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.


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.

The Eagles Sue the Hotel California (Baja) Will No Doubt Take it to the Limit

The Eagles have sued Hotel California Baja, LLC, in the Central District of California [2:17-cv-03276] for trademark infringement.  Hotel California Baja owns a small hotel in Todos Santos, Mexico that opened in 1950 under the name Hotel California, but subsequently went through a number of name changes over the years.  The Eagles allege that to revitalize the hotel and create a reputation for it,the hotel has promoted a reputed, but false, connection to the Hotel in the famous Eagles song.  The Eagles complain that defendant runs a merchandising operation that manufactures and sells a wide variety of clothing and other merchandise featuring their HOTEL CALIFORNIA mark.  There’s not much chance that the Eagle will Take it Easy on this one.

Studios Fire Back: Fictional Publication Depicted in a Movie is Privileged Expressive Use

Following up a previous post about the February 2017 lawsuit filed by the Sporting Times against Orion Pictures for depicting a fictional magazine title Sporting Times of the same title in a movie about the life of Bill “Spaceman” Lee, MGM has responded with a Motion to Dismiss.  Defendants argue that the use in the movie was not a trademark use, and in any even any theory of a likelihood of confusion was “too implausible to support costly litigation.”  The defendants also affirmative asserted a First Amendment bar to the Sporting Times claims, and arguing that the test from Rogers v. Grimaldi applies and the Sporting Times claims should be dismissed unless the use of the mark has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work.

The Motion pointed out the burden of getting permission from every brand potentially appearing in a expressive work, such as defendants movies, and concluded:

Happily for filmmakers and their audiences (and for the creators of other expressive works), the Lanham Act does not grant trademark owners such veto power over the content of expressive works.