January 17, 2007

Addition of Two New Member Countries to the European Union Means More Rights for Trademark Owners

On January 1, Bulgaria and Romania became the 26th and 27th members of the European Union ("EU"). Bulgaria and Romania are probably not on your radar now, but they may be in the future, as the two countries continue to grow their economies and modernize their infrastructures to meet EU standards.

In the meantime, the news is likely to affect your trademark rights if you are doing business in Europe, or if you are planning to expand your business to the Balkan states.

First, a few words about trademarks in Europe. The EU has a system, called the European Community Trademark ("CTM"), that allows companies and individuals to file a single trademark application that covers all member countries (instead of having to file individually with each country's trademark office). When new countries join the EU, like Bulgaria and Romania did two weeks ago, they join that system automatically.

What does this mean practically?

First piece of good news for companies with pre-01/01/07 CTM applications and registrations: their trademark rights are automatically extended to the two new member countries. They can now enforce their marks in Bulgaria and Romania -- even if the infringers have filed trademark applications in those countries. Of course, with the good comes some bad (and possible confusion). To help in the transition, owners of national trademarks in Bulgaria and Romania have been granted an exceptional right to oppose confusingly similar CTM marks filed between July 1 and December 31, 2006. The extension of the EU also means that the CTM office can now object to marks on the basis that they are generic or descriptive in Romanian and Bulgarian. This will not be a problem for most companies as their marks probably do not have a meaning in those languages. Nevertheless, companies looking to file trademarks in the EU may want to take these new elements into consideration when chosing a mark to be used in the European market.

For more information about what the EU enlargement means from a trademark perspective, the European Trademark Office published a circular available at:
http://oami.europa.eu/en/enlargement/enlargement2007.htm

Posted by Sophie Cohen at 10:49 AM

November 25, 2006

Government Genericize? SINGER revisited in ZIPLOCK?

Listening to the new "3-1-1" airport public service announcement, the approved phrasing for the rules of what liquid/gels are allowed through security is:

"Three One One means that you can take as many separate three ounces of liquid/gels that fit in one 1 quart ZIPLOCK bag per person"

The trademark ZIPLOCK is owned and registered throughout the world by SC Johnson as applied to "disposable, re-sealable plastic bags and containers".

But the government approved verbiage is not that the "3-1-1" analysis will include any 'disposable, re-sealable, plastic bags'. It states that 1 quart ZIPLOCK bags are required.

Travelling as much as I have since the liquid/gel airport security issue arose on August 10th of this year, I have not seen any resealable bags, not from SC Johnson, turned away. And there are many such nonZIPLOCK bags which are going through security every minute.

Could SC Johnson make a claim that the government use of the mark ZIPLOCK is causing genericide?

One of the chestnuts of trademark lore is that once a trademark falls into the generic, it can not be redeemed back into the more elevated status of being a trademark. The exception that proves the rule, as the idiom goes, is when the U.S. Government was accused of having caused the mark SINGER to fall into generic, and was then found to be a trademark in the case of Singer Mfg. Co. v. Briley, 207 F. 2d 519, 520-21 (5th Cir. 1953). [Compare Singer Mfg. Co. v. June Mfg. Co., 163 U.S. 169 (1896) (holding that “Singer” a generic term for sewing machines) with Singer Mfg. Co. v. Briley, 207 F.2d 519 (5th Cir. 1953) (holding that “by the constant and exclusive use of the name ‘Singer’ in designating sewing machines and other articles manufactured and sold by it and in advertising the same continuously and widely – [plaintiff] recaptured from the public domain the name ‘Singer’. . . [which] has thus become a valid trade-mark . . . and is entitled to protection as such”). If, as this Court recognized in Singer, it is possible to reclaim from the public domain even a mark held generic by the Supreme Court

Why would SC Johnson not claim that the government is emperiling the validity of that valuable mark, ZIPLOCK? And what is the statute of limitations on trademark infringement, anyway?

Posted by Kate Spelman at 07:52 PM

November 12, 2006

Parody Going to the Dogs

Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 2006 WL 3182468 (E.D. Va. Nov. 3, 2006)

Pamela Reeder is the founder of Haute Diggity Dog which is dedicated to making fun of our globalized disease of affluenza while making some of her mortgage payment. Her company is self described as a "parody, plush, pet toy company" and the images of her products are depicted below, including "Sniffany & Co," "Chewnell No. 5" and "Chewy Vuiton."

When Louis Vuitton filed a trademark and dilution action in Virginia against the parodist, the court lost no time in ruling in favor of Haute Diggity Dog, saying:

"This dog of a case gave the court a great amount of facts to chew upon and applicable law to sniff out. Nonetheless, having thoroughly gnawed through the record, this Court finds that no material dispute of the fact remain."

and:

"The name "Chewy Vuiton" is, like "Timmy Holedigger," an obvious parody of a famous brand name. The fact that the real Vuitton name, marks, and dress are strong and recognizable makes it unlikely that a parody-particularly one involving a pet chew toy and bed--will be confused with the real product."

Vuitton also claimed copyright infringement. Why not just trademark infringement? Because, in 2002, Vuitton collaborated with Japanese pop artist Takashi Murakami to re-invent Vuitton's signature gold and brown monogram design. What resulted was a multicolor monogram design and a line of handbags and accessories that inspired a cult-like following. It seems that Murakami filed a copyright application for his design in 2002. On-line Copyright Office records list Vuitton as claimant and the work as "work made for hire."

The opinion raised the question of ownership of the copyright but concluded that the issue was irrelevant because defendant's use of the copyrighted work was fair use, specifically a parody.

It is interesting to note that the court analyzed whether "Chewy Vuitton" and the "CL" monogram constituted copyright fair use, even though LOUIS VUITTON and the VL monogram are really trademarks, not copyrights. The issue should have been instead whether defendant's overall design and arrangement of colors constituted fair use of the Murakami copyrighted design.

Posted by Kate Spelman at 11:21 AM

September 07, 2006

What Happens in Vegas, Stays in Court

The District Court of Nevada has found that Adrenaline Sports' use of the mark WHAT HAPPENS IN VEGAS STAYS IN VEGAS infringes the use by The Las Vegas Convention and Visitors Authority ("Convention Authority") of the slogan WHAT HAPPENS HERE STAYS HERE.

In December of 2002, the Convention Authority launched its "Vegas Stories" advertising campaign. All of the commercials ended with a display of the words WHAT HAPPENS HERE STAYS HERE. In April of 2003, defendants began using the mark WHAT HAPPENS IN VEGAS STAYS IN VEGAS and obtained a Nevada state registration for the trademark.

In looking at all the Sleekcraft factors, the court found that while the marks are not identical, the terms "here" and "in Vegas" are interchangeable, particularly in light of the fact that in this case, both phrases relate unequivocally to Las Vegas. "Consumers who purchase Defendant's clothing are not likely to stop and consider the difference between 'Here' and 'In Vegas' before deciding the purchase such clothing." Thus, even though other factors (including the marketing channels for the two marks) are distinct, the similarities in the marks coupled with the level of care a purchaser might expend in buying schwag, confusion was likely.

Posted by Tsan Abrahamson at 10:30 AM

September 06, 2006

I Love You . . . You Sue Me . . . We're A Happy Parody

Barney parodist Stuart Frankel, a doctor with a lot of free time, has filed a declaratory relief action against Lyons Partnership, the creators of the lovable character Barney, the Purple Dinosaur. The action, filed in the Southern District of New York, seeks a declaration that Frankel's website, Stuart Frankel's Very Small Webpage does not infringe any protected copyright or trademark related to Barney.

The website portion in question pokes fun at the Barney and Friends television show, claiming that Barney leads a double life and in fact is an evil demon. Sources who watch The Barney Show regularly have confimred that this information is not contained in the actual show (notwithstanding the fact that all sources were under the age of four, we stand by the voracity of these statements).

According to the suit, filed in late August of this year, Plaintiff received several threatening letters from Lyons attorney, demanding he cease operating the site or risk legal action. Notwithstanding Plaintiff's responses -- through his counsel -- that Lyons attorney speak directly with counsel and stop sending letters to him, the letters kept coming, in form-letter style, directly to Plaintiff. The letters alleged that Frankel had infringed the BARNEY trademarks and copyrights and threatened to have Frankel's website taken down as a result.

While trademark law does acknowledge parody as a partial defense, it is not a complete defense. The measure of whether a third party's use of a trademark is fair will be determined under the same standard as any trademark infringement suit, namely, whether the relevant class of consumers believes that there is any affiliation with or sponsorship by the relevant class of consumers. The content of the web page -- much like a "sucks" website -- seems to establish that Stuart is not a fan of the cuddly character.

From a copyright perspective, parody constitutes a fair use and a complete defense to copyright infringement. Given that the site is non-commercial, and the images of Barney are limited to two, both of which are probably necessary to establish the parody, the plaintiff may well get his wish, but one thing's for sure: he won't be a guest on the "Let's Have Fun with Manners" episode.

Posted by Tsan Abrahamson at 05:29 PM

May 11, 2006

YWCA Dances into Contributory Infringement Claim

Habeeba's Dance of the Arts, Ltd. ("Habeeba"), which provides dance instruction and performances under the mark HABEEBA, sued dance instuctor Susan Knoblach and the YWCA for, inter alia, trademark infringement and contributory trademark infringement.

The YWCA rented space to Knoblach so she could teach dance classes, all of which were taught under the mark HABIBA. Prior to filing suit, Habeeba notified both the YWCA and Knoblach of Knoblach's infringing use of HABIBA, but both parties ignored Habeeba's request to cease using the mark.

YWCA filed a motion to dismiss the case as to the claim against it of contributory liability. In its defense, the YWCA argued that it merely rented the space to Knoblach and had neither proper notice of the infringement nor sufficient control over her to stop the infringing use. It could, therefore, not be held liable under a contributory theory, it argued. The court disagreed, finding, under the Fonovisa case that after receiving the notice from Haebeeba that contained sufficient information to find that a cause of action existed, the YWCA became "willfully blind" to its tenant's activities while it collected money from her each time she taught a class.

In its motion, the YWCA also attacked the validity of the mark, claiming that, under the doctrine of foreign equivalents, the mark was descriptive and not entitled to protection. Habeeba means, loosely translated, "loved one" in Arabic. Without making a final determination as to the descriptive nature of the mark, the court dismissed this defense, finding, quite correctly, that the doctrine is not a rule, but a guideline that doesn't necessarily govern each case and every language. Oh, and one more thing (and this is from your friends at Cobalt): YWCA you may want to look up the meaning of "descritptive" for trademark purposes, or any purpose.

Posted by Tsan Abrahamson at 11:51 AM

April 24, 2006

TTAB Makes Intelli-Choice in Reversing INTELICASH Refusal to Register

In a decision that is not citable, the TTAB, reversed a final refusal by the examining attorney, and found that INTELICASH for consumer debit card services, and INTELECASH for electronic tracking and accounting for businesses of prepayed debit card transactions were not confusingly similar. While the Board found that the marks were visually and aurally identical, or nearly so, it determined that the consumers and channels of trade in which each company operated were distinct. Accordingly, and notwithstanding the similarities in the marks, the Board reversed the decision of the examining attorney.

While on its face the case does not reveal any new or interesting law, it does remind the trademark world that many factors are considered when determining whether marks are confusingly similar. In this case, the marks were practically identical, but the board turned to other factors to conclude that co-existence without confusion is possible.

Practice Tip: The proceeding is not citable, but it is worth reviewing for the citable trademark law outlined by the Board.

Posted by Tsan Abrahamson at 10:19 AM

April 18, 2006

Creative Spelling of Generic Terms Doesn't a Trademark Make: TTAB Rejects BYK-RAK Mark

In a decision that is not citable, the TTAB upheld the examining attorney's refusal to register Midwest Bus Company's mark BYK-RAK for vehicle bicycle racks, on the grounds that the term was generic.

Although the applicant argued that the term was not merely a misspelling, but rather a "creative and distinguishing makeup of words", the Board found the argument so much back-peddling. The Board first noted that a term is generic if it identifies the class of goods or services to which it applies. In applying the test for genericness, namely, whether the relevant public sees the term as defining a class of goods, the Board determined that consumers would identify the term BYK-RAK to mean that class of goods that holds bicycles to cars. Accordingly, the mark, despite its creative spelling, was generic.

Longstanding case law is clear that a slight misspelling of a word doesn't turn an otherwise descriptive or generic term into a protectible mark. For a detailed discussion of the issues related to generic terms and misspellings See, In re Hubbard Milling Company 6 USPQ 2d 1239 (TTAB 1987), in which the board held that MINERAL LYX was generic for "mineral licks" for livestock.

Posted by Tsan Abrahamson at 08:38 PM

April 17, 2006

Gangsta Big Bird and 40-toting Bert Raise Trademark Issues

Although various parodies and unauthorized uses of the Sesame Street characters have plagued Sesame Workshop over the years (including the recent Bert is Evil site), a Chicago mall store has taken the cake (or cookie, if you will), and is selling t-shirts that show the muppet characters in a rather unsettling manner.

One t-shirt shows Bert downing what appears to be a 40 ounce bottle of malt liquor inside a paper bag, with his pal Ernie brandishing a gun. Still another depicts Big Bird, complete with head-rag, and accompanied by the usual Sesame Street suspect in various hoodlum attire, near the phrase DONT MESSWITHME ST. In addition to the muppet characters, there were shirts using the Coco-Puff's logo from General Mills ("filled with the good S#%*"), and a Kellogg's shirt featuring Tony the Tiger over the phrase "Totally Frosted." While the store originally hid behind the parody defense, lawyers from all companies (notified by an outraged school teacher in the area) made quick work of them (and the shirts).

Practice Pointer: While there is a split in the circuits with regard to how the parody defense should be applied in cases of trademark infringement, courts generally agree that parody is not an absolute defense to trademark infringement and is generally still subject to a confusion analysis. In copyright, it is generally accepted that the parody must -- at least in part -- comment upon or make fun of that from which it was taken in the first place.

Posted by Tsan Abrahamson at 01:42 PM

April 14, 2006

No Trademark Infringement Found Where Actual Use Specimens were Fishy

Go Pro Ltd, which makes embroidered clothing for promotional purposes, sued River Graphics, Inc., for trademark infringement for its use of the mark HERE FISHY FISHY on t-shirts for a fly fishing store. Go Pro had been embroidering the phrase on t-shirts since 1997. River Graphics did not use the phrase until 1998, when a fly-fishing store requested the design of a new t-shirt. River Graphics did not claim exclusive rights to the phrase HERE FISHY FISHY and in fact, claimed that Go Pro was casting too wide a net over its rights, noting that the phrase was not trademark use because it was not a source indicator, but instead simply a decorative use.

Notwithstanding Go Pro's evidence that third parties had come to associate the term with Go Pro, the Judge wasn't buying that fish story and found that Go Pro's use was, in fact, merely decorative.

Practice Pointer: As a general rule, a company's use of a catch-phrase on a t-shirt is likely to be considered merely decorative.

Posted by Tsan Abrahamson at 01:05 PM

April 10, 2006

District Court Finds SMOOTHEE and SCARLET SPUR Generic for Apples

The recent case of Van Well Nursery, Inc. v. Mony Life Ins. Co, VC-04-0425 LRS (ED Wash,. March 16, 2006) makes clear that that IP holders may well only get one bite of the . . .

In the case, Plaintiff apple grower owned two trademark registrations (and associated patents) for the marks SMOOTHEE and SCARLET SPUR, both for apples. The Plaintiff asserted, inter alia, that Defendant used the marks SCARLET SPUR and SMOOTHEE in marketing its own apples, which were of the same variety, but which were not Plaintiff's apples. Defendant did not deny using the marks, but argued that the terms "Scarlet Spur" and "Smoothee" were varietal designations and accordingly, could not be given trademark protection. Essentially, defendant argued that the marks -- despite the federal registrations -- were generic for the types of apples they identified.

In applying the "what are you" test, the district court found that while the scientific name for the two types of apples was known, the terms SCARLET SPUR and SMOOTHEE were widely used in the apple industry to identify the fruits. The Court did not find pursuasive the Plaintiff's evidence that it always used the mark with the appropriate ® marking, and that its intent was never to have these names used in conjunction with all uses of the patented apple varietal, but rather its own brand of the patented varietal. Instead, the court correctly found that the prevailing industry use of the mark was controlling and deemed the mark generic.

Practice Pointer: Clients should be advised when seeking patent protection to identify the patent under a differnt name than the brand name under which it proposes to separately market the product. Such a division makes it easier to separate the two property rights appropriately, and insures that the trademark rights survive the patent rights. The "What Are You" test is commonly used to determine whether a mark has become generic. This test is fully outlined in Filipino Yellow Pages, Inc. v. Asian Publications, Inc., 198 F.3d 1385 (9th Cir. 1999).

Posted by Tsan Abrahamson at 02:54 PM

April 09, 2006

TTAB Holds Registration of Two Similar Pet Product Marks is Cool

In a decision that is not citable, the Trademark Trial and Appeal Board ("TTAB"), held that COOL CAT PRODUCTS for pet collars and COOL CAT WHEATGRASS JUICE for a pet supplement are not confusingly similar, despite the fact that both products are marketed to pets.

The TTAB established that the opposer was the senior user of the mark COOL CAT, as it maintained, but found, using the duPont factors, that the products were marketed in different channels (the wheatgrass juice was found in health food stores), the nature of the goods was distinct, and the manner in which the products were marketed was distinct.

While the decision is not citable, the case can be valuable to practitioners for the TTAB decisions cited therein, particularly in cases where the marks are visually identical.

Posted by Tsan Abrahamson at 10:02 PM

April 05, 2006

Nautilus Can't Muscle Out of Trademark Infringement Damages

Nautilus Group, Inc., which makes the BOWFLEX exercise machine, has just been ordered to pay damages in the millions to plaintiff Icon Health and Fitness.

Judge Tena Campbell upheld the jury's award ($375,000 for trademark infringement and $7.5 million for false advertising), despite both parties' motions to adjust the award, finding that the amounts were "supported by the record."

Icon originally sued Nautilus in 2005 for using the Icon trademark SOFT STRIDER on Nautilus' exercise machines, and for falsely advertising (in 650 documented instances) that its "power rod" feature was a patented feature. Nautilus plans to appeal the ruling.

Practice Pointer: A quick review of the U.S. Patent and Trademark Office database would have revealed a valid trademark registration for the mark SOFT STRIDER for treadmills. While treadmills and universal-style fitness machines may not be identical, they are sufficiently close to cause confusion.

Posted by Tsan Abrahamson at 02:45 PM

April 03, 2006

Trademark Office Clarifies Difference Between Fraud and Oops!

In a citable decision from the Trademark Trial and Appeal Board at the U.S. Patent and Trademark Office ("PTO"), the Board held inter alia, that (1) an opposer may not maintain a claim of fraud against an applicant if the opposer does not actually allege fraud in its opposition; and (2) an applicant does not automatically commit fraud if it does not use all the goods listed in the application.

In the opposition, the Hualapai Tribe ("Opposer") sought to remove a mark from consideration at the PTO on the grounds that the applicant (Grand Canyon West Ranch) did not use the mark on all the services listed, as of the filing date of the application. The Opposer, however, asserted that it was not seeking summary judgment based upon fraud. The Board, therefore, dismissed this claim in relevant part.

In looking at whether the applicant's application for the mark was void for non-use reasons, the Board outlined the distinctions it sees between fraud and simple non-use. In short, the Board stated that "a defendant commits fraud by knowingly making false statements as to a material fact in conjunction with a trademark application or registration"[.] and showing a "complete failure to make use of the mark before filing the application on any of its identified services." In the instant case, applicant was using the mark for most of the services. Accordingly, the Board accepted the applicant's amended identification of goods as the appropriate remedy for the infraction. The case is resumed for other reasons.

Practioner query: On the one hand, it seems a reasonable enough remedy to require an applicant to amend its goods based upon actual use, or, in the alternative, amend its application to a 1(b) (intent-to-use) application and file an appropriate statement of use once all the goods in question are being used. On the other hand, if an applicant's liability for embellishing its goods and services is a hand-slap and a requirement that it amend its goods only if it gets caught, we question the motivation for client to be honest about their actual use.

Download decision Here

Posted by Tsan Abrahamson at 04:32 PM

March 26, 2006

Big-O Puts Its Foot In Opposition and Comes Out Shoeless

In a decision that is not citable, the Trademark Trial and Appeal Board ("TTAB") ruled that Big O Tires was contractually estopped from opposing a Bigfoot 4X4, Inc. application to register the mark BIGFOOT for monster truck videos.

In reviewing the record, the TTAB noted that the two parties had been in litigation before, the result of which was a settlement agreement allowing Bigfoot to register the mark BIGFOOT for audio/video materials related to monster trucks. The TTAB found that Bigfoot's application fell squarely within the terms of the settlement agreement, and it dismissed the case based upon contractual estoppel.

In fact, the terms of the settlement agreement were silent as to whether Bigfoot could register federally the trademark BIGFOOT. The TTAB reasoned, however, that since Bigfoot had the exclusive right to use the mark in commerce, it had the right to seek registration.

Practice Pointer: Both parties sought to dismiss the case on a theory of Res Judicata and Collateral Estoppel. The TTAB denied the motions. Collateral Estoppel cannot apply if the parties never litigated the issues. Res Judicata cannot apply when there is no entry of final judgment in the case.

Click here to review the complete decision.

Posted by Tsan Abrahamson at 07:59 PM

March 23, 2006

ABA, INTA, and Practitioners Respond to TTAB Proposed Rule Changes

Most trademark attorneys are aware of the rule changes proposed by the Trademark Trial and Appeal Board ("TTAB"). Many practictioners are opposed to the rule changes, because they will increase substantially the burden and cost of an opposition. The TTAB proceedings, historically, have been a cost-effective way for parties to resolve trademark disputes.

The new proposed rules also reduce the number of interrogatories from 75 to 25, effectively requiring opposers to conduct costly discovery before filing the opposition. In addition, the TTAB proposes to increase initial disclosures made by the opposers, in hopes of encouraging settlement. The initial investment, however, required to file the opposition under the proposed rules may make settlement actually less likely.

Notwithstanding several requests, including one by this firm, to extend the comment period, the TTAB maintained its deadline of March 20, 2006. The law firm of Oblon Spivak, et al has created a BLOG for posting the results.

Posted by Tsan Abrahamson at 09:47 PM

TTAB Calls Red Bull Appeal Bullshit

The Trademark Trial and Appeal Board ("TTAB") at the PTO affirmed the examining attorney's refusal to register Red Bull's mark BULLSHIT for alcoholic beverages, catering, hotels, and other goods, on the grounds that the term "bullshit" is scandalous. Under Section 2(a) of the Trademark Act, words that are offensive to a substantial composite to the general public are not registerable on the Principal Register.

In refusing registration, the examining attorney had relied on In re Tinseltown, 212 USPQ 863, a case decided almost 25 years earlier, in which the TTAB came to a similar conclusion for the mark BULLSHIT as used for handbags and accessories. Red Bull appealed the examiner's decision as so much crap.

In its appeal, Red Bull presented evidence that in the twenty years since the Tinseltown decision was rendered, community standards have changed. In support of its position, it offered evidence of a show by Penn & Teller: "Bullshit," and a paper written by a Princeton professor, entitled "Bullshit." The TTAB was not, well, moved.

Finally, it what can only be described as a truly creative last ditch effort, Red Bull argued that its use of BULLSHIT was an obvious play on that commonly known expression, "Bulls Hit." Given that it offered no evidence that this expression was, well, an expression at all, the TTAB waded quickly through the argument.

Download the citable decision here

Posted by Tsan Abrahamson at 08:41 PM

March 15, 2006

Claims Against Williams-Sonoma Are So Much Fluff

Durkee-Mower, Inc., whose website address says it all (marshmallowfluff), has filed suit against upscale culinary company Williams-Sonoma in federal district court in Massachusetts for trademark infringement. In the suit, Durkee-Mower claims that Williams-Sonoma sold a chocolate and marshmallow spreadable concoction under the name FLUFFERNUTTER, a registered trademark of Durkee-Mower.

While Williams-Sonoma may have found itself embroiled in a sticky mess, there's an interesting twist to this matter that makes Durkee-Mower's case slightly less than a slam dunk (slightly): The registration on which Durkee-Mower relies doesn't cover spreads or sandwiches, but instead covers "printed recipes sold as a component of food packaging and cookbooks." The company may have to call together as expert witnesses half the college student population to testify that the only true way to make a fluffernutter sandwich is with Durkee-Mower's jar of white fluffy stuff.

Practice Pointer: To make a FLUFFERNUTTER sandwich, select two pieces of white bread and spread one with peanut butter, and the other with Marshmallow Fluff. Put bread together to make a sandwich, and share with your 2 year old.

Posted by Tsan Abrahamson at 08:22 PM

Hell's Angels Accuse Disney of Hogging Its Trademark

The Hell's Angels filed suit this month in federal district court against behemoth Walt Disney Company for trademark infringement. In the suit, the oldest surviving motorcycle club in America alleges that Buena Vista Pictures, a division of Disney, uses the club's trademark "helmeted horned and feathered skull" in Buena Vista's new film, Wild Hogs, without the club's permission. The movie stars John Travolta and Tim Allen as middle-aged bikers looking for action. Apparently, it's the middle-aged executives who will be seeing some action in this drama.

Posted by Tsan Abrahamson at 08:03 PM

March 13, 2006

Attempt to Register "WINGS" Doesn't Fly with TTAB

The U.S. Patent and Trademark Office Trademark Trial and Appeal Board ("TTAB") affirmed the examining attorney's refusal to register Red Bull's "WINGS" trademark on the grounds that the company's use of the mark did not function as a trademark.

In a decision that is not citable, the TTAB found that the examiner was correct in refusing registration of the mark WIINGS based upon the specimens submitted by Red Bull evidencing use. In the first place, specimens did show the word "wings," but only as a tagline, such as "Red Bull Gives You Wiiiings, " "Now Available Sugar Free Wiiings," and "4 Cans. 8 Wiiings." In the second place, the specimens did not show the mark in substantially exactly the way the mark was applied for, namely as "WINGS" (with a single "i"). The TTAB noted that even if the mark were to be considered substantially the same as the submitted specimen, the fact that the mark was not used in a trademark sense would still defeat a registration of the mark.

Practice Pointer: Although the decision is not citable, the holding is accurate: specimens submitted to the PTO to show use of a trademark must be a substantially exact representation of the trademark as applied for. In this case, if the applicant had applied for "RED BULL GIVES YOU WINGS" and the evidence showed the mark using the term "WIIIINGS," it's likely that the mark would have proceeded to registration with a simple amendment to the drawing page.

Download full text of decision HERE

Posted by Tsan Abrahamson at 09:34 AM

March 09, 2006

TTAB Holds lawyers.com is Generic

Notwithstanding a gallant fight from Reed Elsevier Properties, Inc. at the Trademark Trial and Appeal Board ("TTAB"), the TTAB judges found the mark lawyers.com, for a website providing access to an online interactive database featuring information exchange in the field of law, to be generic. In a decision that has left many trademark attorneys scratching their heads, the TTAB reasoned that the public would readily identify a site bearing the name lawyers.com with a site containing information about lawyers and the law, and accordingly, the trademark was generic.

In fact, the site does contain information about lawyers. It does not, however, contain actual lawyers, nor does it give users the ability to talk to a lawyer through the site (except on special occasions). The site also contains information about cases, legal topics, and legal tips. While most would have no quibble with the suggestion that a site called lawyers.com is dedicated to lawyers and the law, longstanding trademark law suggests that generic refusals of trademarks are reserved for terms that represent the exact definition of what's offered (a site called poetry.com, that featured actual poetry). Indeed, in this case, it appears that the mark lawyers.com is descriptive rather than generic, since it describes an element of the site, rather than the site itself.

Posted by Tsan Abrahamson at 12:33 PM

October 03, 2005

RED found to be functional for safety goods.

The Trademark Trial and Appeal Board issued a recent decision upholding the examiner's refusal to register the color RED for non-functional plastic training equipment shaped like knives, flashlights, pistols, and other objects used for training law enforcement personnel.

The company, Armament Systems, colored all of its "toy" weapons and armament items in a bright red. This was done, Armament said, to distinguish it immediately from actual firemarms or other functional pieces of equipment. The TTAB, in affirming the examining attorney's refusal to register the color, noted that there were obvious safety advantages to using the color red, and as such, the color must remain available to manufacturers of competitive equipment for their use.

The decision is interesting in that the TTAB used as evidence against Armament its own cease and decist letters to third parties. These letters were sent to other law enforcement training companies who had been using red on their training equipment prior to getting the letters. Armament introduced the letter into evidence to show that in fact, competitors did not need to use red; all of them had changed their color as a result of receiving the letters. The TTAB found, however, that not using the color red actually put Armament's competitors at a distinct disadvantage since red was the color associated with safety by law enforcement personnel.

Posted by Tsan Abrahamson at 10:13 AM

July 28, 2005

Ice Cream Truck Company "Frosty" about Trademark Infringement Outcome

Frosty Treats, Inc., the modern-day pied piper, tempting children with, well, frosty treats from its ice cream trucks, sued Sony Computer Entertainment for trademark infringement based upon Sony's use of the mark FROSTY TREATS on the side of an ice cream truck in its video game "Twisted Metal." Frosty claimed that the use of the truck with a clown, coupled with the words FROSTY TREATS emblazoned on one of the trucks would chill its trademark rights and cause confusion among consumers as to whether Frosty sponsored, endorsed, or was affiliated with the game.

The 8th Circuit affirmed a lower court ruling that there was no infringement, because notwithstanding the long time use of the mark by Frosty, the term "frosty treats" was descriptive of frozen ice cream desserts and the mark FROSTY TREATS, as used by the ice cream company, was printed in smallish letters on the back and side of the trucks, so as to appear descriptive of the many ice cream decals plastered around the truck. Frosty's survey, evidencing some consumer confusion related to seeing the labeled truck in the video game, was thrown out. As to the clown, the 8th Circuit overturned the trial court's holding that it was functional (the clown directed children to safely cross the street) was overturned, but held nonetheless that no triable issue of fact existed. We believe it's game over for Frosty's.

Posted by Tsan Abrahamson at 08:24 AM

June 02, 2005

SABMiller Not Laughing at BLACK LABOUR WHITE GUILT Parody Ruling

The Constitutional Court in South Africa has ruled that Laugh It Off productions made fair use of liquor giant's BLACK LABEL trademark as parody when it created a similar looking label that read BLACK LABOUR WHITE GUILT to sell on t-shirts.

SABMiller, one of the largest brewers in the world, manufactures Carlings Black Label Beer. It found Laugh It Off's add offensive and racially charged and asserted a claim of trademark infringement against Laugh It Off, alleging tarnishment of its polular brand. After losing at the lower court level, the Constitutional Court in South Africa ruled -- in a first of its kind case -- that Laugh It Off was not liable for trademark infringement.

Let's hear it for free (and marginally funny) speech.

Posted by Tsan Abrahamson at 09:38 PM | Comments (0)

May 05, 2005

Pine Tree Car Freshener Company Smells Trademark Infringement at Urban Outfitters

Car-Freshner, the company that makes those little pine-scented cardboard trees that dangle from many an automobile, has sued Urban Outfitters and Cordog Cards for trademark infringement in U.S. District Court.

The suit claims that the defendants have been unjustly enriched by the use of the trademark pine-tree on holiday cards that feature the tree with the words "Season's Greetings," as the message.

Dale Detwiler, spokesman for Corndog Cards, acknowledges that the company did use the image on the cards, but claims his use is parody. "The parody's humor resides in the fact that instead of using just any pine-tree fo its Christmas tree, the card uses Plaintiff's tree -- a tree with no connection whatsoever to Christmas."

Um, Dale? For the record, parody is not a defense to trademark infringement. . . at least not an absolute defense. Your attorney will still have to show no confusion. Oh, and it wasn't even all that funny. We know one company that's not laughing, anyway.

Posted by Tsan Abrahamson at 10:43 AM | Comments (0)

April 04, 2005

Ninth Circuit Splits Hairs on Trademark Infringement Suit

Last month, the 9th Circuit Court of Appeals ruled that non-commercial use of a party's trademark as a domain name may not constitute trademark infringement.

The case involved the use of the Bosley Medical Institute's BOSLEY trademark, which it uses for its hair replacement system. Bosley Medical Institute's brush with defendant Michael Kremer started when the former disgruntled employee registered the domain name www.bosleymedical.com and then proceeded to write some unfavorable -- shall we say hairy -- things about his former employer. Bosley Medical brought suit, allegiing trademark infringement of its registered mark.

After combing through the facts, the 9th Circuit held that Kremer's use of the trademark was non-commercial speech, that no consumer would be confused by his use of the mark, and that the Lanham Act cannot be used as a shield against free speech or criticism.

It's clear that Kremer's web site was a bald-faced attempt to divert traffic from the Bosley Medical program. Still, without proof that the site was confusing consumers, or that Kremer was selling hair pieces himself, Bosley is stuck with the wigged-out web site.

Posted by Tsan Abrahamson at 04:33 PM | Comments (0) | TrackBack

March 21, 2005

"Get Bent" says Hugger-Mugger to Gaiam in Trademark Infringement Suit

Last week, Hugger-Mugger brought suit in federal court against Gaiam, alleging trademark infringement for Gaiam's use of the term "Hugger-Mugger" as a key search term. Hugger and Gaiam are purveyors of consumer yoga products. According to the suit, Gaiam is using Hugger-Mugger's registered trademark, HUGGER-MUGGER, to divert consumers to the Gaiam site. Hugger-Mugger claims that Gaiam has contracted with various search engines, such as Google, MSN, About.com, and Yahoo! to use the trademark. Each time a search engine user types in the term HUGGER-MUGGER, the suit claims that users are given the opportunity to enter the Gaiam site. This lawsuit is just one of a mounting number of suits that calls into question the practice adopted by many competitors and search engines of using third party trademarks. This suit, however, marks one of the first that goes directly after the competitor for trademark infringement. While it seems evident from some recent cases that have been handed down by the courts that search engines are not likely liable for selling otherwise descriptive terms that may also be trademarks, it is still unclear how the courts will react to more fanciful trademarks used by competitors and search engines. No doubt, Hugger-Mugger's Chakras will be out of alignment until this matter is settled.

Posted by Tsan Abrahamson at 02:03 PM | Comments (0) | TrackBack

March 01, 2005

Blue Frog Plunks Down Its Own BLING in Trademark Infringement Suit

Blue Frog Mobile, the people who brought BLING TONES (hip-hop ring tones) to your mobile phone, has filed suit in Seattle District Court alleging trademark infringment against Lagardere Active North America, Inc. for that company's use of the mark PUT SOME BLING IN YOUR RING and THE HOOK UP.

Blue Frog claims rights (or rizzights if you're keeping up) in the marks GET SOME BLING IN YOUR RING for its ring tone download services, and THE HOOK UP, under which it promotes its dating services. According to the suit, Blue Frog contends that Lagardere uses the same or nearly identical marks to promote its identical services. The suit also seeks to cancel Lagardere's trademark application to register the mark BLING TONES on the ground that the mark is merely descriptive of hip-hop ring tones and is frequently used by the hiphop community. Blue Frog is hoping the district court will see things its way and throw down a ruling fo'shizzle in favor of the ring tone hawker. Stay tuned, peepz.

Posted by Tsan Abrahamson at 11:13 AM | Comments (0)

1-800-SKI-VAIL Carves Out a Win In Trademark Infringement Suit

Eric Hanson, operator of 1-800-SKI-VAIL, successfully defended his business and phone number against Skiing Behemoth, Vail Associates, who filed suit against the reservations agent for trademark infringement.

In ruling in favor of Hanson, who also owns 1-800-SKI-TELL(URIDE) and 1-800-SKI-ASPE(N), the district court judge stated that Vail Associates could not use its registered trademarks to stop Hanson from using the phone number. In addition, the court threw out Vail Associates' request to cancel Hanson's own trademark registration for 1-800-SKI-VAIL. In the Judgment, the judge noted that Vail Pass, for which the mountain was originally named, predated the Vail ski area (originally developed by George Gillette) and thus Vail Associates cannot claim exclusive rights to the use of the word. Not snowed by Vail's arguments to the contrary, the judged used Vail Associates' own witnesses against them, showing that travelers do not associate a ski vacation and its with a specific company, but rather a location. In the end, Hanson was one happy (phone) mogul.

Posted by Tsan Abrahamson at 11:12 AM | Comments (0)

December 09, 2004

Supreme Court Overturns the 9th Circuit and INKS a Decision on the Fair Use of Dye Names

The U.S. Supreme Court has clarified a split in the circuit courts and limited to scope of protection a federally registered mark may have in a trademark infringement case. In Lasting Impressions, Inc. v. KP Permanent, the high court wrote, in its unanimous decision, that a defendant claiming fair use (based upon a descriptiveness defense) of a third party's registered trademark need not show a lack of consumer confusion in order to prevail. Indeed, even in cases where some confusion does exist, it will not be dispositive of trademark infringement by the junior user. Writing for the court, Justice Souter noted that "Some possibility of consumer confusion must be compatible with fair use," effectively shifting the burden of showing trademark infringement against a descriptiveness defense to the plaintiff.

The case involved two companies that make liquid pigments used in cosmetics. Lasting Impression, Inc. ("LI") had an incontestable registered trademark for the mark MICRO COLORS (stylized), under which it sells the permanent inks. The defendant, KP Permanent ("KP"), also makes cosmetic dyes. Beginning in 1999, KP started using the words "micro colors" on its products and printed matter. Shortly thereafter, KP received a cease and desist letter from LI, alleging trademark infringement and demanding that KP remove the words "micro colors" from its packaging and products. KP responded, filing a declaratory relief action alleging fair use of the words and asserting that the descriptive use of the words "micro colors" in the cosmetic industry predated LI's trademark registration.

A federal trial judge, no doubt following similar cases handed down in the Second Circuit, found in favor of KP and held that its use of the term "micro colors" was allowable as descriptive use. On appeal, the Ninth Circuit reversed the lower court, stating that a defendant was required to show that consumers were not confused by the use of the terms in a descriptive sense, effectively establishing a conflict between it and the Second Circuit. The Supreme Court appears to have sided with the Second Circuit in this matter, and found that no showing of lack of confusion is necessary to make a fair use defense.

Given the holding of the Supreme Court in this case, plaintiff's may have a more difficult time showing that a competitor's use of terms that are similar or identical to a registered trademark constitutes trademark infringement. One hopes, however, that common sense will prevail in the event there is actual and substantial confusion in the marketplace.

Posted by Tsan Abrahamson at 11:10 AM | Comments (0)

September 24, 2004

Superman Wants His Kryptonite Back! DC Comics Sues Kryptonite for Trademark Infringement

DC Comics, owner of the SUPERMAN character and corresponding trademarks, may in fact have a lock on the term “kryptonite,” much to the consternation of Kryptonite Corp., makers of the famous bicycle lock.

A New York City judge refused to throw out the trademark infringement case DC filed against the bike lock company, noting that “Kryptonite is an element associated with Superman entertainment products and it is thus entitled to protection.”

The two companies have existed for over 20 years pursuant to a 1983 agreement that limited Kryptonite's use of the mark for locks and cables. Now that the company is producing new products (clothing, tote bags), all tights are off.

Posted by Tsan Abrahamson at 11:00 AM | Comments (0)

September 21, 2004

Mont Blanc is Cross with Pen Maker Over Trademark Infringement

Montblanc North America, famous maker of high-end and executive pens and pencils has sued A.T. Cross Co. for trademark infringement and false advertising for marketing its refills with the MONT BLANC trademark conspicuously on the package.

Montblanc North America, famous maker of high-end and executive pens and pencils has sued A.T. Cross Co. for trademark infringement and false advertising for marketing its refills with the MONT BLANC trademark conspicuously on the package.

Getting straight to the point, Montblanc has asked a New York district court for a preliminary injunction to stop Cross from selling the pen refills in question. Seems these rival pen-makers have "crossed" paths before. In 2003, Montblanc sent a similar demand to Cross, who promised to address the issue. Evidently, that was the PENultimate altercation.

In its suit, Montblanc claims that Cross is taking advantage of the goodwill and equity built up in the mark MONTBLANC by featuring it so conspicuously on the Cross packaging. What’s worse, the Cross brand is missing from the package. Montblanc claims the refills' markings do not reflect deminimus fair use of its trademark and vows to have its name removed. For Cross’ part, the bar-mitzvah gift king could not be reached for comment.

Posted by Tsan Abrahamson at 10:57 AM | Comments (0)

8TH Circuit Tells Trademark User to MOOve Off the Computer

The 8th Circuit Court of Appeals has upheld a U.S. District Court ruling that Companion Products Inc.'s "Cody Cow" Computer Topper infringes Gateway Computers cow-motif trademark.

Companion Products makes computer plush animal heads that attach to stretch bands which wrap around computer monitors. Its collection includes numerous animals, including a cow, which naturally, is white with black spots. Consumers may buy these toppers (after market) to decorate their computer monitors. Cody Cow quickly became a best-seller, the cream of the crop, one might say.

No COWards they, Gateway, which has a trademark registration for the cow-motif as used in connection with computers, sued in Federal Court for trademark infringement. Companion argued that Cody was, well, a cow, that cows have spots, and that it was not using Cody specifically to market its plush heads, but merely selling a cow. Gateway's response was that such a defense was Bull, and proffered expert testimony that the cow motif as used in connection with computers was widely recognized to be a Gateway trademark. Evidently, both the lower court and 8th Circuit agreed with Gateway, requiring Companion Products to change Cody's spots. Notwithstanding the fact that cows do come in many colors, we think the 8th Circuit’s holding is udderly ridiculous.

Posted by Tsan Abrahamson at 12:01 AM | Comments (0)