To The Relief of Seargants Everywhere, Forever 21 Challenges Adidas’ Three Stripe Marks

On March 3 Forever 21, Inc. sued Adidas American, Inc. in the Central District of California (2:17-cv-01752) asking for a declaration that its clothing decorated with stripes does not infringe Adidas’ trademarks, and suggesting that Adidas is a trademark bully:

Looking at the examples identified by Forever 21 (no doubt carefully chosen), one might sympathize with Forever 21’s frustration:

Forever 21 alleges that Adidas has sued clothing and footwear manufacturers who have used two stripes, four stripes, stripes with multiple widths and colors, and it has even sued over garments that Adidas is not known for making.  Feeling deprived of the ability to enjoy “an unfettered right to design and sell clothing with ornamental, decorative striped designs” and to the relief of seargants everyone, Forever 21 seeks a declaration that its striped clothing does not infringe any trademark rights owned by Adidas.

Trademark owners often feel compelled, if not required, to pursue any colorable infringement, lest third party uses interfere with the likelihood of confusion or likelihood of dilution analyses when there is a use of more serious concern.  Moreover, there is little protection from the victims of aggressive enforcement.  Sometimes an overly aggressive enforcer will catch the attention of the internet, and be shamed into behaving, but this is not typical.  The courts’ application of the Octane Fitness case to trademark cases offers some relief from frivolous claims, but only for those who have the resources to defend the litigation, and this doesn’t happy too often, for true bullies rarely pick on someone their own size.

While most infringement defendants probably regard the plaintiff as a bully, the majority of enforcement efforts are driven by a genuine concern about protecting the mark. However there are instances where trademark owners bullying third parties, asserting claims far beyond what their actual rights protect.  There are not many effective remedies when this occurs, but if certain trademark owners are not more careful, the problem may be addressed for example with more robust fair use defenses or other measures that could make enforcement more difficult or less certain.

 

 

 

Trademark Scammers Abound

There are still a number of entities out there trying to trick trademark owners into spending money to list their marks in various on line and print directories by sending official looking invoices and other paperwork.  In the last month, one client received ten such solicitations, from six different entities:

  • IP Direct International Patent & Trademark Directory
  • Patent & Trademark Office
  • Patent & Trademark Bureau
  • International Catalogue of Trademarks
  • TPP Trademark & Patent Publications
  • GLOPAT Global Patents & Trademarks

The practice is so pervasive, that this same client also received a warning letter from the UK Intellectual Property Office, warning about “unofficial trade mark renewal services” and identifying two such agencies in particular:

  • Patent and Trade Mark Agency Limited
  • Trade Mark Renewal Services Limited

Not only to trademark owners have to watch out for infringers, they need to watch out for scammers as well.

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.

 

 

Demand Letters Protected by the Noerr-Pennington Doctrine

Recently in Silverhorse Racing LLC v. Ford Motor Co., [Civ. Action No. 6:16-cv-00053] (M.D.Fla. January 30, 2017) the Court granted Ford Summary Judgment that the act of sending Demand Letters to Silverhorse’s distributors was litigation contact that is immunized from civil liability under the Noerr-Pennington doctrine.

Judge Conway found that the doctrine extends not only to petitioning of the judicial branch (i.e., filing a lawsuit), but also to acts reasonably attendant to litigation, such as demand letters.  Judge Conway instructed, however, that the Noerr doctrine is not absolute, and that to receive immunity the acts must no fall within the sham exception — i.e., the litigation activity must be genuine.

Silverhorse argued that because it had defenses to Ford’s claims, the demand letters asserting the claims were a sham.  Judge Conway was unpersuaded.  She said that the subjective strength of the claims are not determinative of whether the letters were a sham.  Because there was no evidence that Ford’s letters were objectively baseless, the Court did not have to examine Ford’s subjective intent.

Selecting a Mark

While branding is important, selecting a mark for a new business can occupy a disproportionate amount of management’s time and the company’s resources, and present significant risks to the business.

The biggest source of problems is the tendency of businessmen to select a mark that is merely descriptive of the business’ products or services.  George Eastman’s explanation of how he came up with the KODAK brand, is advice that all new businesses would Ideally follow: “I knew a trade name must be short, vigorous, incapable of being misspelled to an extent that will destroy its identity, and in order to satisfy the trademark laws, it must mean nothing”.  However, most businesses cannot resist a mark that says something about the product or service.  Where the mark describes the product or service, it is not protectable (at least immediately) because competitors need to use it to describe their products or services, but where the mark simply suggests something about the product or service, there is no competitive need to use it and the suggestive mark can be protected upon its adoption.  When you select a mark you should identify something in it that is unique and distinctive.

Another source of problems is the tendency of businessmen to get attached to a mark before it is fully cleared, and as a result ignores warning signs of potential problems with the mark.  When deciding whether a prior mark is an obstacle, one must be able to dispassionately and honestly answer the question: if the priority of use were reversed, would you object to their mark?  If so, then there is good reason to believe that adoption of the mark might lead to problems.

The business should select a mark that is unique and distinctive, that does not conflict with a prior registered or unregistered mark, and is immediately protectable and registrable.

Avoiding conflicts with Prior Marks

The mark you select must not be confusingly similar to a prior mark.  Confusing similarity is judged by a number of factors including:

  • The similarity of the marks
  • The similarity of the products or services
  • The channels of trade
  • Type and sophistication of customers

The way to identify conflicting marks is to conduct a trademark search.  There are three levels of searching: (1) Federal trademark applications and registrations; (2) state trademark registrations; and (3) common law trademarks.  Federal trademark are searchable for free at www.uspto.gov.  Some state trademarks are searchable for free at various state websites, but a complete collection of all of the states is only searchable on pay databases.  Common law trademarks can generally be searched on the internet, although relatively small minor uses may be buried are readily searchable on the internet.

Checklist for the selection of a mark

□  The mark has a unique or distinctive feature.

□  The mark is not confusingly similar to a prior art.

□  The mark does not dilute the distinctiveness of a prior famous mark.

□  The mark does not tarnish a prior famous mark.

□  The mark is not confusingly similar to a prior art.

□  The mark does not contain immoral, deceptive, and or scandalous matter.

□  The mark does not disparage or falsely suggest a connection with persons living or dead, institutions, beliefs or national symbols or bring them into contempt or disrepute.

□  The mark is does not contain any the flag, coat of arms, or other insignia of the United States, a state or municipality, or a foreign nation.

□  The mark does not contain the name, portrait, or signature of a living person (without permission).

□  The mark does not contain the name, portrait, or signature of a deceased president without the permission of the surviving spouse.

□  The mark is not merely descriptive.

□  The mark is not deceptively misdescriptive.

□  The mark is not primarily geographically misdescriptive.

□  The mark is not primarily merely a surname.

□  The mark is not inadvertently offensive.

Searching

The law does not require a business to conduct a mark before adopting a mark, although courts are often critical of businesses that do not conduct a search, particularly where the business has the resources to do so.  It is in a business’ interest to avoid a trademark infringement claim, and to avoid wasting time and money creating and promoting a mark it will have to give up.

SelectingAMark

To properly evaluate a search, consider:

  • Why was the mark selected?
    • Because of any resemblance to other marks in the field?
    • Because of what is says about the product or service?
  • What is the closest mark in any field?
    • If this was the junior mark, would you want to object to it?
  • What is the closest mark in the same field?
    • If this was the junior mark, would you want to object to it?

No trademark search can completely eliminate the risks of adopting a new mark, but searching can significantly reduce those risks.

Getting the “Feel” of Trademarks

Sometimes the texture or feel of a product can be a trademark.  For example Reg. No. 4953855 protects “a stamped metal texture design of stylized flowers and curved lines in a repetitive pattern” for bird feeders:

4953855

Reg. No. 4375463 protects “the three dimensional configuration of a surface texture on a surface of a football kicking tee”:

4375463

Reg. No. 3995345 protects the distinctive wood-grain texture design utilized as a surface feature on packaging and displays:

3995345

Reg. No. 3348363 protect a spherical personal fragrance dispenser that resembles a basketball, which: 1) contains lined marking that run throughout; 2) contains a flattened bottom for balancing purposes; 3) contains a “pebble-grain” texture; and 4) contains a rubberized “soft-touch” feel:

3348363

Reg. No. 3896100 The mark consists of a leather texture wrapping around the middle surface of a bottle of wine:

3896100

Reg. No. 3845630 protect the configuration of a bottle that is rectangular in shape with a rounding of the edges of the corners below the neck of the bottle. The texture of the neck and body of the bottle has a three-dimensional rippling:

3845630

Reg No. 2716919 protects the irregular patterned texture containing leaves in relief on a perfume bottle:

2716919

Reg. No. 2751476 protects the flocked texture on a label to be used on a glass bottle:

2751476

 

 

 

Some Trademarks Lose Their Luster; Some Trademarks are the Luster

A trademark or service mark can be anything that is distinctive of the source, including the luster of the the product.  Thus a trademark might be a metallic surface:

metallica pearlescent surface:

pearlescent

a matte surface:

mattea glossy finish:

glossya frosted surface:

frosteda sparkly surface:

glitterya shiny surface:

shinyand a reflective surface:

reflective

Whether incorporated into a product for that purpose, or a happy accident of design, any feature of a product that customers can recognize as indicating source, can be a trademark.

What’s In Store for Trademarks and Services

Virtually anything that identifies one product or service, and distinguishes them from the products or services of others can be a trademark or service.  This includes the configuration of retail stores.  Apple has registered the design and layout of their retail stores, owning Reg. No. 4,277,913 and 4,277,914:

4277913

4277914

Oro Gold owns Reg. No. 4,948,104 on the configuration of their cosmetics store:

4948104Floyd’s 99 Holdings owns Reg. No. 3,467,850 on the configuration of a hair salon:

3467850Forever 21 owns Reg. No. 3732928 on the configuration of it clothing stores:

3732928Flight 001 Holdings owns Reg. No. 3453856 on the configuration of its travel store:

3453856

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.

 

 

Biting the Bulleit

In a complaint recently filed in the Southern District of New York (16 CV 09747), Diageo North America, Inc., makers of BULLEIT bourbon sued Sazerac Company, Inc., alleging that Sazerac’s DR. MCGILLICUDDY’S HONEY WHISKEY infringes its trade dress:

bulleitTrade dress is a combination of features that the owner believes makes its product.  Diageo identified its trade dress as comprising:

  • Clear canteen-shaped glass bottle with rounded shoulders;
  • Embossed brand name on the top two-thirds of the bottle;
  •  Arched text in the top line of the embossed brand name;
  • Rectangular label on the bottom one-third of the bottle;
  • Product trademark (e.g. “BULLEIT BOURBON FRONTIER
    WHISKEY”) above the product designation (e.g. “KENTUCKY
    STRAIGHT BOURBON WHISKEY”) on the label;
  • Text divider with arrow and ball shapes between the product trademark and product designation on the label;
  • Border of waved lines on the top and bottom of the label; and
  • Border of waved lines around the bottle cap.

bulleit-2Diageo asserts claims for infringement of its registered trademark, trade dress infringement, federal dilution, state dilution, common law trademark infringement and unfair competition, and deceptive trade practices.  Diageo had the foresight to obtain Reg. No. 3,075,812 in on its trade dress: The registration of its trade dress will certainly help, but Diageo would probably also have benefited from registrations on some of the other features it regards as its trade dress.

The courts will protect trade dress in the absence of trademark registrations, but the many benefits of registration, including the presumption of validity of the registered mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark (15 U.S.C. §1115(a), are a strong motivation to register important trade dress features long before they are taken by others.