement. A co-existence agreement is a contract where each party agrees that the respective marks (brands) do not cause confusion in the marketplace, that the parties will not oppose each other’s applications/registrations in the specified classes, and other conditions as the parties agree upon. Oftentimes, an Office action rejection by an Examining Attorney based on likelihood of confusion will be retracted if the parties enter into a co-existence agreement with the correct language.

Turning back to the TTAB decision here, the TTAB stated that the products are related as they are sold by the same retailers (cigarette paper and e-cigarette liquid). The board also noted that the federal government restricts the marketing of cigarette paper. This fact decreased the strength of opposer’s mark as the opposer is limited to direct retail sales, trade shows, and point of sale engagement.

Although the two marks use the same base of JOKE, the TTAB held that that two marks have different impressions. NOJOKE emphasizes the truthfulness of something potentially unbelievable, and communicates an air of seriousness. While JOKER, and its design mark (logo) gives the impression of a court jester, a comic foolish clown. The TTAB stated that despite the common base term, the meaning and impressions of the marks are not similar. The Board dismissed the opposition, which allows the application for NOJOKE to proceed.

If you need help monitoring your trademark portfolio or want to oppose/cancel a pending trademark application/registration, contact Board Certified Intellectual Property Attorney Greg Popowitz.

Greg M. Popowitz, Esq.

Board Certified in Intellectual Property Law

Registered Patent Attorney

ASSOULINE & BERLOWE, P.A.

Miami Tower

100 SE 2nd Street, Suite 3105

Miami, Florida 33131

Main: 305.567.5576

Fax: 305.567.69343

Email: GMP@assoulineberlowe.com

http://www.assoulineberlowe.com/

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