TRADEMARK LAW
Tired O' Big Bullies

Our client runs a truck stop and convenience store, known as Danny's A Big Rig Resort. When we considered applying for a U.S. Trademark Registration for the mark, no amount of clearance searching would have warned us that Big O Tires would have an issue with our client's marks. Look closely--the only similarity is the word "BIG." Turns out Big O also owns a registration for "BIGFOOT" -- a term which also shares...the word "BIG."

Perhaps we might have had some forewarning that we were in for legal harassment if we had done some investigating into the regular, and countless Opposition proceedings filed on behalf of Big O by their trademark counsel, for practically everything and anything containing the word BIG in the mark for automotive or truck related goods (BIG LUG; BIG DAWG; BIGGS; BIG DADDY'S; SERVING A BIG WORLD WITH SMALL TIRES...the list goes on and on). A review of the disposition of these proceedings, in which Big O filed Oppositions against these various applications, reveals a series of default judgments. That's right, Big O wins over and over by having deep pockets, filing expensive litigation, and harassing these Applicants into fleeing from their trademark rights.

When Danny's A Big Rig Resort and its co-pending A Big Rig Resort met a similar fate last winter, we found ourselves facing a similar likely capitulation by our client, who, like most small business owners in hard times, are not inclined to devote precious resources to defend their title in a trademark registration dispute. And unlike attorneys working on The Innocence Project devoting their time to freeing wrongly convicted men on death row, the causes we take up are not celebres, and I know my own time is usually too scarce to donate to trademark causes.

But something here called for justice -- so my partner and I threw our own resources into our winning position. Our summary judgment motion in the TTAB Opposition brought against our client by Big O Tires relied on our firm conviction that the use in common of the word "BIG" is insufficient to establish a likelihood of confusion. In relying on a handful of prior Lanham Act cases which focused exclusively on the dissimilarity of the marks, we took the risky position that conceded all relevant issues except similarity of the marks.

Justice prevailed: in a decision this month the Board held that there is no confusing similarity just because both marks contain the word "Big." Big O has finally lost -- to one of the only opponents to bring the case to a legal disposition. Although the case has not been designated as precedential, we plan to make it a decision Big O will have to wrestle with for a long time, as we send it out as ammunition to all of Big O's unfortunate TTAB adversaries. See discussion.