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.

 

Policing the Trademark Playground and Calling Out Bullies

The prevailing defendant in Louis Vuitton v, My Other Bag, LLC (blogged about here: Louis Vuitton Left Holding the Bag) in a Motion filed on April 7 in the Southern District of New York (Case 1:14-cv-03419-JMF Document 154) is seeking $802,939.05 in fees and costs for defending Louis Vuitton’s claim that MOB’s parody bag infringed or diluted Louis Vuitton’s rights:

MOB argues that a fee award is justified because Louis Vuitton is a trademark bully.  “Trademark bully” is a term that is being used with increasing frequency.  See Three Stripes and You’re Out.  MOB used the term “bully” at least 13 times in its motion for fees.

Trademark Owners are put in a difficult position.  The failure to aggressively enforce their rights, can allow third party uses that either weaken the mark in a likelihood of confusion analysis, or lessen its fame and distinctiveness in a dilution analysis.  A trademark owner may (rightly) feel forced to take actions that it might otherwise be inclined to tolerate.  And outside of the costs of enforcement, there has been little consequence to bringing such a claim.

An award of attorneys fees and costs in appropriate cases, may be exactly what is needed to tip the scales when enforcement decisions are being made.  It is up to the Southern District of New York to judge the propriety of Louis Vuitton’s enforcement efforts, and decide whether or not the name “bully” is appropriate.

 

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.

 

Variations on a Theme

A few attempts have been made to protect a “theme” rather than a specific mark. U.S. Reg. No. 4834592 protects  “a three dimensional trade dress depicting the appearance and design of the interior of a restaurant evoking a Mexican wrestling theme.”

However it is doubtful that the the protection afforded by this registration is as broad as the optimistic description.  The registrant is unlikely to be able to protect this “theme” apart from the various features depicted in the drawing.

Similarly, Reg. Nos. 4783688 and 4830189 protects the “three-dimensional trade dress configuration depicting the interior of a retail beverage store evoking the theme of an aviation airfield.”

 

Again, despite the broad reference to theme, the registered marks are not likely to be infringed unless the pictured elements are present.

 

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.

 

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.