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I’ve always been fascinated by brands, logos, slogans, and other creative works. I remember in my first year of middle school, asking my parents for the Adidas “three stripe” shoes to match my friends at school. And I vividly recall various McDonald’s commercials and billboards, with the golden arches and the ubiquitous slogans, such as “We Love to See You Smile” (which, in my teenage years, changed to the allegedly hipper slogan “i’m lovin’ it”). And other endless logos and characters would intrigue me at the grocery store. I remember wondering why the little ® and © symbols were there, and what they meant—and eventually, this all led to an interest in trademarks and copyright law.

I was also drawn to intellectual property law based on my interests in technology, computers, and robotics. In my high school years, a small group of friends started a robotics team and asked me to join. We built a makeshift robot (primarily from plywood and pool noodles) and somehow ended up winning a regional competition. The following year (with a significantly more sophisticated robot), we advanced to the national championship.

My interest in practicing intellectual property law also grew through my law school courses and research work with my intellectual property professor, Ruth Okediji. In particular, one of my courses allowed me to embark on a week of extracurricular traveling to conduct pro bono work for a non-profit organization, including a visit to Tetiaroa in French Polynesia (a two-square-mile atoll, about three hours by boat from Tahiti). I worked diligently on some trademark matters, while sitting by the beach, sipping on fresh coconut water. Needless to say, that beach-side adventure set a high bar for the real-world practice of intellectual property law—but thus far I have not been disappointed.

Outside of work, I enjoy spending time with my wife and family, trying out new restaurants in the Twin Cities area (especially Italian and Latin American), playing tennis, and catching up on my favorite TV shows (current favorite: Stranger Things) or watching movies—especially spy thrillers, mind-benders, or futuristic sci-fi (all-time favorite: Inception).

 

Earlier this year I posted about a trademark dispute regarding the use of the term “Square Donuts” for square-shaped donuts. The case involved proceedings both in federal court and at the Trademark Trial and Appeal Board (TTAB), between the Square Donuts cafe in Indiana (which claimed decades of prior use and a trademark registration); and the Family Express convenience-store chain (which sold square-shaped donuts called “square donuts,” claiming the term is generic). As we discussed, the case raised the interesting question of whether the term Square Donuts is generic for cafe services that feature square-shaped donuts (which still look delicious by the way, see below).

Perhaps fortunately for the parties involved, but unfortunately for our curious readers, it appears there will never be a decision answering this question, as the case is headed to a settlement and dismissal. A docket entry on August 30, 2018 in the federal court proceeding states “Settlement Reached,” following a settlement conference between the parties.

However, the case has not yet been dismissed, as the parties have not yet finalized the settlement and dismissal documents. After the court recently granted a joint motion for extension of time, the deadline to file dismissal papers is by the end of this month. In the meantime, there do not appear to be any public updates or press releases yet, regarding the nature of the settlement, on the parties’ respective websites (here and here). However, I do note that the Family Express sub page, “Our Brands,” no longer features “Square Donuts” as one of their “our proprietary brands,” as it did at the time of my previous post in May.

Therefore, just a guess, but perhaps the parties have reached a licensing agreement, in which Square Donuts will maintain its registration and claim to trademark rights, and Family Express will have a license to continue using the Square Donuts name for its donuts. Alternatively, perhaps Family Express has agreed to entirely give up calling its donuts “Square Donuts.” Based on the deadline for dismissal at the end of this month, I’m sure there will be more significant news soon, regarding the nature of the settlement and any changes to the parties’ branding and websites. What do you think will happen — any predictions? Stay tuned for updates.

Trademark owners should beware of a scam involving the Amazon Brand Registry. There have been several reports of rogue users exploiting the Amazon Brand Registry through the unauthorized modification of trademark registration records at the U.S. Patent and Trademark Office (USPTO). These scammers are submitting fraudulent requests to change the email addresses for trademark registrants, and thereafter, updating the brand ownership records with the Amazon Brand Registry.

Continue Reading Watch Out: Unauthorized Changes in USPTO and Amazon Brand Records

There’s been a major update in the trademark infringement lawsuit brought by the Museum of Modern Art (“MoMA”) against the cafe and art gallery, MoMaCha in New York City.

MoMA’s motion for a preliminary injunction was recently granted by Judge Louis Stanton of the Southern District of New York. As we discussed previously, the infringement allegations by MoMA were compelling, and it appears the court agrees that MoMA is likely to succeed on its claims, based primarily on the similarity of the marks and the relatedness of the parties’ goods/services in the same city (both parties display works of art along with offering cafe services). The court was particularly persuaded by the similarity of the vertical use of “MoMaCha,” as seen on the coffee cup above, with MoMA’s similar vertical use on the museum building signage above. (See Order at p. 18.)

The court’s preliminary injunction bars MoMaCha from continuing to use its name, logo, and the momacha.com domain name, at least while the legal proceedings are pending. As of today, the previous website, www.momacha.com is no longer accessible.

Instead, it appears that MoMaCha has already rebranded to a slightly different name, by changing one letter: MaMaCha, with a new website already available here: www.mamacha.nyc

Unfortunately, that probably won’t be sufficient to satisfy MoMA’s trademark infringement concerns. Indeed, the New York Times reported that MoMA has already sent a letter to “MaMaCha” regarding the new name and demanding that they cease use. The demand letter closes by stating:

Changing the ‘O’ in MOMACHA to an ‘A’ merely indicates your clients’ continued contempt for MoMA’s trademark rights. Your clients’ decision to change to a mark of such an infringing nature will be done at their peril.

As discussed in my last post, in the midst of trademark infringement allegations, extra caution is warranted. Just as one should be cautious with business expansion under an alleged infringing mark to mitigate damages, extra care is also warranted in selecting a new or modified mark (whether voluntarily or by court order) to avoid similar or further infringement claims, as there will be extra scrutiny and potentially over-aggressive enforcement by the opponent in the present dispute.

And as a practical matter, if one has to expend the effort and resources to re-brand, it may be more cost-effective to make a more significant, lower-risk change, rather than pushing boundaries with a minor change that may again be challenged, instigating further litigation expense, and requiring another re-brand. In many cases, simply changing one letter may not sufficient. Based on these developments thus far, I’m sure there will be interesting updates to come, so stay tuned.

M. Shanken Communications, publisher of Wine Spectator — a popular magazine, website and mobile application that offers wine ratings on a 100-point scale — has filed a lawsuit against California-based Modern Wellness, Inc., based on that company’s use of “Weed Spectator” for ratings of cannabis. The federal complaint, filed in New York, alleges claims including trademark infringement, unfair competition, and dilution. The case is M. Shanken Communications, Inc. v. Modern Wellness, Inc. et al., Case No. 18-cv-08050 (S.D.N.Y.).

M. Shanken alleges that the website and social media pages offered by Modern Wellness use the terms “Weed Spectator” and “WS” for cannabis rating publications, which are confusingly similar to M. Shanken’s use of “Wine Spectator” and “WS” marks for its wine rating publications. For example, Modern Wellness also offers a similar 100-point rating scale for cannabis, and the parties’ marks allegedly contain similar font and style. Furthermore, M. Shanken cites to several Modern Wellness pages that associate cannabis with wine.

M. Shanken’s claims will require establishing a likelihood of confusion (except for the dilution claims) based on the Second Circuit’s eight Polaroid factors. Among those factors, two of the most significant are the similarity of the marks and the relatedness (or “competitive proximity”) of the parties’ services. Although there are some similarities of the marks, M. Shanken may have some difficulty establishing likelihood of confusion based on a lack of relatedness between cannabis rating and wine rating.

However, M. Shanken also brought a dilution claim, which does not require a showing that the services are related or competitively proximate. Therefore, M. Shanken may prevail on that claim, if it can prove the use of “Weed Spectator” is likely to cause dilution by blurring or tarnishment. M. Shanken alleged that its marks are tarnished by Weed Spectator because of the association with an illegal drug (under federal law and most states). Nevertheless, the federal dilution claim also requires a showing that M. Shanken’s marks are “famous,” which is a high bar to establish.

What do you think? Would you be confused as to the source of the Weed Spectator mark, or believe there was some affiliation or connection between the parties? Even if not, do you think that M. Shanken’s marks are tarnished or blurred by Weed Spectator? Stay tuned for updates.

Procter & Gamble (P&G) has filed federal trademark applications to register several well-known (at least among millennials) acronyms used in text messages, including LOL (laughing out load); NBD (no big deal); WTF (what the f***); and FML (f*** my life). The applications identify cleaning products, including liquid soap, dish detergents, surface cleaners, and air fresheners. P&G’s products include brands such as Febreze air freshener, Dawn dish detergent, and Mr. Clean surface cleaner, so perhaps the applied-for marks would be used in association with those existing products. But that’s just a guess, as the applications were filed with an intent-to-use basis, meaning no specimens of use are provided yet.

Earlier this month, the USPTO issued initial Office Action refusals for all four applications, primarily involving minor clarification issues related to the identifications of the cleaning products. However, one of the applications, for FML, received a likelihood-of-confusion refusal, citing previous “FML” registrations, so we’ll see how that pans out. Additionally, two of the applications, LOL and NBD, received requests for information regarding the meaning of the acronyms. (Perhaps the Examining Attorney is not a text-savvy millennial?) Otherwise, it appears that the majority of these four applications will probably be approved for publication eventually, pending resolution of the clarifications and requests for information.

Nevertheless, even if the marks register, the decision to seek registration for these ubiquitous acronyms might seem questionable from a branding perspective, for a couple reasons. First, these acronyms are so commonly used in a variety of contexts, and have such a well-known informational meaning, that it may be difficult for the marks to become strongly recognized by consumers as distinctive source indicators, pointing to P&G and their cleaning products. Second, it is difficult to discern any logical or beneficial association between the well-known meaning of the acronyms and cleaning products. In particular, two of the acronyms have a relatively negative or vulgar meaning (WTF and FML), so it is questionable why the company would want such meanings associated with their products. Perhaps some tenuous play on the acronyms being “dirty” words that would be cleaned up by P&G’s products? Then again, I’m more a legal than marketing type, so perhaps there is a more creative strategy that I’m not thinking of — and again, it’s hard to guess how the marks will be used at the intent-to-use stage.

What do you think about P&G’s decisions to file these trademark applications for their cleaning products, from either a trademark or branding perspective?

Earlier this year, the Museum of Modern Art in New York City, known as “MoMA,” sued a cafe and art gallery, MoMaCha, also located in New York City, asserting claims of trademark infringement, trademark dilution, and unfair competition. As discussed in my post a couple months ago, although MoMaCha has some well-founded arguments and defenses, the allegations of the complaint are compelling, based on the similarity of the marks and the relatedness of the parties’ goods/services that are offered in the same city. MoMA’s motion for a preliminary injunction, filed in the Southern District of New York, is still pending. The case is The Museum of Modern Art v. MoMaCha IP LLC et al., No. 18-cv-03364-LLS (S.D.N.Y.)

Despite the threat of MoMA’s claims and motion for preliminary injunction, MoMaCha has announced plans to expand to three additional locations in New York City. This type of significant expansion — growing from one to four locations — is a bold move in light of MoMA’s claims, even if MoMaCha is feeling confident in the merits of its arguments and defenses. In particular, damages for trademark infringement under 15 U.S.C. 1117(a) can consist of all the defendant’s profits from its sales of goods/services under the infringing mark, which can add up quickly. Adding three more locations could mean a quadrupling of such potential damages, depending on their profit streams. Furthermore, damages can be tripled under Section 1117(a) based on the circumstances of the case. Therefore, a pending infringement claim can warrant a conservative approach to a defendant’s business expansion — or even limiting the use of the claimed infringing mark — until the dispute is resolved, to mitigate the risk of damages.

Nevertheless, it is possible that MoMaCha might be following this conservative approach. Despite their announcement several months ago to expand to three locations, and coverage of that expansion in the media including articles linked above, after a quick Google search I’m not seeing that any new locations have actually opened, but any New Yorkers out there, let me know if you’ve seen more MoMaCha’s opening up. Stay tuned for updates.

Another update on my long-running series of posts following the NHL’s newest hockey team, the Las Vegas Golden Knights, and their embattled trademark applications for VEGAS GOLDEN KNIGHTS that were filed nearly two years ago.

Most recently I posted about a challenge to the trademark applications by the U.S. Army, who opposed registration of the VEGAS GOLDEN KNIGHTS marks in connection with professional ice hockey exhibitions. The Army alleged likelihood of confusion, among other claims, based primarily on the Army’s prior use of a GOLDEN KNIGHTS mark in connection with the Army’s parachute demonstration team.

The hockey team announced last week that they had settled the dispute by executing a co-existence agreement, in which the Army agreed to withdraw the opposition proceeding and allow the hockey team to register the VEGAS GOLDEN KNIGHTS marks, while the hockey team agreed the Army would continue using the Golden Knights name for its parachute team.

This type of settlement involving a co-existence agreement is quite common in opposition proceedings. It is also not surprising for a couple other reasons. As discussed in my last post, the Army would have had a difficult time establishing the necessary “relatedness” factor for its likelihood-of-confusion claim. Although both parties technically are offering types of “entertainment” services, it would have been difficult to show that professional ice hockey exhibitions and parachute demonstrations are sufficiently related to cause likely confusion.

Furthermore, the financial support for the Army by Bill Foley (the owner of the hockey team) may have been a factor that encouraged an amicable settlement. Foley is a graduate of the U.S. Military Academy at West Point, and is the biggest donor to its athletic program. Due to his $15 million donation, Foley’s name is on West Point’s athletic center.

Now that the Army has withdrawn its opposition, the VEGAS GOLDEN KNIGHTS marks will likely register in the next couple months. This was a difficult road to registration in light of the various Office Actions and other challenges discussed in previous posts. But it was well worth the effort, in light of the high value of the team’s brand, especially due to the team’s quick competitive success and business growth. The Golden Knights made it to the Stanley Cup in their first season, and the team sold more merchandise last year than any other other NHL team.

In Cosmetic Warriors v. Pinkette Clothing, the U.S. Court of Appeals for the Ninth Circuit filed an opinion a couple weeks ago, reconfirming that the equitable defense of laches (unreasonable and prejudicial delay in bringing a lawsuit) applies in trademark cancellation actions, even though the U.S. Supreme Court has recently curtailed that defense in copyright and patent cases, and even if such an action is brought within the five-year window for bringing certain types of cancellation claims under the Lanham Act, 15 U.S.C. § 1064.

In this case, Cosmetic Warriors, makers of LUSH brand cosmetics, filed a lawsuit against a fashion company, Pinkette Clothing, that markets LUSH-branded clothing, claiming trademark infringement and seeking cancellation of its trademark registration. But the Ninth Circuit affirmed that Cosmetic Warriors waited too long (nearly five years) to bring its case after it “should have known about its claims.” According to well-established precedent, because the Lanham Act contains no statute of limitations, courts apply a presumption in favor of laches if the plaintiff’s delay is longer than the most analogous state statute of limitations. The Ninth Circuit concluded that California’s analogous four-year statute of limitations for trademark infringement actions applied. Therefore, because Cosmetic Warriors’ delay was beyond four years, the court held a “strong presumption in favor of laches” applied.

Cosmetic Warriors argued that laches could not bar its claims for cancellation, based on a five-year period for cancellation actions specified in 15 U.S.C. § 1064, and based on recent U.S. Supreme Court precedent limiting the defense of laches in copyright and patent infringement actions, Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S. Ct. 1962 (2014) (Copyright Act), and SCA Hygiene Products v. First Quality Baby Products, LLC, 137 S. Ct. 954 (2017) (Patent Act).

The Ninth Circuit rejected Cosmetic Warriors’ arguments based on the Supreme Court precedent from copyright and patent cases, stating, “the principle at work in those cases—a concern over laches overriding a statute of limitations—does not apply here, where the Lanham Act has no statute of limitations and expressly makes laches a defense to cancellation,” see 15 U.S.C. § 1069. Regarding the five-year deadline of 15 U.S.C. § 1064, the court held “[t]here is no question that [15 U.S.C. § 1064] is not a statute of limitations in the usual sense of barring an action entirely once a defined period expires”; rather, that statute “merely limits the grounds on which cancellation may be sought. A petition brought within five years of registration may assert any ground …. By contrast, a petition brought five years after registration (against an incontestable mark) may only assert one of several enumerated grounds.”

This opinion by the Ninth Circuit accords with similar precedent from other federal courts and follows the position of the leading trademark treatise, McCarthy on Trademarks §§ 20:74, 76. It is another reminder to trademark owners and practitioners of the importance of monitoring for infringing uses, and acting quickly to initiate enforcement actions. As in this case, and according to the maxim often quoted by courts, “[t]hose who sleep on their rights, lose them.”

The Museum of Modern Art in New York City, commonly known as “MoMA,” has sued a cafe and art gallery, MoMaCha, also located in New York City. A couple months ago, MoMA filed a complaint in federal court against MoMaCha, asserting claims of trademark infringement, trademark dilution, and unfair competition. A few days after filing the complaint, MoMA also filed a motion for a preliminary injunction. The case is The Museum of Modern Art v. MoMaCha IP LLC et al., No. 18-cv-03364-LLS (S.D.N.Y.)

MoMaCha’s cafe and art gallery offers matcha green tea along with displays of modern and contemporary art. Similarly, MoMA is a museum that displays works of art, and also offers cafe services, in the same area of New York City. The complaint asserts that the parties’ marks are “extremely similar” because they both share the “MOMA” letters, they are both displayed in black-and-white text, and have similar capitalization, in that the “o” is lowercase and the second “M” is uppercase. Shown below are the parties’ stylized/design marks.In response to MoMA’s motion for preliminary injunction, MoMaCha argued that its name is not similar in look or meaning to MoMA’s name; rather, it is a combination of the words “mo” and “matcha” tea, creatively suggesting “more tea.” Furthermore, after the filing of the lawsuit, MoMaCha asserted that it would reduce any possibility of confusion by changing the style of its name to be all capital letters, “MOMACHA,” and by adding a disclaimer to its doors, menus, and website stating, “We have no affiliation with the Museum of Modern Art or any Museum.” (Their current website already shows these changes.) Additionally, MoMaCha argues that MoMA’s mark is weak and therefore entitled to only narrow protection, because it is simply “four letters written in black and white” which are nearly identical to “the commonly used Franklin Gothic font.”

MoMaCha’s arguments, and its voluntary re-design and disclaimer, are creative. But courts have held that disclaimers are not necessarily sufficient to avoid a likelihood of confusion–and sometimes disclaimers can even add to confusion. MoMA might have a difficult time winning a preliminary injunction, based on the high standards that are applicable. Nevertheless, the allegations of the complaint are compelling, based on the similarity of the marks and the relatedness of the parties’ goods/services that are offered in the same city.

How do you think this one will turn out? The briefing on MoMA’s preliminary injunction motion was completed last week. The court denied MoMA’s request for an oral argument, so a decision could be issued at any time, perhaps within the next month or two. Stay tuned for updates.

 

A few months ago, a federal district court in New York held that several publishers violated a photographer’s copyright when they embedded a photograph from one of the photographer’s Twitter posts. Goldman v. Breitbart News Network, No. 17-CV-3144 (KBF) (S.D.N.Y. Feb. 15, 2018). The photographer, Justin Goldman, had sued Breitbart News Network, TIME Inc., The Boston Globe and other online publishers last year for copyright infringement, alleging they displayed in various online news stories, without permission, a photograph he took of New England Patriots quarterback Tom Brady, which he had posted on Twitter.

In their defense, the publishers invoked the “Server Test,” based on the prominent Ninth Circuit decision, Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146 (9th Cir. 2007), which held that the unauthorized display of Google Image search engine results, of photographs stored on third-party servers, did not constitute copyright infringement, provided that such images were not hosted on Google’s servers. Essentially, the Server Test provides that website publishers are not liable for copyright infringement if they embed content hosted on third-party servers, but not their own servers.

But in the Goldman case, the New York court (under the jurisdiction of the Second Circuit), questioned the validity of the Ninth Circuit rule, because the court concluded that the Copyright Act does not require physical possession of the copyrighted material. The court relied on Supreme Court precedent supporting that merely transmitting copyrighted material can constitute infringement, regardless of “invisible” technical distinctions regarding the means of the infringing display or distribution, see American Broadcasting Co.s, Inc. v. Aereo, Inc., 134 S. Ct. 2498 (2014). Therefore, the court declined to apply the Server Test, and concluded that the publisher defendants “violated plaintiff’s exclusive display right [and] the fact that the image was hosted on a server owned and operated by an unrelated third party (Twitter) does not shield them from this result.”

Furthermore, the court emphasized a “critical” distinction with Perfect 10 regarding the “paramount” role of the user. The web users in Perfect 10 were required to click on the thumbnail images in the Google Image search, in order to see the full-size images hosted on third-party servers. By contrast, in the Goldman case, visitors to the defendants’ websites would immediately see the full-size image, without any volitional act of clicking to connect to a third-party server.

On March 19, the district court granted the publisher defendants’ motion to certify the decision for interlocutory appeal to the Second Circuit, acknowledging the parties’ representations that the decision created “uncertainty for online publishers” with a significant “impact beyond this case” due to the popularity of Twitter and “retweeting.” Some commentators, such as the Electronic Frontier Foundation, suggest that the Goldman decision threatens in-line linking and, if followed by other courts, could require monumental changes to online news publishing. One amicus brief in the New York case also predicted that the Goldman ruling will “transform the internet as we know it.” While some of these gloomy predictions may be overstated based on a single district court decision, the appeal to the Second Circuit will certainly be closely watched, so stay tuned for updates.