The Real World is Irrelevant in Judging the Similarity Between DETROIT ATHLETIC CO. and DETROIT ATHLETIC CLUB

In In re Detroit Athletic Co., [2017-2361](September 10, 2018) the Federal Circuit affirmed the TTAB’s affirming the Patent and Trademark Office’s refusal to register
DETROIT ATHLETIC CO. for sports apparel retail services.

The Trademark Examiner refused registration of DETROIT ATHLETIC CO. in view of a prior registration on DETROIT ATHLETIC CLUB.  The TTAB affirmed, concluding that, “because the marks are similar, the goods and services are related, and the channels of trade and consumers overlap,” consumers are likely to be confused by the marks.   The Board considered four of the thirteen duPont factors relevant:  (A) similarity or dissimilarity of the marks; (B) similarity or dissimilarity and nature of the goods or services; (C) similarity or dissimilarity of trade channels; and (D) concurrent use without evidence of actual confusion.

On the similarity of the marks, the Federal Circuit found the TTAB’s finding that the marks “are nearly identical in terms of sound, appearance and commercial impression” was supported by substantial evidence.  The Federal Circuit undertook a detailed analysis of the marks, finding that when viewed in their entireties, the marks reveal an identical structure and a similar appearance, sound, connotation, and commercial impression.  The Federal Circuit rejected the argument that the difference between Co. and Club would allow consumers to distinguish the marks.  The Federal Circuit said that while the mere fact that “Co.” and “Club” were disclaimed from their respective does not give one license to simply ignore those words in the likelihood of confusion analysis, the TTAB did not err in focusing on the more dominant portions of the marks.  Moreover, the record showed that these terms did not serve source-identifying functions.

With respect to the similarity of the goods, the Federal Circuit agreed with the TTAB that while the goods and services are not identical, they substantially overlap, which weighs in favor of finding a likelihood of confusion. In response to applicant’s argument that consumers would have little problem distinguishing between DACo’s clothing store
and the Detroit Athletic Club’s private social club., the Federal Circuit said that the relevant inquiry in an ex parte proceeding focuses on the goods and services described in the application and registration, and not on real-world conditions.

With respect to trade channels, the Federal Circuit found that the Board’s determination that the Detroit Athletic Club’s clothing comprises the type of goods likely to be sold through applicant’s sports apparel retail services, was supported by substantial evidence.  Applicant argued that the Detroit Athletic Club sells clothing only to its club members and only in its gift shop located onsite, and thus this would prevent confusion among the public at large, but the Federal Circuit found this too, irrelevant, because confusion must be evaluated with an eye toward the channels specified in the application and registration, not those as they exist in the real world.  The Federal Circuit noted that to the extent applicant objects to the breadth of the goods or channels of trade described in the Detroit Athletic Club’s registration, that objection amounts to an attack on the registration’s validity, an attack better suited for resolution in a cancellation proceeding.

Finally, with respect to the lack of confusion during concurrent use, the Federal Circuit noted that the relevant test is likelihood of confusion, not actual confusion, so evidence
that the consuming public was not actually confused is legally relevant to the analysis, but it is not dispositive.  Further, the Federal Circuit’s analysis of applicant’s evidence did not establishe a lack of consumer confusion in commercially meaningful contexts.
The Federal Circuit therefore concluded that substantial evidence therefore supports the TTAB’s finding that the evidence purporting to show a lack of actual confusion was not sufficiently probative.

On balance, the factors supported a finding of likelihood of confusion.  The Federal Circuit rebuffed applicant’s argument that the Board erred by not addressing
all DuPont factors for which evidence was proffered, noting that it is well established that the Board need not consider every DuPont factor.  The Board is not required to expressly address each evidentiary item proffered by a party.

 

 

 

 

Don’t Try This at Home Boys and Girls — The TTAB is no Place for Amateurs

In Zheng Cai v. Diamond Hong, Inc., [2018-1688](August 27, 2018), the Federal Circuit affirmed the cancellation of the registration on WU DANG TAI CHI GREEN TEA” due to a likelihood confusion with Diamond Hong’s registered mark “TAI CHI.”

The TTAB found likelihood of confusion, giving limited consideration to Mr. Cai’s briefing because it “contraven[ed]” certain provisions of the Trademark Trial and Appeal Board
Manual of Procedure (“TBMP”).  Mr. Cai appealed the TTAB’s evidentiary ruling excluding evidence in his main brief, and its finding of likelihood of confusion.

The Federal Circuit reviews TTAB evidentiary rulings for abuse of discretion, and only reverses a TTAB ruling if it is (1) clearly unreasonable, arbitrary, or fanciful; (2) based on an erroneous conclusion of law; (3) premised on clearly erroneous findings of fact; or (4) the record contains no evidence on which the TTAB could rationally base its decision.

The TTAB considered the arguments presented in Mr. Cai’s Main Brief but did not consider the factual assertions and ‘figures’ displayed and discussed in Mr. Cai’s
brief, which “are not evidence introduced into the trial record.” The TTAB also did not consider Mr. Cai’s reply brief because the TMBP does not provide for such filings and gives the TTAB broad discretion in considering them.

Mr. Cai argued that the exclusive of his evidence was improper, but the Federal Circuit disagreed.  The Federal Circuit noted that although the procedural guidelines in the TBMP do not have the force of law, they are accorded a degree of deference to the extent that it has the “power to persuade,”  The TBMP provides that evidentiary
matters are resolved in accordance with the Federal Rules of Evidence, the relevant portions of the Federal Rules of Civil Procedure, the relevant provisions of Title
28 of the United States Code, and the rules of practice in trademark cases.   Mr. Cai’s Main Brief contained numerous assertions of fact, but this information is not evidence under any of the relevant rules.  With respect to his Reply Brief, the plain language of
the TBMP states that the TTAB is not required to permit a party in the position of defendant to file a reply brief.

One the substantive issue of likelihood of confusion, the Federal Circuit reviewed the applicable factors of the 13-factor du Pont test, and concluded that substantial evidence supports the TTAB’s findings with respect to each DuPont factor, and the TTAB did not
err as to its ultimate conclusion of likelihood of confusion.

 

Trademark Registration – A Vehicle to Protection

A trademark is any word, symbol, or device that identifies one’s products or services, and distinguishes them from the products or services of others.  One such “device” is the vehicle used in the performance of services.  Distinctively colored on configured vehicles can identify the source of services to customers or prospective customers. There are numerous examples of vehicles registered as service marks, including:

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

Bad Vibes

A mobile marketing company has sued Kim Kardashian West’s fragrance company, KKW Fragrance, LLC in Chicago, claiming the celebrity’s VIBES line of perfume (left, below) infringes the company’s registered VIBES trademark and logo (right, below).

The marks are similar in both literal elements and display.  There are 500 registrations on marks including the word “vibes,” and 2532 registrations on marks containing thought or speech balloons, but plaintiff’s is the only one that contains both of these elements.  However, one wonders if plaintiff can make the case that consumers or perfume are likely to be confused by a mobile media company, or vice versa.  The Complaint references the use of mobile marketing to promote KKW’s fragrance, but is that enough to cause consumers to believe that the two businesses are in any way related.

If KKW was going to have a problem, one might have thought it would come from an owner of one of the 11 existing registration on VIBES for perfume, rather than a similarly named mobile marketing company.

 

 

TTAB Scores a 0 in Evaluating Genericness and Acquired Distinctiveness

In Royal Crown Company, Inc. v. The Coca-Cola Company, [2016-2375] (June 20, 2018), the Federal Circuit vacated the TTAB’s  dismissal of Royal Crown’s opposition to Coca-Cola’s registration of various ZERO marks for soft drinks and sports drinks including the term ZERO.

Noting that Royal Crown did not offer direct consumer evidence (surveys or testimony), nor did it offer dictionary evidence linking ZERO to soft drinks, offering only indirect evidence of competitor use of ZERO, the Board concluded that Royal Crown had failed to demonstrate that ZERO is generic for the genus of goods.  On the issue of descriptiveness, the Board found the evidence, including a five year old survey, indicated that ZERO had acquired distinctiveness.

On appeal, the Federal Circuit concluded that the Board erred in its legal framing of
the genericness inquiry in two ways—it failed to examine whether ZERO identified a key aspect of the genus at issue, and it failed to examine how the relevant public  understood the brand name at issue when used with the descriptive term ZERO.  The Federal Circuit further found that that the Board should have first assessed the level of the marks’ descriptiveness before determining whether Coca-Cola had shown acquired distinctiveness, because absent such a finding, it would not be possible to review whether the evidentiary record can support a finding of acquired distinctiveness.

On genericness the Federal Circuit said the critical issue was whether members of the relevant public primarily use or understand the term sought to be protected to refer to the genus of goods or services in question.  The Federal Circuit said that evidence of the public’s understanding of the term may be obtained from any competent source, such as purchaser testimony, consumer surveys, listings in dictionaries, trade journals, newspapers and other publications.  The Federal Circuit found the Board’s approach erroneous, asking the wrong question in assessing the alleged genericness
of ZERO. The Federal Circuit said the Board’s approach failed to consider that a term can be generic for a genus of goods or services if the relevant public understands the term to refer to a key aspect of that genus.  The test is not just whether the relevant public would use the term to describe the genus, but also whether the relevant public would understand the term to be generic.  A term is generic if the relevant public understands the term to refer to part of the claimed genus of goods or services, even
if the public does not understand the term to refer to the broad genus as a whole.

The Federal Circuit found that the Board failed to consider whether the relevant
consuming public would consider the term ZERO to be generic for a subcategory of the claimed genus of beverages i.e., the subcategory of the claimed beverages  encompassing the specialty beverage categories of drinks with few or no calories or few or no carbohydrates. The Federal Circuit remanded so that the Board could examine whether the term ZERO, when appended to a beverage mark, refers to a key aspect of the genus. The Court said ZERO need not be equated by the general public with the entire broad genus in order for the term to be generic.

On acquired distinctiveness, the Federal Circuit said that Board erred by failing to first determine exactly what Coca-Cola’s burden was.  An applicant’s burden of showing acquired distinctiveness increases with the level of descriptiveness: a more descriptive term requires more evidence of secondary meaning.  However the Board did not make any finding as to the degree of descriptiveness conveyed by the term ZERO in the marks and, thus did not assess Coca-Cola’s evidence through an exacting lens.

Buc-ees’ Beaver Logo Infringed by Competitor’s Alligator Logo; The University of Florida and Lacoste Look Nervous

Buc-ee’s, Ltd. operator of a chain of convenience stores under the same name in Texas sued Shepherd Retail and several related competitors in the Southern District of Texas, alleging that the defendants’ Choke Canyon alligator logo infringed Buc-ee’s beaver logo.

In a jury trial that ended on May 22, Buc-ee’s succeeded in convincing the jury that the Choke Canyon’s alligator was confusingly similar to its beaver:

In what can only be attributed to “you had to be there,” the jury verdict is hard for the casual observer to comprehend, given the obvious differences in the logos.  Perhaps the incongruous result is attributable to the phrasing the jury instructions, which rather than directing an overall consideration and balancing of the applicable factors, suggests that each factor simply increases or decreases confusion.  For example, on the issue of similarity of the products or service, the instructions stated:

 This instruction tells the jury that the greater the similar between the products and services, the greater the likelihood of confusion.  This does not seem to be a correct analysis — the similarity of products or services alone does not increase the likelihood of confusion.  Since the parties are admittedly direct competitors, did this express instruction that similarity increases the likelihood of confusion, cause the jury to find otherwise dissimilar marks are confusingly similar?

It seems that post-trial motions and maybe even an appeal will be needed before we know whether or not an alligator is similar to an beaver.  Until then alligators everywhere cannot rest easy.

 

 

Ice Cream Brain Freeze

On May 9, 2018, Josh Berger brought a class action suit against Eden Creamery, complaining that the packaging of its  Halo Top ice cream is misleading because the product is actually light ice cream.

The Complaint, with reasoning surpassed only by Sir Vladimir’s detection of witches

 is that Halo-Top means creamy: 

Rather than parse the trademark for clues about the product (after all trademarks are not supposed to be descriptive), Mr. Berger could have saved himself, Eden Creamery, and the Federal Courts a lot of time and effort, by simply referencing the giant “280 Calories Per Pint” logo, which might have told him all he needed to know about the product.

 

 

 

 

 

 

 

 

Unbelievably, his Complaint argues that the name Halo-Top its is misleading, because:

 

 

 

Plaintiff Pleads Plaid Pattern Plagiarized

On May 2, 2018, Burberry Limited sued Target Corporation in the Southern District of New York for trademark counterfeiting, trademark infringement, trademark dilution, false designation of origin, and unfair competition.

In some instances the products do look similar:

Although in some even Burberry’s products do not look like Burberry’s products:

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Surely no one has  a monopoly on camel plaid.  It will be interesting to see how broad Burberry’s rights extend, and how close Target came.  For example is this accused design an infringement?

 

 

 

Trademark Law Offers Scant Protection When Bad Things “Happen” to Good Marks

The was a lot of discussion recently about the episode of  NBC’s This is Us, which implicated a faulty switch on a Crockpot® in the death of the family’s beloved patriarch, Jack Pearson.  The manufacturers opened a Twitter account to respond to angry fans, and it issued a lengthy statement defending its product and asking NBC for some help to correct the record.

This is probably as good as the manufacturer could do.  This unfavorable depiction is not trademark infringement or even dilution.  The use, while unfortunate from the trademark owner’s standpoint, is protected by the story tellers first amendment rights.  While a disclaimer would be a nice gesture, it is not a legal  requirement.

Other trademark owners facing abuse or misuse of their products have similarly found that there is not much legally that the brand owner can do.  Several years ago, the Emerson Electric, the manufacturer of Insinkerator waste disposers was upset when the heroine of the TV series Heroes (also by NBC) deliberately put her hand in their waste disposal to demonstrate her recuperative power.  Emerson sued to mixed public reaction, and while it did get a concession by NBC to edit the depiction going forward, it eventually dismissed the case.

Many years ago Caterpillar, upset with the use of its bulldozers by the villains in the movie George of the Jungle II to destroy the jungle, sued Disney.  However, the suit did not get far.  See, Caterpillar Inc. v. Walt Disney Co., 287 F. Supp. 2d 913 (C.D. Ill. 2003).  Around that same time, Wham-O, maker of the iconic Slip ‘n’ Slide, sued Paramount Pictures for the misuse of the toy by the title character in the film “Dickie Roberts: Former Child Star,” and didn’t get very far.  See, Wham-O, Inc. v. Paramount Pictures Corp., 2003 WL 2300526 (N.D. Cal. 9/29/03).

Trademark protection offers scant protection when bad things happen to good brands.  Trademark owners are best off fighting bad percent at the court of public opinion, rather than a court of law.

 

 

 

You have Goat to be Kidding Me

1207.01(a)(ii)(A)Billie Goat Tavern & Grill in Chicago has sued St. Louis-based The Billie Goat Chip Company for trademark infringement, claiming the sale of Billie Goat Chips in Illinois and elsewhere is causing confusion with their tavern.

The brands appeared to have peacefully co-existed for a number of years.  The Tavern was established in 1934, and their mark has been federally registered since 1982.  The Chip Company started in 2009, and their mark has been federally registered since 2010, which registration is now incontestable.

It appears that the Chip Company’s distribution recently expanded to Chicago, which apparently got the Tavern’s goat.  However it also appears that for the first time in 83 years, the Tavern decided to offer burgers and beer in local stores.  The Complaint also reveals Tavern has designs on offering “its iconic chips at retail locations shortly” [¶ 17].  However, from the pictures on their website, you would expect that the Tavern’s iconic chips are Vitner’s chips.

It seems that the Tavern is the source of some of its own problems.  It is a basic premise to trademark law that if you snooze, you lose (this would sound much more authoritative in Latin).  The first user of a mark who does not expand its use after having a reasonable time to do so may lose out to the second comer who does expand.  At the Tavern’s behest the U.S. District Court in Chicago will have to decide whether the Chip Company’s activities are likely to cause confusion, but this question is complicated by the Tavern’s recent belated expansion into retail stores.  The Tavern may have to prove likelihood of confusion based only on its activities prior to the expansion.  The TMEP §1207.01(a)(ii)(A) rejects a per se rule that food and beverage products are confusingly similar to restaurant services.  The Tavern may also have to contend with some third parties, including Billy Goat Ice Cream Co, registered for ice cream (4822106), Billy Goat Coffee Café, which is registered for cafe services (3380184 and 3380185), and Billy Goat Hill Estate, which is registered for wine (3195405).

At first blush, it appears both parties did what they were supposed to, each applying for, obtaining, and maintaining multiple federal trademark registrations for their respective marks.  Yet the parties still find themselves in a dispute.  This case is a reminder that a senior user needs to monitor the marketplace and address subsequent filers and user early on, or risk having new comers establish rights that diminish the first users rights.

This would seem to be an opportunity for collaboration rather than litigation — too bad the parties are probably as stubborn as goats.