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.

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.

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).

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.

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.

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

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.

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.

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

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.