Dunnington Trademark Bulletin

Dunnington Featured as Gold Sponsor at the Federal Bar Association’s Annual Meeting in New York City

Dunnington is the Gold Sponsor of the Federal Bar Association’s Annual Meeting, September 13-15, 2018, at the New York Marriott Downtown. The convention draws federal practitioners and judges from all over the country. The program features a reception at the Tribeca Rooftop hosted by the Southern District of New York Chapter of the FBA, presided by Dunnington partner Donna F. Frosco. We encourage you to join us in the festivities at the Tribeca Rooftop, and attend the top-notch CLE sessions scheduled throughout the day. Register for convention here.

 

Dunnington Partners to Present on Trademark Licensing at Federal Bar Association Annual Meeting and Convention on September 14, 2018

Dunnington partners Olivera Medenica and Donna Frosco will present on a trademark licensing panel along with Rita M. Odin, VP and Senior Trademark Counsel at Estee Lauder Companies, Inc., and Viviana Mura, Head of Global Trademark Practice at Luxottica Group. The panel will be moderated by incoming Federal Bar Association President Maria Z. Vathis, of Bryan Cave Leighton Paisner LLP. Register for convention here.

 

Top Ten Trademark Tips for Restaurant Owners to Protect the Brand

With competition in the restaurant industry at an all-time high, a restaurant’s positive image in the minds of the consuming public is more important than ever. Restaurateurs can take basic steps to protect and maintain rights in the restaurant’s marks that will save the business time and money in the future. Registering the restaurant’s trademark with the USPTO and policing others’ use of the mark are just the first steps to protect the mark. Other issues such as whether or not to use a surname or a geographic location in the name of the restaurant, and issues relating to licensing the mark are among the other considerations restaurant owners should note when ensuring that the brand’s image is protected. See the complete top-ten list of trademark tips for restaurants here.

 

Lucky Brand’s Defense Barred by Claim Preclusion Under Res Judicata in Infringement Action

After nearly 20 years of trademark litigation between the jean maker Lucky Brand and Marcel Fashions Group, a small apparel company operating under the name “Get Lucky”, the Second Circuit ruled that it was too late for Lucky Brand to assert its defense that Marcel’s claims were barred by a 2003 settlement agreement that released Lucky Brand from liability. On August 2, Judge John M. Walker wrote for the three-judge panel, “under certain conditions, parties may be barred by claim preclusion from litigating defenses that they could have asserted in an earlier action, and that the conditions in this case warrant application of that defense preclusion principle.” This is the first time the doctrine of res judicata has been used in this way. The Court vacated the district court’s judgement and remanded for further proceedings in which Lucky Brand could not assert the defense.

 

The Shape of Kit Kat Bars May Not be Recognizable Enough for TM in the EU

In 2006, the EUIPO granted Nestlé a trademark for the three-dimensional, four-fingered shape of its Kit Kat candy bar. On July 25, 2018, the Court of Justice of the European Union ruled that the registration had been improperly granted because Nestlé had not shown that consumers “throughout the member states of the EU” – particularly, Belgium, Ireland, Greece and Portugal – recognized the candy bar as the company’s trademark. This dispute began in 2007 when the company that owns rival candy brand, Cadbury, challenged Nestlé’s EU registration. The Court sent the case back to the EUIPO to reconsider the registration.

Read more here.

 

Court Revives TM Infringement Case Involving Viral Video of Honey Badger

On July 30, the Ninth Circuit revived a trademark infringement lawsuit in which the owner of the mark for “Honey Badger Don’t Care” originating from his viral YouTube video, sued Drape Creative Inc. (owner of Papyrus-Recycled Greetings Inc.) and its subsidiaries for their use of variations of the Honey Badger mark on greeting cards. The lower court held that the trademark owner did not satisfy the Rogers v. Grimaldi standard that only allows infringement claims involving expressive works to proceed when “the public interest in avoiding consumer confusion outweighs the public interest in free expression.” The Court ruled that the issues in the case are not so clear-cut, and that the lower court erred in its decision that the case did not need to go to a jury.

Read more here.

 

“Copper 88” TM Registration Refused as Merely Descriptive of Clothing Made with Copper

On July 30, the TTAB affirmed the USPTO’s refusal to register the mark “Copper 88” for "clothing made of fabric containing copper, namely, athletic sleeves, sweatshirts, pants, scarves, scrubs not for medical purposes, shorts, socks, T-shirts and underwear, shoes, gloves, hats." The applicant argued that "no reasonable consumer would expect that clothing would be 88% metal” and that the mark is "too remote from any specific technical feature of the product" to "provide meaning to the consumer.” The Board disagreed. By including the word “copper” in its filed description, the Board wrote that the applicant conceded the descriptiveness of the mark. The Board also noted that the applicant's website and third-party websites state that the goods contain 88 percent embedded copper.

 

TTAB Decides Beer and Fruit Juice Not Closely Related as Trademarks

On August 2, the TTAB ruled that a brewing company could register its mark “Superpower” for beer, despite opposition from the company that owns POM Wonderful that consumers would confuse the mark with its registered “Antioxidant Superpower” mark for fruit juice. Although, in the past, the Board has said that consumers would consider wine and spirits to be closely related for trademark purposes, in this case, it said that POM failed to show that pomegranate juice shared that same connection.

 

Steve McQueen’s Son Sues Ferrari in $2M TM Infringement Lawsuit

Son of the late actor Steve McQueen sued Ferrari on July 30 for injunctive relief and $2M in damages for marketing a special edition “McQueen” Ferrari without authorization or compensation. Plaintiff Chadwick McQueen stated in the complaint that in 2011, he met with Ferrari, toured the factory, and expressed an interest in collaborating on a “McQueen” edition, but the parties never entered into a deal. The complaint alleges that the unauthorized use of McQueen’s image and trademarks increase the value of the special edition vehicles because of the “Steve McQueen effect.” The case is pending in Los Angeles Superior Court.

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