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.

will.i.am: registered.u.r.not

In In re I.AM.SYMBOLIC, LLC, [2016-1507, 2016-1508, 2016-1509] (August 8, 2017), the Federal Circuit affirmed the decision of the TTAB affirming the Trademark Examiner’s refusal of registration of the mark I AM on grounds of likelihood of confusion.

After initial refusals of registration of the I AM mark  in Classes 3, 9, and 14, I AM SYMBOLIC amended its description of goods to include the limitation that the goods were “associated with William Adams, professionally known as ‘will.i.am.’”  The Examiner maintained the refusal, and the Board affirmed, noting “we do not see the language as imposing a meaningful limitation on [Symbolic’s] goods in any fashion, most especially with respect to either trade channels or class of purchasers.

Before the Federal Circuit I AM SYMBOLIC argued Symbolic argues that the Board erred in its likelihood of confusion analysis by: (1) holding that the will.i.am restriction is “precatory” and “meaningless” and therefore not considering it in analyzing certain DuPont factors; (2) ignoring third-party use and the peaceful coexistence on the primary and supplemental registers and in the marketplace of other I AM marks; and (3) finding a likelihood of reverse confusion.

Regarding the will.i.am restriction, the Federal Circuit said I AM SYMBOLIC failed to show that the Board erred in finding that the restriction does not impose a meaningful limitation in this case for purposes of likelihood of confusion analysis.  Under a proper analysis of the du Pont factors, the goods are identical or related and the channels of trade are identical, and thus there is a likelihood of confusion.

The Federal Circuit agreed with the Board that the purported restriction does not (1) limit the goods “with respect to either trade channels or class of purchasers”; (2) “alter the nature of the goods identified”; or (3) “represent that the goods will be marketed in any particular, limited way, through any particular, limited trade channels, or to any particular class of customers.”  In the absence of meaningful limitations in either the application or the cited registrations, the Board properly presumed that the goods travel through all usual channels of trade and are offered to all normal potential purchasers.

Regarding other I AM marks, the Federal Circuit rejected the argument that because applicant’s class 25 registration had co-existed with the cited class 3, 9 and 14 registrations that there was no likelihood of confusion. The ownership of a registraiton on one class does not give a right to register the same]mark on an expanded line of goods, where the use of the mark covered by such registration would lead to a likelihood of confusion, mistake or deception.

With respect to third party marks, the Federal Circuit found that I AM SYMBOLIC did not show sufficient third party use to raise an issue in classes 3 and 9, and in class 14, the Federal Circuit found that the strength of the similarity of the marks and of the goods was sufficient to any error in
failing to specifically analyze the potential weakness of registrants’ marks based on limited third-party use.

Regarding the alleged finding of “reverse confusion,” the Federal Circuit  attributed the Board’s comments to a response to the arguments about the fame of the applicant being insufficient, not to an express finding of reverse confusion.

Overall, the Federal Circuit found sufficient evidence to support the Board’s finding I.AM confusingly similar to the cited registrations, and sustain the refusal of registered.

Hutchinson Revisited Surname + Merely Descriptive Term May or May Not Be Registrable

In Earnhardt v. Kerry Earhhardt, Inc., [2016-1939] (July 27, 2017), the Federal Circuit vacated and remanded a TTAB decision dismissing Earnhardt’s opposition because it found that there was no likelihood of
confusion between EARNHARDT COLLECTION (by Dale Earnhardt’s sone) and Teresa Earnhardt’s marks (the widow of Dale Earnhardt), and that EARNHARDT COLLECTION is not primarily merely a surname.

The Federal Circuit found that it was not clear that the TTAB conducted the appropriate analysis in determining that EARNHARDT COLLECTION is not primarily merely a surname.  To evaluate whether the commercial impression of a mark that combines a surname with a second term is still primarily merely the surname,
the PTO must determine whether the primary significance of the mark as a whole in connection with the recited goods and services is that of the surname. A key element in such an inquiry is determining the relative distinctiveness of the second term in the mark.

In Hutchinson, the PTO concluded that the mark HUTCHINSON TECHNOLOGY was primarily merely a surname because Hutchinson was a surname and the applicant conceded that “technology” described many goods similar to those listed in the application (which
included electronic components and computer products).  The Federal Circuit reversed because (1) the PTO did not properly consider the mark as a whole, and (2) it incorrectly found that “technology” was “merely descriptive” of the recited goods.

Upon review of the Board’s decision, in the current case, it was
unclear to the Federal Circuit whether the Board engaged in a merely descriptive inquiry for the term “collection” or if the Board improperly
constricted its analysis to only a genericness inquiry.  The Federal Circuit noted that while the Board did state that “collection” is “not the common descriptive or generic name” for KEI’s furniture and custom home construction services, it is less than clear that the Board
intended its usage of “common descriptive” to represent a finding that “collection” is not merely descriptive.

The Federal Circuit explained that while the Board relied heavily on Hutchinson for its analysis, in Hutchinson it did not find that any mark
consisting of a surname and a merely descriptive term is registrable as a trademark as a matter of law, nor did it find that such a mark is always primarily merely a surname and not registrable as a matter of law.

The Federal Circuit said that the Board has to determine whether the additional term — “collection” — is merely descriptive of the goods, and if so, whether the addition of the term to the Earnhardt surname “altered the primary significance of the mark as a whole to the purchasing public.