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.

There are Few Absolutes In Likelihood of Confusion; Apparently Fame isn’t one of Them

In Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, [2016-1089](May 24, 2017), the Federal Circuit vacated a TTAB decision denying cancellation of Fairmont’s Reg. No. 4213619 on the mark ALEC BRADLEY STAR INSIGNIA for cigars, brought by Joseph Phelps Vineyards, owner of Reg. No. 1123429 on the mark INSIGNIA for wines.

In the eyes of the Federal Circuit, the TTAB’s error was in completely discounting fame as a factor once it determined that the mark was not famous.  As a result of this error, the Board did not properly apply the totality of the circumstances standard, which requires considering all the relevant factors on a scale appropriate to their merits.

Although the TTAB correctly acknowledged that fame for confusion purposes
arises as long as a significant portion of the relevant consuming public recognizes the mark as a source indicator, the TTAB applied a legally incorrect standard in applying
an all-or-nothing measure of “fame,” more akin to dilution analysis than likelihood of confusion analysis.

The Federal Circuit found that the record shows appreciation by consumers and the wine market of Vineyards’ INSIGNIA brand, and concluded that it was error to refuse to accord any “fame” to Vineyards’ INSIGNIA mark. The Federal Circuit concluded that the factor of “fame” warrants reasonable weight, among the totality of the circumstances.

It is not clear from the Opinion what upsets Joseph Phelps Vineyards about Fairmont Holding’s ALEC BRADLEY STAR INSIGNIA mark.  Joseph Phelps Vineyards’ registration already co-exists with a registration on COACH INSIGNIA for wines (Reg. No. 1394292, which is incontestable) and a registration on BAHIA INSIGNIAS (Reg. No. 4,604,938).  Even with fame properly considered as a factor, Joseph Phelps Vineyard may not get the result it is seeking.

 

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.

 

You Can’t Fake Confusion; “STEAK” is different from “FRESH”

The Court in Phelan Holdings, Inc. v. Rare Hospitality Management, Inc., [8:15-CV-2294-T-30TBM) (M.D. Fla. March 27, 2017), granted summary judgement that the slogan “You Can’t Fake Steak” is not confusingly similar to “You Can’t Fake Fresh.”

The Court noted that Phelan’s Pinchers Crab Shacks are bright, open air restaurants, painted in pastel colors. The walls are adorned with beachy, Florida-themed decorations, such as driftwood signs, mounted fish, large oars, and Caribbean artifacts. Phelan registered YOU CAN’T FAKE FRESH with the USPTO.   In contrast, Rare’s LongHorn Steakhouse restaurants are a chain of Western-themed casual steakhouse designed as a Texas-style roadhouse. Rare registered YOU CAN’T FAKE STEAK with the USPTO.

On summary judgment Phelan abandoned its confusion claims, asserting only a reverse reverse confusion theory.  The Court noted that Both marks incorporate the common buzz phrase “You Can’t Fake . . .,” but that the last word of each mark, i.e., Fresh vs. Steak, is completely different with a different meaning.  An important fact for the court appeared to that do not encounter either mark apart from the parties’ respective house mark.  The Court discounted Phelan’s linguistic expert because he focused on the first three words of the mark, and ignored the fact that the words “Fresh” and “Steak” are different, and did not account for the parties use of their house marks in connection with their marks,  The Court also attached a lot of significance to the differences in the parties restaurants.  The Court discounted Phelan’s survey evidence because the survey only tested forward confusion (finding between 13% and 26% confusion) , because the Phalen was asserting reverse confusion, not forward confusion.

Based on the Court’s analysis of the seven factors, Phelan failed to adduce sufficient evidence upon which a reasonable jury could find a likelihood of confusion between YOU CAN’T FAKE FRESH and YOU CAN’T FAKE STEAK.  This was despite Phalen presenting both a linguistic expert and a survey expert.  Apparently you can’t fake confusion.

 

Three Stripes and You’re Out

On March Adidas American, Inc. sued Juicy Couture, Inc., in the District of Oregon (3:17-cv-00437), alleging trademark infringement, unfair competition, trademark dilution, deceptive trade practices, and breach of contract.  This suit comes just a few weeks after Forever 21, frustrated by Adidas’ efforts to eliminate stripes from clothing, sued Adidas calling Adidas a “trademark bully.”

Juicy Couture arguably has three stripes on its clothing, but the stripes are not all the same, whether this is different enough to avoid a likelihood of confusion remains to be seen:

 

 

 

 

 

 

 

Not all enforcement efforts are legitimate, but neither is all enforcement bullying.

 

Fictional Magazine Accused of Real Infringement

The Sporting Times LLC has sued Orion Pictures, inc., Metro-Goldwyn-Mayer Studios, Inc., and others because of the depiction of a  publication titled The Sporting Times in trailers for, and in the actual movie, Spaceman — a biopic about baseball player Bill “Spaceman” Lee.  What isn’t immediately apparent from the Complaint is that the periodical depicted is fictional.  It is not the plaintiff’s publication, it bears a fictional date nearly two decades before plaintiff’s first issue.

Plaintiff complaints that it is being injured because its trademark has been infringed, and The Sporting Times is negatively portrayed as a publication that venerates and promotes over- the-hill athletes with serious addiction problems—the sort of sensationalist story that it would by all means avoid as it is the antithesis of the clean cut girl or boy next door image it actively promotes.

Plaintiff does use a similar presentation of “The Sporting News” on its website, and apparently used SPORTING NEWS in Old English script in the past:

although the current presentation is quite different:

Plaintiff has to prove that defendant’s use of a similar title in a fictional publication briefly shown in a movie is an infringement, and the rest of us have to remember that even a fictional product can be accused of infringement.

 

 

Louis Vuitton Left Holding the Bag

In Louis Vuitton Malletier S.A. v. My Other Bag, Inc., [16-241-cv] (December 22, 2016), the Second Circuit affirmed summary judgment for My Other Bag that its parody bag did not infringe or dilute Louis Vuitton’s trademark and trade dress rights or infringe its copyrights.

Confused? The Second Circuit Wasn’t.

myotherbag2

 

 

 

On the issue of infringement the Second Circuit said that whether it reviewed the district court’s findings as to each Polaroid factor deferentially or de novo (avoiding deciding which was corrrect),  “we reach the same conclusion.”  Obvious differences in MOB’s mimicking of LV’s mark, the lack of market proximity between the products at issue, and minimal, and unconvincing evidence of consumer confusion compelled a judgment in favor of MOB.

On the issue  on dilution, the Second Circuit observed a parody must convey two simultaneous—and contradictory—messages: that it is the original, but also that it is not the original and is instead a parody.  The Second Circuit found that this is precisely what MOB did: “At the same time that they mimic LV’s designs and handbags in a way that is recognizable, they do so as a drawing on a product that is such a conscious departure from LV’s image of luxury—in combination with the slogan “My other bag”—as to convey that MOB’s tote bags are not LV handbags.”

Finally, on the issue of copyright infringement, the Second Circuit found that MOB’s parodic use of LV’s designs produces a “new expression [and] message” that constitutes a non-infringing transformative use.

 

 

qech wej QaD trademark nIH (Trademarks Don’t Protect Ideas)

Lucas Film Limited has sued Michael Brown and his Light Saber Academy for trademark infringement, unfair competition, dilution, cybersquatting, state unfair competition, and dilution, arising from Mr. Brown’s running an academy promoting, producing, offering for sale and selling unauthorized “Lightsaber” classes, which purport to teach students how to use “Lightsabers” and/or perform as “Jedi.”

lightsaber_academy

The Academy appears to claim trademark rights in LIGHTSABER ACADEMY, tagging it with a TM, and has adopted a logo that is similar to the Jedi logo created by Lucas Film:

jedi_logo

But what should Mr. Brown call his school for teaching the use of lightsabers? Doesn’t he have a right to truthfully describe his services to potential customers? Of course he does.  Trademarks only protect against confusion of source.  Mr. Brown has the right to describe his activities, and even use the trademark of others in doing so, as long as he does not cause confusion, mistake or deception. Whether crossed that line, Mr. Brown has, is now for the Northern District of California to decide.

Lucas Films v. Brown raises an interesting question of what rights creators retain when their works become part of the cultural commons?  There are many instances where an idea introduced by a popular book or movie is developed by third parties, and as long as copyrights are not infringed, and the public is not likely to be confused, those ideas become part of our cultural commons free for all to use.  For example, there is a Klingon Language Institute (http://www.kli.org/) to learn Klingon, the language of the fictional Klingon race in Star Trek.

It will be interesting to see what happens, but it’s important to remember the old Klingon proverb: qech wej QaD trademark nIH! (Trademarks don’t protect ideas).