What’s the Flap Over the Unicorn Frappe?

On May 3, 2017, Montauk Juice Factory Inc. sued Starbucks Corporation in the Eastern District of New York, [1:17-cv-02678] alleging that Starbuck’s “UNICORN FRAPPUCCINO” infringed its “distinctive and famous” UNICORN LATTE.  Montauk also complained that Starbucks’ Unicorn Frappuccino shares visual similarities to the Unicorn Latte in that both were brightly colored and featured the colors pink and blue prominently.

Montauk claims that it began selling the UNICORN LATTE in December 2016 (although their trademark application claims a first use of October 1, 2016.  Peculiarly, Montauk acknowledges that the Unicorn Latte fits with the current trend of colorful foods—a relatively recent interest, particularly on the Internet, with multi-colored foods, and even specifically identifies UNICORN NOODLES and UNICORN POOP.

So is UNICORN a trademark, or is it simply a trend?  Recipes for UNICORN LATTES and UNICORN FRAPPUCCINOS abound on the internet.  There is UNICORN hot chocolate, UNICORN tea, UNICORN shakes, and UNICORN smoothies, UNICORN toast, UNICORN doughnuts.  While there is plenty of press about Montauk’s UNICORN LATTE, there are plenty of indications that UNICORN is descriptive if not generic, and that UNICORN food and drink are a trend.  Montauk may not even the originator of the trend — Toronto’s CutiePie Cupcakes & Co. has been selling a UNICORN LATTE since last summer.

Can Montauk show that it is likely that consumers will believe there is a connection between UNICORN LATTE and UNICORN FRAPPUCCINO, or is the only connection between the products in the minds of consumers that both are brightly colored, like other UNICORN food and drink?  If in fact Montauk is the owner of UNICORN LATTE, it may be the victim of genericization — a common fate for product innovators whose choice of brand name for a new product becomes the name for the product.  When naming a new product, it behooves the innovator to select both a generic name and a brand name, so that brand is not lost.

Non-Trademark Use is a Non-Infringing Use

In Oaklawn Jockety Club, Inc. v. Kentucky_Downs, LLC, [16-5582] (Sixth Circuit April 19, 2017), the Sixth Circuit affirmed a district court dismissal of plaintiff’s trademark infringement action because defendant’s use of plaintiffs’ trademarks in its electronic horse racing games was not likely to cause confusion.  Although the case was designated “NOT RECOMMENDED FOR PUBLICATION,” it makes an important point about trademark infringement: defendant must use plaintiff’s trademark as a trademark.

The district court found, and the Sixth Circuit agreed, that defendant’s marks in its animated video recreations of actual historic horse races, in order to identify the location of the race, was not a trademark use.

The Sixth Circuit noted that the term “Location” preceding the trademarks sufficiently explains to consumers that the trademarks are being used in a wholly descriptive
manner and does not cause a likelihood of confusion as to the source of the video.  The Sixth Circuit added that the fact that the replay is entirely generic and does not visually depict the plaintiffs’ facilities further supports this conclusion.

Because this was a non-trademark use of plaintiffs’ trademarks, the Sixth Circuit did not have to reach the question whether the fair-use defense applied.  As the Supreme Court said in Prestonettes, Inc. v. Coty, 264 U.S. 359, 368 (1924). “When the mark is used in a way that does not deceive the public we see no such sanctity in the word as to prevent its being used to tell the truth.”

Policing the Trademark Playground and Calling Out Bullies

The prevailing defendant in Louis Vuitton v, My Other Bag, LLC (blogged about here: Louis Vuitton Left Holding the Bag) in a Motion filed on April 7 in the Southern District of New York (Case 1:14-cv-03419-JMF Document 154) is seeking $802,939.05 in fees and costs for defending Louis Vuitton’s claim that MOB’s parody bag infringed or diluted Louis Vuitton’s rights:

MOB argues that a fee award is justified because Louis Vuitton is a trademark bully.  “Trademark bully” is a term that is being used with increasing frequency.  See Three Stripes and You’re Out.  MOB used the term “bully” at least 13 times in its motion for fees.

Trademark Owners are put in a difficult position.  The failure to aggressively enforce their rights, can allow third party uses that either weaken the mark in a likelihood of confusion analysis, or lessen its fame and distinctiveness in a dilution analysis.  A trademark owner may (rightly) feel forced to take actions that it might otherwise be inclined to tolerate.  And outside of the costs of enforcement, there has been little consequence to bringing such a claim.

An award of attorneys fees and costs in appropriate cases, may be exactly what is needed to tip the scales when enforcement decisions are being made.  It is up to the Southern District of New York to judge the propriety of Louis Vuitton’s enforcement efforts, and decide whether or not the name “bully” is appropriate.


Trademark Scammers Abound

There are still a number of entities out there trying to trick trademark owners into spending money to list their marks in various on line and print directories by sending official looking invoices and other paperwork.  In the last month, one client received ten such solicitations, from six different entities:

  • IP Direct International Patent & Trademark Directory
  • Patent & Trademark Office
  • Patent & Trademark Bureau
  • International Catalogue of Trademarks
  • TPP Trademark & Patent Publications
  • GLOPAT Global Patents & Trademarks

The practice is so pervasive, that this same client also received a warning letter from the UK Intellectual Property Office, warning about “unofficial trade mark renewal services” and identifying two such agencies in particular:

  • Patent and Trade Mark Agency Limited
  • Trade Mark Renewal Services Limited

Not only to trademark owners have to watch out for infringers, they need to watch out for scammers as well.

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.



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:


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.


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.