Demand Letters Protected by the Noerr-Pennington Doctrine

Recently in Silverhorse Racing LLC v. Ford Motor Co., [Civ. Action No. 6:16-cv-00053] (M.D.Fla. January 30, 2017) the Court granted Ford Summary Judgment that the act of sending Demand Letters to Silverhorse’s distributors was litigation contact that is immunized from civil liability under the Noerr-Pennington doctrine.

Judge Conway found that the doctrine extends not only to petitioning of the judicial branch (i.e., filing a lawsuit), but also to acts reasonably attendant to litigation, such as demand letters.  Judge Conway instructed, however, that the Noerr doctrine is not absolute, and that to receive immunity the acts must no fall within the sham exception — i.e., the litigation activity must be genuine.

Silverhorse argued that because it had defenses to Ford’s claims, the demand letters asserting the claims were a sham.  Judge Conway was unpersuaded.  She said that the subjective strength of the claims are not determinative of whether the letters were a sham.  Because there was no evidence that Ford’s letters were objectively baseless, the Court did not have to examine Ford’s subjective intent.

Make IP Great Again

An interesting phenomenon is the use of trademarks to own current events.  Every major event seems to be followed by a series of trademarks applications by those who seek to claim ownership of history, or at least the tchotchkes of history.

It wasn’t surprising, then, that Donald Trump’s surprising run for the presidency, spawned a number of copycats trying to own a piece of the event.  Donald Trump filed his first application on MAKE AMERICAN GREAT on November 19, 2012, just two weeks after the previous Republican nominee, Mitt Romney, lost to Barack Obama.

Since then, there have been nearly fifty applications filed on the MAKE ______ GREAT AGAIN format,  including applications on nearly identical marks: Serial No. 86765056 on MAKE AMERICAN GREAT AGAIN for audio and video recordings; Serial No. 86958684 on MAKE AMERIKKKA GREAT AGAIN for on-line store services; Serial No. 86956810 on LET’S MAKE AMERICA GREAT AGAIN! for shirts; Serial No. 87062839 on MAKE AMERICA GREAT AGAIN for patches; Serial Nos. 87231017 and 87231035 on MAKE AMERICA GREAT AGAIN for beds and linens.

Then there are those that have capitalized on the phrase by adapting the slogan to their own purposes, such as: Serial No. 87016324 on MAKE OIL & GAS GREAT AGAIN; Serial No. 87054734 on MAKE MY BODY GREAT AGAIN; Serial No. 87042380 on MAKE SOCIAL MEDIA GREAT AGAIN; Serial No. 87234750 on MAKE OUR PRESIDENT GREAT AGAIN, and Serial No. 86754667 on MAKE YOUR HAIR GREAT AGAIN.

The trademark register is an overlooked resource tool for seeing what has caught America’s attention.  Whatever it is, someone will make a T-shirt or bumper sticker, and try to own it, by filing a trademark application.  Own a piece of history, just $225 per class.

 

I ♥ TTAB

In D.C. One Wholesaler, Inc. v. Chien, [Opposition No. 91199035/Cancellation No. 92053919](TTAB October 4, 2016), the TTAB was called upon to resolve a dispute over the ownership of the trademark I ♥ DC.  The TTAB held in a non-precedential opinion, that I ♥ DC was not a trademark — not for being deceptively misdescriptive, as one might expect, but simply because it did not function as a mark.

The TTAB reminded us that the Trademark Act is not an act to register mere words, but rather to register trademarks. The Board said that before there can be registration, there must be a trademark, and unless words have been so used they cannot qualify.  The Board found that the record before it indicated that I ♥ DC has been widely used, over a long period of time and by a large number of merchandisers, as an expression of enthusiasm, affection or affiliation with respect to the city of Washington, D.C.  The Board further found that the marketplace is awash in products that display the term I ♥ DC as a prominent ornamental feature of such goods, in such a way that the display itself is an important component of the product and customers purchase the product precisely because it is ornamented with a display of the term.

The Board concluded:

We find that the phrase I ♥ DC on apparel and other souvenirs, whether displayed in the stacked format shown in the Registration or in the horizontal format shown in the Application, would be perceived by purchasers and prospective purchasers as an expression of enthusiasm for the city of Washington, DC. Under such circumstances, customers would not perceive I ♥ DC as an indicator of the source of the goods on which it appears.

Thus, the Board held that I ♥ DC fails to function as a trademark.  The Board sustained the opposition, and cancelled Opposer’s registration.

The Board’s decision is non-precedential, perhaps because the Board did not want to to encourage a close look into the many registered trademarks that function like I ♥ DC.  When someone buys a shirt or other trinket with a short sentiment (or even a sports team name) do they really think about, or even care about, the source? In the vast majority of cases they couldn’t care less about the source, they are buying the message.  Ever since Dallas Cap & Emblem, the dirty little secret of trademark law is that we routinely bend trademark protection to protect the message and not the source.  However, when you bend trademark law too far, it occasionally snaps.

New Year’s Resolution for a BRAND New Year

A new year is upon us, and we suggest that trademark owners make it a brand new year, by resolving to use their marks correctly going forward.  Proper trademark use is important to creating and maintaining trademark rights, and the rules are relatively simple — just follow the ACID test: Adjective, Consistent, Identified, and Distinctive.

A mark is an adjective identifying a particular kind of product or service, and it should be used as such.  A trademark should be paired with a generic term for the product or service.  “Buy an ACME™ widget.” is preferred over “Buy an ACME™.”

A mark should be used consistently so that it is more readily recognized by consumers.  In Reebok International Ltd. v. Kmart Corp., 849 F.Supp. 252, 31 USPQ2d  1882 (S.D.N.Y. 1994), the Court noted the limitations on the strength of Reebok’s trade dress “because Reebok has used the Stripecheck inconsistently.”

A mark should be identified as a mark and not a normal word.  Registered marks should be identified with the ® symbol, and unregistered marks with a ™.  This is pretty straight-forward, but many trademark owners drop the ball when the mark appears multiple time on a package or advertisement.  Should the mark be identified every time it appears?  Yes is should.  However at the very least the most prominent use of the mark should be identified on every “sight” – each page or each face of the package.  That way every one encountering the mark will be apprised of its trademark status.

Finally, the a mark should be used distinctively.  The mark should stand out from other words in an advertisement or on a package.  The mark should be bigger or bolder or in color. Anything that draws attention to the fact that the mark is special.

Applying the ACID test to your trademark use will help you build and maintain strong trademark rights.   This year resolve to use your marks properly, and make this a BRAND new year!

 

 

 

Out of the Frying Pan, Into Disclaimer

In In re Louisiana Fish Fry Products, Inc., [2013-1619], (August 14, 2015), the Federal Circuit affirmed the TTAB’s decision affirming the refusal of registration of LOUISIANA FISH FRY PRODUCTS BRING THE TASTE OF LOUISIANA HOME! without a disclaimer of FISH FRY PRODUCTS.  The Applicant argued that the term FISH FRY PRODUCTS was not generic, and had acquired secondary meaning during its thirty years of use.

The Federal Circuit found that substantial evidence supported the TTAB’s factual finding that applicant had not established that FISH FRY PRODUCTS had acquired distinctiveness.  The Federal Circuit said that for highly descriptive terms such as FISH FRY PRODUCTS the TTAB is within its discretion not to accept evidence of five years’ use as establishing acquired distinctiveness.  The Federal Circuit also agreed with the TTAB that evidence of use of LOUISIANA FISH FRY PRODUCTS did not necessarily establish that FISH FRY PRODUCTS had acquired distinctiveness.  The Federal Circuit agreed that the evidence did not establish that the specific term at issue, FISH FRY PRODUCTS, had acquired distinctiveness.

Peace, Love, and Lawyers

In Juice Generation, Inc. v, GS Enterprises, LLC, [2014-1853] (July 20, 2015), the Federal Circuit vacated a TTAB decision sustaining GS Enterprises’ opposition to Juice Generation’s application to register PEACE LOVE AND JUICE based upon their PEACE & LOVE marks for restaurant services, including:

PEACE_LOVE

Reviewing the Board’s likelihood of confusion determination de novo, the Federal Circuit noted that although Juice Generation introduced evidence of a fair number of third-party uses of marks containing “peace” and “love” followed by a third, product-identifying term, the Board discounted the evidence because there were no “specifics regarding the extent of sales or promotional efforts surrounding the third-party marks and, thus, what impact, if any, these uses have made in the minds of the purchasing public.”  The Federal Circuit found that the Board’s treatment of the evidence of third-party marks did not adequately account for the apparent force of that evidence.  While the specifics as to the extent and impact of use not have been proven, the Federal Circuit found the evidence “powerful on its face”. The Federal Circuit said that the Board overlooked the fact that regardless of the extend of use, extensive evidence of third-party use and registrations indicates that the phrase PEACE & LOVE carries a suggestive or descriptive connotation in the food service industry, and is weak for that reason.

Peace_Love_JUICE

The Federal Circuit also found that the Board improperly failed to consider the marks as a whole when it declared that “PEACE LOVE” is the “dominant” portion of applicant’s marks, and compared only that portion to GS’s “PEACE & LOVE” marks.  The Federal Circuit said that this analysis did not display any consideration of how the three word phrase in Juice Generation’s mark might convey a distinct meaning—including by having different connotations in consumers’ minds—from the two-word phrase.  The Federal Circuit also observed that it was improper to give no significance to the disclaimed term JUICE because the consuming public encountering the mark would be unaware of the disclaimer.

The Board’s decision does not seem out of line with their past practice; perhaps the Federal Circuit is trying to inject more real world considerations into their process because after In B&B Hardware, Inc. v. Hargis Industries, Inc.  the Board’s decisions may have greater impact on the real world.

 

 

 

 

 

 

Actually Providing Services Key to Service Mark Use

In Couture v. Playdom, Inc., [2014-1480] (Fed. Cir. March 2, 2015), the Federal Circuit affirmed the cancellation of Couture’s federal registration on PLAYDOM because while on the May 30, 2008. filing date Couture had advertised the services, he did not actually perform the services until 2010 long after the Registration issued on January 13, 2009.  Although the Federal Circuit had not previously addressed the question, it found that “[o]n its face, the statute is clear.”  15 U.S.C. § 1051(a)(1) required use in commerce, and 15 U.S.C. §1127 defined use as rendering the services in commerce.  The Federal Circuit noted that the Second, Fourth, and Eighth have also indicated that actually performing the services, as opposed to merely advertising them, is required for a use-based service mark application.

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“Oh Give Me A Home, Where the Bison Roam, . . . “

Similarity of trademarks is judged based upon appearance, sound, and meaning, as Sazerac recently reminded us.  Sazerac, the makers of Buffalo Trace bourbon sued  Intercontinental Packaging Company d/b/a Crosby Lakes Spirits Co. over their Bison Ridge brand of Canadian whisky.  While “buffalo” and “bison” are different is appearance and sound, they are one in the same animal, the scientific name of the American Buffalo is bison bison.  It will be interesting to see whether similarity of meaning carries the day.

 

Dan McCall Gives the Government a Humor Lesson that All Trademark Owners Should Keep in Mind

Back in 2011 Dan McCall’s destributors received cease-and-desist letters from the NSA and DHS over T-shirts and mugs criticizing the two agencies by spoofing their seals, which are protected by special, nontrademark statutes. In October 2013 McCall filed a declaratory judgment action (PWG-13-3203 in the District of Maryland) to stop this interference with his free speach.  The parties appear to have reached a settlement, with the NSA conceding that the merchandise was “intended as parody” and shouldn’t have warranted a letter, and the DHS agreeing that its cease-and-desist request was “overbroad” because McCall was merely providing “commentary” about the agency.  The agencies are required to provide a letter to McCall and his distributor, confirming their interpretation that 50 U.S.C. 3613(a) does not prohibit parody or commentary:

The DHS’ letter provided a similar qualification of 18 U.S.C. 506, and even promised to establish internal guidelines about sending cease and desist letters in the future:

COMMENT: While trademark owners may not like parodies, the proper borders or which are sometimes hard to define, increasingly there is a price for overreaching.  There are other, better ways to get results than dashing off an overbroad and blustery cease and desist letter that may backfire.

 

 

Zynga Sues Bang With Friends

Zynga, Inc., creators of the popular Words With Friends game, has sued Bag With Friends, Inc., developers of an application that facilitates “hook-ups” between Facebook Friends,  The 21 page Complaint, filed July 30, 2013, alleges infringement of regisrered trademarks, infringement of unregistered trademarks, false designation of origin, dilution, state trademark infringment, common law trademark infrignement, and common law passing off and unfair competition.