Who’s Getting Fleeced?

On November 22, 2022, Patagonia sued The Gap for trademark and trade dress infringement by selling a fleece pullover that Patagonia alleges infringe the design of its Snap-T design:

According to the Complaint, the design of the Snap-T pullover is constantly evolving. The one feature that does seem to be constant is a contrasting asymmetric pocket:

Given the changes in the design over time, and fact there are multiple versions of the current Snap-T design, precisely what is Pategonia’s trade dress is difficult to determine.

Some designs have a contrasting placket, some don’t; some designs have an asymmetric pocket flap, others don’t, and some don’t have pockets at all. There are even more variations when other lines of fleece pullovers are considered. Can Patagonia show that it has a protectable trade dress, and if so, what are its elements?

In its Complaint, Patagonia cited an on-line review that pointed out that Gap’s fleece was an “Obvious Patagonia ripoff,” but obvious suggests there is not a likelihood of confusion, and apparently Gap’s lablel did what it was supposed to do: identify the source of Gap’s fleece as a Gap product. However Gap did itself no favors with its label design. Sure, the Gap name is readily apparent, but the mountain background is almost provocative.

Plackets, pocket flaps, and chest labels are common features of fleece pullovers. Is Patagonia’s combination of these features unique enough that others can’t make a similar fleece pull over?

Apparently, Goodwill, like Love and like Diamonds, is Forever

On February 28, 2022, The Real USFL, LLC sued Fox Sports in the Central District of California [2:22-cv-1350] for attempting to resurrect the United States Football League (USFL) — a football league that played for three seasons, 1983 through 1985. The league folded before its planned 1986 season, and all tolled had lost over US$163 million in its short life.

The plaintiff is not the original league, but an entity formed six days earlier, on February 22, 2022, but claims to be the holder of “all rights and interest” in the leagues’ trademarks. In its complaint, the plaintiff alleges the defendant Fox Sports has “no right to capitalize on the goodwill of the league.”

Plaintiff alleges that this goodwill was preserved, by among other things, organizing
league and team reunions, and authorizing and appearing in and ESPN 30 for 30
documentary; and entering into certain media licensing arrangements on behalf of the USFL for apparel, books, and other media.

Plaintiff raises claim of trademark infringement, false advertising, false association, unfair competition, and cancellation of trademarks, Plaintiff seems most concerned by Fox’s characterization of its efforts as a “reboot” of the defunct league, when Fox has no direct connection with the original league. However, it is not clear that a reboot excludes such a situation, and is it even more unclear that the old USFL has any rights left to complain. It should be an interesting case. If nothing else we will learn what it takes to maintain rights in a trademark, and what constitutes abandonment.

Any Third Party Use is Relevant to Whether a Claimant Made Exclusive Use of a Mark

In Galperdi, Inc., v. Galperti S.R.L., [2021-1011] (November 12, 2021), the Federal Circuit vacated and remanded the TTAB’s finding no falsity of Galperti S.R.L.’s exclusive use from 2002 to 2007, the Board committed two legal
errors: requiring Galperti Inc. to establish its own proprietary rights to the mark and disregarding third party use of the mark.

Galperti S.r.l., to support its application to register GALPERTI, told the PTO that, in the five preceding years, its use of the mark was “substantially exclusive.” In response ,the USPTO issued Reg. No. 3411812. Galperti Inc. petitioned the PTO to cancel the registration, arguing, among other things, that the registration was obtained by fraud because Galperti S.r.l. statement of substantially exclusive use was false and, indeed, intentionally so. When the PTO dismissed the cancellation petition, the Federal Circuit affirmed as to the non-fraud issues but vacated the Board’s rejection of the fraud charge and remanded for further consideration of that charge. On remand the PTAB again dismissed the cancellation proceeding.

GALPERTI is “primarily merely a surname” and, so, without more, could not be registered. Lanham Act § 2(e)(4), 15 U.S.C. § 1052(e)(4). Galperti-S.r.l. obtained a registration of GALPERTI on the Principal Register under Section 2(f) alleging “substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made.” 15 U.S.C. § 1052(f).

While in the prior appeal. the Federal Circuit approved the Board’s conclusion that Galperti S.r.l.’s mere “‘knowledge of other players in the marketplace’” was insufficient to make its statement to the PTO “‘per se false,’” id., it held that the Board had erred in stopping at that point, because the absence of “per se” falsity does not imply the absence of falsity. What was needed was an inquiry, on remand, into whether the uses to which Galperti Inc. pointed as showing the falsity of Galperti S.r.l.’s representation to the PTO were significant or, instead, inconsequential.

Galperti Inc. contended on appeal that the Board’s analysis of falsity includes two legally incorrect premises. One is that
Galperti Inc. had to have trademark-protected rights in its use of the mark at issue (in 2002–2007)—specifically,
secondary meaning (i.e., acquired distinctiveness)—in order for that use to count as significant in assessing the falsity of Galperti-Italy’s assertion of “substantially exclusive use.” The other is that uses by third parties do not count
in the substantially-exclusive-use assessment unless the third parties were in privity with Galperti Inc. The Federal Circuit agreed with Galperti Inc. on both counts.

Third party use does not have to be as a trademark to impact the determination of whether a mark has become distinctive of an applicant. The Federal Circuit said that a significant amount of marketplace use of a term not as a source identifier for those users still tends to undermine an applicant’s assertion that its own use has been substantially exclusive so as to create a prima facie case that the term has come to acquire distinctiveness as a source identifier for the applicant.

Further third party use is not limited to third parties who are in privity with the petitioner or opposer. Thus, the Federal Circuit said that the Board also erred in its related requirement that Galperti Inc. had to demonstrate privity with other users of the mark to rely on those uses to show falsity of Galperti S.r.l.’s claim of substantially exclusive use. “Any” use may frustrate a claim for substantially exclusive use, without limiting that use to the party challenging registration.

Something From “Nothing”

Nothing Bundt Cakes has built a business around bundt cakes. Anyone with a bundt pan can bake a bundt cake — Nothing Bundt Cakes, like any business, needed something to differentiate itself from other bakers, and found it in the way it frosted its cakes:

Nothing Bundt Cakes protected its unique design as its trade dress, and getting a federal trademark registration was the icing on the cake:

Nothing Bundt Cakes now has over 300 franchise locations throughout the United States and Canada, which collectively earn over $100 million annually in revenue. When All About Bundt Cakes opened a bundt cake business in Dallas-Fort Worth, and copied Nothing Bundt Cakes’s distinctive frosting pattern:

Nothing Bundt Cakes couldn’t stop another bakery form selling bundt cakes, but it could protect the distinctive elements that it purposely incorporated into its product, and the 21 franchisees it had in the area. Nothing Bundt Cakes sued All About Bundt Cakes in the Easter District of Texas [4:20-cv-00813-SDJ, filed 10/22/20]. Nothing Bundt Cakes sought a preliminary injunction, and when Anything Bundt Cakes failed to appear at the February 12 hearing, the Court granted the preliminary inunction.

Even a business with a relatively simple product can create value by making its product distinctive, and protecting that distinctiveness. The key is to develop unique, non-functional features that customers can rely upon to identify the business and its products, and protect those features, for example with a federal trademark registration

It’s OK to Give Less Weight to Suggestive and Descriptive Terms when Comparing Marks as a Whole

In Quiktrip West, Inc., v. Weigel Stores, Inc.,[2020-1304] (January 7, 2021), the Federal Circuit affirmed the dismissal of Quiktrip’s opposition to registration of Weigel’s W WEIGEL’S KITCHEN NOW OPEN:

in view of QuikTrip’s QT KITCHENS mark:

The Board evaluated the likelihood of confusion between the marks by referencing the factors set forth in In re E. I. DuPont de Nemours & Co. It first found that the parties’ identical-in-part goods and related services, overlapping trade channels, overlapping classes of customers, and similar conditions of purchase pointed to a likelihood of confusion finding. However, the Board found that the dissimilarity of the marks weighed against a likelihood of confusion. In conducting its similarity analysis, the Board acknowledged that both marks include the word “KITCHEN(S)” but determined that customers would not focus on that word for source identification because it is “at least highly suggestive, if not descriptive.

The Federal Circuit agreed that the Board correctly analyzed the marks as a whole, saying that it is not improper for the Board to determine that, for rational reasons, it should give “more or less weight to a particular feature of the mark” provided that its ultimate conclusion regarding the likelihood of confusion rests on a consideration of the marks in their entireties.  The Federal Circuit said that the Board properly found that, when evaluating the similarity of the marks, it should accord less weight to the shared term KITCHEN(S) because “kitchen” is a “highly suggestive, if not descriptive” word.  The Federal Circuit added that the Board was entitled to afford more weight to the dominant, distinct portions of the mark.

Descriptive Use of a Registered Mark is not Infringement

15 USC 1115(b)(4) provides that the use of a registered term, otherwise than as a mark, which is descriptive of, and used fairly and in good faith only to describe your goods or services, is not trademark infringement. The Northern District of California in Freelancer International Pty. Ltd. v. Upwork Global, Inc. [20-cv-06132-SI]https://trademarks.harnessip.com/wp-admin/upload.php?item=511, recently provided some helpful guidance on what qualifies as a permissible descriptive use.

Freelancer Technology Pty Limited sued Upwork for infringement of U.S. Reg. No. 4,284,314 on FREELANCER, complaining about Upworks’ use of Freelance in connection with its software:

Defendants argued they use the plain meaning of the word “freelancer” on their app display names and elsewhere to describe the appropriate users: freelancers. Defendants further argued they use the word “freelancer” in good faith because they trade on Upwork’s own considerable goodwill and have not sought to trademark the words “Freelance” or “Freelancers.” Finally, defendants argue they use the word “freelancer” “otherwise than as a mark” and rely on defendants’ own Upwork trademark.

The court noted that the Ninth Circuit has identified at least two factors to consider when determining whether a term is being used as a mark: (1) “whether the term is used as a symbol to attract public attention, which can be demonstrated by the lettering, type style, size and visual placement and prominence of the challenged words”; and (2) “whether the allegedly infringing user undertook precautionary measures such as labeling or other devices designed to minimize the risk that the term will be understood in its trademark sense.”

The Court found that all of Upwork’s uses of Freelancer were proper and descriptive. The court specifically said it was not “persuaded that bold font and a capital letter are sufficient to show defendants use “Freelancer” as a mark versus a descriptive term – especially when Upwork’s distinctive lime green logo or coloring is placed directly alongside the various notifications.” The Court Defendants do not list the word “Freelancer” among defendants’ own publicly listed trademarks, nor do defendants implement a stylized font or “TM” symbol when using the word “Freelancer.”

The case is notable for its guidance that merely capitalizing the word, or using a bold typeface does not turn a descriptive use into a trademark use. However, it is advisable to avoid a distinctive typeface, and obviously avoid identifying the mark with a TM.

Overwhelming Differences Lead to Summary Judgment of No Trade Dress Infringement

Topps Co. sued Koko’s Confectionery & Novelty for patent infringement and trade dress infringement.

The district court granted summary judgment of non-infringement of the patent, and of non-infringement of the trade dress.

As to the trade dress infringement claim, the district court said no reasonable jury could find that the trade dresses of the Juicy Drop Pop and the Squeezy Squire Pop are confusingly similar because the lack of similarity between the two products is “overwhelming.” The district court noted that (1) in SSP, the nozzle cap and candy handle are adjacent to each other, while the nozzle and the handle in JDP are located on opposite ends, (2) SSP’s nozzle cap has a plastic “geyser” of the liquid candy in the same color as the nozzle cap, whereas JDP lacks an analogous feature and its nozzle and nozzle cap are a different color from that of the rest of the trade dress. (3) SSP’s nozzle cap and handle are far larger and in different shapes from those of JDP. (4) Lastly, SSP’s bottle has an oval-shaped compressible portion with concentric ovals; JDP ‘s compressible bottle has a round compressible portion with a swirl design. The district court said “[t]aking these features into account, the overall impression of the two products are dissimilar.

Apparent Agreement did Not Protect Condom Company from Attack

In Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, [2019-1567] (July 27, 2020), the Federal Circuit reversed and remanded the TTAB’s dismissal of Australian Therapeutic’s petition to cancel Naked TM’s U.S. Reg. No. 3,325,577 for the mark NAKED for condoms.

The Board found that, although no formal written agreement existed, the parties entered into an informal agreement through email communications and the parties’ actions under which Australian Therapeutics agreed it would not use or register its unregistered mark in the United States and that Naked could use and register its NAKED mark in the United States. The Board found that Australian Therepeutic led Naked to reasonably believe that Australian had abandoned its rights in the United States to the NAKED mark in connection with condoms.

The Federal Circuit said that the Board discussed the requirements to bring a cancellation proceeding under 15 U.S.C. § 1064 in terms of “standing” instead of a statutory entitlement to a cause of action under 15 U.S.C. § 1064, and proceeded to review de novo whether Australian has established entitlement to a statutory cause of action under § 1064. Section 1064 provides that a petitioner may seek cancellation of a registered trademark if the petitioner “believes that he is or will be damaged” by the registered trademark. § 1064.

The Federal Circuit said that the Board required that Australian establish proprietary rights in its unregistered mark in order to demonstrate a cause of action under § 1064, and said that this was error. Neither § 1064 nor Federal Circuit precedent requires that a petitioner have a proprietary right in its own mark in order to demonstrate a cause of action before the Board. For example, a trade association may have standing to oppose a mark’s registration without having proprietary rights in a mark.

The Federal Circuit said that the Board determined that Australian had contracted away its right to use and register its unregistered mark, but contracting away one’s rights to use a trademark does not preclude a petitioner from challenging a mark before the Board. The Federal Circuit noted that while an agreement could ultimately bar Australian from proving actual damage, § 1064 requires only a belief of damage.

The Federal Circuit concluded that neither § 1064 nor its precedent requires that a petitioner in a cancellation proceeding must prove that it has proprietary rights in its own mark in order to demonstrate a real interest in the proceeding and a belief of damage.

On the issue of a real interest and reasonable belief of damage,the Federal Circuit said that such an interest exists where the petitioner’s application has been refused registration based on a likelihood of confusion with the challenged mark, or where the petitioner is making and selling products with the challenged mark. The Federal Circuit said that Australian Therapeutic demonstrates a real interest in the proceeding because it twice filed an application to register its unregistered mark, and because the USPTO refused registration of both applications based on a likelihood of confusion with Naked’s registered mark. Australian’s applications for registration, the USPTO’s refusal of registration, and the USPTO’s suspension of prosecution support a conclusion that Australian Therapeutic meets the statutory requirements under § 1064.

Naked argued that Australian Therapeutic’s applications do not support a cause of action under § 1064 because Australian abandoned the first one and the second one was a post filing futile attempt to establish its standing. Naked further argued that “mere ownership of a pending application does not in itself provide standing to oppose other applications.” The Federal Circuit was not persuaded. The Federal Circuit noted that a trademark owner does not abandon her rights in a mark by abandoning prosecution. The Federal Circuit also noted Australian Therapeutic’s advertising and sales in the United States also demonstrate a real interest and reasonable belief of damage.

Naked challenged the sufficiency of Australian’s commercial activity because Australian’s marketing and advertising activities are “isolated,” “limited,” and “de minimis,” and its sales are “sporadic” and “nominal,” but the Federal Circuit said that Section 1064 does not impose a minimum threshold of commercial activity, and it declined to define one.

The Federal Circuit concluded that based on the facts established before the Board, Australian Therapeutic had a real interest in the cancellation proceeding and a reasonable belief of damage, thereby satisfying the statutory requirements to seek cancellation of a registered trademark. We reverse and remand to the Board for further proceedings consistent with this opinion.

Public Perception, Not Per Se Rules, Determines Registrability of Marks with Generic Terms

Today in U.S.P.T.O v. Booking.com B.V., the Supreme Court rejected the USPTO’s position that BOOKING.COM was unregistrable because it merely a combination of a generic term and a tld designator.  The Supreme Court rejected the application of a per se rule against the registrability of compound marks based on generic terms, finding instead that consumer perception of the term should control.  Judge Ginsberg noting that “[b]ecause ‘Booking.com’ is not a generic name to consumers, it is not generic.”

The Court distinguished Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U. S. 598 (1888), where it held that a generic corporate designation added to a generic term does not confer trademark eligibility.  The Court found the comparison faulty because of the nature of the internet — a “generic.com” term could convey to consumers a source-identifying characteristic: an association with a particular website.

The Court also rejected a per se rule that every generic term combined with a tld is automatically not generic, holding that whether any given generic.com term is generic “depends on whether consumers in fact perceive that term as the name of a class or, instead, as a term capable of dis­tinguishing among members of the class.”

It will be interesting to see what the USPTO does with the application on remand.  Will it require a disclaimer of the generic term “booking” and the tld “.com”?  If so, then the applicant will have disclaimed the entire mark apart from itself.

It will also be interesting to see what booking.com will do with its registration.  No reasonable competitor would consider using “booking.com” as their own brand, because they would be driving customers to booking.com.  What is the point?  Can booking.com tie up booking combined with other tld’s? Booking.com conceded that booking.com would be “weak” (Tr. of Oral Arg. 66). Indeed they will get a registration only because of the association of the term with a particular website.  What of a booking.online (which presently appears to be available)?  Would that create a likelihood of confusion, or would the fame of booking.com that won them a registration make such confusion unlikely?  Competitors are entitled to use the generic term “booking”, what remains to be seen is how.

Oh Yes You Are.

On March 26 Adidas prevailed on Summary Judgment in a trademark infringement suit alleging that its use of “You’re Never Done” infringed U.S. Reg. No. 4,928,298 on YOU’RE NEVER DONE for a variety of products including athletic shoes.

Plaintiff’s Reg. No. 4,928,298.

The court held that plaintiff did not use the mark in commerce before defendant. The parties did not dispute that Plaintiff did not make any product sales, because potential customers could not do so through plaintiff’s website until after suit was filed. Plaintiff tried to rely on non-sales activity, such as purchasing the domain names, establishing the website, and ordering products bearing the marks. However, the district court held that these activities, taken together, reflect “mere preparation to use a term as a trademark,” rather than actual use.

Plaintiff’s specimen showing the mark on products that weren’t actually on sale.

Ultimately, the Court found that Plaintiff’s registration on the YOU’RE NEVER DONE was void ab initio. The Court then turned to the question of whether plaintiff had common law rights in YOU”RE NEVER DONE

The court found that plaintiff did not show that he used the marks in commerce such that he is entitled to common law rights in them. Just as the Court found with respect to the plaintiff’s registration, Plaintiff’s non-sales activity relating to YOU’RE NEVER DONE reflects “mere preparation” rather than actual use. The Court found that Adidas started its campaign in March 2018 while plaintiff conceded its actual use did not begin until October 2019. Accordingly, even if plaintiff had “used” the mark in commerce, his alleged use postdates Defendant’s use, thus depriving him of any common law right in the marks.

The Court granted summary judgment in favor of defendant on the Lanham Act, and on plaintiff’s state law claims as well..