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.

GottaWannaNeedaGettaHava Injunction

Bojangles International LLC originator of the Cajun Filet Biscuit that it promotes with the jingle “GottaWannaNeedaGettaHava” has sued Hardees for selling a Cajun Chicken Biscuit and using the phrase GottaWannaNeedaGettaHava to do so.
Hardees introduced its Cajun Fillet Biscuit via Twitter, and promptly received a cease and desist letter which prompted Hardess to rename its sandwich Cajun Chicken Biscuit.  This was not enough to appease Bojangles, which brought suit in North Carolina, alleging that Cajun Chicken Biscuit infringes its federally registered Cajun Fillet Biscuit trademark, and that Hardee’s introductory Tweet infringed its federally registered GottaWannaNeedaGettaHava  trademark.
It is a curious case because while Hardess indisputably used the phrase GottaWannaNeedaGettaHava in its tweet but not as a brand name, and arguably as a comparative reference to Bojangles’ arguing that its Cajun Fillet Biscuit is “better.” Would someone receiving this Tweet from Hardees really be confused?  Hardees started out using the Cajun Fillet Biscuit trademark, but quickly switched to Cajun Chicken Biscuit.  What would Bojangles expect Hardees to call a Cajun flavored chicken biscuit?
The case will test the limits of 15 U.S.C. § 1115(b)(4) defense for uses “otherwise than as a mark . . . which is descriptive of and used fairly and in good faith only to describe the goods or services.”  Hardees will likely argue its use “GottaWannaNeedaGettaHava” was a comparative reference to Bojangles, and its use of Cajun Chicken Biscuit is descriptive of its product.  It will be interesting to see if Bojangles can make Hardees dance.

The Skinny on SkinnyPop vs. Metacalfe’s Skinny

A interesting battle has “popped” up between Amplify Snack Brands, Inc., owner of the SKINNYPOP trademark, and Snyders-Lance, which is preparing to enter the market with METCALFE’S SKINNY POPCORN.  Amplify sued Snyders-Lance in federal court in Texas on April 11.  Amplify accused Snyders-Lance of willful infringement in an obvious attempt to confuse customers.  Meanwhile, Snyders-Lance sued Amplify the same day in North Carolina for a declaration that it is not infringing Amplify’s rights.

Popcorn appears to part of a larger plan by Kettle Foods Ltd. to introduce a whole line fo METCALFE SKINNY products including fruit-based snack food; nut-based snack food; fruit chips, low-fat potato chips, nuts, potato chips, bread, pastry and confectionery made of sugar, cereal bars; cereal-based snack food; corn-based snack food; crackers; rice-based snack food; rice cakes U.S. Application Nos. 87160093, 87160099, 87160107, 87160109, 87160114, 87160123).

Whether SKINNY is capable of identifying source is an open question.  There 116 issued registrations and 69 pending applications on marks including the term “SKINNY” for food products. Only 9 of the registrations disclaim of “skinny,” and only 10 of the applications (including all of  Kettle Foods Ltd.’s applications) disclaim “skinny.”  Lance also points out that there is at least one other SKINNY popcorn already in the market: SKINNYGIRL:

If not descriptive of food, SKINNY is certainly widely used, so whether Amplify’s can show METCALFE’S SKINNY POPCORN infringes SKINNYPOP POPCORN will be interesting. Kettle Foods Ltd. will likely contend, consistent with its disclaimer of “skinny” that its use of skinny is a permitted descriptive use under 15 USC §1115(b)(4).  Amplify reportedly has $200 million in popcorn sales, so this could be a epic battle.  Get a bowl of your favorite popcorn, and pull up a chair.