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).