Monthly Archives: March 2020

Endless Litigation

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Bruce Brown Films, LLC, producer of the 1966 classic surfer film Endless Summer has sued Nike and assorted others for Federal Trademark Infringement, Federal Unfair Competition, Federal Trademark Dilution, Common Law Trademark for using the term Endless Summer in a marketing campaign.

Say . . . are those the new shoes from that movie from 1966?

The Nike display certainly uses the phrase “endless summer” but is not as a brand for its shoes. It is difficult to believe that anyone seeing the display believes that the shoes are somehow connected to the 1966 movie.

Nike did not do itself any favors by selecting artwork “inspired” buy the movie poster:

Section of Nike’s marketing materials (left) compared to a section of the Endless Summer movie poster (right).

However while someone might confuse the source of Nike’s artwork, would someone really going to confuse the source of Nike’s shoes?

Bruce Brown Films, LLC holds a trademark registration on ENDLESS SUMMER for athletic shoes:

But Nike’s use of endless summer is to evoke a common feeling, not identify the source of Nike shoes. it will be interesting to see how the case develops.

Oh Yes You Are.

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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..

Pocket Stitching Trademark is a Pain in Walmart’s A**

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On March 24, 2020, American Eagle Outfitters sued Walmart in the Western District of Pennsylvania (2:20-cv-00412-DSC) complaining that the stitching on the rear pocket of Walmart’s jeans is confusingly similar to American Eagle’s “unique, distinctive, and proprietary pocket stitching design.” American Eagle alleges that Walmart’s misuse of its mark on a line of lower-priced jeans threatens its reputation.

Opportune or Opportunistic?

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The trademark register is like the rings on a tree — revealing over time what is on the minds of the public. This is once again proved in the context of the Covid -19 pandemic. Just four days after the first reported case of Covid-19 in the United States, a U.S. Trademark application was filed for FLU MD for dietary and nutritional supplements. This may even have been coincidental, but it was soon filed by applications on WUHAN VAX, FIGHT THE FLU KIT, CORONAVIRUS SURVIVAL GUIDE, COVID-19 VAX, and CORONABLOK.

By the time of the first Covid-19 death in the United States on February 29, 2020, at least 20 applications apparently related to Covid-19 had been filed. Since February 29, there have been an additional 11 filings, including an applications on COVID 19 for t-shirts and I SURVIVED COVID 19 for clothing.

It seems even a pandemic can’t keep a good market campaign down.

  Serial Number Mark Filing Date Representative Goods
1 88771488 FLU MD January 23, 2020 Dietary and nutritional supplements
2 88774489 WUHAN VAX January 27, 2020 Vaccines, etc.
3 88774506 WUHAN MVAX January 27, 2020 Vaccines, etc.
4 88774522 WUHAN CORONA VAX January 27, 2020 Vaccines, etc.
5 88774534 WUHAN CORONA MVAX January 27, 2020 Vaccines, etc.
6 88777531 FLUDEMIC January 29, 2020 Downloadable software and mobile application for providing information relating to infectious diseases, flu outbreaks and pandemics, immunization information and locations of clinics and health facilities
7 88780060 FIGHT THE FLU KIT January 31, 2020 Disinfecting handwash;etc.
8 88781934 CORONAVAX February 1, 2020 Vaccines
9 88783939 CORONAVIRUS SURVIVAL GUIDE February 4, 2020 Magazines in the field of survival, protection, medicine and pandemics
10 88784020 ESPEROFLU February 4, 2020 Vaccines; etc.
11 88790444 CORONAVIRUS February 9, 2020 Prerecorded audio cassettes featuring music and record albums
12 88792162 FLU ARMOUR February 11, 2020 Online retail store services featuring hazardous material body covers
13 88792612 COVID-19 VAX February 11, 2020 Vaccines
14 88800630 CORONA-V February 18, 2020 Dietary supplement drink mixes
15 88805686 FLU-TONE February 21, 2020 Homeopathic supplements
16 88812499 DELEFLU February 27, 2020 Apparatus for disinfecting water
17 88812822 CORONABLOK February 27, 2020 Vaccines
18 88814254 VIRUS POLICE February 28, 2020 Disinfecting wipes; disinfectant sprays; disinfectants; disinfecting handwash; disinfectant soap
19 88814615 THE CORONA YOU WANT February 28, 2020 Liquor and liqueur beverages, namely, spirits and malt beverage
20 88815650 FLUTEA February 28, 2020 Herb teas for medicinal purposes;
21 88816220 ANTIVIRUS-5 March 1, 2020 Chemical additives for use in the manufacture of cosmetics
22 88816317 VIRUSITEA March 1, 2020 Herbal teas for medicinal purposes
23 88818961 FIGHT THE VIRUS March 3, 2020 Cough drops;etc.
24 88822405 CORONAVIRUSRX March 5, 2020 Respirators for artificial respiration; Fever thermometers
25 88823821 VIRUSHIELD March 6, 2020 Masks for use by medical personnel
26 88824831 ANTIVIRUS PRO March 6, 2020 Dietary and nutritional supplements for IMMUNE SUPPORT
27 88826872 COVID 19
March 9, 2020   		T-shirts
28 88827103 I SURVIVED COVID-19
March 9, 2020   		Clothing, etc.
29 88827108 WE CURED COVID-19
March 9, 2020   		Clothing, etc.
30 88827109 TOGETHER WE SURVIVED COVID-19 March 9, 2020 Clothing, etc.
31 88827271 CORONAKIT March 9, 2020 First aid kits