Last Wednesday, Johnson & Johnson filed suit against the Red Cross, alleging trademark infringement of J&J’s RED CROSS design by the Red Cross for products licensed by the Red Cross and sold to the public.

J&J doesn’t appear to dispute the Red Cross’ use of the mark for disaster preparedness, but claims that its use cannot extend to commercially available products, such as first aid kits, something J&J has been selling since at least as early as 1903 (and possibly 1887). J&J claims that the 1900 Charter by Congress did not give the Red Cross the right to sell commercial products. The Red Cross, on the other hand, points to language in the Charter that allowed it to register its emblem (red cross on a white background) in every class at the U.S. Patent and Trademark Office, as well as language in the Charter that allows it to carry out other activities consistent with its Charter purposes. Supplying the public with various products related to safety, the Red Cross contends, is completely within the course and scope of its mandate and the Charter. Such a position is making J&J see red.

If the Red Cross’ public information is correct and it has for 100-plus years been selling first aid kits for over 100 years openly, and with the knowledge of J&J, this writer thinks a laches defense might well carry the day. If J&J leaps that hurdle, then perhaps a showing of lack of confusion for the past 100 years is sufficient to quiet the company. Nabisco, Inc. v. PF Brands, Inc. 191 F. 3d 208 (2d Cir. 1999)Surely, the proliferation of third party “cross” marks, coupled with both entities’ longstanding histories has over time educated consumers to the distinction between the two marks’ use. Sun Banks of Fla., Inc. v. Sun Fedl. Sav. & Loan Ass’n. 651 F.2d 311 (5th Cir. 1981); Local Trademarks, Inc. v. Handy Boys, Inc., 16 U.S.P.Q.2d 1156 (TTAB 1990).

Despite the fact that the marks are identical, it’s not difficult to tell the difference when we are presented with each; much like pornography, we know which is which when we see it. What is likely making J&J see red is the potential loss of market share rather than any real concern of confusion. And here we thought trademarks were for consumer protection.

Trademark 101: two companies cannot use an identical mark for similar or related products. This is to avoid consumer confusion. The company that owns an earlier federal registration with the U.S. Patent and Trademark Office (”PTO”) generally prevails; the other must change the name of its product (with many nuances and exceptions, of course!).

Now everyone is talking about the Apple iPhone. But have you heard of the Linksys iPhone? Probably not until Cisco (Linksys’ parent company) filed a much publicized lawsuit against Apple over the mark “iPhone” two weeks ago. Cisco claims that it owns senior rights in the mark and that Apple cannot use the name.

Cisco’s complaint is available here

Cisco has owned a PTO registration for “iPhone” since 2000 (when it purchased the company Infogear). Apple owns foreign applications for the mark (in Asia, Europe and Australia). Cisco’s registration is for “computer hardware and software for providing integrated telephone communication with computerized global information networks” (Reg. No. 2,293,011). In December 2006, less than a month before the anticipated launch of the Apple Iphone, Linksys, a division of Cisco, released its iPhone handheld device.

The differences between the devices may play a role in resolving the dispute. Cisco’s iPhone products work with Voice over Internet Protocol (VoIP) services (like Skype), while the Apple iPhone is more like a conventional cell phone that uses internet connections, not to make calls, but to browse the web or check emails. The differences are subtle, but judges and the PTO have been known to allow identical marks to coexist in the telecommunications and software industries if the products have different uses and markets.

Another issue that may come up in the case is Cisco’s use of the mark since 2000. Infogear was using the mark for its line of “phone-plus-internet” products, but did Cisco use the mark in commerce before launching its own iPhone device in 2006? This is important because if a mark has not been in use for 3 consecutive years and the owner has done nothing to try to resume use of the mark, the PTO may presume that the owner has abandoned the mark. Apple may use that argument to try to invalidate Cisco’s registration.

Stay tuned for updates on the dispute…

In the meantime, bloggers are already coming up with alternate names for Apple’s iPhone: MacPhone, iTalk, iCall, iWishIHadABetterName…

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

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?

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.

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.

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.

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.

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.

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.