Loufrani has been embroiled in several trademark oppositions with Wal-Mart at the Trademark Trial and Appeal Board (“TTAB”) over the “smiley face”. Wal-Mart had opposed two of Loufrani’s applications (here and here) to register his Smiley design mark (pictured above). See Wal-Mart Stores, Inc. v. Franklin Loufrani, Opposition Nos. 91150278 and 91154632. Wal-mart also sought to register its own Smiley logo (pictured below), which Loufrani later opposed. See Loufrani v. Wal-Mart Stores, Inc., Opposition No. 91152145 (Filed July 23, 2002).
The Board stated that the “smiling face” design is a “ubiquitous, non-inherently distinctive design” and a “common feature of modern American culture.” Nonetheless, the Board found that Wal-Mart had proven that its Smiley had acquired distinctiveness prior to Loufrani's priority date of June 3, 1997 – based on its “truly impressive” amount of money on advertising (including television) before Loufrani’s filing date.
The Board also found a likelihood of confusion between Wal-Mart’s smiley face and Loufrani’s proposed mark for 17 out of the 23 classes of goods recited Loufrani’s application (not that it mattered since the Board’s finding of non-distinctiveness applied to the entire application).
It will be interesting to see if Loufrani continues his fight given the Board’s opinion about non-distinctiveness.
In addition, given that it took a “truly impressive” amount of money for Wal-Mart to stake a claim on a “ubiquitous, non-inherently distinctive design” that has become a “common feature of modern American culture,” one wonders if Eat ‘N Park can continue to claim exclusive rights to its “smiley” cookies when most (if not all) of Eat ‘N Park’s defendants are merely decorating a cookie with that captures this famed ornamental symbol.
Does anybody out there really think that Eat ‘N Park has the same “impressive” advertising dollars to back up its claim of acquired distinctiveness? As the TTAB stated “Considering that we have already determined that the smiling face is a common feature of modern American culture, [acquired distinctiveness] will not be something easily achieved."