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.

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.

 

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.

 

 

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.

 

 

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:

S

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?

 

 

 

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.

 

 

 

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?

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.