About bwheelock

Education J.D., Washington University in St. Louis B.S.E. in Mechanical Engineering, Duke University

Game of Groans

HBO, the producers of the popular television series GAME OF THRONES has filed an opposition [91244050] against two trademark applications filed by The Trustees of Rancho Santa Ana Botanic Garden to register the marks GAME OF THORNS and this stylized version:

HBO alleges that the Botanic Garden’s use of GAME OF THORNS is likely to cause confusion:

However unless the thought is that consumers won’t notice the difference between THRONES and THORNS, or are likely to believe that HBO misspelled its name, confusion seems unlikely.  HBO also alleges dilution:

It does not seem that a botanic garden is likely to tarnish the image of the world of Westeros and Essos, and as with the likelihood of confusion, tarnishment by blurring would seem to require that consumers won’t notice the difference between THRONES and THORNS, or are likely to believe that HBO misspelled its name.

The Botanic Garden is  clearly making a pun — one of those groan-inducing jokes based on words that sound similar but have dissimilar meanings.  While many regard puns as the lowest form of humor, are they prohibited by trademark law?  It seems that if most people get the joke, there can be no likelihood of confusion or dilution, because getting the joke relies upon knowing the difference between a throne and a thorn.  Not getting the joke, however, might indicate at last a possibility of confusion, and trademark law might apply.

While we don’t want trademark law interfering with good jokes, if it can stop bad jokes, that’s probably a good thing.  We will have to wait to see whether or not the TTAB gets the joke.

Federal Circuit agrees that CORN THINS and RICE THINS are least Merely Descriptive

In Real Foods Pty., Ltd. v. Frito-Lay North America, Inc., [2017-1959, 2017-2009] (October 4, 2018), the Federal Circuit affirmed-in-part, vacated-in-part, and remanded the TTAB’s decision that the Real Foods marks CORN THINS and RICE THINS  were merely descriptive and have not acquired distinctiveness.

Real Foods argued that the marks are merely suggestive, and not descriptive, and even if they are descriptive, they have acquired secondary meaning.  The Federal Circuit agreed with the TTAB that the marks were merely descriptive.  When determining whether a mark is merely descriptive, one must consider the commercial impression of a mark as a whole, viewed through the eyes of a consumer.  One must consider the mark in relation to the goods for which it is registered, asking whether someone who knows what the goods and services are will understand the mark to convey information about them.  The Federal Circuit found that substantial evidence supports the TTAB’s finding that the proposed marks are highly descriptive, noting that “corn” and “rice” are grains from which the products are made, and “thins” describe the physical characteristics of the products.  Viewing the marks as composites does not create a
different impression.

The Federal Circuit rejected Real Foods arguments about the source of evidence of public understanding of its marks, noting evidence of the public’s understanding of [a] term may be obtained from any competent source.  The Federal Circuit also rejected Real Foods’ arguments that the TTAB failed to properly consider third party registrations containing “THINS,” noting that these did not compel registration, because each application must be examined on its own merits.

The Federal Circuit also found that substantial evidence supported the TTAB’s finding of a lack of acquired distinctiveness.  To determine whether a mark has acquired secondary meaning, courts consider: advertising expenditures and sales success;
length and exclusivity of use; unsolicited media coverage; copying of the mark; and consumer studies.   Real Foods’ sales and advertising figures weigh against a finding of acquired distinctiveness.  Further Real Foods spent a relatively small amount on advertising as compared to other expenditures.  Finally, research conducted
by a third party on behalf of Real Foods demonstrates that consumers have low brand loyalty to and low preference for Real Foods’ corn and rice cakes, as compared to
its competitors.  Frito-Lay’s evidence showed low recognition of the terms are marks.

The Federal Circuit rejected Real Foods’ argument that the TTAB ignored evidence of substantially exclusive and continuous use, find that the TTAB expressly acknowledged the evidence, and was within its discretion to discount it.  As to other evidence, this too was within the TTAB’s right to weigh evidence, and declined the the invitation to re-weigh the evidence.

The TTAB dismissed Frito-Lay’s claim that CORN THINS and RICE THINS are generic.  Frito-Lay argued that the TTAB improperly narrowed genus of the goods and services, tracking Real Foods’ amendment to the description of goods, which related to the species of goods, rather than considering the genus.  Accordingly, the Federal Circuit remanded for the TTAB to reconsider its selected genus and conduct its genericness analysis in light of that genus.

 

 

 

Beyoncé v. Feyonce — If Enough Consumers Get the Joke, There May not be a Likelihood of Confusion

In Beyoncé Giselle Knowles-Carter v. Feyonce, Inc., [16-CV-2532 (AJN)](September 30, 2018) the Southern District of New York denied summary judgment to plaintiff, the entertainer Beyoncé, against defendants for the sale of merchandise using the brand name “Feyonce” (rhymes with fiancé),  which defendants market to the engaged to be married.

There was no dispute that in marketing to fiance purchasers, defendants chose the formation “FEYONCE” in order to capitalize off of the exceedingly famous BEYONCE mark. However the district said that that alone does not establish a likelihood of confusion — the critical question was whether a rational consumer would mistakenly believe FEYONCE products are sponsored by or affiliated with BEYONCE products.

The court said: “A rational jury might or might not conclude that the pun here is sufficient to dispel any confusion among the purchasing public. Thus, there is a genuine dispute of material fact that requires denial of the motion for summary judgment.”

Intent to capitalize on fame is not enough, if enough rational consumers get the pun there may not be a likelihood of confusion.

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: