Variations on a Theme

Posted on March 25, 2017 by bwheelock

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

Posted on March 18, 2017 by bwheelock

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

Posted on March 15, 2017 by bwheelock

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

Posted on March 7, 2017 by bwheelock

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

Posted on March 4, 2017 by bwheelock

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

Posted on February 5, 2017 by bwheelock

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

Posted on February 3, 2017 by bwheelock

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.

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.

Getting the “Feel” of Trademarks

Posted on January 3, 2017 by bwheelock

Sometimes the texture or feel of a product can be a trademark. For example Reg. No. 4953855 protects “a stamped metal texture design of stylized flowers and curved lines in a repetitive pattern” for bird feeders:

Reg. No. 4375463 protects “the three dimensional configuration of a surface texture on a surface of a football kicking tee”:

Reg. No. 3995345 protects the distinctive wood-grain texture design utilized as a surface feature on packaging and displays:

Reg. No. 3348363 protect a spherical personal fragrance dispenser that resembles a basketball, which: 1) contains lined marking that run throughout; 2) contains a flattened bottom for balancing purposes; 3) contains a “pebble-grain” texture; and 4) contains a rubberized “soft-touch” feel:

Reg. No. 3896100 The mark consists of a leather texture wrapping around the middle surface of a bottle of wine:

Reg. No. 3845630 protect the configuration of a bottle that is rectangular in shape with a rounding of the edges of the corners below the neck of the bottle. The texture of the neck and body of the bottle has a three-dimensional rippling:

Reg No. 2716919 protects the irregular patterned texture containing leaves in relief on a perfume bottle:

Reg. No. 2751476 protects the flocked texture on a label to be used on a glass bottle:

Some Trademarks Lose Their Luster; Some Trademarks are the Luster

Posted on December 28, 2016 by bwheelock

A trademark or service mark can be anything that is distinctive of the source, including the luster of the the product. Thus a trademark might be a metallic surface:

a pearlescent surface:

a matte surface:

a glossy finish:

a frosted surface:

a sparkly surface:

a shiny surface:

and a reflective surface:

Whether incorporated into a product for that purpose, or a happy accident of design, any feature of a product that customers can recognize as indicating source, can be a trademark.

What’s In Store for Trademarks and Services

Posted on December 24, 2016 by bwheelock

Virtually anything that identifies one product or service, and distinguishes them from the products or services of others can be a trademark or service. This includes the configuration of retail stores. Apple has registered the design and layout of their retail stores, owning Reg. No. 4,277,913 and 4,277,914:

Oro Gold owns Reg. No. 4,948,104 on the configuration of their cosmetics store:

Floyd’s 99 Holdings owns Reg. No. 3,467,850 on the configuration of a hair salon:

Forever 21 owns Reg. No. 3732928 on the configuration of it clothing stores:

Flight 001 Holdings owns Reg. No. 3453856 on the configuration of its travel store: