Author Archives: bwheelock

About bwheelock

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

When Trademark Registration is a Nice Gesture

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Representations of gestures can be trademarks.  For example Facebook’s Application No. 85020073 covers a depiction of a thumbs up gesture followed with the word “LIKE” in a rectangle:

like

However, Reg. No. 4735632 arguably covers a gesture itself (“The mark consists of a thumbs up hand gesture with the thumb having a face wearing a ninja mask.”):

ninja

There is precedent for gestures being a mark: Reg. No. 2520312 (now expired) covered the sign language symbols for the numbers 2520; Reg. No.  2643221 (also expired) covered the sign language symbol for C; Reg. Nos. 1350018 and 2028426 (also expired) covered the sign language symbols for H and D.

If 15 USC 1052(a)’s prohibition against the registration of “immoral, scandalous, or disparaging marks” is affirmed as unconstitutional, one has to wonder what kinds of “gestures” might be registered as trademarks and service marks.

Make IP Great Again

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An interesting phenomenon is the use of trademarks to own current events.  Every major event seems to be followed by a series of trademarks applications by those who seek to claim ownership of history, or at least the tchotchkes of history.

It wasn’t surprising, then, that Donald Trump’s surprising run for the presidency, spawned a number of copycats trying to own a piece of the event.  Donald Trump filed his first application on MAKE AMERICAN GREAT on November 19, 2012, just two weeks after the previous Republican nominee, Mitt Romney, lost to Barack Obama.

Since then, there have been nearly fifty applications filed on the MAKE ______ GREAT AGAIN format,  including applications on nearly identical marks: Serial No. 86765056 on MAKE AMERICAN GREAT AGAIN for audio and video recordings; Serial No. 86958684 on MAKE AMERIKKKA GREAT AGAIN for on-line store services; Serial No. 86956810 on LET’S MAKE AMERICA GREAT AGAIN! for shirts; Serial No. 87062839 on MAKE AMERICA GREAT AGAIN for patches; Serial Nos. 87231017 and 87231035 on MAKE AMERICA GREAT AGAIN for beds and linens.

Then there are those that have capitalized on the phrase by adapting the slogan to their own purposes, such as: Serial No. 87016324 on MAKE OIL & GAS GREAT AGAIN; Serial No. 87054734 on MAKE MY BODY GREAT AGAIN; Serial No. 87042380 on MAKE SOCIAL MEDIA GREAT AGAIN; Serial No. 87234750 on MAKE OUR PRESIDENT GREAT AGAIN, and Serial No. 86754667 on MAKE YOUR HAIR GREAT AGAIN.

The trademark register is an overlooked resource tool for seeing what has caught America’s attention.  Whatever it is, someone will make a T-shirt or bumper sticker, and try to own it, by filing a trademark application.  Own a piece of history, just $225 per class.

 

“We are changing fees to better serve you.”

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htsmThe USPTO has announced a number of fee increases to “better serve” its trademark constituency.  The majority of the fee increases punish those Luddites among us who still make paper filings.  The fees for paper filings are increasing between 60% and 200%.  However the fee increases also impact e-filers, with increases ranging from 23% and 100%, and the introduction of new fees for requesting an extension of time to file a Notice of Opposition.

On the positive side, in addition to 37 fee increases and four new fees to better serve us, the USPTO is lowering the fee to electronically file a request for extension of time to file a Statement of Use from $150 to $125.  Why it costs $125 to get an extension, and still only $100 to examine an actual Statement of Use filing, seems less “to better align fees with full costs, ” and more like charging what the market will bear.

As you pay higher fees for your trademark filings, take comfort in the fact that you are being better served.

 

qech wej QaD trademark nIH (Trademarks Don’t Protect Ideas)

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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).

 

New TTAB Rules Coming in January 2017

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The USPTO has amended the rules for TTAB proceedings.  A Notice of Final Rulemaking was published in the Federal Register on October 7, 2016. The effective date of the amended rules is January 14, 2017. The amended rules are applicable to all cases pending on January 14, 2017 as well as those cases commenced on or after January 14, 2017. The USPTO published a table summarizing the amendments is posted.  The impact of the new rules on Oppositions is summarized on this chart:

new_ttab_rules

I ♥ TTAB

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In D.C. One Wholesaler, Inc. v. Chien, [Opposition No. 91199035/Cancellation No. 92053919](TTAB October 4, 2016), the TTAB was called upon to resolve a dispute over the ownership of the trademark I ♥ DC.  The TTAB held in a non-precedential opinion, that I ♥ DC was not a trademark — not for being deceptively misdescriptive, as one might expect, but simply because it did not function as a mark.

The TTAB reminded us that the Trademark Act is not an act to register mere words, but rather to register trademarks. The Board said that before there can be registration, there must be a trademark, and unless words have been so used they cannot qualify.  The Board found that the record before it indicated that I ♥ DC has been widely used, over a long period of time and by a large number of merchandisers, as an expression of enthusiasm, affection or affiliation with respect to the city of Washington, D.C.  The Board further found that the marketplace is awash in products that display the term I ♥ DC as a prominent ornamental feature of such goods, in such a way that the display itself is an important component of the product and customers purchase the product precisely because it is ornamented with a display of the term.

The Board concluded:

We find that the phrase I ♥ DC on apparel and other souvenirs, whether displayed in the stacked format shown in the Registration or in the horizontal format shown in the Application, would be perceived by purchasers and prospective purchasers as an expression of enthusiasm for the city of Washington, DC. Under such circumstances, customers would not perceive I ♥ DC as an indicator of the source of the goods on which it appears.

Thus, the Board held that I ♥ DC fails to function as a trademark.  The Board sustained the opposition, and cancelled Opposer’s registration.

The Board’s decision is non-precedential, perhaps because the Board did not want to to encourage a close look into the many registered trademarks that function like I ♥ DC.  When someone buys a shirt or other trinket with a short sentiment (or even a sports team name) do they really think about, or even care about, the source? In the vast majority of cases they couldn’t care less about the source, they are buying the message.  Ever since Dallas Cap & Emblem, the dirty little secret of trademark law is that we routinely bend trademark protection to protect the message and not the source.  However, when you bend trademark law too far, it occasionally snaps.

A Mark Should be Considered a Whole, and not Dissected

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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.

 

 

Federal Circuit Skewers Trademark Applicant

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In In re Cordua Restaurants, Inc., [2015-1432] (May 13, 2016), the Federal Circuit affirmed the refusal of registration of the stylized mark  CHURRASCOS for restaurant services on the ground that term is generic.

churrascos

Applicant operated a chain of restaurants branded as Churrascos, serving a variety of South American dishes, including grilled meats, including a signature “Churrasco Steak.”  Applicant applied and obtained Reg. No. 3,439,321 on CHURRASCOS for “restaurant and bar services; catering.”  However, the Examiner refused registration on the stylized version of CHURRASCOS because it “refer[s] to beef or grilled meat more generally” and that the term “identifies a key characteristic or feature of the restaurant services, namely, the type of restaurant.”  The Board affirmed the refusal.

The Federal Circuit said that a generic term ‘is the common descriptive name of a class of goods or services, and that the critical issue in genericness cases is whether members of the relevant public primarily use or understand the term sought to be protected to refer to the genus of goods or services in question.  Genericness is determined according to the two-step Ginn test: First, what is the genus of goods or services at issue? Second, is the term sought to be registered or retained on the register understood by the relevant public primarily to refer to that genus of goods or services?

Cordua argued that the Board misapplied the first step in focusing on its specific type of services, rather than on the broader description of services in the application, While agreeing that the focus should be on the description as set forth in the application, saying the correct question is not whether “churrascos” is generic as applied to Cordua’s own restaurants but rather whether the term is understood by the restaurant-going public to refer to the wider genus of restaurant services. However, the Federal Circuit found that the Board’s apparent error in considering Cordua’s own restaurant services is harmless, because in the end the Board focused on “restaurant services.” As to the second step of the Ginn test, the Federal Circuit found substantial evidence supported the finding that churrascos is the generic term for a type of cooked meat, and for a restaurant featuring churrasco steaks.

The Federal Circuit rejected Cordua’s argument that the “s” on the end of CHURRASCO made the term non-generic, because CHURRASCOS is not the proper plural of CHURRASCO, while the Federal Circuit countered that “pluralization commonly does not alter the meaning of a mark.”  Since “churrascos” is an English-language term, there is nothing in the record to indicate that the addition of the “S” at the end alters its meaning (beyond making the word plural).

The Federal Circuit said its precedent makes clear that a term is generic if the relevant public understands it to refer to a key aspect of the genus of goods or services in question.  The Federal Circuit said that there is substantial evidence in the record that “churrascos” refers to a key aspect of a class of restaurants because those restaurants are commonly referred to as “churrasco restaurants.”

Finally the Federal Circuit noted that stylized nature of the mark cannot save it from ineligibility as generic

 

 

New Year’s Resolution for a BRAND New Year

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A new year is upon us, and we suggest that trademark owners make it a brand new year, by resolving to use their marks correctly going forward.  Proper trademark use is important to creating and maintaining trademark rights, and the rules are relatively simple — just follow the ACID test: Adjective, Consistent, Identified, and Distinctive.

A mark is an adjective identifying a particular kind of product or service, and it should be used as such.  A trademark should be paired with a generic term for the product or service.  “Buy an ACME™ widget.” is preferred over “Buy an ACME™.”

A mark should be used consistently so that it is more readily recognized by consumers.  In Reebok International Ltd. v. Kmart Corp., 849 F.Supp. 252, 31 USPQ2d  1882 (S.D.N.Y. 1994), the Court noted the limitations on the strength of Reebok’s trade dress “because Reebok has used the Stripecheck inconsistently.”

A mark should be identified as a mark and not a normal word.  Registered marks should be identified with the ® symbol, and unregistered marks with a ™.  This is pretty straight-forward, but many trademark owners drop the ball when the mark appears multiple time on a package or advertisement.  Should the mark be identified every time it appears?  Yes is should.  However at the very least the most prominent use of the mark should be identified on every “sight” – each page or each face of the package.  That way every one encountering the mark will be apprised of its trademark status.

Finally, the a mark should be used distinctively.  The mark should stand out from other words in an advertisement or on a package.  The mark should be bigger or bolder or in color. Anything that draws attention to the fact that the mark is special.

Applying the ACID test to your trademark use will help you build and maintain strong trademark rights.   This year resolve to use your marks properly, and make this a BRAND new year!

 

 

 

That’s the Way the Cookie Crumbles

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On December 2, 2016, Pepperidge Farm sued Trader Joe’s for infringement and dilution of the “famous and unique Milano® cookie configuration trademark.  Civil Action 3:15-cv-0174-AWT in the District of Connecticut.  While the jury is still out on whether or not a typical cookie-munching consumer can tell the difference between  Milanos and Crispy Cookies:

cookies2

The lesson to be learned from this cookie clash is Pepperidge Farms’ foresight in getting a federal trademark registration on the Milano® cookie configuration:

3852499

The registration is “prima facie evidence of the validity of the registered mark and of the registration of the mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark in commerce.”  15 USC §1115(a).  It is far easier and less expensive to establish rights in a trade dress ex parte before the U.S. Patent and Trademark Office, than in a contested proceeding in a district court.

While Pepperidge Farms may not have the same success it had against Nabisco back in the 1990’s when it asserted rights in the shape of its Goldfish® crackers (Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208, 51 U.S.P.Q.2d 1882 (2nd Cir. 1999)), having the registration on the Milano®  trade dress gives it a big advantage in its current contest with Trader Joe’s, saving it from having to establish ownership of the trade dress, and allowing it to focus on proving infringement.