Author Archives: bwheelock

About bwheelock

Education J.D., Washington University in St. Louis B.S.E. in Mechanical Engineering, Duke University

Is the Reproduction of a Branded Product in a Depiction of Real Life an Infringement?

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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?

Branding Life

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Almost anything that catches the public’s attention for more than a few minutes ends up as the subject of a trademark application by someone trying to capitalize on the moment and own a piece of the public discourse.  So it is not surprising that today’s solar eclipse spawned quite a few filings, some directly relating to the event itself others simply capitalizing on the spike of the word in consumer’s consciousness.

There were 80 eclipse marks filed in the U.S. in 2016-2017, including:

The most questionable trademark strategy is that of Sinclair Finance Group, application on SUN VALLEY SOLAR ECLIPSE AUGUST 21, 2017 was filed on August 4, 2017.

They won’t get an Office Action until November, longer after the August 21 date they included in their mark.  The most well planned strategy has to be that of Southern Illinois University, whose Reg. No. 5177673 on ECLIPSE 2017-2024 SOUTHERN ILLINOIS ECLIPSE CROSSROADS OF AMERICA plans ahead for the next great solar eclipse in 2024:

There will always be those who try to “own” by trademarking a piece of our common human experience.  Some are just better at it than others.

 

 

 

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When is July 4 this year? When is North Carolina’s FIRST TUESDAY Lottery? and Descriptiveness

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In In re North Carolina Lottery, [2016-2558] (August 10, 2017), the Federal Circuit affirmed the refusal of registration of FIRST TUESDAY in connection with lottery services and games on the first Tuesday of each month.

Like the examining attorney, the TTAB reasoned that N.C. Lottery’s promotional materials make clear that “new scratch-off games are offered on the first Tuesday of every month” and found that such fact would “be so understood by the relevant consumers who encounter the designation FIRST TUESDAY in the marketplace.”

The Federal Circuit said that a mark is merely descriptive if it immediately conveys information concerning a feature, quality, or characteristic of the goods or services for
which registration is sought.  The Federal Circuit rejected the NC Lottery’s argument that its was error to rely on the explanatory text in its specimens to supplement the meaning of the mark and conclude that it is merely descriptive. The Federal Circuit said that it was proper to determine the descriptiveness in the context of its use.  The Federal Circuit also rejected the NC Lottery’s argument that the fact that explanatory text was needed on the specimens showed that the mark itself was not  descriptive.

The Federal Circuit found that the commercial context demonstrates that a consumer would immediately understand the intended meaning of FIRST TUESDAY. The Federal Circuit sajd that the evidence shows that the mark is less an identifier of the source of goods or services and more a description of a feature or characteristic of those goods or services, and concluded  that substantial evidence therefore supports the TTAB’s finding that FIRST TUESDAY is a merely descriptive mark.

will.i.am: registered.u.r.not

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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.

Hutchinson Revisited Surname + Merely Descriptive Term May or May Not Be Registrable

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In Earnhardt v. Kerry Earhhardt, Inc., [2016-1939] (July 27, 2017), the Federal Circuit vacated and remanded a TTAB decision dismissing Earnhardt’s opposition because it found that there was no likelihood of
confusion between EARNHARDT COLLECTION (by Dale Earnhardt’s sone) and Teresa Earnhardt’s marks (the widow of Dale Earnhardt), and that EARNHARDT COLLECTION is not primarily merely a surname.

The Federal Circuit found that it was not clear that the TTAB conducted the appropriate analysis in determining that EARNHARDT COLLECTION is not primarily merely a surname.  To evaluate whether the commercial impression of a mark that combines a surname with a second term is still primarily merely the surname,
the PTO must determine whether the primary significance of the mark as a whole in connection with the recited goods and services is that of the surname. A key element in such an inquiry is determining the relative distinctiveness of the second term in the mark.

In Hutchinson, the PTO concluded that the mark HUTCHINSON TECHNOLOGY was primarily merely a surname because Hutchinson was a surname and the applicant conceded that “technology” described many goods similar to those listed in the application (which
included electronic components and computer products).  The Federal Circuit reversed because (1) the PTO did not properly consider the mark as a whole, and (2) it incorrectly found that “technology” was “merely descriptive” of the recited goods.

Upon review of the Board’s decision, in the current case, it was
unclear to the Federal Circuit whether the Board engaged in a merely descriptive inquiry for the term “collection” or if the Board improperly
constricted its analysis to only a genericness inquiry.  The Federal Circuit noted that while the Board did state that “collection” is “not the common descriptive or generic name” for KEI’s furniture and custom home construction services, it is less than clear that the Board
intended its usage of “common descriptive” to represent a finding that “collection” is not merely descriptive.

The Federal Circuit explained that while the Board relied heavily on Hutchinson for its analysis, in Hutchinson it did not find that any mark
consisting of a surname and a merely descriptive term is registrable as a trademark as a matter of law, nor did it find that such a mark is always primarily merely a surname and not registrable as a matter of law.

The Federal Circuit said that the Board has to determine whether the additional term — “collection” — is merely descriptive of the goods, and if so, whether the addition of the term to the Earnhardt surname “altered the primary significance of the mark as a whole to the purchasing public.

 

GottaWannaNeedaGettaHava Injunction

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Bojangles International LLC originator of the Cajun Filet Biscuit that it promotes with the jingle “GottaWannaNeedaGettaHava” has sued Hardees for selling a Cajun Chicken Biscuit and using the phrase GottaWannaNeedaGettaHava to do so.
Hardees introduced its Cajun Fillet Biscuit via Twitter, and promptly received a cease and desist letter which prompted Hardess to rename its sandwich Cajun Chicken Biscuit.  This was not enough to appease Bojangles, which brought suit in North Carolina, alleging that Cajun Chicken Biscuit infringes its federally registered Cajun Fillet Biscuit trademark, and that Hardee’s introductory Tweet infringed its federally registered GottaWannaNeedaGettaHava  trademark.
It is a curious case because while Hardess indisputably used the phrase GottaWannaNeedaGettaHava in its tweet but not as a brand name, and arguably as a comparative reference to Bojangles’ arguing that its Cajun Fillet Biscuit is “better.” Would someone receiving this Tweet from Hardees really be confused?  Hardees started out using the Cajun Fillet Biscuit trademark, but quickly switched to Cajun Chicken Biscuit.  What would Bojangles expect Hardees to call a Cajun flavored chicken biscuit?
The case will test the limits of 15 U.S.C. § 1115(b)(4) defense for uses “otherwise than as a mark . . . which is descriptive of and used fairly and in good faith only to describe the goods or services.”  Hardees will likely argue its use “GottaWannaNeedaGettaHava” was a comparative reference to Bojangles, and its use of Cajun Chicken Biscuit is descriptive of its product.  It will be interesting to see if Bojangles can make Hardees dance.

Immorality, Scandal, and Disparagement at the Trademark Office

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In Matal v, Tam, the Supreme Court affirmed the Court of Appeals for the Federal Circuit  in holding that the 15 USC §1052(a)’s prohibition against the registration of disparaging marks was unconstitutional as a violation of the First Amendment,  15 USC §1052(a) provides:

(a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute;

While the case before the Supreme Court related to disparaging marks (the same prohibition that caused the Washington Redskins to lose their registrations on REDSKINS), in January in In re Brunetti, the U.S. Patent and Trademark Office told the Federal Circuit that:

Although a court could draw constitutionally significant distinctions between these two parts of [§1052(a)]  we do not believe, given the breadth of the court’s Tam decision and in view of the totality of the court’s reasoning there, that there is any longer a reasonable basis in this court’s law for treating them differently.

So, its now open season on immoral, scandalous, and disparaging trademarks.  It didn’t take long for applicants to take advantage of the decision, with applications being filed later the same day.

These types of filings actually began shortly after the Federal Circuit’s December 22, 2015, decision, and will no doubt increase with the Supreme Court’s decision.

 

 

Ownership of a Trademark Follows Use

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In Lyons v. The American College of Veterinary Sports Medicine and Rehabilitation, [2016-2055](June 8, 2017), the Federal Circuit affirmed the decision of the TTAB cancelling Lyons’ registration of the mark THE AMERICAN COLLEGE OF VETERINARY SPORTS MEDICINE AND REHABILITATION.  Lyons participated in the organization of a committee under the auspices of the  American Veterinary Medical
Association. using the name THE AMERICAN COLLEGE OF VETERINARY SPORTS MEDICINE AND REHABILITATION.  A year after Lyons was dismissed from the committee, she sought and obtained registration of THE AMERICAN COLLEGE OF VETERINARY SPORTS MEDICINE AND REHABILITATION on the Supplemental Register.

The committee petitioned to cancel the Lyon’s registration based on priority of use and Lyons’ fraud in procuring the registration. The cancellation was suspended during the pendency of a civil action between the parties in which Lyons alleged infringement of her registration.  The district court found that the mark had not acquired distinctiveness. but did not cancel the registration.  When the cancellation proceeding resumed, the Board concluded that Lyon’s application was void ab initio because she did not own the mark.

The Federal Circuit said that it was axiomatic in trademark law that ownership of a
mark is predicated on priority of use in commerce.  Thus, the Federal Circuit reasons, registration by one who did not own the mark at the time of filing renders the underlying application void ab initio. The Federal Circuit agreed with the Board that Lyons did not own the mark, and approving the Board’s legal framework for evaluating ownership, which included (1) the parties’ objective intentions or expectations; (2) who the public associates with the mark; and (3) to whom the public looks to stand behind the quality of goods or services offered under the mark.

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

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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?

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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.