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).

 

A Mark Should be Considered a Whole, and not Dissected

In Oakville Hills Cellar, Inc. v. Georgallis Holdings, LLC, [2016-1103] the Federal Circuit affirmed the TTAB’s finding that Oakville’s registered mark MAYA and Georgallis’s applied-for mark MAYARI are sufficiently dissimilar.

The Federla Circuit expalined that the likelihood of confusion analysis considers
all DuPont factors for which there is record evidence but may focus on dispositive factors, such as similarity of the marks and relatedness of the goods.

Oakville complained that the Board overlooked record evidence of the marks’ similarities in appearance, pronunciation, meaning, and overall commercial impression. Oakville argued that MAYA dominated both marks, and that the suffix -RI in MAYARI is of minor import as a distinguishing element, particularly with the registered mark MAYA entirely subsumed within the leading portion of MAYARI, which could cause confusion.

Georgallis responds that the Board correctly declined to dissect MAYARI into MAYA and RI, an element with no meaning, and instead found that consumers would perceive MAYARI as a unitary whole and a coined term. According to Georgallis, the Board properly considered the marks in their entireties and found that MAYA is familiar to U.S. consumers as a reference to the Mayan culture and as a popular female given name, whereas MAYARI is unfamiliar to U.S. consumers.

The Federal Circuit concluded that substantial evidence supports the
Board’s finding that the marks were sufficiently dissimilar as to appearance, sound, meaning, and commercial impression. The Federal Circuit said that in determining similarity or dissimilarity, the marks must be compared in their entireties. The Federal Circuit said that Board properly found that there is insufficient evidence that consumers would perceive MAYARI as MAYA- and -RI, agree with the Board that the letters RI, alone, have no relevant meaning, and provide no reason for a customer to view the mark logically as MAYA plus RI, rather than as a single unitary expression.  The Federal Circuit said that there no reason to break the term into MAYA-RI than MAY-ARI or MA-YARI.

The Federal Circuit said that a single DuPont factor may be dispositive in a likelihood of confusion analysis, especially when that single factor is the dissimilarity of the marks.  The Federal Circuit affirmed the decision of
the Board dismissing Oakville’s opposition.

 

 

No More Pussy-Footing Around: Consider Marks as a Whole in Light of Third-Party Uses

In Jack Wolfskin Aurrustung for Fraussen GmbH & Co. LGAA v. New Millennium Sports, S.L.U, [2014-1789] August 19, 2015, the Federal Circuit affirmed that New Millennium had not abandoned its mark by making changes to its presentation.

KELME

The Federal Circuit agreed that the word element of the mark, was “far more distinctive than the lettering in which it is presented” and therefore the change in the style of the lettering did not materially affect the impression created by the word.  The Federal Circuit further agree that the addition of claws to the paw prints did not  materially altered the mark because the claws are “a very small component” and because “it is common knowledge that an animal’s paws are accompanied by claws.”

Having found that Opposer had not abandoned its mark, the Federal Circuit then turned to the whether applicant’s mark was confusingly similar to Opposer’s mark, as the TTAB had found.

KELME2

Jack Wolfskin argued that the Board’s decision lacked substantial evidence supporting the similarity of the marks and the number and nature of similar marks in use.

Regarding similarity of the marks, the Federal Circuit noted that marks must be viewed in their entireties, and it is improper to dissect a mark when engaging in this analysis, including when a mark contains both words and a design.  Further, when a mark consists of both words and a design, the verbal portion of the mark is the one most likely to indicate the origin of the goods to which it is affixed.  The Federal Circuit agreed with applicant that the Board failed to adequately account for the presence of the literal “KELME,” and essentially disregarded the verbal portion of the mark in finding that the paw print designs were substantially similar, failing to consider the marks as a whole.

The Board justified its decision to focus on the paw print elements by stating that companies often use the design portion of a composite mark as shorthand for their brand. The Federal Circuit did not necessarily dispute this, but said that the concept could not be invoked without supporting evidence.  This is not to say that the Board cannot, in appropriate circumstances, give greater weight to a design component of a composite mark, but when it places such heavy emphasis on an oft-used design element, it must provide a rational reason for doing so.

 

 

Regarding third party usage, the Federal Circuit said that evidence of third-party use bears on the strength or weakness of an opposer’s mark.  The weaker an opposer’s mark, the closer an applicant’s mark can come without causing a likelihood of confusion and thereby invading what amounts to its comparatively narrower range of protection.  The Federal Circuit determined that the extensive evidence of third-party uses and registrations of paw prints indicates that consumers are not as likely confused by different, albeit similar looking, paw prints, and thus the conclusion that this factor was neutral is not supported by substantial evidence.