SDNY Denies Plaintiff Romance Author’s Request for Injunctive Relief Against Competing Use of TM “COCKY”
On July 5, Judge Alvin Hellerstein issued an order stating that a plaintiff romance author who owns a trademark in the word “cocky” for “a series of books in the field of romance” failed to show irreparable harm and likelihood of confusion if the defendant authors were to proceed with using the word “cocky” in connection with their romance novels. In their opposition to the motion, the defendants argued that the plaintiff could not monopolize “cocky” in connection with romance novels because the word is widely-used in romance novels and it is artistically relevant to the content of romance novels. The case is currently pending in the SDNY.
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USPTO Still Considering Whether to Ask U.S. Supreme Court to Re-Ban “Scandalous” Trademarks
On May 24, 2018, the USPTO released Examination Guide 2-18, which states that trademark applications that are refused under 2(a) of the Lanham Act because they contain “scandalous or immoral” matter will be suspended until the final resolution of In re Brunetti, which was decided in December 2017. In Brunetti, the applicant attempted to register the word “FUCT” in connection with clothing. The U.S. Court of Appeals for the Federal Circuit ruled that refusing to register marks for this reason violates the First Amendment because it impermissibly restricts free speech. After being granted an extension to file a petition for a writ of certiorari, the USPTO has until August 10 to request that the U.S. Supreme Court weigh in on the matter.
MoMA Sues NoHo Café and Gallery MOMACHA for Trademark Infringement
In April, The Museum of Modern Art filed a complaint alleging that MOMACHA, a new trendy matcha tea and gallery space, is willfully infringing on its registered trademark “MOMA” and diluting its famous brand. MoMA brought the action after MOMACHA refused to comply with MoMA’s cease and desist letter and abandon its trademark applications for MOMA and MOMACHA. MOMACHA claims that it created its name by combining “more” and “matcha.” MoMA says that the marks share the same visual elements – both using black and white block letters. MoMA filed a motion for injunctive relief against MOMACHA, and MOMACHA filed a motion to dismiss the dilution claim. Rulings on these motions are currently pending in the SDNY.
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TTAB Sustains Gucci’s Oppositions Against Great-Grandson’s TM Application for UBERTO GUCCI
In 2014, a descendant of Guccio Gucci filed two intent-to-use trademark applications for logos using the words “UBERTO GUCCI” in connection with electronic cigarettes. Gucci America, Inc. opposed the registrations. On July 13, the TTAB ruled that there would be a likelihood of confusion with the “exceedingly famous” Gucci brand even though Gucci does not offer electronic cigarettes under its mark. In the opinion, Judge Michael B. Adlin stated that “it would not be a stretch” for consumers to believe that Gucci offers e-cigarettes under the GUCCI mark because it offers an “atypically wide range of products and services.”
Trade Dress Infringement Battle Over Welch’s Fruit Snacks and Sunkist Gummies
On July 16, Promotion In Motion Inc., the company that makes Welch’s fruit snacks, sued Kervan USA LLC, a competitor candy maker that produces Sunkist’s fruit gummies. The complaint alleges that the packaging for the Sunkist gummies “imitate(s) the distinctive trade dress features” of the Welch’s packaging and that packaging designs “are carefully calculated to siphon off the good will” of the Welch’s brand. The case is currently pending in the U.S. District Court for the District of New Jersey.
Hard Rock Café Required Repay Legal Bills of RockStar Hotels to Drop Failed Trademark Lawsuit
In June 2018, a judge in Florida ruled that Hard Rock Café Inc. was unlikely to win a trademark infringement lawsuit against RockStar, a line of luxury hotels, and refused to provide injunctive relief. In an order on Hard Rock’s motion to voluntarily dismiss without prejudice, Judge Beth Bloom stated that “this lawsuit has forced defendant to expend considerable resources” and that it would be “appropriate to condition plaintiffs’ voluntary dismissal without prejudice on its payment of defendant’s litigation-related expenses.” On July 19, Hard Rock subsequently filed a second motion to voluntarily dismiss, this time with prejudice, arguing that there should be no award of attorneys’ fees and costs because discovery had revealed new information about the nature of RockStar’s services. The case is pending in the U.S. District Court for the Southern District of Florida.
Dunnington Partners to Present on Trademark Licensing at Federal Bar Association Annual Meeting and Convention on September 14, 2018
Dunnington partners Olivera Medenica and Donna Frosco will present on a trademark licensing panel along with Rita M. Odin, VP and Senior Trademark Counsel at Estee Lauder Companies, Inc., and Viviana Mura, Head of Global Trademark Practice at Luxottica Group. The panel will be moderated by incoming Federal Bar Association President Maria Z. Vathis, of Bryan Cave Leighton Paisner LLP. Register for the convention here.