likelihood of confusion

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For more than 20 years, Texas personal injury lawyer Jim Adler has called himself The Texas Hammer® and more recently El Martillo Tejano®.  After spending millions in television, print, and billboard advertising, Jim Adler with his iconic sledgehammer has become one of the most recognizable personal injury attorneys in Texas.

Adler also uses these trademarks in internet advertisements. He purchases Google “keyword ads” using the phrases JIM ADLER, THE HAMMER, TEXAS HAMMER, and EL MARTILLO as search terms. When a consumer performs a Google search using any of these trademarks as a search term, Adler’s advertisements appear.

A legal marketing firm also began purchasing these same phrases as keyword ads so that the firm’s click-to-call ads would appear alongside Adler’s ads.  The click-to-call ads caused the user’s phone to make a call to the firm’s call center rather than visiting the website.  When the firm’s call center answered the telephone, they used a very generic greeting in what Adler claimed was a clever bait-and-switch effort to convince the consumer to engage lawyers referred through the marketing firm and not Adler’s firm.Continue Reading Using an Invisible “Texas Hammer” May Cause Trademark Confusion

[To highlight B&E’s trademark practice, the Fort Worth Business & Employment Law Reporter is starting a new feature highlighting some of the trademark decisions of the Trademark Trial and Appeal Board.] 

Recently, In re Architectural Mailboxes, LLC, the Trademark Trial and Appeal Board (TTAB) refused registration of applicant’s BILT mark for “non-metal mailboxes, excluding office products,” determining that the mark was likely to cause confusion with another trademark owner’s previously registered BUILT TO INSPIRE mark for “office furniture, namely, lecterns; table dividers; non-metal mailboxes; cabinets, and storage cabinets, furniture cabinets; tack boards; display boards; track systems consisting of tracks and rollers for cabinet drawers, being parts of cabinets.”  Among other things, the TTAB noted that there was a complete overlap in the goods, which weighed heavily in favor of a likelihood of confusion and also created a presumption that the trade channels and prospective customers overlapped.  The TTAB further rejected the applicant’s argument that BUILT TO INSPIRE was conceptually weak, noting that applicant’s evidence of other registered marks that included the term BUILT were not for the same category of goods and service at issue in this application—i.e., non-metal mailboxes. Continue Reading TTAB Refuses Registration of BILT Mark Based on Likelihood of Confusion