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.

 

 

 

Immoral and Scandalous Matter are as Registrable as Disparaging Matter; The Principal Register is FUCT

In In re Brunetti, [2015-1109] (December 15, 2017), the Federal Circuit reversed the Trademark Trial and Appeal Board, which affirmed the examining attorney’s refusal to register the mark FUCT because it comprises immoral or scandalous matter under
15 U.S.C. § 1052(a).

While the Federal Circuit found substantial evidence supported the Board’s findings and that the Board correctly concluded that the mark comprises immoral or scandalous matter, the Federal Circuit held that the bar on registering immoral or scandalous marks is an unconstitutional restriction of free speech.

After its en  banc decision In re Tam, 808 F.3d 1321, 1333–34 & n.4 (Fed. Cir. 2015), which held that Section 2(a)’s prohibition against registration of disparaging marks unconstitutional under the First Amendment because it discriminated on the basis of content, message, and viewpoint, which the Supreme Court affirmed, the Federal Circuit determined that the prohibition against scandalous marks was similarly unconstitutional.

The government conceded that § 2(a)’s bar on registering immoral or scandalous marks is a content-based restriction on speech, subject to strict scrutiny review. However, the
government contended § 2(a)’s content-based bar on registering immoral or scandalous marks does not implicate the First Amendment because trademark registration is either a government subsidy program or limited public forum.  The Federal Circuit examined both of these arguments in detail, and rejected them.

It seems ridiculous to assert that the First Amendment creates a right to register a trademark, but the Federal Circuit has held otherwise and the Supreme Court agrees.  One has to wonder which other of Section 2’s prohibitions are likewise improper restrictions on speech.

 

Is the Reproduction of a Branded Product in a Depiction of Real Life an Infringement?

AM General LLC maker of HUMVEE®-branded vehicles, has sued Activision Blizzard, Inc., Activision Publishing, Inc., and Major League Gaming Corp. in the Southern District of New York for using AM General’s trademarks and trade dress in advertising and promotion of their Call of Duty® video games, featuring AM General’s trademarks and vehicles bearing AM General’s trade dress prominently in their video games, and causing the manufacture and sale of collateral toys and books.

According to the Complaint, AM General has licensed a number of video game manufacturers,  including Infogrames Inc., Novalogic, Inc.,  Codemasters Software Company, Ltd., and THQ Inc. so AM General is not opposed to  their products appearing in video games, just in video games for which they do not get paid.

AM General alleges that the defendants’ use of its trade dress and marks in connection with the advertising, promotion, and sale of videogames has caused and is likely to cause purchasers and potential purchasers to falsely believe that these products are associated with, are approved, licensed, or sponsored by AM General.  With respect to toys, AM General might have a point,  However, with respect to the video games themselves, it is possible that purchasers and potential purchasers will simply think that the games are realistic depictions of the battlefield where AM General’s products are used.

In S.S. Entm’t 2000, Inc. v. Rock Star Videos, Inc., the 9th Circuit found that the depiction of plaintiff’s L.A. “gentlemen club” PLAY PEN  as a virtual strip club called Pig Pen in GTA: San Andreas did not infringe plaintiff’s rights.  The Ninth Circuit found that the First Amendment protects an artistic works’ use of a trademark, unless the use has no artistic relevance whatsoever, or unless it explicitly misleads as to the source or content of the work.  The Ninth Circuit thought it was unlikely that the video game was produced by the plaintiff.  It would seem that AM General might have similar difficulties.

AM General made millions selling the government Humvees for use on the battlefield.  Does a videogame manufacturer need permission to reproduce these vehicles in a depiction of the battlefield? Trademarks are a part of daily life, and if some of these trademarks are caught up in a representation of daily life, is the trademark owner really harmed?

Branding Life

Almost anything that catches the public’s attention for more than a few minutes ends up as the subject of a trademark application by someone trying to capitalize on the moment and own a piece of the public discourse.  So it is not surprising that today’s solar eclipse spawned quite a few filings, some directly relating to the event itself others simply capitalizing on the spike of the word in consumer’s consciousness.

There were 80 eclipse marks filed in the U.S. in 2016-2017, including:

The most questionable trademark strategy is that of Sinclair Finance Group, application on SUN VALLEY SOLAR ECLIPSE AUGUST 21, 2017 was filed on August 4, 2017.

They won’t get an Office Action until November, longer after the August 21 date they included in their mark.  The most well planned strategy has to be that of Southern Illinois University, whose Reg. No. 5177673 on ECLIPSE 2017-2024 SOUTHERN ILLINOIS ECLIPSE CROSSROADS OF AMERICA plans ahead for the next great solar eclipse in 2024:

There will always be those who try to “own” by trademarking a piece of our common human experience.  Some are just better at it than others.

 

 

 

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When is July 4 this year? When is North Carolina’s FIRST TUESDAY Lottery? and Descriptiveness

In In re North Carolina Lottery, [2016-2558] (August 10, 2017), the Federal Circuit affirmed the refusal of registration of FIRST TUESDAY in connection with lottery services and games on the first Tuesday of each month.

Like the examining attorney, the TTAB reasoned that N.C. Lottery’s promotional materials make clear that “new scratch-off games are offered on the first Tuesday of every month” and found that such fact would “be so understood by the relevant consumers who encounter the designation FIRST TUESDAY in the marketplace.”

The Federal Circuit said that a mark is merely descriptive if it immediately conveys information concerning a feature, quality, or characteristic of the goods or services for
which registration is sought.  The Federal Circuit rejected the NC Lottery’s argument that its was error to rely on the explanatory text in its specimens to supplement the meaning of the mark and conclude that it is merely descriptive. The Federal Circuit said that it was proper to determine the descriptiveness in the context of its use.  The Federal Circuit also rejected the NC Lottery’s argument that the fact that explanatory text was needed on the specimens showed that the mark itself was not  descriptive.

The Federal Circuit found that the commercial context demonstrates that a consumer would immediately understand the intended meaning of FIRST TUESDAY. The Federal Circuit sajd that the evidence shows that the mark is less an identifier of the source of goods or services and more a description of a feature or characteristic of those goods or services, and concluded  that substantial evidence therefore supports the TTAB’s finding that FIRST TUESDAY is a merely descriptive mark.