September Trademark Bulletin


“Good Hair Day!” by  Enokson  is licensed under  CC by 2.0  - no changes made.

“Good Hair Day!” by Enokson is licensed under CC by 2.0 - no changes made.

Dunnington Litigation Team Wins Complete Dismissal in SDNY Against Notorious TM Troll

On September 10, Judge Laura Taylor Swain dismissed trademark infringement claims brought by Michael Gleissner, one of the world’s most infamous trademark trolls, against a Hong Kong-based satellite operator in the U.S. District Court for the Southern District of New York. Gleissner alleged that the satellite company engaged in contributory and vicarious trademark infringement for the marks FASHIONTV and FASHION TELEVISION by disseminating an allegedly infringing television channel, “Fashion TV,” through its satellite. Dunnington’s motion to dismiss filed by Raymond J. Dowd, Samuel A. Blaustein, and Hardin P. Rowley on behalf of the satellite operator, was granted for lack of personal jurisdiction.

“LOL”: Procter & Gamble Files TM Applicationsfor Popular Textspeak Acronyms

Multi-national consumer goods corporation, The Procter & Gamble Company, has filed intent to use trademark applications for LOL, WTF, NBD, and FML for laundry detergents, liquid soap, cleaning products, and air fresheners. On July 26, the USPTO issued an Office action requesting more information about the significance of the LOL mark – specifically whether “LOL” refers to the words “laugh out loud.” P&G must respond to the Office action by late January 2019.

Hershey Creamery Claims Insurance Policy Covers Claims Based on Use of Advertising Slogans

On September 14, Hershey Creamery Co. filed a motion for summary judgment against its insurers, two Liberty Mutual companies, to defend and indemnify it in a 2014 action pending in Delaware federal court. Hershey claims that its general liability and umbrella policies cover the claims brought against it by competitor ice-cream maker F’Real Foods LLC asserting that Hershey ripped off several of F’Real’s advertising ideas, including its registered slogan “REAL MILKSHAKES ARE REAL BETTER.” The insurance policies exclude coverage for trademark infringement, except claims involving advertisements and slogans. The case is pending in the U.S. District Court for the Middle District of Pennsylvania.

Federal District Judge Rules “Ugg” is Not Generic Trademark

According to an Illinois federal judge’s ruling on September 13, Deckers Outdoor Corp., the U.S. owner of the popular Uggs brand, may sue its competitor Australian Leather Pty Ltd. for marketing its boots as “ugg boots.” The Australian company defended its use by arguing that the word “ugg” had become generic decades ago when American surfers used it to describe ugg-style sheepskin boots. In the opinion, Judge Manish S. Shah wrote that “generic usage in Australia (of the word “ugg”) is not enough on its own to infer generic meaning in the United States.”

Jacques Cousteau’s Granddaughter Sued for Using His Name and Signature Red Cap

On September 14, The Cousteau Society filed a complaint against Celine Cousteau, the granddaughter of the late world-famous oceanic explorer Jacques Cousteau, for her unauthorized use of his name, image, and iconic red cap to promote her television program, “Celine Cousteau, The Adventure Continues,” in which she revisits places her grandfather explored during his lifetime. According to the complaint, the Society, run by Cousteau’s second wife, owns Cousteau’s worldwide IP portfolio including his registered and unregistered trademarks, rights of publicity, and copyright interests. The complaint alleges trademark infringement, false association, false designation of origin, and unfair competition, and seeks a declaratory judgment that Ms. Cousteau infringed on and violated the Society’s rights. It also seeks an injunction preventing Ms. Cousteau from using his name, image, and iconic red cap, and damages. The case is pending in the U.S. District Court for the Southern District of New York.

Federal Circuit Affirms TTAB’s Decision that Sports Gear Store and Social Club Are Similar

On September 10, the Federal Circuit affirmed a TTAB decision that Detroit Athletic Co., a small sports gear retailer, could not register its name for trademark protection for sports team-related apparel because it would likely be confused with the mark DETROIT ATHLETIC CLUB registered for clothing goods. Since 1887, the Detroit Athletic Club has been operating in downtown Detroit as a private social and athletic club. Detroit Athletic Co. argued that the TTAB erred in balancing the relevant DuPont factors to determine that there would be a likelihood of confusion. According to Detroit Athletic Co., the Board “failed to consider the marks in their entireties and instead emphasized the similarity between the marks’ first two words while downplaying the differences between their terminal words.” The Federal Circuit disagreed finding that the Board did assess the marks in their entireties, and that while the words “Co.” and “Club” do differentiate the marks, the addition of those words would likely do little to prevent consumer confusion.

Former Jacksonville NFL Player Files Opposition to Team’s TM Application for “#Sacksonville”

On May 4, Yeti, LLC, the company owned by former Jacksonville Jaguar football player, Dan Skuta, filed an opposition to the team’s trademark application for the mark “#Sacksonville.” The opposition claims that Skuta created the Sacksonville name in 2015 in reference to the team’s strong defense that often tackled or “sacked” the opposing quarterback. The opposition further claims that Skuta developed exposure for the mark on social media and commercially exploited the mark in connection with selling Sacksonville branded merchandise from his website www.sacksonville.org. The Jacksonville Jaguars’ answer is due on October 12.




Dunnington Trademark Bulletin

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

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

 

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

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

 

Top Ten Trademark Tips for Restaurant Owners to Protect the Brand

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

 

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

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

 

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

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

Read more here.

 

Court Revives TM Infringement Case Involving Viral Video of Honey Badger

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

Read more here.

 

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

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

 

TTAB Decides Beer and Fruit Juice Not Closely Related as Trademarks

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

 

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

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

rite here…

Trademark Report - This Week in Trademark News

Monster Energy drinks filed a complaint against a Virginia distillery over use of an "M" logo which it claims is too similar to Monster's "M".  Read here.

A startup that was sued by hospitality giant Hard Rock Cafe argues that Hard Rock should repay defendant's legal fees where plaintiff moved to voluntarily dismiss the lawsuit after losing on a preliminary injunction.  Hard Rock Cafe v. RockStar Hotels, Inc. (0:17-cv-62013, S.D. Florida).  Read here.

Levi Strauss & Co. cease and desist letter to J. Barbour & Son resulted in declaratory judgment action filed in S.D.N.Y.; Levi moved to dismiss based upon counter lawsuit subsequently filed in N.D. Cal.  Barbour Inc. et al v. Levi Strauss & Co. (1:18-cv-05195, S.D.N.Y.).  Read here

Nearly $50 million in fashion industry counterfeit goods seized in Texas.  Read here.

Roger Federer in TM dispute over "RF" logo.  Read here.

Trademark Report - This Week in Trademark News

Diesel's parent company OTB group prevails against Zara's parent company in counterfeit case brought in Milan, Italy.  More here.

EU politicians reject controversial "link tax" which could have made internet content aggregators pay publishers for sharing links, and platforms liable for users' copyright infringements.  More here.

Licensor objects in Delaware bankruptcy court to licensee's transfer of a licensing agreement to third party.  More here

TTAB refuses Wendy Williams trademark to register her namesake clothing line due to prior registered "Wendy O. Williams" by the so-called Queen of Shock Rock and lead singer of the 1980s punk rock band Plasmatics (for t-shirts).  More here.

L'Institut National de l'Origine et de la Qualité  filed a notice of opposition at the TTAB this week to block a Los Angeles company called TeaStream LLC from registering "Champagne's Sober Cousin" for tea.  More here.

CLE: Trademark Prosecution before the USPTO for the Non-IP Practitioner

I recently gave a lecture on the topic of trademark prosecution before the USPTO for non-IP practitioner.  The presentation is geared towards attorneys who do not practice before the USPTO.  The idea is to educate as to the process, and issue spot trademarks that might be problematic even before conducting a search, or making a filing.  I would not recommend a non-IP practitioner to handle a trademark filing, but would recommend that they be educated about the process.  This can help their clients understand the process prior to retaining IP counsel.  You can access the slides here.

Why include a picture of Play-doh, you ask?  Because it recently trademarked the "scent of a sweet, slightly musky, vanilla fragrance, with slight overtones of cherry, combined with the smell of a salted, wheat-based dough" (a scent? trademarked? why, yes, it's possible).  And if you have kids, you know what I am talking about - you either love it or hate it.

 

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Save the Date! Fashion Law in Paris on October 24th at La Sorbonne!

Grab your suitcase, pack your best outfits, and get those red heels (or loafers) on:  it's time to head to Paris to get your dose of Fashion Law.  This year we have the privilege of being hosted by La Sorbonne.  We have amazing speakers lined up, and will cover a wide range of topics, from fashion tech, to labor laws, #MeToo, piracy, and trademark infringement.  The conference is held in English, 3 CLE.  Registration to open soon here.  

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Dunnington Launches Fashion Law Practice with . . . Me!

As of April 9th, I joined Dunnington Bartholow & Miller LLP as a partner, and launched their Fashion Law practice.  So thankful to all my colleagues, friends and family who came out to support me at the cocktail party celebrating me joining the firm, along with two associates Betsy Dale and Lily Belhadia.  Thrilled to be here, and looking forward to developing my trademark practice for the many years to come. 

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