See you in Paris! The Federal Bar Association, in collaboration with the French American Bar Association, is excited to welcome you to join us on Friday October 4 for the 2019 Paris Fashion Law and Innovation Conference at La Maison du Barreau in Paris, France. Programming will address recent developments and current challenges from both US and French perspective. I will be speaking on the topic of non-traditional trademarks and advertising in the fashion industry. Register at www.fedbar.org/parisfashionlaw19. See you there!
Written by Guest Contributor Valerie Oyakhilome
In recent years, designers and fashion brands have faced public scrutiny for appropriating indigenous designs. Cultural appropriation is often defined as “the taking, by a member of a dominant culture, of a cultural element from a minority culture, without consent, attribution or compensation.”[] Cultural appropriation is detrimental to indigenous people as it is not only offensive, but economically disruptive[] and commercially exploitative. Though the term itself emerged over the past few decades, cultural appropriation has been studied and documented as a centuries-old byproduct of colonialism, that till this day remains a commonplace practice within the fashion industry.[]
Oftentimes, cases involving allegations of cultural appropriation allude to complex intellectual property (IP) issues that may not necessarily fit within any particular legal framework. This article aims to highlight and examine the current state of cultural appropriation in fashion within the context of the current international IP regulatory landscape. As it stands, the lack of uniformity in the international application and enforcement of legal protections over indigenous designs has left indigenous communities vulnerable to exploitation by fashion brands.
Urban Outfitters v. Navajo People
In 2011, American retailer Urban Outfitters (UA) found itself at the center of a legal dispute after launching a collection named after the Navajo tribe. UA had been using the term “Navajo” since 2001 for apparel and accessories. Then, in 2012, the Navajo tribe decided to take legal action against UA after the latter launched a “Navajo” themed clothing line that included a native headdress, “Navajo print flask,” and “Navajo hipster panty.”[]
UA is no stranger to controversy; it was previously accused of cultural appropriation for releasing Palestinian-styled Keffiyehs as woven scarves, an “Irish I Were Drunk” t-shirt (right before St. Patrick’s Day), and for selling various tchotchkes, clothing, and duvet covers that featured the Hindu god Ganesh.[]
In the case of Navajo Nation v. Urban Outfitters, Inc., No. 12cv0195 LH/LAM (D.N.M. Nov. 24, 2014), filed in U.S. District Court of the District of New Mexico, the Navajo Nation sought injunctive relief, and monetary damages against UA for federal and state trademark violations. The Navajo tribe had registered several trademarks in 1943 for the wordmark “Navajo” in connection with the sale of clothing, footwear, online retail sales, household products and textiles. In its complaint, the Navajo Nation also alleged that UA violated the Indian Arts and Crafts Act (1990), a federal law that bans the sale of arts and crafts erroneously suggesting Native American origins.[]
In its defense, UA argued “fair use” of the term “Navajo,” claiming that the term was generic and that the “Navajo” branded items UA had sold are more descriptive of origin, print and style rather than a trademark use.[] UA further argued that the “Fashion industry has adopted ‘Navajo’ to describe a style.” Without apparent concern as to optics, UA also sought a declaratory judgment that included the cancellation of the Navajo tribe’s federal trademark registration of the word mark “Navajo.”
Both sides eventually settled in 2016 for an undisclosed amount and announced that they had entered into an agreement whereby the parties would collaborate on a line of Native American jewelry.[]
Marant v. Mixe
In 2015, French label Isabel Marant received major backlash for copying the 600 year old traditional red and white embroidery designs of the indigenous Mixe community of Santa Maria Tlahuitoltepec, Mexico in her spring/summer 2015 “Étoile” collection. While an authentic huipil blouse would normally cost 300 pesos, Marant’s version retailed for $290, approximately 4,500 pesos.[] Marant received widespread criticism on social media and protests were held in front of her New York City store.
In a surprising turn of events, Marant was ultimately sued for copyright infringement in France by fellow French fashion brand Antik Batik over the very same design. In defending against Batik’s infringement claim, Marant’s argued that she did not copy Batik’s design because she was inspired by the Mixe culture. Ultimately, it was the French court that officially decided that neither fashion brands could claim ownership of the copyright since the huipil designs are a “cultural product” from the Mixe people.[]
In 2016, the Oaxaca congress issued a cultural heritage declaration that the Mixe community’s traditional designs and language are Intangible Cultural Heritage per UNESCO guidelines.[] Although the protection status is not legally binding, it recognizes that the designs are unique to, and originate in Mixe culture.
While symbolic gestures such as the declaration from the Oaxaca Congress serve to increase visibility and cultural understanding, they do not provide substantive legal protections and are oftentimes not enforceable within the current international IP regulatory framework. Over time, Indigenous peoples have been encouraged to reclaim their agency by taking legal steps towards regaining control over their cultural designs and symbols using their domestic IP system. However, many would argue that it is the gap in protection within these respective IP systems that has enabled cultural appropriation to run rampant in the fashion industry in the first place.
Without a unified and enforceable international IP legal enforcement system, the standards imposed in one court of law, may likely be overlooked in another. That being said, global institutions such as the World Intellectual Property Organisation (WIPO) have taken steps towards articulating cultural forms of expression in an attempt to unify widespread efforts towards recognizing the rights of indigenous peoples.
In 2000, the WIPO created an Intergovernmental Committee on Intellectual Property and Genetic Resources Traditional Knowledge and Folklore (IGC) that established “traditional cultural expressions” (TCEs) as including “music, dance, art, designs, names, signs and symbols, performances, ceremonies, architectural forms, handicrafts and narratives, or many other artistic or cultural expressions.” The organization states in their working description that TCEs may be considered as “the forms in which traditional culture is expressed; form part of the identity and heritage of a traditional or indigenous community; are passed down from generation to generation.”[]
Even with the WIPO’s acknowledgement and articulation of TCEs, international IP systems, for the most part, generally excludes TCEs from protection under copyright, trademark, patent, and design laws by inadvertently considering TCEs as being part of public domain. For example, copyright law generally requires works to be original. Given that TCEs are oftentimes passed down from generations, this requirement inherently has the effect of excluding TCEs from protection under “originality” provisions.[] Thus, allowing major fashion corporations like Urban Outfitters to claim “fair use” when appropriating traditional designs.
The Current State of the International IP System
While countries such as Costa Rica, Kenya, Peru, New Zealand, and Zambia currently have legislation in place to protect certain traditional knowledge and TCEs,[] other countries such as the United States, have been slow to implement comprehensive IP protections within their legal framework. Catherine Saez (2018) states in her article published on the Intellectual Property Watch, that “the United States and the European Union countries are generally opposed to a binding instrument to protect TCEs.”[] In 2007, the United Nations General Assembly adopted a Declaration on the Rights of Indigenous Peoples (UNDRIP) with a majority of 144 states voting in favor of the declaration, 4 states (including the United States, Australia, New Zealand, and Canada) voting against it, and 11 states abstaining.[] Article 31 of the Declaration specifically states:
1. Indigenous peoples have the right to maintain, control, protect and develop their cultural heritage, traditional knowledge and traditional cultural expressions, as well as the manifestation of their sciences, technologies and cultures, including human and genetic resources, seeds, medicines, knowledge of the properties of fauna and flora, oral traditions, literatures, designs, sports and traditional games and visual and performing arts. They also have the right to maintain, control, protect and develop their intellectual property over such cultural heritage, traditional knowledge, and traditional cultural expressions.
2. In conjunction with indigenous peoples, States shall take effective measures to recognize and protect the exercise of these rights.[]
Even though the declaration explicitly calls for international protections for TCEs, the rights delineated in UNDRIP remain non-binding and largely unenforceable. While there have been discussions since 2010 about establishing a legal instrument that enforces universal protections for TCEs, it would appear that we are still years away from a general consensus.
In 2017, the US, EU, China, and several countries continued negotiations with the IGC, on a draft text of the international legal instrument that safeguards TCEs, after postponing discussions on the subject for three years. At the end of the 37th session held the following year in August 2018, committee facilitators issued second revisions to draft of the articles on TCEs. The next year, discussions continued during the 38th session held in December 2018, where IGC delegates from a number of regional groups expressed their continued concern regarding the lack of sufficient universal protections for TCEs, and specifically noted that the absence of binding rules has directly contributed to ongoing illegal appropriation.[] Many of the delegates urged facilitators to advance the current draft of the articles so that a decision can be reached on the international framework for enforcing the protection of IP rights for Indigenous communities. In the most recent session held in June 2019, the committee did not come to a consensus regarding finalized draft of the articles, but has planned to continue negotiations on TCEs into October 2021, when the WIPO General Assembly will take note of the progress made on the text, consider the options for the legal instrument, and “make the necessary decision(s).”[]
While We Wait
In the meantime, indigenous communities should continue to raise awareness and adopt as much legal protection as is legislatively feasible in their domestic IP systems. At the same time, fashion brands drawing on inspiration from cultural designs should move to appropriately attribute and compensate indigenous communities. Otherwise they risk contributing to the erasure of historical context and the meaning of cultural constructs that have been previously defined for centuries. In doing so they disparage their reputation and, in many cases, encounter a lawsuit.
Culture is currency and while the mainstay of the fashion industry allows for uninhibited creativity and the transference of creative works into trendy derivatives, due compensation should be given to indigenous people. It is their cultural identity, after all, that falls victim to this predatory aspect of consumerism
Gertner, R. K. (2019). The impact of cultural appropriation on destination image, tourism, and hospitality. Wiley Periodicals, Inc., pp. 1-5. doi:https://doi.org/10.1002/tie.22068
Hendriksz, V. (2015). Indigenous tribe accuses Isabel Marant of plagiarism. From Fashion United: https://fashionunited.uk/news/fashion/indigenous-tribe-accuses-isabel-marant-of-plagiarism/2015062216817
Oxford Reference. (2019). Overview Cultural Appropriation. From Oxford Reference: https://www.oxfordreference.com/view/10.1093/oi/authority.20110803095652789
Saez, C. (2017). WIPO Committee On Protection Of Folklore: Shall We Dance? Intellectual Property Watch. From https://www.ip-watch.org/2017/02/24/wipo-committee-protection-folklore-shall-dance/
Saez, C. (2018). Traditional Knowledge, Folklore: How To Protect Them From Misappropriation – This Week At WIPO. Intellectual Property Watch. From https://www.ip-watch.org/2018/12/10/traditional-knowledge-folklore-protect-misappropriation-week-wipo/
Shand, P. (2002). Scenes from the Colonial Catwalk: Cultural Appropriation, Intellectual Property Rights, and Fashion. The University of California Cultural Analysis(3), 47-88. From https://www.ocf.berkeley.edu/~culturalanalysis/volume3/pdf/shand.pdf
Soto, J. (2019). Hands Off My Heritage: Cultural Appropriation And Trademarks. Trademark Now. From https://www.trademarknow.com/blog/hands-off-my-heritage-cultural-appropriation-and-trademarks
The Fashion Law. (2015). Decision in Isabel Marant, Antik Batik Battle over Mexican Design Expected This Week . From The Fashion Law: http://www.thefashionlaw.com/home/decision-in-isabel-marant-antik-batik-battle-over-mexican-design-expected-this-week
UNESCO-ICH. (2019). What is Intangible Cultural Heritage? From United Nations Educational, Scientific, and Cultural Organization (UNESCO) Intangible Cultural Heritage (ICH): https://ich.unesco.org/en/what-is-intangible-heritage-00003
United Nations. (2007). United Nations Declaration on the Rights of Indigenous Peoples (UNDRIP). 1-30. From https://www.un.org/development/desa/indigenouspeoples/wp-content/uploads/sites/19/2018/11/UNDRIP_E_web.pdf
Varagur, K. (2016). Mexico Prevents Indigenous Designs From Being Culturally Appropriated — Again. doi:https://www.huffpost.com/entry/mexico-prevents-indigenous-designs-from-being-culturally-appropriated-again_n_56e87879e4b0b25c9183afc4?guce_referrer=aHR0cHM6Ly93d3cuZ29vZ2xlLmNvbS8&guce_referrer_sig=AQAAAIJDle7tg6OivbAvIJraOuBYn8jdE7pbitENXM4WEmIUIhWG3IRJm
Vézina, B. (2019, April). Curbing Cultural Appropriation in the Fashion Industry. Center for International Governance Innovation (CIGI), 24. From https://www.cigionline.org/sites/default/files/documents/paper%20no.213.pdf
Werft, M. (2016). Urban Outfitters in Court Over Using Navajo Culture for Profit . From Global Citizen: https://www.globalcitizen.org/en/content/urban-outfitters-cultural-appropriation-navajo-law/
Woolf, N. (2016). Urban Outfitters settles with Navajo Nation after illegally using tribe's name. From The Guardian: https://www.theguardian.com/us-news/2016/nov/18/urban-outfitters-navajo-nation-settlement
World Intellectual Property Organization (WIPO). (2015). The WIPO Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore. Background Brief. WIPO. From https://www.wipo.int/edocs/pubdocs/en/wipo_pub_tk_2.pdf
World Intellectual Property Organization (WIPO). (2018). Glossary of Key Terms Related to Intellectual Property and Genetic Resources, Traditional Knowledge and Traditional Cultural Expressions. WIPO/GRTKF/IC/37/INF/7, 40-41. From https://www.wipo.int/meetings/en/doc_details.jsp?doc_id=410022
World Intellectual Property Organization (WIPO). (2019). DECISIONS OF THE FORTIETH SESSION OF THE COMMITTEE. Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore. From https://www.wipo.int/edocs/mdocs/tk/en/wipo_grtkf_ic_40/wipo_grtkf_ic_40_decisions.pdf
[] Vézina, B. (2019, April). Curbing Cultural Appropriation in the Fashion Industry. Center for International Governance Innovation (CIGI), 1-24.
[] See Gertner, R. K. (2019). The impact of cultural appropriation on destination image, tourism, and hospitality. Wiley Periodicals, Inc., pp. 1-5.
[] Oxford Reference. (2019). Overview Cultural Appropriation. From Oxford Reference
[] Werft, M. (2016). Urban Outfitters in Court Over Using Navajo Culture for Profit; see also Woolf, N. (2016). Urban Outfitters settles with Navajo Nation after illegally using tribe's name.
[]Werft, M. (2016)
[] The Indian Arts and Crafts Act of 1990 (PL 101-644).
[] Werft, M. (2016). Urban Outfitters in Court Over Using Navajo Culture for Profit .
[] Vézina, B. (2019, April). Curbing Cultural Appropriation in the Fashion Industry.
[] Vézina, B. (2019, April).
[] Vézina, B. (2019, April).
[] See also UNESCO definition of Intangible Cultural Heritage https://ich.unesco.org/en/what-is-intangible-heritage-00003
[] World Intellectual Property Organization (WIPO). (2015). The WIPO Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore. Background Brief
[] Vézina, B. (2019, April). Curbing Cultural Appropriation in the Fashion Industry.
[] Soto, J. (2019). Hands Off My Heritage: Cultural Appropriation And Trademarks. Trademark Now.
[] Saez, C. (2017). WIPO Committee On Protection Of Folklore: Shall We Dance? Intellectual Property Watch.
[] Saez, C. (2018). Traditional Knowledge, Folklore: How To Protect Them From Misappropriation – This Week At WIPO. Intellectual Property Watch.
[] United Nations. (2007). United Nations Declaration on the Rights of Indigenous Peoples (UNDRIP), 22-23
[] Saez, C. (2018).
[] World Intellectual Property Organization (WIPO). (2019). DECISIONS OF THE FORTIETH SESSION OF THE COMMITTEE. Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore.
This Bulletin was drafted by Dunnington Bartholow & Miller LLP’s Trademark Bulletin Board.
U.S. Supreme Court Finds USPTO’s Bar on Offensive Trademarks Unconstitutional
On June 24, the U.S. Supreme Court ruled by a 6-3 vote that a federal law banning the registration of “immoral or scandalous” trademarks violates the First Amendment. In Iancu v. Brunetti, the court found in favor of Eric Brunetti, a Los Angeles streetwear designer who attempted to register the name of his 30-year-old brand, FUCT. The court ruled that the ban “disfavors certain ideas” and that the government may not discriminate based on speakers’ viewpoints. For the majority, Justice Elena Kagan wrote: “The statute, on its face, distinguishes between two opposed sets of ideas: those aligned with conventional moral standards and those hostile to them; those inducing societal nods of approval and those provoking offense and condemnation.” In the dissent, Chief Justice John Roberts and Associate Justices Stephen Breyer and Sonia Sotomayor agreed that the ban on “immoral” trademarks is too broad, but that banning “scandalous” trademarks does not violate the First Amendment. The court made this ruling in Brunetti two years after its unanimous decision in favor of Asian-American dance band, The Slants, finding that the Lanham Act’s prohibition against the registration of “disparaging” trademarks also violated the First Amendment.
Florida Federal Court Finds Former Commodores Guitarist In Violation of TM Court Order
On July 15, U.S. District Judge Roy B. Dalton Jr. denied ex-Commodores band member Thomas McClary’s motion to modify the scope of the court’s ban on his use of the band’s trademark “The Commodores” because his request was untimely and, without the court’s knowledge, McClary obtained exclusive licenses in violation of the court’s worldwide injunction against using the mark. In 2014, the band brought a trademark infringement action against McClary who was performing under the name “The Commodores featuring Thomas McClary” and “The 2014 Commodores.” After obtaining a preliminary injunction in 2014, the band obtained a permanent injunction in 2016, which restrained and enjoined McClary from using the marks in a manner other than fair use. The Eleventh Circuit affirmed this permanent injunction in 2018. In addition, in January 2019, a jury returned a verdict that awarded the band damages from McClary’s profits for many of his live musical performances in the U.S. and Europe that occurred after the 2014 preliminary injunction.
In his 2019 motion, McClary requested that the permanent injunction entered by the court be limited so he could use the band’s trademark for performances in Mexico, New Zealand, and Switzerland, where he obtained exclusive licenses. Judge Dalton denied the motion, ruling that it was not brought “within a reasonable time” and that carve out would violate the band’s permanent injunction: “The worldwide permanent injunction was implemented to prevent harm to plaintiff in the United States based on defendants’ use of the marks here and abroad — harm from customer confusion, dilution of the marks, and otherwise…That purpose would be undermined if the permanent injunction masqueraded as an invitation for defendants to obtain licenses to the marks at issue in foreign countries and to then perform under 'The Commodores' or other infringing names around the world.”
Ice Cream Seller’s “Scoop” Trademark Bid Rejected
On July 9, 2019, Yarnell Ice Cream LLC (“Yarnell”), an Arkansas ice cream retailer, lost its bid to register the name of its mascot, “Scoop”, as a trademark, after the Trademark Trial and Appeal Board (“TTAB”) determined that the proposed mark is merely descriptive of a unit of measurement commonly associated with ice cream and had not acquired distinctiveness as an indicator of Yarnell’s goods.
Yarnell argued that the word “scoop” should not be deemed descriptive given its multiple meanings (such as in the instance of a “news scoop”). In any event, Yarnell argued that it did not seek to register the mark “scoop” for ice cream, but rather, frozen treats “as promoted or distributed by a mascot named SCOOP”, and that the word scoop was not descriptive for a mascot distributing ice cream. The TTAB rejected this argument, finding that, while the word scoop may have multiple meanings, second meanings must be apparent from the context in which the mark is used. The TTAB also pointed to several instances where ice cream sellers had disclaimed exclusive use of the word scoop in connection with ice cream retail services, noting that Yarnell’s use of the scoop mark would cover ice cream. Finally, the TTAB pointed to Yarnell’s inconsistent use of the word “scoop” when referencing its mascot as evidence that the term did not function as a trademark, including instances where the proposed mark was “visually subordinate” to the word Yarnell on the mascot’s nametag. Interestingly, the TTAB rejected Yarnell’s argument that it was entitled to a presumption that the mark SCOOP had become distinctive for its mascot due to exclusive use of the term for over five years, noting that, when considering a descriptive mark, it was not required to consider exclusive use in finding such a presumption.
The case is Yarnell Ice Cream LLC, TTAB, Serial No. 86824279, 7/9/19
Aykroyd's Vodka Company Sues Again Over Head-Shaped Bottle
On July 9, 2019, Dan Aykroyd’s vodka company, Globefill Inc., sued Mexican tequila maker Matatena Spirits S.A. de C.V. and its U.S. distributor Stoller Imports Inc. in an Illinois district court, accusing the pair of trade dress infringement for copying the clear, head-shaped design of Globefill’s Crystal Head Vodka, which Globefill has been using since 2008. Globefill clams it is the first company “throughout the history of the alcoholic beverage industry” to use the unique head-shaped design, and that the lawsuit is necessary to protect its rights in the bottle-shaped design and maintain “the alcoholic beverage market in the state it was [in] when Globefill took the risk to enter it with its unique (and expensive to produce) product packaging.” Matatena actually obtained a U.S. registration in its head shaped design; however, a U.S. Patent and Trademark Office attorney who examined the application cited a likelihood of confusion with Aykoryd’s bottle design.
Globefill’s lawsuit against Matatena is not its first suit in defense of its head shaped bottle design. In 2010, the company sued rival company Elements Spirts Inc., alleging that the design of Elements’ KAH tequila infringed the design of its bottle. In September 2017, a California federal judge granted a U.S. sales ban on KAH tequila and approximately $870,000 in disgorged profits, despite Globefill’s request$13 million.
The case is Globefill Incorporated v. Stoller Imports Inc. et al., case number 1:19-cv-04593, in the U.S. District Court for the Northern District of Illinois.
Cert granted to Lucky Brand Dungarees Inc. v. Marcel Fashions Group Inc
On June 28, 2019, the Supreme Court granted a petition for certiorari filed by Lucky Brand Dungarees in Lucky Brand Dungarees, Inc., et al., v. Marcel Fashions Group, Inc. The Supreme court, in granting certiorari from the Second Circuit’s decision (898 F.3d 232 (2nd Cir. 2018)), will now need to decide whether the doctrine of defense preclusion barred Lucky from defending itself against Marcel’s trademark and unfair competition claims on the basis that Marcel had released its claims via a prior negotiated settlement.
The Supreme Court will review the case in the fall. The case is Lucky Brand Dungarees Inc. v. Marcel Fashions Group In., case number 18-1086, in the U.S. Supreme Court. Click here for a copy of the Court Opinion.
Dunnington Bartholow & Miller Trademark Bulletin Board:
Olivera Medenica (Partner, Chair, Trademark Practice Group); Donna Frosco (Partner); Kamanta Kettle (Senior Associate); Betsy Dale (Junior Associate); Sixtine Bousquet (Junior Associate); Valerie Oyakhilome (Paralegal).
This Bulletin was drafted by Dunnington Bartholow & Miller LLP’s Trademark Bulletin Board.
Iron Maiden Sues 'Ion Maiden' Video Game Creators
On May 28, the English heavy metal band, Iron Maiden, filed a trademark infringement lawsuit against Danish video game developer 3D Realms Entertainment (“3D Realms”) over the video game named “Ion Maiden.”
In their complaint filed in California Central District Court, the band alleged that the video game "Ion Maiden" infringes on its trademarked logo “IRON MAIDEN” and confuses consumers into believing that the video game is affiliated with the band. Iron Maiden argued that not only is the name “Ion Maiden” almost identical to their trademark, but the design also bares a confusingly similar steel cut font.
Additionally, the band explained that the game “Ion Maiden” has the same “look and feel” as the Iron Maiden video game, “Legacy of the Beast.” Iron Maiden is seeking damages and injunctive relief to prevent 3D Realms from continuing to produce and sell the videogame, along with the destruction of all “Ion Maiden” video games, merchandise and related products that display the “Ion Maiden” name.
The case is Iron Maiden Holdings Limited v. 3D Realms Entertainment ApS, case number 19-cv-04606, in the California Central District Court. Click here to be redirected to the related article on Forbes. Click here for a copy of the complaint.
Caterpillar Tries To Cancel Coffee Brand’s Trademark
Caterpillar Inc., the world’s largest construction equipment manufacturer, sent a cease and desist letter to the Santa Cruz coffee brand, Cat & Cloud for use of the word “Cat” on their apparel. Although, the multi-billion dollar construction equipment manufacturer is the owner of the trademark of the word “CAT,” Cat & Cloud owns the trademark for their name as it relates to its coffee space, even registering the name under International class 25 to include trademark protection for its merchandise such as sweatshirts, mugs, clothing, footwear, and headgear. The first petition, which was submitted by Caterpillar Inc. in June 2016, challenged Cat & Cloud’s class 25 trademark. Then, in August 2018, Caterpillar Inc. requested an answer to petition for cancellation, which Cat & Cloud eventually did respond to on September 12th of that year, asserting a variety of defenses including failure to state grounds for cancellation and unclean hands.
On May 20th, 2019, the founders of Cat & Cloud, Chris Baca and Charles Jack decided to publicize their dispute with Caterpillar on their “Cat and Cloud” podcast episode titled “Being Sued By Caterpillar Inc.” Cat & Cloud has two stores and is planning on opening two more. Last year the coffee brand brought in $150,000 in total revenue, while Caterpillar Inc. reported $54.7 billion in revenue. According to Yahoo Finance, a representative from Caterpillar stated “we are not suing Cat & Cloud, not targeting a small business and not focused on Cat & Cloud’s primary interest: coffee. We’ve simply asked the U.S. Trademark Office to remove Cat & Cloud’s trademark registration on footwear and apparel only, products for which Caterpillar has longstanding trademarks and a considerable business. We hope to resolve this issue quickly.”
In the meantime, Cat & Cloud has created a GoFundMe page for their trademark litigation with Caterillar and has started a petition to garner supporters on Change.org. While the parties are still in the discovery phase, Caterpillar’s legal team has said that they will not back down from the dispute.
Tasty Tacos sues More Than Gourmet for trademark infringement
On June 6, 2019, Tasty Tacos Inc. (“Tasty Tacos”), an Iowa corporation, filed an action in the Southern District of Iowa against More Than Gourmet (“MTG”), an Ohio company, for trademark infringement, false designation of origin and unfair competition.
Tasty Tacos opened its first restaurant in Des Moines in 1961, and registered the mark TASTY TACOS in 1990. For decades, Tasty Tacos has sold its products using the TASTY TACOS mark both online and in stores throughout the United States. In January 2018, MTG filed an “intent to use” application for federal registration of the mark WICKED TASTY TACO, for goods and services including “food additives . . . and seasonings.” Tasty Tacos filed an Opposition against MTG’s WICKED TASTY TACO mark, and requested that MTG cease all use of the mark. Instead, MTG began using the WICKED TASTY TACO mark in connection with the sale of taco seasonings.
Tasty Taco argues that MTG’s use of the Wicked Tasty Taco mark is an infringement of the Tasty Taco mark because it creates a likelihood of confusion amongst consuming public as to “the source, origin, sponsorship, endorsement, or affiliation of the goods being offered.” Tasty Tacos is seeking a preliminary and permanent injunction to prevent MTG from using “Tasty Tacos” and “Wicked Tasty Tacos” and is seeking damages for the alleged infringement.
The case is Tasty Tacos, Inc. v. More Than Gourmet Holdings, Inc., case number 4:19-cv-00166, in the Iowa Southern District Court. Click here for a copy of the complaint.
Tom Brady Is Trying to Trademark 'Tom Terrific' — the Nickname of retired New York Mets Tom Seaver
On May 24, 2019, Tom Brady, superstar quarterback of the New England Patriots, had his company, TEB Capital Management, file two trademark applications with the USPTO to register the mark TOM TERRIFIC for “shirts, t- shirts” and for “Collectible trading cards; sports trading cards; posters; printed photographs.”
But things were far from terrific as the applications received immediate social media backlash from New York sports fans who felt the nickname “Tom Terrific” belongs to Tom Seaver, a long-retired legendary pitcher from the New York Mets. Oddly enough, Tom Brady responded to the criticism by stating that he only wanted to register the mark “Tom Terrific” “to keep people from using it” because he does not want to be associated with it. Even so, he has yet to withdraw the applications.
In any case, although Tom Seaver does not have right to the TOM TERRIFIC mark, USPTO may consider the wide use of the wordmark as a nickname as a reason to deny the application. Additionally, the USPTO may into consideration Brady’s statement that he does want to be associated with the mark, as being non-compliant with the USPTO’s use or intent to use requirements.
Click here to be redirected to the USPTO application.
Adidas Failed to Extend to the EU its Three-Stripe Trademark
The General Court of the European Union has ruled that the well-known three-stripes trademark for Sportswear giant Adidas is not distinctive enough to be protected. The trademark, which Adidas described as “three parallel equidistant stripes of equal width applied to the product in whichever direction,” was registered in 2014 and was challenged by Belgium’s Shoe Branding Europe (“BSBE”) after a decade-long dispute with Adidas.
Adidas would have had to prove that its trademark possessed a “distinctive character” throughout the European Union based on its use, that consumers inherently knew a product was from Adidas, and that consumers could distinguish it from products of another company. Although Adidas was able to prove its mark’s distinctive character in five European Union countries, it did not do so throughout the European Union.
Thus, the General Court of the European Union decided that Adidas’ trademark was “an ordinary figurative mark” and upheld the European Union Intellectual Property Office’s 2016 decision to reject its registration following BSBE’s challenge. Adidas, who can still appeal to the European Court of Justice, has stated that the ruling does not impact other protected uses of the trademark in Europe.
Click here to be redirected to the related article on Reuters.
Banned From Doing Business in the U.S., Huawei Applies to Register Mark for New Operating System
The Chinese telecommunications giant Huawei Technologies Company Ltd. (“Huawei”) has filed several applications outside of the U.S. to register the mark HONGMENG, which is the name of the backup operating system the company developed to replace the U.S.-made Android operating system that is currently integrated into its smartphones, tablets and other devices. The application filings come in the wake of the Trump administration’s decision last month to ban Huawei from doing business in the U.S.
On May 15, the U.S. government announced stiff sanctions on the company after determining that Huawei’s technology poses privacy and security concerns, including the risk that Huawei’s equipment and phones could allow China to spy on U.S. communications. Huawei is the world’s second largest manufacturer of smart phones and largest supplier of telecommunications network equipment. The ban from doing business in the U.S. could mean that Huawei may no longer have the right to purchase the American software technology that it relies on for business.
The Trump administration’s ban also prevents Huawei from doing business with Alphabet, Inc., the creator of the Android OS, which is currently integrated in all of Huawei’s smartphones. The national security order also discouraged companies in the U.S. from using the Huawei for their next-generation mobile networks.
Among other things, after having its license to use the Android operating system revoked by Alphabet Inc. in May, Huawei then filed its earliest applications to register the HONGMENG mark in May 14 in the European Union’s trademark office and in South Korea. The applications suggest that the company plans to register the mark in connection with everything from smartphones and portable computers to robots.
While Huawei denies that its products pose a security threat, the company plans to register the HONGMENG mark in nine countries, including Cambodia, Canada, South Korea, New Zealand, and Peru, and the European Union.
Click here to be redirected to the related article on Reuters.
SCOTUS Reconsiders Controlling Deference to Agency’s Regulatory Interpretations
This month, the United States Supreme Court will issue a ruling in one of the most important trademark cases of this year. But this case does not actually involve trademarks – it is an administrative law dispute in which the Supreme Court will consider the issue of whether it should overrule long-standing precedent that directs courts to defer to an agency’s reasonable interpretation of its own ambiguous regulation. The administrative law deference doctrine known as “Auer deference” as established in Auer v. Robbins, 519 U.S. 452 (1997), requires federal courts to accept an agency’s interpretation of its own regulation unless it was plainly erroneous or inconsistent with the regulation.
In the case of Kisor v. Wilke, a Vietnam War veteran, James Kisor, requested and was denied disability benefits for medical treatment from the Department of Veterans Affairs based on its interpretation of its own regulation after it decided that a certain event during the veteran’s service was not “relevant” to his medical claim. The Court of Appeals for Veterans Claims affirmed the VA’s decision not to reconsider Kisor’s claim, so Kisor appealed to the U.S. Court of Appeals for the Federal Circuit which affirmed the lower court’s decision and deferred to the VA’s interpretation of the regulation.
Kisor’s petition for a writ of certiorari was granted, and on March 27, 2019, the Supreme Court heard oral argument. Kisor argued that Auer deference violates the Administrative Procedure Act because it bypasses the statute’s notice-and-comment rulemaking requirements. He also argued that deferring to an agency’s own interpretation of its regulation infringes on the constitutional separation of powers because its “practical effect is to vest in a single branch the law-making and law-interpreting functions.” Respondent, Robert Willkie for the Secretary of Veterans Affairs argued that the doctrine should be clarified and narrowed rather than overruled. The VA suggested that courts should not defer to an agency’s own interpretation of its regulation “if, after applying all the traditional tools of construction, a reviewing court determines that the agency’s interpretation is unreasonable.” It further suggested that a court should only defer to the agency’s interpretation “if the interpretation was issued with fair notice to regulated parties; is not inconsistent with the agency’s prior views; rests on the agency’s expertise; and represents the agency’s considered view, as distinct from the views of mere field officials or other low-level employees.”
The outcome of Kisor could have monumental effects on every decision that every federal agency makes – including decisions made by the United State Patent and Trademark Office. If Auer is overturned, courts would be permitted to review USPTO decisions in a new light, and exercise more power in the outcome of those cases even though the courts, unlike the USPTO, may not have expertise in trademark law.
The case is currently pending in the United States Supreme Court.
Dunnington Bartholow & Miller Trademark Bulletin Board:
Olivera Medenica (Partner, Chair, Trademark Practice Group); Donna Frosco (Partner); Kamanta Kettle (Senior Associate); Betsy Dale (Junior Associate); Sixtine Bousquet (Junior Associate); Valerie Oyakhilome (Paralegal).
Dunnington trademark team members Olivera Medenica, Raymond J. Dowd and Sixtine Bousquet-Lambert recently authored a Supreme Court brief on a trademark issue pertinent to the fashion industry. On June 20, the U.S. Supreme Court will decide whether to grant a petition for certiorari filed by Lucky Brand Dungarees in Lucky Brand Dungarees, Inc., et al., v. Marcel Fashions Group, Inc. Dunnington represents respondent Marcel Fashions Group, Inc. who is opposing the petition. At issue in the case is whether, in an action to enforce a trademark infringement judgment, a defendant who continues with the exact same infringements can collaterally attack a prior judgment with a defense that it raised in that prior action but deliberately chose not to prosecute.
The parties have been in litigation for the past two decades over the marks GET LUCKY, LUCKY BRANDS and the word LUCKY. In 2010, after ten years of litigation, the parties jointly drafted an order stating that Lucky Brands infringed upon Marcel’s GET LUCKY brand by using “GET LUCKY, the LUCKY BRAND trademarks, and any other marks including the word ‘Lucky’ after May 2003.” On May 28, 2010, the Southern District of New York entered this stipulated 2010 final order and judgment, including an express waiver by both parties of the right to appeal.
In 2011, Marcel again sued Lucky Brands to stop Lucky Brands from continuing with the same infringements post 2010 judgment. This led to the Second Circuit’s August 2, 2018 decision that is the subject of the petition for certiorari.
Lucky Brands argued before the Second Circuit, and now argues before the Supreme Court, that Marcel’s 2011 action constitutes a new claim that entitles Lucky Brands to raise a defense that it previously raised, but failed to prosecute, in the earlier infringement action (i.e the one that resulted in the 2010 judgment of infringement). In an opinion penned by Judge John M. Walker Jr., the Second Circuit rightfully disagreed.
Finding for Marcel, and thus precluding Lucky Brand’s defense, the Second Circuit articulated the following standard for defense preclusion:
In sum, we conclude that defense preclusion bars a party from raising a defense where: (i) a previous action involved an adjudication on the merits; (ii) the previous action involved the same parties or those in privity with them; (iii) the defense was either asserted or could have been asserted, in the prior action; and (iv) the district court, in its discretion, includes that preclusion of the defense is appropriate because efficiency concerns outweigh any unfairness to the party whose defense should be precluded.
The Second Circuit was guided by the fourth factor’s considerations of fairness, efficiency and judicial economy. In ruling to preclude Lucky Brand’s release defense, the Second Circuit found the 2011 action to be a judgment enforcement action and that Lucky Brands should have raised and prosecuted its defense in the earlier action between the same parties.
Lucky Brand claims this creates a circuit split; Marcel disagrees. It is now up to the Supreme Court Justices to decide. You can follow the case here.
This Bulletin was drafted by Dunnington Bartholow & Miller LLP’s Trademark Bulletin Board.
Dunnington Trademark Team Submits SCOTUS Brief
Dunnington trademark team members Olivera Medenica, Raymond J. Dowd and Sixtine Bousquet-Lambert recently authored a Supreme Court brief on a trademark issue pertinent to the fashion industry. On June 20, the U.S. Supreme Court will decide whether to grant a petition for certiorari filed by Lucky Brand Dungarees in Lucky Brand Dungarees, Inc., et al., v. Marcel Fashions Group, Inc. Dunnington represents respondent Marcel Fashions Group, Inc. who is opposing the petition. At issue in the case is whether, in an action to enforce a trademark infringement judgment, a defendant who continues with the exact same infringements can collaterally attack a prior judgment with a defense that it raised in that prior action but deliberately chose not to prosecute. You can read more about the case here.
Case-Ending Discovery Fraud in Trademark Infringement Dispute Outlined by Magistrate
On May 2, U.S. Magistrate Judge Lois Bloom reported that H&H Wholesale Services Inc., a wholesale seller of glucose test strips, along with its president and his wife deserve “the harshest sanction” for engaging in calculated fraud on the court by actively withholding internal emails and other documents sought by healthcare giant Abbott Laboratories, in a trademark infringement case. Judge Bloom recommended that Abbott’s motion for sanctions be granted and that the court enter a default judgment against H&H. The misconduct included H&H using search terms it knew would not yield results, omitting incriminating documents, and generally engaging in a “calculated pattern of pervasive misconduct that started early on and continued even after defendants were caught red handed.” Judge Bloom wrote that “H&H only complied with the court’s orders and their discovery obligations when their backs were against the wall.” She added that “[H&H’s] email server had been seized. There was no longer an escape from responsibility for their bad faith conduct ... But for being caught in a web of irrefutable evidence, H&H would have profited from their misconduct.” Although H&H attempted to blame its attorney for the discovery issues, Judge Bloom was not convinced, and said that H&H was responsible. This case is currently pending in the U.S. District Court for the Eastern District of New York.
Estate of Prince Rogers Nelson Ramps Up Its Efforts to Register Color Purple As a Trademark
The estate of Prince Rogers Nelson and his former business entity, Paisley Park Enterprises (“Applicants”), have stepped up their efforts to register a particular shade of purple they argue is closely associated with the late musician as a trademark.
The color, called “Love Symbol #2,” was created by the well-known color specification company Pantone in August 2017 to honor Prince, whose association with the color purple began with the release of his 1984 film and soundtrack “Purple Rain.” Applicants seek to register the color in connection with “musical sound [and] musical video recordings,” “motion picture films featuring music and musical entertainment” and “operating a museum,” among other things. The USPTO initially refused to register the proposed color mark, pointing out that, while color may serve as a trademark, “the applied-for color mark . . . is not [necessarily] distinctive of [Paisley Park’s] goods and services.” In particular, the USPTO argued that consumers would not perceive the color purple as a source-identifier but, rather, “are accustomed to encountering . . . goods or packaging for [music related products] offered in a variety of colors, including purple” and provided examples of several other artists who have used purple on their album covers.
Earlier this month, Applicants submitted over 400 pages of evidence to the PTO that the color purple is, in fact, closely associated with Prince and therefore distinctive of Applicants’ services—including articles, social media posts, and other posthumous tributes to the late singer. The application, identified by U.S. serial number 88155481, remains under examination and can be found here.
Speaking of purple…
Cadbury’s Purple Trademark Battle Over for Now
Across the pond, the company behind Cadbury chocolates, Mondelēz International, has given up its long-running legal battle to protect its registration of its distinctive shade of purple called Pantone 2685C. The shade, which has long been associated with brand, has been a registered trademark in the UK since 1995.
However, in April 2019, the UK Intellectual Property Office officially invalidated the two trademark applications that Cadbury had filed in 1995 and 2004 for the colormark. The setback concludes a 24 year struggle for Cadbury to obtain sole rights to the distinct shade of purple after the initial application that the company filed contained issues concerning the broad description of the color mark in connection with “chocolate in bar or tablet form.”
In an attempt to supplement its prior application, Cadbury applied in 2004 for a new registration of the color mark in connection with a wider range of products, including chocolates, cakes, and drinking chocolates. Even so, Société Des Produits Nestlé (“Nestlé”) was able to successfully oppose the application in 2013 by claiming that the range of goods associated with the colormark was still too broad and the description of the shade of purple not distinctive enough. The UK Court of Appeals not only agreed with Nestlé, but ultimately found that both applications contained insufficient descriptions, and thus invalidated both applications.
While Cadbury has chosen not to appeal the UK court’s decision, it can still defend its unregistered rights in Pantone 2685C against third-party rivals by asserting passing off claims.
Click here for the related article from The Drum.
Deckers gets awarded $450,000 in Ugg Boot Trademark Infringement trial
Following a jury trial in the Northern District of Illinois, jurors found that a small Australian bootmaker, Australian Leather Ltd. (“Australian Leather”) infringed upon Deckers Outdoor Corp. (“Deckers”)’s popular UGG boots and awarded plaintiff $450,000 in damages.
Deckers first sued Australian Leather in March 2016 for trademark and patent infringements of its UGG popular mark. Deckers accused the Australian company of selling in the U.S. sheepskin-lined boots also referred to as “UGG” via its e-commerce website.
Australian Leather argued that in Australia the term “UGG” has become generic to describe sheepskin-line boots. Australian Leather further argued that Deckers should not be permitted to use the mark “UGG Australia” since its boots are manufactured in China.
In September 2018, the district court rejected Australian Leather’s defense of genericism and held that consumer recognition was not important enough to show that the mark “UGG” has become generic for sheepskin-lined boots.
The case is Deckers Outdoor Corp., v. Australian Leather Pty Ltd., case number 1:16-cv-03676 in the U.S. District Court for the Northern District of Illinois. Click here to be redirected to the related docket.
HBO applies for over 100 trademark registrations relating to its “Game of Thrones” series
As the eighth and final season of “Game of Thrones” comes to an end, HBO has applied for more than 100 trademark registrations.
HBO registered the trademark “GAME OF THRONE” back in 2009, two years after acquiring the rights on George R.R. Martin's bestselling fantasy series "A Song of Ice and Fire."
Over the years, HBO filed numerous applications with the USPTO covering many elements of the show’s fictional world such as the well-known phrase “Winter is Coming.” These filings were made in reaction to the viral success of the series. In May 2016, two days after the broadcast of an episode explaining the origins of the character named "Hodor", HBO applied to register the mark “Hodor.”
In addition, HBO has taken many steps to cancel applications filed by third parties of marks related to the series, namely many applications containing the term “THRONE” or more specific terms. Moreover, HBO issued a press statement in reaction to President’s Trump “Sanctions are Coming” tweet referring to the series’ famous phrase “Winter is Coming.” HBO declared that it was "not aware of this messaging and would prefer [its] trademark not be misappropriated for political purposes."
Click here to be redirected to the related article on Law 360.
USPTO Issues CBD Trademark Guidelines
The United States Patent and Trademark Office issued guidelines to clarify the procedure for examining the registration of trademarks for CBD-related goods and services. In its guidelines, the USPTO expressed that, for registration, the use of a mark in commerce must be lawful under federal law. This requires compliance with the Controlled Substances Act (“CSA”), the Federal Food Drug and Cosmetic Act (“FDCA”), the Agriculture Improvement Act of 2018 (“2018 Farm Bill”), and other regulations.
The USPTO guidelines explain that the CSA provides a definition of marijuana, and prohibits, among other things, manufacturing, distributing, dispensing, or possessing marijuana. The new 2018 Farm Bill removed CBD products derived from “hemp” from the CSA definition of marijuana, and thus potentially removed the CSA as a ground for refusal of trademark registration. However, cannabis and CBD derived from marijuana (i.e. cannabis with more than 0.3% THC on a dry-weight basis) still violate federal law, and trademark applications regarding such goods or related services will still be refused registration.
The USPTO guidelines further explain that all applications filed before December 20, 2018 (date in which the 2018 Farm Bill was signed) will be refused because such applications did not have a valid basis to support registration at the time of filing. Nonetheless, “hemp” CBD products and related services are now potentially lawful so the USPTO gives applicants the option of amending the filing date and filing basis of the application to overcome a CSA based refusal.
To amend their application, applicants who filed before December 20, 2018 must change the filing date to December 20, 2018, state that such amendments are being authorized, and establish valid filing bases. If the filing basis of an application was use of the mark in commerce (15 U.S.C. §1051(a)), it must be changed to intent to use the mark in commerce ( 15 U.S.C. §1051(b)). Applicants will also be required to specify that the products contain less than 0.3% THC. Additionally, the examining attorneys will conduct new searches for conflicting marks based on the new application filing dates.
Applicants may also elect to abandon the original applications and file new ones, or may respond to a refusal of the original application by stating arguments against such refusal. Finally, the USPTO expressed that hemp-derived products can still be in violation of the FDCA even if they comply with the 2018 Farm Bill.
CASES TO WATCH:
Can One Be Prevented From Registering One’s Own Name
Linda Romane, widow of one of the former band members from the band the “Ramones” has attempted to register the mark “Ramones.” While the application is currently pending with the USPTO, the question remains, can one be prevented from registering one’s own name?
Click here to be redirected to the application on the USPTO website.
Monster Energy v. MonsterVerse
The highly anticipated movie Godzilla: King of the Monsters is currently airing in theatres and as many head to the theatres to witness the battle between Godzilla and King Ghidorah, the studio company behind the movie is engaged in a battle of their own. Last year, movie studio company Legendary Entertainment LLC (“Legendary”) filed an application with the USPTO to register the mark “MonsterVerse” for a wide range of merchandise including various foods and beverages. However, on May 7, Monster Energy Co. filed an opposition with the TTAB board aimed at blocking Legendary’s registration of the mark.
As the opposition is currently pending, ultimately the USPTO will be the one to decide the true king of the Monsters. Click here to be redirected to Legendary Entertainment LLC’s application on the USPTO website.
Guns N’ Roses Files a Trademark Infringement Lawsuit Against “Guns ‘N’ Rosé” Ale
On May 9th, Guns N’ Roses, the iconic ’80s metal band fronted by Axl Rose, filed a trademark infringement lawsuit against the Colorado based brewery, Canarchy Craft Brewing Collective’s Oskar Blues Brewery (“Oskar Blues Brewery”) for the brewery’s “Guns ‘N’ Rosé” ale. Guns N’ Roses is seeking an injunction against the brewery to prevent the sale of the "Guns 'N' Rosé" ale, along with full damages and the destruction of any promotional material and products related to the ale.
The case, Guns N’ Roses v Canarchy Craft Brewery Collective LLC, is currently brewing in U.S. District Court, Central District of California, case no. 19-04052. Click here for a copy of the complaint.
FUCT Fashion Label Takes its ‘Scandalous’ Trademark Case to Supreme Court
On Monday, April 15, 2019, the Supreme Court considered the question of whether the Lanham Act’s prohibition on the federal registration of “immoral” or “scandalous” trademarks is unconstitutional under the Free Speech Clause of the First Amendment.
Respondent Erik Brunetti, owner of the Los Angeles-based streetwear fashion brand FUCT, sought to register the brand’s name with the USPTO in 2011, but was denied registration by the USPTO, which cited the scandalous clause of the Lanham Act. Luckily for Brunetti, in 2017 the Supreme Court unanimously ruled in Matal v. Tam that a neighboring clause that applied to “disparaging” marks was unconstitutional, holding that the ban constituted viewpoint discrimination in violation of the First Amendment. In Matal v. Tam, an Asian-American rock band called The Slants attempted to register its name for trademark protection, but was denied because the USPTO believed the mark to be offensive to Asian-Americans.
Brunetti then appealed the USPTO’s decision and received a favorable ruling from the U.S. Court of Appeals for the Federal Circuit based on the Supreme Court’s unanimous ruling in Matal v. Tam. The government appealed, and the Supreme Court subsequently agreed to hear the case.
During the oral argument before the justices on April 15, U.S. Department of Justice Deputy Solicitor General Malcolm Stewart argued that it is the government’s responsibility to deny registration of trademarks that contain “scandalous” material. Stewart also stated that although the USPTO has previously defined scandalous marks as marks that are “shocking,” “disgraceful,” “offensive” and “disreputable,” going forward the USPTO would read the statute more narrowly and limit its application to terms that are shocking or offensive based on their “mode of expression,” rather than the “ideas that are expressed.”
Representing Brunetti was attorney John Sommer, who argued that offensiveness should not be the standard for turning down a trademark. The court grappled with the disparities in the USPTO’s application of the clause, as at one point a chart was brought out to demonstrate the USPTO’s inconsistencies in approving certain “scandalous” word marks over others.
A decision in the case is expected by summer.
TTAB Refused Trademark Registration for #MagicNumber108 Tagmark
Recently, the Chicago Cubs won the World Series for the first time in 108 years. One of the Chicago Cub’s biggest fan, Grant DePorter, filed a trademark application to register the mark #MagicNumber108 for goods in class 25.
The USPTO Examining Attorney refused the registration on the grounds that the sign #MagicNumber108 was an informational matter that failed to function as a trademark that indicates the source of DePorter’s goods. The Examining Attorney considered that people who include in social media posts the wording “#MagicNumber108” were expressing their support for the Chicago Cubs and their World Series Win instead of referring to any of DePorter’s goods.
The refusal to register #MagicNumber108 was affirmed by the Trademark Trial & Appeal Board (TTAB). The Board stated that the evidence provided by the Examining Attorney shows wide use of the proposed mark in a non-trademark manner, specifically as a hashtag. The Board further provided that although not every combination of a word and a hashtag would constitute an unregistrable hashtag, where such combination is used as part of an online social media search, it would not serve as a source that indicates function.
Finally, the Board concluded that the protectability of a combination of a word and a hashtag only depends on the perception of the relevant public and whether it will perceive the sign as a mark.
Federal Circuit Clarifies USPTO Requirement Regarding Adequacy of a Webpage as “Specimen Of Use”
On April 10, 2019, the Federal Circuit Court of Appeals issued a precedential opinion affirming a decision by the Trademark Trial & Appeal Board (TTAB) that a webpage specimen of use that does not demonstrate a “point of sale” is insufficient to establish a “use in commerce” as required for federal registration.
Trademark owners applying for federal registration with the U.S. Patent and Trademark Office (USPTO) must provide a “specimen of use” demonstrating the use of the mark in commerce to identify the source of the goods or services to which it applies. Most trademark applicants provide website snapshots as “specimen of use.”
Siny Corp., in applying for the registration of the mark “CASALANA,” provided a snapshot from its website consisting of a photo sample of the “CASALANA” fabric and word mark but without the ordering information. After the USPTO Examining Attorney rejected the specimen, Siny Corp. provided a substitute specimen consisting of the same webpage but including the wording “for sales information” followed by a phone number and an email address. The Examining Attorney rejected the substitute specimen considering that it was “insufficient for consumers to make a purchase.” The TTAB upheld the refusal.
On appeal, the Federal Circuit panel affirmed the TTAB decision and ruled that for a website to meet the criteria of “use in commerce,” it should contain all information essential to a purchasing decision (such as price, method of payment, shipping information), otherwise it would constitute mere advertising.
Federal Court Finds That Wedding Venue Likely Infringed on Trade Dress of Barn
On April 10, U.S. District Judge for the Eastern District of Texas, Amos L. Mazzant, granted a motion to temporarily enjoin Ruth Farm Inc. from offering its wedding venue services because it likely infringed the trade dress of its rival, Sparrow Barns & Events LLC. Sparrow Barns claims that Ruth Farm’s wedding venue, The Nest, infringed on the unregistered trade dress of its wedding space, White Sparrow – a white, wooden barn that contains “vaulted ceiling beams and wrapped vertical columns,” “ornate, tiered candelabra chandeliers,” and a “selective back wall window design.” The owners of Ruth Farm admitted that they visited White Sparrow and were “inspired” by its design. The Court found that the design elements of the two barns were similar enough to show that Sparrow Barns was likely to succeed on its claims for trade dress infringement. The Court noted that the venues were more than traditional barns, and cited their similar “internal and external shape, decorative columns, vaulted and beamed ceilings, candelabra chandeliers, picturesque haylofts, window arrangements, wooden flooring, large entrance doors, and rustic whitewash paint.”
Nike Seeks to Register the Mark “Footware”
On March 21, 2019, Nike filed an intent-to-use application to register the mark “footware” for use in connection with data-sharing computer hardware and software, including sneaker-specific “computer hardware modules for receiving, processing, and transmitting data in Internet of Things (“IoT”) electronic devices and electronic devices and computer software that allows users to remotely interact with other smart devices for monitoring and controlling automated systems.” The application also covers cloud computing and related software.
Nike’s application marks another major foray into the wearable technology space. Nike previously developed a battery-powered, self-lacing sneaker called the Adapt BB, which retails for $350.00. If successful in obtaining a registration for its “footware” mark, Nike could end up with exclusive rights to use the term in connection with smart sneakers and other tech-supported footwear. Nike’s application is currently pending before the USPTO.
Legal Battle Over “Inter” Trademark Between Inter Miami and Inter Milan
Major League Soccer (MLS) argues that Inter Milan, a David Beckham owned soccer team competing in the MLS, will be damaged by Inter Milan’s registration of the mark "INTER." Inter Milan, a world class Italian soccer team, filed an application with the USPTO in 2014 to acquire "INTER" as an exclusive brand. MLS recently filed an opposition to the "INTER" application on behalf of Inter Miami.
In its opposition, the MLS cites to a USPTO office action that noted that the word “Inter” is a descriptive term for Inter Milan’s goods and services. According to the trademark examiner assigned to the mark, “the term ‘INTER’ in applicant’s mark is short for ‘internacional’ (which translates to ‘international’) and ‘INTER’ is commonly used to describe soccer teams.” MLS also referenced another office action that asserted that the term “Inter” is frequently used in soccer.
MLS further cites to various examples of the term “Inter” being used for soccer team names in the US and in other countries such as Finland, Brazil, Croatia, Germany, Andorra, Angola, Haiti and Surinam. MLS argues that soccer teams cannot claim exclusive rights to the term “Inter” and that MLS’s use of INTER MIAMI CF can co-exist peacefully with other “Inter” team names.
MLS’s opposition is based upon Sections 2(d) and 2(e) of the Lanham Act, 15 U.S.C. § 1052. A response from the USPTO is expected around May 4.
Please join us for a Prosecco & Macarons reception at Dunnington Bartholow & Miller LLP to discuss all things fashion law on the topic of trademarks! RSVP to CVidulich@dunnington.com.
SDNY District Court Rejects Laurel Road’s Trade Dress Suit Against CommonBond
On August 27, 2018, Laurel Road Bank sued competitor CommonBond, Inc. over the latter’s display of an advertisement for its student loan financing services, alleging that CommonBond’s advertisement infringed and diluted the trade dress of Laurel Road’s advertisements of its own student loan refinancing services. Laurel Road described its trade as consisting of:
1. a color palette with a dark background;
2. a statement in large, light-colored, sans serif font at the top of the advertisement;
3. a “hierarchal” typography with smaller, sans serif font under the large typeface sentence;
4. center or left-side alignment; and
5. a colored line under a sub-set of words in the large typeface sentences.
Laurel Road sought a preliminary injunction against CommonBond’s continued use of similar elements in its advertisements.
On March 5, 2019, a district court for the Southern District of New York dismissed Laurel Road’s trade dress infringement claim, dubbing Laurel Road’s trade dress as “generic,” defined “at a high level of generality,” and “composed exclusively of commonly used elements, which have all been used in combination previously.” Because the district court found that Laurel Road’s trade dress was likely generic, it did not analyze whether its trade dress had acquired secondary meaning. The district court also found that Laurel Road’s trade dress is functional, “consist[ing] of features useful to advertising or educating consumers about the product.”
A copy of the district court’s opinion can be found here.
McDonalds appeals EU decision to cancel Big Mac trademark
McDonalds has filed a notice of appeal before the European Union Intellectual Property Office (“EUIPO”), which recently issued a ruling cancelling the trademark for its Big Mac burger. McDonalds has yet to submit the grounds for its appeal. After the trademark was challenged by Supermac, an Irish fast-food chain, the Cancellation Division of the EUIPO ruled earlier this year that McDonalds had not proven genuine use of its trademark. EUIPO is expected to take at least one year to decide the appeal. This delays Supermac’s own trademark application, which will not be approved until the dispute is resolved. McDonald’s representatives have said that they are confident the decision will be overturned by the EUIPO Board of Appeals. Nonetheless, if the EUIPO Board of Appeals rules against McDonalds, such decision can be appealed all the way to reach the European Union highest court in Luxembourg.
Competing Cannabis Companies Battle Over “Harvest” Trademark
In January 2019, California-based cannabis company, Harvest, filed a claim in California State Court to prevent an Arizona-based cannabis company of the same name from expanding its services into California. In their complaint, California-based Harvest cited the June 2018 state registration of their Harvest mark for medicinal and adult-use cannabis dispensary services, and stated that it opened its first Bay Area location in 2016. Meanwhile, the Arizona-based Harvest claims that it has the right to use the mark in California because it secured federal registrations for the name and logo in association with “retail pharmacy services in the field of botanical medicines” in 2017, and because it has been doing business and marketing in California as early as 2012. California-based Harvest claims that Arizona-based Harvest’s federal registrations are not valid because the company misled the USPTO when it did not disclose the true nature of the company’s business on the trademark applications. Further, in 2017, Arizona-based Harvest opposed California-based Harvest’s federal trademark application for “medical cannabis resources, namely, providing information pertaining to the benefits of medicinal use of cannabis” claiming that the company copied its name and circular logo after its president visited Arizona’s facilities in 2014 to discuss possibly doing business together. Most recently, on March 8, Judge Richard B. Ulmer Jr. denied California-based Harvest’s motion for preliminary injunction finding that it did not prove a likelihood of success on the merits. This case is pending in the Superior Court of California.
Fridge Filter Company Liable to Whirlpool for $5.8M for Willful Trademark Infringement
On March 13, a jury in the Western District of North Carolina found that Filters Fast LLC willfully infringed on Whirlpool’s trademarks when it used Whirlpool’s brand names such as KitchenAid and Maytag to sell replacement filters for the company’s refrigerators. Jurors awarded Whirlpool $5.8M based on Whirlpool’s complaint filed in October 2017 – rejecting Filters Fast’s argument that it had not used the Whirlpool marks to “pass off” generic filters as Whirlpool products, but to communicate to consumers that “certain generic filters work with Whirlpool products”, and that this use constitutes classic nominative fair use. Whirlpool countered Filters Fast’s argument and claimed that it “intentionally used Whirlpool's marks to gain an unfair advantage, confusing customers into purchasing nongenuine filters.” Whirlpool argued that these “deceptive and misleading practices would not qualify under a nominative fair use test…” and that a nominative fair use “by definition is a use that does not create confusion about the source of the defendant’s product.” Whirlpool claimed that Filters Fast’s use of the marks to indicate that a non-Whirlpool filter was compatible with a Whirlpool product was done to intentionally create confusion as to the brand of the filter. The verdict must be approved by Judge Frank D. Whitney, after which Filters Fast may appeal.
Court Blocks Unconstitutional Government Seizure of Mongols Motorcycle Club Trademark
On February 28th, a Federal judge in California refused to enforce a jury’s decision to strip the Mongols Nation motorcycle club (“Mongols”) of its trademarked logo. The club had previously been convicted of racketeering and conspiracy to commit racketeering in December of 2018. Then a month later, on January 11th, the same jury determined that the Mongols should forfeit their infamous logo after the prosecution argued that the trademarked logo was crucial to the group’s identity and that there was a direct connection between the logo and the groups criminal activity. In the third phase of trial, U.S. District Court Judge David O. Carter was to decide how the forfeiture would be carried out. However, in this most recent decision, Judge Carter has declined to strip the Mongols of their logo, finding that doing so would overstep the constitutional protections embedded in the First Amendment right to free expression and the Eighth Amendment’s ban on excessive penalties.
Judge Carter writes in his decision that "the forfeiture of the rights associated with a symbol that has been in continuous use by an organization since 1969 is unjustified and grossly disproportionate to this offense. To hold otherwise sets a dangerous precedent that enables the Government to target the associative symbols of organizations it chooses to prosecute for RICO conspiracy." The decision culminates a decade long pursuit of the Mongols criminal enterprise by prosecutors after nearly 80 members were charged in 2008 for racketeering offenses.
The case is filed in the Central District Court of California and is captioned USA V. Mongol Nation, an Unincorporated Association, case number 2:13-cr-00106. Click here to be directed to the related Order. Click here to be redirected to the related ABA Journal article.
Williams-Sonoma, Amazon Gearing Up for Trademark War
On December 14, 2018, Williams Sonoma Inc. (“WSI”) filed a complaint asking for damages and injunctive relief against Amazon.com Inc. (“Amazon”) in the U.S. District Court for the Northern District of California. WSI alleges that the internet sales titan is trading upon WSI’s goodwill and infringing intellectual property by advertising its products on its website as “by Williams-Sonoma” and “fulfilled by Amazon.” WSI alleges that this is detrimental to its brand and that there are large amount of customer complaints on Amazon’s website. According to WSI, the reasons for these complaints are purportedly damaged Amazon merchandise and prices higher than those of WSI.
Amazon requested that U.S. Magistrate Judge Elizabeth Laporte dismiss WSI’s complaint arguing that this falls under the first-sale doctrine, which states that buyers of branded products can lawfully resell them so long as they are not materially changed. According to Amazon, Amazon’s advertisements “simply state the truth: that Williams-Sonoma products are available through Amazon’s website.” To this, WSI argues that Amazon is not selling WSI products but rather has engaged in prototypical counterfeiting by creating what would appear to be a WSI profile on Amazon thereby “misleading customers into believing they are dealing with WSI or an authorized WSI dealer.”
WSI and Amazon will appear before Judge Elizabeth Laporte on April 2nd.
The case is captioned Williams-Sonoma, Inc., v. Amazon.Com, Inc., 3:18-cv-07548 (N.D. Cal.).
UPS wins injunction against cannabis delivery companies regarding their trademark infringement
The District Court for the Central District of California recently granted United Parcel Services (UPS)’s request for a preliminary injunction against a group of California-based marijuana delivery businesses using word and logo marks similar to UPS’ well-known shield logo to sell cannabis-related products. In its pleading, UPS asserted federal trademark infringement, trademark dilution, false designation of origin, false advertising, unfair business practice and requested injunctive relief.
The court found that (1) UPS was likely to prevail on the merits of its claim; (2) the balance of hardship tipped in UPS’ favor; (3) absent a preliminary injunction UPS would be likely to suffer irreparable injury; and (4) the requested relief was in public interest. Pursuant to the court’s order, the named defendants are barred from using a copy or colorable imitation of the UPS marks, representing directly or indirectly that they are associated with UPS, taking any action likely to dilute or tarnish the quality of the UPS marks (by selling cannabis related products), and otherwise infringing UPS marks or competing unfairly with UPS.
Jury awarded Variety Stores, Inc. $95.5 million in the Walmart Trademark infringement case
On February 12, 2019 a federal jury in North Carolina found that Walmart had willfully infringed Variety Stores, Inc.’s “BACKYARD” trademarks and awarded Variety $95.5 million in damages.
Variety argued that it owns a federal trademark registration for “THE BACKYARD” and had established common law rights in the marks “THE BACKYARD”, “BACKYARD” and “BACKYARD BBQ” (“BACKYARD marks”) in connection with outdoor products including grills and grilling accessories. Since 1993, Variety has been selling its products in 16 states and in the District of Columbia.
In August 2011, Walmart filed an intent-to-use trademark application in the U.S. Patent and Trademark Office (USPTO) for “BACKYARD GRILL” in connection with grills and accessories. Variety filed an opposition in the USPTO’s Trademark Trial an Appeal Board (“TTAB”). The opposition was suspended in 2014 when Variety filed a suit in the Eastern District of North Carolina, alleging that Walmart had infringed Variety’s BACKYARD marks by selling BACKYARD GRILL products. The Court granted a partial summary judgement in Variety’s favor and found Walmart liable for trademark infringement. In 2016, the District Court ordered Walmart to disgorge $32.5 million in profits, plus attorney’s fees and costs. On appeal, the Fourth Circuit reversed the decision, vacating the damages award and remanded the case for trial.
The trial court ultimately found Walmart liable for willful infringement of the BACKYARD mark and awarded Variety $95.5 million damages, of which $45.5 million was as “reasonable royalty” and $50 million disgorgement of Walmart’s profits. While these remedies are provided by the Lanham Act, the allocation of a “reasonable royalty” is not a common remedy in trademark infringement cases where damages are usually only based on disgorgement of profits. In view thereof, Walmart is likely to appeal the jury’s decision.
Instagram and Facebook are facing many trademark violations
Facebook, which owns Instagram, recently filed a complaint in the Northern District of California against a number of Chinese companies purportedly selling fake Instagram and Facebook accounts, likes and followers.
Facebook is asking for $100,000 damages in connection with trademark infringement, terms of services violation and cybersquatting.
Instagram recently created a system allowing users to report instances of trademark infringement. The complaints are reviewed by a team specialized in trademark and intellectual property matters which determines their relevance. If the complaint is considered legitimate by the team, Instagram transfers the account to the rightful owner of the trademark.
In order to capitalize on this process and obtain high-value Instagram accounts, scammers register trademarks with their local governmental authority in the name of the social media handle they seek to acquire, and provide that information along with their complaint to the social media platform.
Facebook’s pleading seeks to prevent such practices from occurring on its platforms.
BIC Files ITC Complaint Against Importers of Allegedly Counterfeit Pocket Lighters
On December 6, 2018, BIC Corporation (“BIC”) petitioned the United States International Trade Commission (“ITC”) for an investigation into the illicit importation into the United States, for the importation, or sale after importation, of six respondents’ pocket lighters, alleging that respondents’ lighters infringe BIC’s intellectual property rights in the design of its disposable cigarette lighters, otherwise known as their “trade dress.” In its petition, BIC argues that similarities in the appearance of respondents’ lighters and its lighters will lead consumers to be confused as to the source and/or sponsorship of respondents’ lighters, or to affiliate respondents’ lighters with BIC. BIC’s petition asks the ITC to issue a general exclusion order blocking the importation of infringing lighters from any source, not just the named respondents, and claims that such an order “is necessary and appropriate to prevent circumvention of limited exclusion orders directed to products of Respondents.”
What makes this case interesting is its focus on trademark claims. Typically, ITC petitions have centered around patent infringement claims, with trademark disputes limited to approximately one petition every two years. While BIC also filed a trademark infringement lawsuit in the U.S. District Court for the Eastern District of New York, civil judgments are often difficult to enforce against small overseas companies, who may cease their operations only to reemerge under new names, or in new locations. BIC hopes that a general exclusion order from the ITC, which allows brand owners and intellectual property owners to stop all counterfeit products from being imported into the United States, not just those of identified defendants, will protect its rights in the trade dress of its disposable cigarette lighters.
Vans Sues Primark for Selling ‘Intentional Copies’ of its Iconic Sneakers
On December 18, 2018, Vans, Inc. and its parent company VF Outdoor, LLC (together, "Vans"), the makers of Vans shoes, sued Primark in the U.S. District Court for the Eastern District of New York, alleging that the fast-fashion retailer has been “offering for sale and selling footwear products . . . [that] are calculated and intentional knock-offs of Vans’ footwear products,” including its “Old Skool” and “Sk8-Hi” models, since August 2017. In the lawsuit, Vans identifies several elements of the “strong enforceable trade dress,” including, with respect to its “Sk8-Hi” model skate sneaker:
(1) the Vans Side Stripe Trademark, in contrasting color to the shoe upper; (2) a white rubberized midsole; (3) a contrast line around the top edge of the midsole; (4) a texturized toe box outer around the front of the midsole; (5) padded corrugated ankle collars; and (6) visible stitching, in contrasting color, including where the lace bracing meets the vamp, separating the individual padded ankle collar corrugations, and bisecting the Vans Side Stripe Trademark.
The lawsuit alleges that Primark “is engaged in designing, manufacturing, advertising, promoting, selling, and/or offering for sale apparel, footwear, and accessory products . . . bearing logos and source-identifying indicia that are studied imitations of Vans’ trademarks.” Vans also pointed out that Primark’s allegedly infringing shoes brazenly bear names similar to its Sk8-Hi model, including “Skater” low tops and “Skate high tops,” “in a blatant attempt to suggest a connection with Vans’ products that bear the Vans’ Trademarks and Trade Dress.” In addition to seeking a preliminary injunction against Primark’s sale of any goods bearing confusingly similar imitations of Vans’ trademarks and/or trade dress (as well as the impoundment or destruction of such goods), Vans seeks monetary damages, including Primark’s profits from the infringement, and requests that any damage award be tripled based on Primark’s willful infringement.
The case is captioned Vans, Inc. and VF Outdoor, LLC v. Primark Stores Ltd., 1:18-cv-07214 (E.D.N.Y. 2018). A copy of Vans’ complaint can be found here.
UPS sues California cannabis delivery companies for trademark infringement
United Parcel Services (“UPS”) filed a complaint on February 13, 2019 in the District Court for the Central District of California against a group of California-based marijuana delivery businesses for federal trademark infringement, trademark dilution, false designation of origin, false advertising, unfair business practice and injunctive relief. The delivery giant is seeking a permanent injunction against the defendants to prevent them from using its marks and logos and an unspecified amount of monetary damages.
UPS accuses United Pot Smokers, UPS420 and THCPlant (the “Defendants”) of using names and logos that are confusingly similar to its mark and well-known shield logo to sell cannabis-related products through the websites www.ups420.com and www.UPS.green. UPS also alleges that in addition to the inclusion of its trademarks in the above-mentioned URLs, the websites describe themselves as ”nationwide logistic expeditor” that “securely packs & ships to ALL 50 states of domestic USA” which is likely to mislead or deceive the consumers by making them believe that the Defendants are affiliated to UPS.
Moreover, UPS argues that the alleged infringement hurts its reputation because it associates the Atlanta-based delivery giant with cannabis companies by creating an “unwholesome, unsavory, and degrading association between Defendant’s services and UPS.”
On February 15, 2019, the District Court judge recognized the “obvious similarities” between the signs used by the Defendants and UPS’ mark and logo. However, he denied UPS’ request for temporary restraining order considering that the “Defendants should […] have the chance to be heard” before such preliminary injunction could be granted.
Senate Judiciary Committee Creates New IP Subcommittee
The Judiciary Committee of the Senate created a subcommittee that will have jurisdiction over the USPTO and the US Copyright Office, and will serve other IP related functions. The Senate subcommittee adds to the already existing IP House Judiciary Committee known as the Subcommittee on Courts, Intellectual Property and the Internet.
Thom Tillis, who was appointed as chairman, referred to China’s IP theft and to the confusion over patent eligibility. "In recent years our country has been faced with a number of challenges in our intellectual property system, from rampant theft from state actors like China to confusion among innovators and inventors about what is even patentable," Tillis explained. "These issues are causing our nation's economy to lose billions of dollars annually and threaten our country's long-term technological dominance."
Subcommittee members showed interest in passing legislation that provides guidance, and clarifies which inventions are eligible for patenting, and which are not.
Campbell Soup Trademarks The Word ‘Chunky’
Campbell Soup Company registered the trademark of the word ‘Chunky’ with the U.S. Patent and Trademark Office. In its application, Campbell referenced the “massive unsolicited media coverage of Chunky” in shows like The Simpsons, Saturday Night Live, Family Guy, and in songs of artists such as Lloyd Banks, Rakim, and rapper Ghostface Killah. Even Pulitzer Prize-winning author Colson Whitehead wrote about Campbell’s Chunky soup in his novel named Sag Harbor.
The registration certificate noted that the word was first used by Campbell Soup Company in 1969. Campbell claims that they spent $1 billion in advertising since 1988 including NFL sponsorships, and that they sold more than $13 billion worth of Chunky soup.
PA Restaurant Sues NY Bakery for Infringing on Smiling Cookie TM
On February 6, the Pittsburgh-based Eat’n Park restaurant chain brought an action against New York cookie-maker Eleni’s for trademark infringement, trademark dilution, and unfair competition claiming that the popular bakery used its registered trademarks for smiling cookies in breach of the parties’ license agreement. According to the complaint, Eat’n Park has been selling its signature smiling face cookies since 1987, and it has registrations for the smiling face design and the words SMILEY for “pancakes and cookies.” In 2009, after Eat’n Park learned that Eleni’s had been selling a cookie bearing a confusingly similar smiling face, the parties entered into a license agreement in which Eleni’s was granted the right to continue to sell the smiling cookies. Eat’n Park commenced the lawsuit after Eleni’s stopped paying it royalties but continued to sell the cookies. The case is pending in the U.S. District Court for the Western District of Pennsylvania.
Nirvana Sues Marc Jacobs and High-End Department Stores for Infringing on Smiling Logo
Marc Jacobs, Saks Fifth Avenue, and Neiman Marcus were not smiling when rock band Nirvana sued them for copyright infringement and trademark infringement for Marc Jacobs’ “Bootleg Redux Grunge” collection of clothing released in November 2018 which prominently features Nirvana’s “Smiley Face” logo. Nirvana claims that it first used and licensed the logo in 1992 for a wide variety of goods including clothing. The complaint alleges that Marc Jacobs copied Nirvana’s copyrighted image on clothing in the collection and used it as the signature image in its advertisements for the collection as an attempt to intentionally mislead the public into falsely believing that Nirvana endorses the collection. Nirvana claims that Marc Jacobs even incorporates various Nirvana references in its marketing campaign including song lyrics and clips of Nirvana music videos on its social media to further confuse the public into believing that the parties are associated. The defendants must respond to the complaint by March 8. The case is pending in the U.S. District Court for the Central District of California.
Drag to Move
'Fearless Girl' Artist Sold Unauthorized Statues, TM Suit Says
On February 14, 2019, State Street Global Advisors Trust Company (“SSGA”) filed a complaint against the artist of New York City’s iconic “Fearless Girl” statue, claiming that the artist, Kristen Visbal, infringed on SSGA’s trademark rights and materially breached its contractual obligations to SSGA by delivering a replica statue to customers in Norway and Australia without authorization from SSGA. According to the Complaint, Visbal was hired by SSGA to sculpt the statue based on the designs that SSGA had developed with their consultants and agents. The Fearless Girl statue, which can be found in Bowling Green NYC, was introduced during the 2017 International Woman’s Day as a symbol of SSGA’s commitment to fighting gender biases. SSGA is asking that the court compel Visbal to mediate the dispute and is seeking injunctive relief and exemplary damages.
The case is filed in the Supreme Court of the State of New York and is captioned State Street Global Advisors Trust Company v. Kristen Visbal, case number 650981/2019. A copy of the complaint can be found here. Click here to be redirected to the related Law360 article.
FBA Fashion Law Conference earlier this month was simply fabulous. Thank you to the FBA staff for pulling it off, and special thanks to FBA President Maria Vathis (Bryan Cave) and keynote speaker Gary Sheinbaum (CEO, Tommy Hilfiger Americas), as well as our in house speakers Rita Odin (Estee Lauder), Marilee Holmes (Wilhelmina), Lena Saltos (Urban Outfitters), Michael Khorsandi (Ross Stores), Bert Kaminski (Servicemax), and Stacy Yeung (Bayer). Last but not least, a huge thank you for our panels of attorneys (and one judge) who have contributed their knowledge and expertise in the field of fashion law: Frances Hadfield (Crowell & Moring), Nicola Tegoni (Dunnington Bartholow & Miller LLP), Hon. Mimi Tsankov (Immigration - in her personally capacity), Dyan Finguerra-duCharme (Pryor Cashman), Deanna Clark-Esposito (Clark-Esposito Law Firm), Laurine Janin-Reynaud (Duclos Thorne), David Stepp (Crowell & Moring), Jeanne Curtis, April Capati (Lerner David), Maria Vathis (Bryan Cave) and… ME! Super huge thank you to Fili Bajovic of CACOTEC, who provided an insider’s perspective on fashion tech.
I spoke on my favorite topics: trademarks (of course, what else?) as well as wearable tech - and moderated four of the six panels. We covered international trade, fashion tech, design patents, trademarks, immigration and retailer issues. Hope to see you in Paris in September!
Supreme Court Will Decide Whether USPTO Can Refuse to Register “Scandalous” TMs
On January 4, the U.S. Supreme Court granted certiorari to the USPTO to decide whether the Lanham Act’s prohibition on the federal registration of “immoral” or “scandalous” marks violates the First Amendment. The Supreme Court’s decision to hear the case comes less than two years after it unanimously ruled in Matal v. Tam that a similar part of the trademark law that banned the registration of “disparaging” trademarks violated the First Amendment. In Matal, an Asian-American rock band called The Slants attempted to register its name for trademark protection, but was denied because the USPTO decided that the mark would be likely to offend Asian-Americans.
The case involves the USPTO’s denial of registration to a clothing line called FUCT because the mark was “scandalous.” In December 2017, the U.S. Court of Appeals for the Federal Circuit ruled that the government’s ban on registering profane, sexual and otherwise objectionable language violates the First Amendment. In the opinion, U.S. Circuit Judge Kimberly A. Moore wrote, "The First Amendment…protects private expression, even private expression which is offensive to a substantial composite of the general public.” The Court found, as it did in Tam, that the ban regulates the expressive component of trademarks and so cannot be treated as commercial speech, and that the clause could not satisfy strict scrutiny. Thus, the Court ruled that the ban on scandalous and immoral trademarks was unconstitutional.
According to the USPTO’s petition, however, the case is not about political speech because the “trade-mark registration program operates exclusively in the sphere of commercial speech.” It further explains that to determine whether a mark is scandalous, the Office asks whether “a substantial composite of the general public” would believe the mark to be scandalous, and it “generally defines ‘scandalous’ as ‘shocking to the sense of truth, decency, or propriety; disgraceful; offensive; disreputable; . . . giving offense to the conscience.’”
TTAB reverses USPTO’s Refusal to Register Starbucks’ Green Circle Logo in One Application; Affirms Refusal in Another
In a consolidated opinion dated January 17, 2019, the TTAB decided successive appeals filed by Starbucks Corporation (“Starbucks”) from the USPTO’s final refusal to register two proposed marks consisting of “a green circle placed centrally on the front exterior side of white cup,” reversing the PTO’s final refusal in one case, and affirming the refusal in another.
Starbucks filed applications to register the two marks under Application Serial Numbers 86/689423 (the “‘423 Application”) and 85/792872 (the “‘872 Application”). The ‘423 Application featured a drawing of the proposed mark depicting a green circle placed centrally on the front exterior of a white cup. The PTO Examining Attorney refused the ‘423 Application on the grounds that the proposed mark was not a “substantially exact representation” of the marks shown in either of the two specimens submitted to the Trademark Office. The TTAB disagreed and reversed the PTO’s final refusal, finding that any differences between the drawing of the mark and the specimen were tantamount to a minor alteration which does “not create a new and different mark [with] a new commercial impression.”
The ‘872 Application similarly featured a drawing of the proposed mark depicting a green circle placed centrally on the front exterior of a white cup; however, unlike the ‘423 Application,Starbucks disclaimed that portion of the drawing representing the cup. The Examining Attorney refused the ‘872 Application on a number of grounds, including that Starbucks had not established that the mark had acquired distinctiveness.
In affirming the PTO’s final refusal, the TTAB concluded that the mark depicted in the ‘872 Application had not acquired distinctiveness. In particular, the TTAB questioned the probative value of a consumer marketing survey offered by Starbucks as evidence of acquired distinctiveness, noting several problems with the survey’s design.
A link to the TTAB’s 52-page decision can be found here.
McDonald’s Loses its EU Big Mac Trademark After Dispute With Irish Burger Chain
The Cancellation Division of the European Union Intellectual Property Office revoked McDonald’s trademark on the Big Mac burger after a dispute with Supermac, an Irish fast-food chain. In its decision, the EUIPO found that McDonald’s failed to provide sufficient evidence to prove genuine use of the name “Big Mac” in the EU. In the case, Supermac argued that the trademark should be revoked because it “was not put to genuine use” in relation to the registered goods and services. The Cancellation Division agreed and found that the evidence submitted by McDonald’s was “insufficient to establish genuine use of the trade mark.” McDonald’s had submitted affidavits of company representatives from Germany, France, and the UK. It also submitted website printouts where the term “Big Mac” was referenced. The EUIPO, however, said about the websites that “it could not be concluded whether, or how, a purchase could be made or an order could be placed.” The EUIPO further found that although McDonald’s had been able to demonstrate some evidence of use, it could not show the extent of such use.
The ordered revocation is retroactive and takes effect as of the date in which the application for revocation was filed, which is April 11, 2017; McDonald’s still has the right to appeal the decision.
Mongols Motorcycle Gang to Lose Trademarked Logo, Jury Decides
On January 11th, a jury in the U.S. District Court in Santa Ana, stripped the Mongols Motorcycle group of its trademarked logo after previously finding the entity, Mongol Nation, guilty of racketeering and conspiracy in December of 2018. This means that the Mongols will have to forfeit their legal interest in the word "Mongols," along with some of their patches, which prosecutors said were used to distinguish members who have committed murder or engaged in acts of violence on behalf of the gang. The decision to seize the logo follows a decade long pursuit by prosecutors to dismantle the Mongols after 77 members were infiltrated by the U.S. Bureau of Alcohol, Tobacco, Firearms, and Explosives in 2008 and convicted of racketeering. A hearing was scheduled for January 8th, 2019 to argue the terms of the forfeiture; a judge could also impose fines at a later sentencing hearing.
The case is filed in the Central District Court of California and is captioned USA V. Mongol Nation, an Unincorporated Association No. 15-50442 (9th Cir. 2017). A docket for the case can be found here. Click here to be redirected to the related NYTimes article.
Netflix Sued Over Alleged ‘Choose Your Own Adventure’ Trademark Infringement
On January 11th, the Vermont-based publisher of the Choose Your Own Adventure book series filed a complaint against Netflix for infringing on the “Choose Your Own Adventure” trademark. Chooseco LLC claims that the interactive episode, ‘Bandersnatch,’ from the Netfllix show Black Mirror is so dark that it will disparage the books’ reputation. In their complaint, Chooseco states that “the use of Choose Your Own Adventure in association with such graphic content is likely to cause significant damage, impacting our book sales and affecting our ability to work with licensing partners in the future.” The episode, which was released on December 28th, 2018, is centered around a video game designer who asserts that his video games are based on “Bandersnatch…a Choose Your Own Adventure book.” Chooseco claims that Netflix had pursued a license to use “Choose Your Own Adventure”’ in connection with films and interactive cartoons, but failed to secure the license after actively negotiating with Chooseco. Chooseco claims that they subsequently sent a cease and desist letter to Netflix prior to the release of the Bandersnatch episode.
Chooseco is seeking injunctive relief and damages of at least $25 million for the alleged infringement. The case is filed in the United States District Court in Vermont and is captioned Chooseco LLC v. Netflix, Inc., 2:19-cv-00008. A copy of the complaint can be found here. Click here to be redirected to the related article on The Verge.
Red Bull Files a Trademark Infringement Suit Against a New Jersey Gas Station
Red Bull accused Milton Lukoil gas station of selling Red Bull drinks that are not authorized for sale in the U.S. These drinks are “materially different” from those sold in the U.S., and do not fulfill all the U.S. regulatory requirements. The complaint asserts that the drinks were intended for sale in South Africa and other countries and thus are not appropriately labelled, travel through unauthorized supply chains, and lack a toll-free U.S. number for consumers to call with questions or concerns, among other deficiencies.
Red Bull alleges counts for trademark infringement, and unfair competition in violation of the Lanham Act and New Jersey law. The complaint alleges that Milton Lukoil’s acts “have injured Red Bull’s business reputation and relations with retail accounts in the United States by causing customer dissatisfaction, a diminution in value of the goodwill associated with the RED BULL Marks, and a loss of Red Bull’s sales and market share to its competition.” Red bull intends to enjoin Milton Lukoil from selling the drinks and seeks attorney’s fees.
Please join me January 10th for a Fashion Law CLE covering non-traditional trademakrs in the fashion industry. To register online or live, please go to bit.ly/250Park and RSVP to firstname.lastname@example.org. Looking forward to seeing you there!
JAY-Z Scores Diversity Commitment from American Arbitration Association
In late November, Jay-Z and his legal team sought a temporary restraining order before Judge Saliann Scarpulla of the New York Supreme Court to stay arbitration of an ongoing trademark dispute because of an alleged lack of diversity in the American Arbitration Association (AAA).
The issue arose after Iconix Brand Group, the owner of several clothing brands, claimed in a 2017 lawsuit that a deal to license the “Roc Nation” logo to Major League Baseball Properties in connection with a line of special edition baseball caps infringed its rights in the ROC NATION mark, which lconix argued it had acquired as part of its 2007 purchase of Jay-Z’s Rocawear clothing brand. Iconix filed an arbitration proceeding against Jay-Z’s team on October 1; however, Jay-Z’s legal team opposed the arbitration on equal protection grounds, arguing that the list of 200 prospective arbitrators authorized to hear the matter included only three individuals identified as African-American, one of whom was conflicted out of the matter. While Judge Scarpulla granted Jay-Z’s motion for a temporary restraining order, his attorneys subsequently withdrew the motion after the AAA acknowledged the dearth of minority arbitrators and indicated a willingness to undertake remedial measures intended to improve the diversity of arbitrators in both Jay-Z’s case and in future arbitrations.
A status conference in the case is set for March 2019. The case is Shawn C. Carter et al. v. Iconix Brand Group, Inc. et al. found here.
Gucci, Forever 21 Settle Battle Over Stripes
Gucci and “fast fashion” retailer Forever 21 have settled their legal dispute over whether Forever 21’s use of blue-red-blue and green-red-green stripes on clothing and accessories infringes Gucci’s trademarks.
Forever 21 originally filed a declaratory action against Gucci in the U.S. District Court for the Central District of California, seeking both a declaration that its use of colored stripes did not infringe Gucci’s trademark rights and cancellation of a dozen of Gucci's trademark registrations. In its Complaint, Forever 21 argued that stripe designs are much too common to serve as trademarks, do not serve as source-identifiers, and are widely used by brands such as Louis Vuitton, Balenciaga, Tory Burch, J. Crew and Urban Outfitters. Thereafter, Gucci moved to dismiss the case, arguing that Forever 21 had not provided any evidence that other parties are, in fact, using Gucci’s blue-red-blue and green-red-green striped trademarks.
The parties’ reported settlement comes after Judge Fernando M. Olguin rejected Gucci’s request to dismiss Forever 21’s trademark cancellation claims, finding that the claims are “viable” and should be decided at trial. The California district court has filed an order to show cause regarding the settlement and dismissal, ahead of the still-scheduled pre-trial conference scheduled for Monday, February 4, 2019.
Ebony’ Mag Sues Owners of ‘The Root,’ Alleging Trademark Tarnishment
On December 7, 2018, ‘Ebony’ magazine sued online competitor ‘The Root’ asserting, among other things, claims of trademark infringement, trademark dilution and unfair competition. The suit arises out of an article published by The Root on November 28, 2018, which calls out Ebony for failing to pay its writers. The offending article is entitled “Dear Ebony Magazine: FU, Pay Your Writers!” and includes a mock Ebony magazine cover attributed to the article’s author, Lawrence Ross, featuring the well-known red and white Ebony logo.
Ebony’s lawsuit claims that defendants have “engaged in a systematic campaign of misinformation regarding Plaintiff and its agents since at least April 19, 2017,” and that allegations that Ebony and its owners have not paid their writers while “spending the thousands owed to black writers” on an expensive gala are “misrepresentations” that resulted in damage to Ebony’s reputation and business relationships (the lawsuit also seeks damages for The Root’s alleged tortious interference with Ebony’s prospective economic advantage). The complaint similarly criticizes the article’s accompanying artwork, which, in plaintiff’s words, contains “1) the identifiable likeness of Plaintiff’s co-founders . . . , 2) false and misleading ‘headlines,’ 3) the famous EBONY Word Mark, and 4) the famous EBONY Logo Mark,” all used without Ebony’s consent. The lawsuit seeks, inter alia, injunctive relief, exemplary/punitive damages for defendants’ alleged willful willfulness, and a disgorgement of defendants’ profits.
The Root article, found here, attempts to co-opt the #EbonyChallenge, a social media campaign in which consumers were asked to upload the Ebony magazine cover corresponding with their birth month and year. In protest of Ebony’s alleged failures to compensate its writers, Ross asks readers to upload the mock Ebony cover with the hashtags #EbonyChallenge and #EbonyStillOwes.
Ebony’s lawsuit, filed in the Southern District of New York, is captioned Ebony Media Operations, LLC v. Univision Communications, Inc., 1:18-cv-11434. The Complaint can be found here.
Foreign Trademark Applications Sharply Increase In Recent Years
According to data provided by the USPTO Annual Performance and Accountability Report, trademark applications filed by residents of foreign countries grew exponentially since 2014. The USPTO Report shows that applications from Chinese residents increased from 6,323 in 2014 to 57,879 in 2018. This explains, in part, the new rule proposed by the USPTO—and posted in our November 2018 Trademark Bulletin, where the USPTO stated that the rule will “ensure that the USPTO can effectively use available mechanisms to enforce foreign applicant compliance with statutory and regulatory requirements in trademark matters.”
Zippo Registers Signature “Click” Sound Trademark
Zippo announced earlier this month the sound trademark of their famous lighter. The mark was registered for international class number 34, as a mark drawing type number 6, used for sensory marks, and was described as “the sounds of a windproof lighter opening, igniting, and closing”. Zippo had already filed an application in the past, which was abandoned after more than two years of legal gridlock. With this new registration, Zippo’s lighter being flicked open and sparked joins MGM’s lion roar, and The Hunger Games’ Mockingjay Whistle, as some of the few sound marks to be registered with the USPTO.
“Real Housewives” Star Loses TM Battle Over Vineyard Vines’ Whale Logo
In 2015, retailer Vineyard Vines LLC and “The Real Housewives of New Jersey” star Margaret Josephs and her company (collectively, “Josephs”) entered into a confidential settlement agreement after Vineyard Vines accused Josephs of creating and distributing products that infringed on its intellectual property rights, including its iconic whale logo. As part of the settlement, U.S. District Judge Sarah A.L. Merriam for the District of Connecticut entered a permanent injunction barring further infringement and a final judgment requiring Josephs to pay Vineyard Vines $300,000 in installments as damages stemming from the infringement. The order also stated that if Josephs violated the injunction, Vineyard Vines could be entitled to $500,000 in liquidated damages and additional relief. On December 5, Judge Merriam found that Josephs violated the injunction by authorizing a third-party company to “sell off” the remaining infringing merchandise after the injunction was issued. The court ordered Josephs to pay Vineyard Vines $110,000 as an unpaid judgment award and $500,000 in liquidated damages plus a provisional grant of attorneys’ fees.
The order can be found here.
LL Cool J Sues Concert Promoter for TM Infringement of Famous Song “Rock the Bells”
On November 27, hip hop recording artist James Smith (aka “LL Cool J”) sued concert promoter Guerilla Union Inc. claiming that the company used the title of Smith’s 1985 song “Rock the Bells” without authorization. According to the complaint, the company that organized a series of hip hop music festivals called “Rock the Bells” used the phrase in its web domain “rockthebells.net”, Twitter account “@rockthebells”, and “Rock the Bells” Facebook and Myspace accounts even after Smith successfully cancelled Guerilla Union’s registration for the mark in five classes before the Trademark Trial and Appeal board in October 2017. Smith is asking the court to require Guerilla Union to give him control of the websites and to surrender any merchandise branded with “Rock the Bells.” The case is pending in the U.S. District Court for the Central District of California.
The complaint can be found here.
The Weeknd Sued For Use Of ‘Starboy’ In Marvel Collaboration
On November 14, 2018, Eymun Talasazan filed a lawsuit against Musician Abel Tesfaye AKA The Weeknd for federal trademark infringement, accusing the singer of stealing Talasazan’s “Starboy” comic book character. The Weekend, who has been known to use the “Starboy” moniker as an alterego, had released a studio album and song in 2016 baring the same name. In his complaint, Talasazan alleges that Talasazan had created a comic book universe (“Comic Book Universe”) in 2014 and that in 2016 he began collaborating with Stan Lee, the creator of Marvel, on developing the story arc and characters in that Comic Book Universe. Prior to that, however, Talasazan had allegedly contacted The Weeknd to create a collaboration using the singer’s stage name, but according to the complaint, The Weeknd never responded. The complaint alleges that The Weeknd began separately collaborating with Marvel on the release of a comic bearing his stage name, without including Talasazan, and that collaboration launched in June of 2018.
Talasazan filed a trademark application on October 18, 2017 for “Starboy” in connection with “Comic books.” Then on March 23, 2017, he filed another application for “Starboy” in connection with “Entertainment services, namely, production and distribution of ongoing television programs in the field of drama.” The Weeknd and his legal team have filed an opposition to Talasazan’s trademarks, claiming that Talasazan only included comics in his Trademark application after the announcement that the Weeknd and Marvel would be releasing the Starboy Comic. Talasazan’s legal team tells TMZ that this case will determine whether a songwriter automatically gains trademark protection for all later uses of a word, without formally filing a trademark application. He is not only suing The Weeknd for Trademark infringement, but wants all copies of the Starboy Comic recalled, impounded and destroyed.
The case filed in Central District of California is Eymun Talasazan vs. XO Trademarks, LLC, et al. (Case No: 2:18-cv-09611). The complaint can be found here.
Alice + Olivia Sues Betsey Johnson, Steve Madden Over Bags With “StaceFace” Design
On December 7, 2018, fashion brand Alice + Olivia (“A + O”) filed a lawsuit against Betsey Johnson and its parent company, Steve Madden, for using an image depicting Stacey Bendet, A + O’s founder and creative director (known as the “StaceFace” design), to sell a line of Betsey Johnson handbags.
According to A+O’s complaint filed in Southern District of New York, A+O sent a cease and desist letter earlier in the year, which resulted in the parties coming to a resolution in March where Betsy Johnson and Steve Madden agreed to stop manufacturing and selling the handbags in question. Then in September, A+O claims that they “identified new goods from the defendants that mimicked the StaceFace design,” noting that the only difference in the new products were the shape of the glasses on the StaceFace design, which were now hearts instead of circles.
The lawsuit claims that Bendet’s name and likeness are “well known” and “inexorably associated with the A + O brand” and includes causes of action for copyright, trademark and trade dress infringement, trademark dilution and unfair competition.
The case is Alice + Olivia, LLC v. BJ Acquisition, LLC and Steven Madden, LLC, 1:18-cv-11482 (SDNY). Click here to be redirected to the related article on The Fashion Law Blog. Click here for the complaint.
Join us for the Federal Bar Association's Fashion Law Conference on February 8th, 2018 held at the historical and stunning The National Arts Club. An all-day intensive CLE conference featuring the hottest topics in #fashionlaw covered by expert speakers. Topics covered include #intellectualproperty #trademarks #copyrights #designpatents #tariffs #china #imports #exports #immigration #trumpadministration #wearabletech #fashiontech #retail #licensing #realestate and #classactions.
Our keynote speaker is Gary Sheinbaum, CEO, Tommy Hilfiger. Panelists include Filip Bajovic, CEO, Cacotec; Prof. Christopher J. Buccafusco, Cardozo Law School; Zhiwei Chen, Bryan Cave, PRC Consultant; Deanna Clark Esposito, Clark-Esposito Law Firm PC; Prof. Jeanne Curtis, Cardozo School of Law; Dyan Finguerra duCharme, Partner, Pryor Cashman; Frances Hadfield, Counsel, Crowell & Moring; Marilee Holmes, Vice President of Operations and General Counsel, Wilhelmina Models; Laurine Janin-Reynaud, SCP Duclos, Thorne, Mollet-Viéville & Associés; Bert Kaminski, Chief Commercial Counsel, GE Digital; Lorenzo Marcelli-Flori, Assistant General Counsel North America Real Estate and Business Services, Luxottica; Olivera Medenica, Partner, Dunnington Bartholow & Miller LLP; Rita Odin, Vice President and Senior Trademark Counsel, The Estee Lauder Companies, Inc.; Lèna Saltos, Associate General Counsel, Global Director of IP, URBN Urban Outfitters, Inc.; David Stepp, Partner, Crowell & Moring; Nicola Tegoni, Partner, Dunnington Bartholow & Miller LLP; Hon. Mimi Tsankov; Maria Vathis, Counsel, Bryan Cave, and FBA President; Stacy Yeung, Senior Counsel, Consumer Health Division, Bayer.
Registered attendees will receive an invitation to a private cocktail reception to be held at Kate Spade New York's flagship townhouse on Madison avenue. To register, click here.
Great panel yesterday at NYCLA Continuing Legal Education Institute on Ethics and Social Responsibility in the Fashion Industry. If you missed it, it will be available on demand at NYCLA. Great discussion about #FashionLaw, #sustainability, #socialresponsibility, #socialaccountability, #ethics, #ethicalsourcing. Huge thank you to the speakers Vanessa Barboni, Alice Tepper Marlin, Lewis Tesser, Deanna Clark-Esposito, Esq. and Bari Chase, along with her staff. It was a much needed discussion on an important topic.
U.S. Supreme Court to Rule on Rights of Trademark Licensees Upon Rejection of a Trademark License Under Section 365 of the Bankruptcy Code
On October 26, 2018, the U.S. Supreme Court granted a petition for certiorari in the case Mission Product Holdings Inc. v. Tempnology, LLC to decide whether a licensee may retain licensed trademark rights even after its license agreement has been rejected by the licensor pursuant to section 365 of the Bankruptcy Code, 35 U.S.C. 365(a). The Court’s decision will resolve a split among the circuit courts as to whether rejection of a trademark license under section 365 of the Bankruptcy Code terminates the licensee’s rights in the subject trademark, or should merely be viewed as a breach by the debtor-licensor, entitling the licensee to continued trademark rights. The Petitioner, Mission Product Holdings, Inc., argued to the First Circuit Court of Appeals below that section 365(n) provides an exception to section 365(a)’s broad rejection authority by limiting the debtor’s ability to terminate intellectual property licenses it has granted to other parties; however, the appellate court rejected that argument, holding that Section 365(n) applies only to specifically enumerated intellectual property rights and excludes trademarks, which are not included within the definition of intellectual property rights in the bankruptcy code.
Federal Circuit Overturns ITC’s Ruling in Chuck Taylor Trademark Dispute
On October 30, 2018, the Federal Circuit overturned a 2016 decision by the International Trade Commission (“ITC”) that invalidated Converse, Inc.’s 2013 registration covering the design of its Chuck Taylor sneaker and declared that Converse lacked common law rights to the design for the period before the registration was issued. The decision, which revives Converse’s longstanding trademark suit accusing Sketchers USA Inc., New Balance Athletics, Inc. and others of knocking off the sneaker design, holds that the ITC “applied the wrong legal standard” and improperly analyzed whether aspects of the shoe’s design, known as its trade dress, had acquired secondary meaning for consumers. However, the appeals court also determined that Converse’s registration, even if valid, would not entitle Converse to a presumption of secondary meaning. As a result, the lawsuit will be heading back to the ITC for a ruling, and Converse will have another shot at proving that the Chuck Taylor’s design acquired secondary meaning before Sketchers and New Balance began selling similar shoes.
Click here to be redirected to the related article on Law360.
Girl Scouts File Trademark Infringement Lawsuit Against Boy Scouts
On November 6, 2018, the Girl Scouts of the United States of America filed a trademark infringement lawsuit against the Boy Scouts of America in the Southern District of New York. This suit was prompted by the Boys Scouts’ announcement on October 11, 2017 that they will drop the word “boy” from “boy scouts” and start admitting girls into their program. In their complaint, the Girl Scouts allege that “only GSUSA has the right to use the Girl Scouts and Scouts trademarks with leadership development services for girls,” and that the move by the Boy Scouts will “erode its core brand identity.” The Girl Scouts seek monetary damages and a permanent injunction against the Boy Scouts for the alleged infringement and also seek a court order to block the Boys Scouts from using the words “Scout,” “Scouts,” “Scouting,” or “Scouts BSA” without having a distinguishing word appear immediately before it. While the Boy Scout’s decision to include girls in their program may come as surprise, the organization points out that it has had co-ed participation since 1971 through their Exploring and Venturing programs.
Girl Scouts of the United States of America v. Boy Scouts of America, U.S. District Court, Southern District of New York, No. 18-10287
Nintendo Wins $12 Million From Trademark And Copyright Infringement Lawsuit
Nintendo recently settled its trademark and copyright infringement lawsuit against the operators of two websites offering pirated copies of read-only memory (ROM) files collected from Nintendo cartridges without authorization in exchange for a permanent injunction and consent judgment in excess of $12 million. In the lawsuit, which was filed in an Arizona district court, Nintendo alleged that defendants regularly reproduced, distributed, publicly performed and displayed unauthorized copies of Nintendo’s video games (including its proprietary software, registered trademarks and logos, copyrighted music works and audio recordings) in violation of federal trademark and copyright laws, and sought injunctive relief, as well as an accounting of defendants’ profits and damages.
According to torrentfreak.com, the settlement was reached after defendants voluntarily shut both websites down in July 2018 and admitted to direct and indirect copyright and trademark infringement. An article discussing the settlement is also available on Nintendo’s website here.
RIAA Requests 9th Circ. To Undo 'Stairway' Ruling
The Recording Industry Association of America requested that the Ninth Circuit undo its ruling on the “Stairway to Heaven” holding. This past September, the Ninth Circuit vacated a lower court’s copyright holding that Led Zeppelin’s “Stairway to Heaven” did not infringe a 1967 instrumental ballad called "Taurus" by the band Spirit. The RIAA argues that the ruling threatens to “badly overprotect” copyrights.
Plaintiff Michael Skidmore, as trustee of the Randy Craig Wolfe Trust (Wolfe was a member of the band Spirit), initially filed a complaint in the District Court for the Central District of California against Led Zeppelin alleging that the iconic song “Stairway to Heaven” infringed Plaintiff’s copyright in “Taurus,” a song written by Wolfe. After trial, the jury returned a verdict in favor of Led Zeppelin, finding no infringement. On appeal, Skidmore argued that the district court committed reversible error by, among other things, not instructing the jury that the selection and arrangement of unprotectable musical elements may be protectable when arranged in a creative way, and by precluding the jury from hearing sound recordings of “Taurus” as played by Spirit. The Ninth Circuit agreed with appellant, vacated the lower court’s decision and ordered a new trial.
The Ninth Circuit ruling can be found here.
USPTO Proposes a Rule Requiring Foreign Trademark Applicants to Use U.S. Licensed Attorneys to File Applications
The U.S. Patent and Trademark Office is working on a rule that will require foreign trademark applicants to engage a U.S. attorney to file trademark documents with their office. According to the USPTO, this new requirement will ensure foreign applicants’ compliance with trademark regulatory requirements, will increase confidence that their registrations are not invalidated for improper signatures and use claims reasons, and will help the USPTO improve accuracy of the U.S. Trademark Register. A public comment period of proposed rulemaking will start in November and end in February 2019, and the rule will become effective in July 2019.
Thank you to the Lawline team for making me feel welcome while shooting the #wearabletech presentation. Check it out at lawline.com and get your CLEs on a fun topic. Thank you to the incredible Valerie Oyakhilome for helping me prepare.
Honored to have spoken at the Rutgers Business School Center for Business of Fashion Conference on November 2, 2018 along with Dr. Tavy Ronen, Prof. Barbara Kolsun and Anthony Lupo #fashionlaw and #fashionbusiness #conference #nyc #midtown
Owner of The Wizard of Oz TMs Opposes Pagan Elder’s Application for Wicked Witch TM
Turner Entertainment Co. (subsidiary of Warner Bros.) filed a petition against Wicked Witch Studios’, application for WICKED WITCH MOJO used in connection with its magical line of “candles, aromatic essential oils, incense, and scented room sprays” which are available in in metaphysical shops nationwide. In its opposition, Turner claims that it owns a family of famous marks containing the words “Wicked Witch,” which are registered for a variety of goods. It claims that Wicked Witch Studios is attempting to mislead customers into believing that the mark is licensed and to dilute its famous marks.
Balenciaga Claims Parody Pet Clothing TM “Pawlenciaga” Will Cause Confusion
On September 24, Paris-based luxury fashion house Balenciaga opposed a trademark application filed for PAWLENCIAGA used in connection with “clothing for pets, namely, hoodies, tee shirts, polo style shirts, button down shirts, jackets, vests, and scarves.” Balenciaga states in its opposition that, if registered, the mark will confuse customers into associating the “parody streetwear” for pets with its famous marks for high-end apparel. Considering the fact the TTAB has said that it will not follow the precedent of the Fourth Circuit’s Louis Vuitton v. Haute Diggity Dog case which allows for statutory fair use, the parody defense before the Board may be a bit far-fetched.
Owners of Iconic Little Trees Air Fresheners Sue Balenciaga for TM Infringement
On October 19, owners of the 66-year-old LITTLE TREES Air Fresheners, filed a complaint in New York federal court against Balenciaga alleging that the company is manufacturing and selling $275 leather key chains that are deliberately designed to replicate their classic tree design. According to the complaint, Balenciaga’s website states that its luxury key chains are “inspired by the tree air fresheners for cars.” The owners say that not only are the key chains the same dimensions as their five registered designs, but they are even offered in the four colors associated with the most popular scents of LITTLE TREES Air Fresheners. This case is pending in the U.S. District Court for the Southern District of New York.
Female-Founded Law Firms Argue Over “Ever Argue(d) With a Woman?” Slogan
A Florida law firm that uses the slogan “Ever Argued With a Woman?” sued a Texas law firm on October 9 in Texas federal court, for trademark infringement for using the slightly different slogan “Ever Argue With A Woman?” in connection with legal services. The Plaintiff first discovered the alleged infringement after the Defendant began using the slogan on billboards and Plaintiff began to receive inquiries from “confused members of the public” asking if her firm was related to Defendant’s. This case is pending in the U.S. District Court for the Western District of Texas.
Vogue Magazine Sues Owner of “Black Vogue” for TM Infringement in SDNY
On September 28, Advance Publications, the parent company of Vogue and Condé Nast, filed a complaint in the U.S. District Court for the Southern District of New York against a 26-year old designer and activist Nareasha Willis for infringing on its famous 125-year-old trademark. It claims that Willis’ use of the mark BLACK VOGUE on apparel “mirrors the well-known font and stylization of (its) long registered Vogue trademark,” and is likely to cause confusion and dilution of its mark. Although the USPTO issued Willis an Office action on May 23 refusing to register the mark because of a likelihood of confusion with Vogue’s registered trademarks, Willis continued to use the mark. Willis must answer the complaint by October 25.
UPDATE: MoMA Forces Cafe MoMaCha to Change Its Name
On September 28, Judge Louis L. Stanton of the U.S. District Court for the Southern District of New York granted The Museum of Modern Art’s motion for a preliminary injunction and ordered café and art gallery MoMaCha to stop “using, displaying or promoting the MOMA or MOMACHA marks, and the https://momacha.com/ domain name.” In April, MoMA sued the café claiming that it willfully infringed on the museum’s registered trademark MOMA. MoMaCha claimed that it created its name by combining “more” and “matcha.” For now, the café has changed its name to MAMACHA.
Click here to be redirected to the related article on The New York Times website.
SDNY Denies Beyoncé’s Motion for Summary Judgment in Feyoncé TM Infringement Case
On September 20, Judge Alison J. Nathan denied pop star Beyoncé Giselle Knowles-Carter’s motion for summary judgement against Feyonce, Inc., a company that uses the mark FEYONCÉ on products marketed to people that are engaged to be married (i.e. fiancés). In November 2015, the defendant attempted to register the mark for apparel, and the USPTO denied the registration because of a likelihood of confusion with “Beyoncé.” Although the court believed that Feyonce used the mark to capitalize on Beyoncé’s famous brand, it ruled that a genuine dispute of material fact still remains as to whether “a rational jury might…conclude that the pun…is sufficient to dispel any confusion among the purchasing public.”
Click here to be redirected to the related article on the Reuters website.