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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).

 

Two businesses in Indiana are squaring off in a trademark lawsuit over the right to use the term Square Donuts for…well, square-shaped donuts.

Back in 2005, Square Donuts, a cafe with four locations in Indiana, sent a letter to Family Express (a convenience store chain with 70 locations in Indiana), demanding that Family Express cease the use of the term “Square Donuts” for the square-shaped donuts sold in its stores.

The parties wrangled for years about a potential co-existence agreement, in which Square Donuts would allow Family Express to use the “square donuts” term, but they never reached an agreement.

Later, Square Donuts filed a federal trademark application for the word mark SQUARE DONUTS for “cafe services,” claiming use since 1968, and obtained registration in 2013. (Reg. No. 4341135). The USPTO initially refused registration based on mere descriptiveness, but the refusal was overcome when Square Donuts claimed acquired distinctiveness (secondary meaning based on long and substantially exclusive use).

A couple years ago, Family Express filed a preemptive, declaratory-judgment complaint in Indiana federal court, on several grounds–including that the term “square donuts” is generic, and therefore, Square Donuts’s trademark registration No. 4341135 should be cancelled, and Family Express has the right to use that generic term. Additionally, Family Express filed last year a petition for cancellation before the Trademark Trial and Appeal Board (TTAB), also claiming this registration should be cancelled based on genericness. (The TTAB proceeding is currently suspended based on the federal court action.)

The genericness claim is interesting for a couple reasons. First, in both its federal court complaint, and the TTAB petition, Family Express claims the SQUARE DONUTS registration should be cancelled because the term “square donuts” has become “generic…for square-shaped donuts.” But as discussed in previous posts, the genericness inquiry must be tied to the particular goods or services for which the trademark rights are claimed and registered. Magic Wand Inc. v. RDB Inc., 19 USPQ2d 1551, 1553 (Fed. Cir. 1991). Square Donuts registered and claims rights to the mark SQUARE DONUTS for its “cafe services,” particularly as the name of its cafe.

Indeed, in the Board’s order suspending the TTAB proceeding, the Board left a footnote that was critical of Family Express’s genericness claim, and suggested it must be re-pleaded in an amended petition, if the suspension is lifted, because the genericness inquiry must be “based on the recited services in the registration at issue,” namely cafe services, not “square-shaped donuts.” However, as also correctly noted by the Board, a term can be generic for a genus of services, such as cafe services, if the relevant public understands the term to refer to a key or featured good that characterizes that genus of services (e.g., serving square-shaped donuts).  In re Cordua Rests., Inc., 118 USPQ2d 1632, 1637 (Fed. Cir. 2016).

Therefore, the appropriate genericness inquiry here — which will be more difficult for Family Express to establish — is whether the term “square donuts” has become generic for the genus of “cafe services.” In other words, do the relevant consumers refer generally to the genus of cafes (even cafes that feature square donuts), as “square donuts”?

Second, another interesting point is that Family Express still appears to be claiming trademark rights to “Square Donuts” as a brand for their donuts, while arguing the term is generic at the same time. The Family Express website, “Our Brands,” prominently features a section discussing their “Square Donuts” brand, with an introductory paragraph about “our proprietary brands.” This cuts against their argument that the term is generic, meaning it’s not a “brand,” and no party can claim exclusive, “proprietary” rights. I wonder if that website will show up as an exhibit at some point.

What do you think? Will Family Express be able to establish genericness here? Stay tuned for further updates on this dispute.

 

My first post on this blog, nearly two years ago, was about a trademark dispute between the State of Michigan, and a Michigan company, M22, LLC.  M22 sells a variety of merchandise bearing an “M22” mark that appears similar to the route marker signs on Michigan Highway M-22, see photos below.

U.S. Registration No. 3992159

Posted to Flickr by Larry Page. License: CC BY 2.0.

M22 was granted several federal trademark registrations, including an “M22” word mark and several M22 design marks. The dispute escalated began back in 2013, when Michigan filed a petition for cancellation at the Trademark Trial and Appeal Board (TTAB) on several grounds, including that the registration violates federal regulations related to the Manual on Uniform Traffic Control Devices (MUTDC) (among several other grounds which are now less relevant). In August 2016, the TTAB denied Michigan’s motion for summary judgment.

Shortly after the TTAB denied summary judgment, Michigan turned to a different venue, filing a lawsuit in Michigan state court (ultimately resulting in suspension of the TTAB proceeding), against M22 seeking declaratory relief. M22 quickly removed the case to federal court. In its complaint, Michigan alleged that trademark protection for the M22 design in Michigan’s M-22 route marker signs is prohibited based on Federal Highway Administration standards under MUTCD, which provide that any road signage designs (“traffic control devices”) required on federally funded highways, including the M-22 signs, are in the public domain and shall not be protected by patent, trademark, or copyright.

However, last year, the federal court issued an opinion in favor of M22, dismissing the case for lack of jurisdiction. The court held that it lacked jurisdiction over Michigan’s claim for declaratory relief. Furthermore, the court held that Michigan lacked standing as there was no concrete injury alleged. Michigan’s main argument as to concrete injury was that Michigan risks losing federal highway funding if it does not comply with and enforce state and federal laws and regulations, including the MUTCD. The court disagreed, determining Michigan had not alleged facts showing how the registration of M22’s marks would prevent Michigan from complying with the MUTCD, that there was any risk of losing federal funding, or that Michigan has any power to enforce the MUTCD against private third parties.

But Michigan still didn’t give up after losing the federal court ruling. The case was remanded back to state court, where extensive motion practice ensued. The state court ultimately concluded that: (1) Michigan has standing; (2) the MUTCD has the force and effect of Michigan law; (3) M22 LLC is subject to Michigan law; and (4) the M-22 highway sign is a traffic control device under the MUTCD. However, the court declined to determine whether M22’s trademark registrations and use were unlawful under the MUTCD (as Michigan argued), and held the TTAB may lift its stay.

So now the dispute is right back where it started over five years ago, in the trademark cancellation proceeding at the TTAB.  The TTAB lifted its stay last year, and recently granted an extension of discovery to allow M22 to take a deposition of a designee for Michigan. Most recently–just yesterday in fact–Michigan moved again for leave to file a partial summary judgment motion, on Michigan’s claim that M22’s registration should be cancelled for unlawful use in commerce, based on violations of the MUTCD standards. However, the Board had already ruled twice that Michigan was prohibited from filing further motions for summary judgment. Today, M22 filed a request for a telephone conference with the Interlocutory Attorney, stating that briefing on Michigan’s third motion for summary judgment should be unnecessary based on the Board twice prohibiting such a motion.

This has been an interesting saga so far, and it’s fascinating that Michigan has been willing to invest so much time and money vigorously contesting this registration, when it is unclear (as it was to the Michigan federal court) whether there is a significant risk of any concrete injury to Michigan in allowing this mark to remain registered. How do you think this dispute will end up? Stay tuned for updates.

 

Last week, the U.S. Senate Judiciary Committee held its oversight hearing regarding the U.S. Patent and Trademark Office (USPTO). New USPTO Director Andrei Iancu testified (see his written statement here), for the first time in his new official capacity. It was an interesting hearing–a video recording of the hearing is available here (starting at minute 16).

Director Andrei Iancu, U.S. Patent and Trademark Office

There was critical commentary at the hearing regarding post-grant proceedings at the Patent Trial and Appeal Board (PTAB) under the America Invents Act (AIA), which some argue results too frequently in invalidation of patents, and thereby creates an imbalanced system that does not sufficiently protect patent owners. Senator Coons stated: “In the past decade, there have been a variety of actions … which have had the cumulative effect of significantly weakening patent rights…. One cause is the impact of the new post-grant proceedings at the USPTO before the Patent Trial and Appeal Board …. [T]he current review system is systematically biased against patent owners based on statistics from its first five years.” Senator Coons also mentioned new legislation he had introduced, the STRONGER Patent Acts, which he describes as “aligning PTAB standards to district court standards, better accounting for the fact that issued patents have already gone through a significant examination by a governmental agency.”

Although much of the hearing focused on patents, there was also some discussion of trademarks, with some interesting facts and statistics about the Trademark Office. Last year, about 600,000 trademark applications were filed, an increase of about 12%. Historically, average annual increases in trademark applications are between 6-8%. But the rate of growth is predicted to significantly increase in the future. As of this month, filings have increased 15% since last year. And over the next eight years, annual growth is expected to average 10%. According to Director Iancu, the biggest driver of the increase has been a rise in filings from China, which currently represent 10% of new filings. By 2023, filings from China are expected to represent a third of all filings.

This heavy growth in trademark applications has required significant hiring increases at the Trademark Office, with 232 new Examining Attorneys hired in the past five years, resulting in a total of about 580 Examining Attorneys currently. If the expected growth trends continue over the next five years, Director Iancu anticipates over 300 new hires will be required, growing the number of Examining Attorneys to over 900.

Finally, Director Iancu noted that the Trademark Office met or exceeded all trademark pendency and quality targets last year. Most trademark applications are pending for less than the targeted goal of 12 months, from filing through registration (or other final action or abandonment), with the average being about 9.5 months. The Trademark Office is also meeting its target of issuing a first action on pending applications between 2.5 – 3.5 months after filing, with the average being 2.7 months. More interesting statistics and budgetary data are available here.

It is reassuring to hear the Trademark Office is exceeding its pendency targets (particularly in light of the staggering number of new applications last year–600,000–among 580 examiners). Sometimes it feels like things take longer than they should during prosecution, but in light of this heavy volume, one can develop a greater appreciation for how quickly things are able to move.

What did you think of this oversight hearing on either the topics of patents or trademarks? Any thoughts?

A couple months ago, I posted about the contentious trademark battle involving Stone Brewing Co., a craft brewery based in California, who filed a trademark infringement complaint against giant beer conglomerate MillerCoors LLC and Molson Coors Brewing Co. (“MillerCoors”). The complaint is based on the recent rebranding of the MillerCoors “Keystone” beer, which separates and places greater emphasis on the word “STONE.”  Stone Brewing alleged that this rebranded packaging infringed its registered trademark “STONE” mark for beer.

A couple days ago, MillerCoors submitted an 84-page filing for its answer and counterclaims. Typically, an answer is relatively short, consisting of concise admissions or denials. But the answer here consists of 50 pages, with numerous paragraphs providing narrative, argumentative retorts aimed at Stone Brewing. Additionally, MillerCoors alleged four counterclaims, seeking declaratory judgment: (1) of MillerCoors’ right to use STONE to advertise Keystone beer; (2) of the unenforceability of the STONE mark against MillerCoors due to laches; (3) of MillerCoors’ non-infringement; and (4) of MillerCoors’ exclusive right to use the STONE mark.

MillerCoors emphasizes that its rebranded packaging does not use or infringe Stone Brewing’s “STONE” mark; rather, the full “KEYSTONE” mark is always used, and Stone Brewing’s complaint relied on “misleading images” that “misrepresent the look of Keystone cans and outer packaging,” to unduly isolate the “STONE” portion of the mark.

Furthermore, MillerCoors alleges that it made prior use of “STONE” as a nickname for its Keystone beer in its advertising since at least 1995, whereas Stone Brewing did not begin selling its STONE-branded beer until 1996.

MillerCoors also contends that Stone Brewing should not be allowed to enforce its STONE mark against MillerCoors after unreasonably waiting eight years to file this lawsuit, following a demand letter sent by Stone Brewing back in 2010, after which Stone Brewing took no further action.

Beyond the relevant legal points, MillerCoors also offers several rhetorical attacks, in an attempt to counteract the big-beer vs. small-brewing narrative of the complaint. MillerCoors contends that Stone Brewing’s “grandiose” allegations are “misleading and ultimately meritless,” and that the lawsuit is merely a “publicity stunt and a platform to market its beer.” MillerCoors suggests that the lawsuit was really about “Stone Brewing’s struggle with its new identity as a global mega-craft beer manufacturer. Gone is the small Stone Brewing of old. Today, Stone Brewing is one of the largest breweries in the United States and its beer is sold on five continents…. What does a company that was built around its opposition to ‘Big Beer’ do when it becomes ‘Big Beer?’ Stone Brewing’s solution appears to be to file this meritless lawsuit against MillerCoors.”

That may sound harsh, but then again, this pushback shouldn’t be a surprise in light of the aggressive criticism throughout Stone Brewing’s complaint, as discussed in my previous post.

For all of MillerCoors’ attacks of Stone Brewing’s “publicity stunt,” the same label could be applied to the answer and counterclaims, which appear to focus on developing a counter-narrative and managing public perception, in light of the extensive rhetoric, some of which isn’t necessary or particularly relevant to the legal claims.

How do you think this one will turn out? With both sides so clearly invested in this lawsuit being about public relations, marketing, and/or a “publicity stunt,” I wouldn’t be surprised if this lawsuit settles without going very far, to avoid the significant risks of negative PR on both sides. Stay tuned for updates.

Last year I posted about the trademark infringement complaint by PayPal against Pandora, based on Pandora’s rebranded “P” logo that was introduced in October 2016.  See a comparison below of PayPal’s blue “PP” design mark (left) with Pandora’s blue “P” design mark (right).

Last November, the parties reached a written settlement agreement and stipulated to dismissal of the lawsuit.  There was some media coverage of the settlement, but no details of the settlement were discussed in the media nor in any comments from the parties. A spokesperson for PayPal commented only that “we have resolved this matter amicably.” Thus it appears the terms of the settlement were confidential.

Despite such confidentiality, it has seemed, at least for the past few months, that Pandora was on the winning side of the dispute, as it continued using its blue “P” logo without any changes. Nevertheless, since my post last year, I’ve kept an eye on the logo, as it’s relatively common for settlement agreements in trademark disputes to have extended “phase-out” periods, in which a party is given some time period (such as three months) to phase-out an infringing mark and switch to a rebranded mark.

Last week (roughly three months since the date of settlement), I noticed the Pandora logo on my iPhone app had suddenly changed, see below.

 

After some (very brief) searching, I could not find any announcement or mention of the new logo on Pandora’s website or blog, nor on Pandora’s Twitter feed. Nor have I found any other significant media or online discussion of the new logo, yet. This is a bit surprising in light of the extensive marketing and announcements surrounding the previous rebrand.

I believe the logo change occurred about a week ago, based on when my iPhone app updated, but I can’t be sure. Perhaps this is just a temporary or seasonal logo change for other reasons, but I can’t think of a reason why. Nor does it appear to be limited to the iPhone app–the new logo also appears in the Google Play store, on Amazon, on Pandora’s official Twitter account, and its YouTube channel.

Just a wild guess, but perhaps the written settlement agreement required Pandora to change its logo within three months, and also required both parties to remain silent and refrain from any announcements of the new logo? And just another guess, if that’s the case, perhaps Pandora requested confidentiality, and silence regarding the rebrand, to avoid any suggestion that PayPal’s claims were meritorious (i.e., that Pandora’s logo infringed or diluted PayPal’s logo), or that Pandora was on the losing end of the settlement.

What do you think? As I only searched briefly, let me know, have you found any other discussion or media coverage yet of the new logo? Also, what do you think of the new logo from a branding perspective? Not sure I like the contrasting color combinations, but I could get used to it.

Stone Brewing Co., an independent craft brewery based in California, has filed a trademark infringement complaint against MillerCoors LLC and Molson Coors Brewing Co. (collectively “MillerCoors”). The complaint is based on the recent rebranding of the MillerCoors “Keystone” beer. The rebranded packaging separates “Keystone” into two words, with the smaller word “KEY” on a separate line, above the larger word “STONE.” See the photograph below of the rebranded can (Stone Brewing’s co-founder Greg Koch is in the background, looking displeased).

See also the external packaging of the 30-packs, which further emphasize the word “STONE” on the cans:

Stone Brewing owns an incontestable federal trademark registration for STONE (typeset) for “beers and ales” (Reg. No. 2168093).  When MillerCoors rebranded last year, it appears it may have known about Stone Brewing’s registered rights in the STONE mark. MillerCoors had already filed an application to register “STONES” for beer back in 2007, but was refused registration by the Trademark Office, based on likelihood of confusion with Stone Brewing’s STONE registration. After that refusal, MillerCoors abandoned its STONES application.

Nevertheless, when MillerCoors announced its rebranded packaging for Keystone last year, it emphasized that the rebranded can “plays up the ‘Stone’ nickname” for the beer, and further noted that with this rebranding effort, “Keystone Light is grabbing 2017 by the ‘Stones.”

Stone Brewing’s complaint is aggressive and persuasive, but it also includes some playful and humorous language, along with frequent criticism of MillerCoors, including digs at the quality of its beer (or lack thereof), and its decline in recent years as one of the “Beers Americans No Longer Drink.”  Below are a few of my favorite lines (note that “Gargoyle” is a nickname/emblematic self-reference to Stone Brewing)

  • “Since 1996, the incontestable STONE® mark has represented a promise to beer lovers that each STONE® beer, brewed under the Gargoyle’s watchful eye, is devoted to craft and quality. Like all Gargoyles, it is slow to anger and seeks a respectful, live-and-let-live relationship with peers and colleagues – even those purveying beers akin to watered-down mineral spirits. But Stone and the Gargoyle cannot abide MillerCoors’s efforts to mislead beer drinkers and sully (or steal) what STONE® stands for.”
  • “The Gargoyle does not countenance such misdirection of consumers; nor does it support those who would disavow their own Colorado mountain heritage to misappropriate another’s ancestry. Stone accordingly brings this action to help usher Keystone back to the Rockies. Should Keystone not willingly return, Stone intends to seek expedited discovery in aid of a preliminary injunction”

Stone Brewing’s co-founder Greg Koch recently posted a video regarding the dispute, and MillerCoors issued the following public response:

  • “This lawsuit is a clever publicity stunt with a multi-camera, tightly-scripted video featuring Stone’s founder Greg Koch. Since Keystone’s debut in 1989, prior to the founding of Stone Brewing in 1996, our consumers have commonly used ‘Stone’ to refer to the Keystone brand, and we will let the facts speak for themselves in the legal process”

What do you think about this dispute? In my view, it’s more than a publicity stunt. The MillerCoors response about how some consumers may refer to “Stone” for Keystone beer is less relevant than the marks actually used in commerce by MillerCoors. Based on the rebranded packaging’s emphasis of “STONE,” and Stone Brewing’s incontestable registration for STONE for beer, this appears to be a relatively strong complaint. MillerCoors may be rolling a stone uphill on this one. But we’ll have to wait to see its answer and any defenses. Stay tuned for updates.

With the Oscars coming up in less than a month, it seems like the issue of “celebrity” trademarks is a hot topic in the media.  For example, many news outlets (such as here, here, here) are covering Meryl Streep’s application to register her name.  Her application (Serial No. 87765571) was submitted last month for a variety of services, including entertainment services, personal appearances, speaking engagements, and autograph signings.

It has become increasingly common for celebrities to seek federal trademark registrations for their names, often in connection with entertainment services, to provide greater protection and enforcement ability against authorized third-party uses.

Another recent example is Sean Connery’s application to register his name (Reg. No. 5015683), which was covered in the news over the past couple years.  He had to overcome some obstacles, including two Office Actions rejecting his specimens of use (here and here), but he was finally able to reach registration after submitting a third substitute specimen.

Interestingly, trademark rules and precedent allow registration of personal names as inherently distinctive, without the need to show “acquired distinctiveness” (i.e., evidence, such as longtime exclusive use, showing consumers recognize the mark as a unique source indicator).  This rule differs from the common law rule, in which acquired distinctiveness is required. Christopher Brooks, 93 U.S.P.Q.2d 1823 (TTAB 2009); McCarthy on Trademarks §13:2; TMEP § 1301.02(b).  It also differs from the bar against registering mere surnames (i.e., just the last name, rather than the full name), without acquired distinctiveness. TMEP §1211.01.

Nevertheless, it makes sense to take advantage of this unique rule for federal registration of personal names, if there is a good business reason for doing so–which there often is for celebrities.

What do you think about trademark registration for personal names?  Do you think celebrities have gone too far with trademark applications in connection with their name (see a list here)? For example, Taylor Swift has over 50 trademark registrations for her name or her initials.

Any predictions for the biggest winners at the Oscars? (I’m betting Shape of Water wins Best Picture and Best Director.)

It’s about that time of year, when you may be thinking about tax season. Tax day is still a few months away, but you may already have received your W-2, or 1099, (or other various assortments of mysterious numbers and letters), which will determine how much you’ll owe Uncle Sam (or perhaps a nice refund is on the way?). You might also be thinking about the possibility of an audit. Depending on your particular business or personal income situation, the chances of an audit may be quite small, but it’s hard not to think about.

What you’re probably not thinking about, however, is an audit by the U.S. Patent and Trademark Office (USPTO), regarding any trademark registrations that you own. It can happen. Luckily, a trademark registration audit is not nearly as onerous or time-consuming as a tax audit. For any trademark owners or practitioners out there, who may receive an audit this year, here’s a quick overview and some tips.

In March of last year, following a two-year pilot program, the USPTO implemented new rules, establishing a random audit program for trademark registrations. The audit program is targeted at the required maintenance filings (“Declarations of Use”) for any registrations with more than one good or service per class. The goal of the audit program is to randomly request additional verification, that the registered mark is actually being used in commerce with the identified goods or services (which is required to maintain a valid trademark registration). Specifically, each year about 10% of all trademark registrations with recent maintenance filings will be randomly selected for an audit.

The rationale for the program is that under current rules, registration maintenance filings (every 5 years for the first 10 years, then every 10 years after that), only require the registrant to submit proof of use (a “specimen”) for one of the identified goods or services in each class, rather than all identified goods or services. Therefore, this can lead to invalid (or partially invalid) registrations sitting on the register for years (referred to as “deadwood” registrations), that identify goods or services for which the mark is no longer being used in commerce. The goal of the audit program, therefore, is to “to assess and promote the accuracy and integrity of the register” (Trademark Rule 2.161(h), as amended) by cleaning up the deadwood.

When a registration is randomly selected for an audit, the USPTO will issue a “Post-Registration Office Action,” stating, “Registration Selected for Audit.”  This Office Action will require the registrant to submit additional specimens for two goods or services, which are randomly selected among all the goods and services identified in the registration. Linked here is a sample of such an audit Office Action–this should look the same for everyone, other than the registration data.

The electronic response form is straightforward, which requires the registrant to submit acceptable specimens of use according to the applicable specimen rules (see TMEP §§ 904, 1301.04), and a verified statement of use. However, if it turns out that the registrant was not using the mark in commerce for the selected goods/services, the next step is to request deletion of those goods or services from the registration.  If deletion is requested, the USPTO, unfortunately, will then expand the audit to require specimens for all remaining goods or services identified in the registration.

Here are a few tips for dealing with the new audit system, for both trademark owners and practitioners:

  • Carefully Confirm Use for All Goods and Services; Amend Registration as Needed: When it comes time for filing the Declaration of Use, confirm use in commerce of the registered mark for all identified goods and services (even though only one specimen is required), and if use has ceased for any goods and services, they should be deleted from the registration. That way, there won’t be any hiccups when it comes time for an audit.
  • Get Ready for Expansion of the Audit if Deletion Is Requested: If you must delete any of the goods or services selected in the audit for non-use, the audit will expand to all goods or services identified.  Therefore, if any deletion is required, you should comb through all identified goods/services and make any necessary deletions at the same time–don’t just delete those currently selected in the audit. Otherwise, after the audit expands, it will further delay the process if you need to request more deletions.
  • File a Timely Response to the Post-Registration Audit, or Entire Registration will be Cancelled: There is a six-month deadline for responding to the audit issued in the Post-Registration Office Action. One might think that without a timely response, only the audited goods/services would be deleted by the USPTO. But unfortunately, the consequence is harsher than that–if a response is not submitted by the six-month deadline, the entire registration will be cancelled.

What do you think about the new audit process? Is it worth it having the deadwood registrations cleaned up, which can be beneficial from both a prosecution and enforcement perspective? Or are the benefits outweighed by the additional administrative time and cost associated with gathering more specimens and responding to these Office Actions? Perhaps that answer might depend on whether you fall within the audited 10% this year–so, good luck to all!

Another update on my series of posts following the trademark troubles of the NHL’s newest expansion team, the Las Vegas Golden Knights.

Most recently, I posted about the USPTO’s decision to maintain a refusal to register the team’s marks in connection with clothing, LAS VEGAS GOLDEN KNIGHTS and VEGAS GOLDEN KNIGHTS (Applicant Nos. 87147236, 87147265), based on likelihood of confusion with another registered mark, GOLDEN KNIGHTS THE COLLEGE OF SAINT ROSE & Design.  Those two applications are now suspended.

Now the team is facing another challenge, this time from the U.S. Army. Last week, the Army filed two Notices of Opposition (see here and here) against the team, opposing registration of both of the team’s marks in connection with its entertainment services, namely, professional ice hockey exhibitions (Application Nos. 87147269, 87147239).  (Technically, the applicant and defendant is the team’s business entity Black Knight Sports and Entertainment LLC, but I’ll just refer to “the team”). The Army alleges grounds of likelihood of confusion, dilution by blurring, and false suggestion of a connection, based primarily on the Army’s prior use of the GOLDEN KNIGHTS mark in connection with the Army’s parachute demonstration team.

Notably, the team’s owner, Bill Foley, was quite vocal about the Army inspiring the team name, since he had graduated from West Point. During the process of selecting his hockey team’s name, Mr. Foley had initially considered “Black Knights,” which is also the name of the hockey team at West Point. However, the team eventually landed on “Golden Knights,” and Mr. Foley implied on a radio show that the name was based on the “Golden Knights for the parachute team” at West Point. Mr. Foley also noted in a newspaper article that he had tried to have the Golden Knights parachute team make an appearance at the team’s name-announcement ceremony, but they “couldn’t make it work.” No wonder why, at this point.

Regarding the likelihood of confusion ground, the Army may have a difficult time establishing the necessary “relatedness” factor. Although both parties technically are offering types of “entertainment” services, it may be difficult to show that professional ice hockey exhibitions, and parachute demonstrations, are sufficiently related to cause likely confusion, despite the nearly identical mark. However, the Army’s ground of dilution and false suggestion of a connection do not require relatedness, although those grounds may also be difficult to establish, for other reasons. For one reason, regarding the dilution ground, the Army would need to establish that its mark is nationally famous, which is a high bar. Nevertheless, regardless of how this proceeding turns out, it will be another significant cost and delay in the team’s quest to register its name.

On the bright side, the hockey team itself is having a record-breaking inaugural season, currently with 29 wins and 11 losses, which puts the team in first place in the NHL’s Western Conference. The team also is the first in NHL history to have won eight of its fist nine games ever. I’m sure the team hopes that its success on the rink will follow through to these trademark proceedings, but that remains to be seen. Stay tuned for updates.

A few weeks ago, a Mexican restaurant in Fort Collins, Colorado, named “Dam Good Tacos,” agreed to change its name based on a settlement in a trademark dispute with another Mexican restaurant, Torchy’s Tacos.

Torchy’s Tacos owns a federal trademark registration for the mark “DAMN GOOD TACOS” (Reg. No. 4835497) for restaurant services. After learning of the Dam Good Tacos restaurant, Torchy’s filed a complaint in federal court, asserting trademark infringement based on the nearly identical use of its mark, for related restaurant services.

The re-branded name of Dam Good Tacos is now DGT, an acronym for its previous name. Some Coloradans are unhappy with the name change, and Torchy’s is facing some significant backlash on social media for initiating this trademark dispute.

For example, one social media user states that she “kinda hates” Torchy’s for suing DGT, and another stated “shame on Tochy’s” regarding its “frivolous lawsuit,” which makes them “look foolish.”

However, the lawsuit is hardly frivolous. The parties’ marks and restaurant services are nearly identical, and Tochy’s appears to have priority, in addition to all the legal presumptions that come with its federal registration. Also, the parties’ businesses are in the same market, with a Tochy’s Tacos location just a couple miles away from DGT. And before suing, Tochy’s offered DGT financial assistance with a name change, but DGT refused.

Nevertheless, the social media backlash is a reminder that, no matter how strong the case for infringement, trademark “bullying” is a prevalent topic, and it’s important to be cognizant of the potential for negative PR in any enforcement efforts, particularly when there is a significant disparity in the size and resources of the parties, and/or when either party is popular or well-known in a particular market.

There have been several recent examples in this context, where large well-known companies initiated enforcement efforts against smaller parties, but have done so in creative, friendly, and humorous ways, which not only avoided criticism, but also benefited all parties involved, with a supportive public reaction and widespread media coverage.

Two of my favorite, recent examples of this, are the Netflix “Stranger Things” demand letter (we blogged about it here), and Bud Light’s Dilly Dilly demand scroll — which was read aloud by a medieval character at the alleged infringer’s brewery (see our blog post here). Rather than face any backlash or claims of bullying, the reactions to these enforcement efforts were positive, with both companies receiving significant praise, such as “funny,” “cool,” and “super classy.”  That’s quite a feat, as those words are quite rarely applicable to legal demand letters.

What do you think about Torchy’s approach here? Do you have any favorite examples of successful enforcement efforts from a public-relations perspective?