Louis Vuitton Left Holding the Bag

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In Louis Vuitton Malletier S.A. v. My Other Bag, Inc., [16-241-cv] (December 22, 2016), the Second Circuit affirmed summary judgment for My Other Bag that its parody bag did not infringe or dilute Louis Vuitton’s trademark and trade dress rights or infringe its copyrights.

Confused? The Second Circuit Wasn’t.

myotherbag2

 

 

 

On the issue of infringement the Second Circuit said that whether it reviewed the district court’s findings as to each Polaroid factor deferentially or de novo (avoiding deciding which was corrrect),  “we reach the same conclusion.”  Obvious differences in MOB’s mimicking of LV’s mark, the lack of market proximity between the products at issue, and minimal, and unconvincing evidence of consumer confusion compelled a judgment in favor of MOB.

On the issue  on dilution, the Second Circuit observed a parody must convey two simultaneous—and contradictory—messages: that it is the original, but also that it is not the original and is instead a parody.  The Second Circuit found that this is precisely what MOB did: “At the same time that they mimic LV’s designs and handbags in a way that is recognizable, they do so as a drawing on a product that is such a conscious departure from LV’s image of luxury—in combination with the slogan “My other bag”—as to convey that MOB’s tote bags are not LV handbags.”

Finally, on the issue of copyright infringement, the Second Circuit found that MOB’s parodic use of LV’s designs produces a “new expression [and] message” that constitutes a non-infringing transformative use.

 

 

Biting the Bulleit

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In a complaint recently filed in the Southern District of New York (16 CV 09747), Diageo North America, Inc., makers of BULLEIT bourbon sued Sazerac Company, Inc., alleging that Sazerac’s DR. MCGILLICUDDY’S HONEY WHISKEY infringes its trade dress:

bulleitTrade dress is a combination of features that the owner believes makes its product.  Diageo identified its trade dress as comprising:

  • Clear canteen-shaped glass bottle with rounded shoulders;
  • Embossed brand name on the top two-thirds of the bottle;
  •  Arched text in the top line of the embossed brand name;
  • Rectangular label on the bottom one-third of the bottle;
  • Product trademark (e.g. “BULLEIT BOURBON FRONTIER
    WHISKEY”) above the product designation (e.g. “KENTUCKY
    STRAIGHT BOURBON WHISKEY”) on the label;
  • Text divider with arrow and ball shapes between the product trademark and product designation on the label;
  • Border of waved lines on the top and bottom of the label; and
  • Border of waved lines around the bottle cap.

bulleit-2Diageo asserts claims for infringement of its registered trademark, trade dress infringement, federal dilution, state dilution, common law trademark infringement and unfair competition, and deceptive trade practices.  Diageo had the foresight to obtain Reg. No. 3,075,812 in on its trade dress: The registration of its trade dress will certainly help, but Diageo would probably also have benefited from registrations on some of the other features it regards as its trade dress.

The courts will protect trade dress in the absence of trademark registrations, but the many benefits of registration, including the presumption of validity of the registered mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark (15 U.S.C. §1115(a), are a strong motivation to register important trade dress features long before they are taken by others.

 

 

 

 

 

 

Clothes Make the Man; They Sometimes Make the Trademark

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Costumes and uniforms may be distinctive of a business, and thus may function as a trademark or service mark, identifying the business and distinguishing it from other business.

Thus, there are registrations on the uniforms of “entertainers” for entertainment services.  Reg. Nos. 3234488, 3319643, 3353308, 3392817, 3848988 and Application Nos. 86690033 and 86731130 protect the three dimensional bunny costume used by Playboy Enterprises.86698833

Reg. No. 2694613 protects the “costume” (or lack thereof) of the Chippendales:

2694613

There are registrations on the uniforms of food servers for restaurant services.  Reg. No. 4058758 protect the server uniforms at the Tilted Kilt:

4058758

And, to be fair, Reg. No. 4936100 protects  a kilt for cleaning and maintenance services by Men in Kilts:

4936100

There are registrations on the uniforms of sports teams for entertainment services.  Reg. Nos. 4962486 and  4962487 protect the uniforms of the Washington Bullets:

washington-bullets

 

 

 

 

 

 

 

 

Reg. Nos. 2015037 and 2188043 on the uniforms for the New York Knicks; Reg. No. 2020341 on the uniforms for the Chicago Bulls; Reg. No. 1812445 on the jerseys of the Philadelphia Flyers; Reg. No. 2029421 on the pinstriped uniforms for the New York Yankees.

There are registrations on the uniforms of services providers for various other services, such as flight attendants (Reg. No. 3773705 by Korean Airlines):

3773705

parcel delivery (Reg. No. 2159865 by United Parcel Service):

2159865

and (Reg. No. 3061549 by U.S. Postal Service):

3061549

(the US Postal Services also owns Reg. Nos. 3,061,544, 3,061,545, 3,061,546, and 3,061,547); Cheerleading (Reg. No. 2906113 by Dallas Cowboys):

2906113

Other examples are Reg. No. 2135563 on a taco costume for restaurant services; Reg. No. 1999006 on uniform for tour guides; Serial No. 87007353 on a duck costume for car wash services; Reg. No. 4986282 on a robot costume for DJ services; Serial No. 86640889 on a blue cheese costume for baseball mascot; Reg. No. 4221509 on a costume for performers; Reg. No 4558197 on a showgirl costume for casino services; Reg. No. 4558198 on a lobster costume for casino services.

While they say that clothes make the man (or woman); they sometimes make the trademark.

Shining a Light on Trademarks

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Lighting can be visually distinctive, so it is not surprising that various service businesses have registered the exterior lighting of there premises as a services.

3697306-1

U.S. Reg. No. 3697306 protects “green lighting formed by four light fixtures placed in a symmetrical fashion near the entryway of the building” for hotel services — Holiday Inn.

 

3697305-1U.S. Reg. No.3697305 protects “blue lighting formed by four light fixtures placed in a symmetrical fashion near the entryway of the building” for hotel services — Holiday Inn Express.

 

U.S. Reg. No. 4594685 covers the three-dimensional configuration of a sidewalk canopy with lighting that creates “a red glowing effect” for hotel and motel services:

4594685

 

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.