DuetsBlog

Collaborations in Creativity & the Law

Tasting Notes: When Alcohol Goods and Services Descriptions Matter

Posted in Food

On December 11, I will be presenting a CLE on Brewery and Distillery Law, discussing trademark issues affecting breweries and distilleries.  One of the topics that I’ll spend some time on during that presentation – and one that we’ve covered a lot here – is how the Trademark Office considers beer to be sufficiently related to wine and other spirits when evaluating a pending application for a likelihood of confusion with a registered mark.  The same has, in a few cases, been said about these alcohol products being related to restaurant services or bar services.

In today’s episode involving this issue, Heritage Distilling Company in Washington filed a trademark application in 2016 for a standard character mark BSB for “distilled spirits”.  The Trademark Office refused registration of this mark, however, based on a prior registration by Black Shirt Brewing Company for the following mark for “brewpub services; taproom services; taproom services featuring beer brewed on premises.”

Trademark image

Meanwhile, Heritage Distilling Company filed for the logo below and that went through the office with ease.  Not even an Office Action.  It was filed on April 28, 2017 and registered on October 3, 2017.

Trademark image

Heritage Distilling Company appealed the Examining Attorney’s rejection of its standard character mark for BSB claiming, in part that brewpubs and taprooms are not generally known for distilled spirits.  Although finding the marks to be similar, the Board agreed that the claimed services of the registration were not sufficiently related to support a likelihood of confusion.  “To establish likelihood of confusion a party must show something more than that similar or even identical marks are used for food products and restaurant services.”  In re Coors Brewing Co., 343 F.3d 1340 (Fed. Cir. 2003).  The Board further noted that “the definitions of taproom and brewpub refer to beer and food, not spirits. ”  Based on the evidence of record, the Board determined that the Examining Attorney had not satisfied the “something more” requirement here and found that the goods and services were not similar or related.  Only because the record failed to show these goods were related, the Board reversed the refusal.

So what if Black Shirt Brewing Company had instead filed for their mark on “bar services”?  It’s possible that the Board may not have reversed the refusal because there would have been a more clear association between a distilled spirits and bar services.

Taking that a step further, what if Black Shirt Brewing Company had filed for the mark on “beer”?  That would have likely made a refusal of BSB in standard characters over BSB on beer more difficult for the Trademark Office to reverse.  The “something more” standard would not apply when comparing goods to goods – beer to distilled spirits – as it does when comparing food products and restaurant services.  The brewery never filed for its house mark for beer, yet a few months after these applications were filed, they filed for some of its beer names for “beer”.   Here’s the specimen from one of those filings in 2014.  Would you have filed for BSB for beer?

https://tsdrsec.uspto.gov/ts/cd/casedoc/sn86372733/SPE20140823081858/1/webcontent?scale=1

When Names become Brand Names

Posted in Advertising, Branding, Contracts, Fair Use, Fashion, Goodwill, Infringement, Law Suits, Marketing, Mixed Bag of Nuts, Squirrelly Thoughts, Trademarks

And whatever the man called a living creature, that was its name.

Genesis 2:19

Naming things is a fundamentally personal, human act that sometimes – in a profession all about brand names – we take for granted. It’s easy to forget when we are clearing, registering, and protecting names, that at a basic level we are engaging with an essential part of human existence not so far removed from the story of Adam’s naming of living creatures in Genesis. True, Adam may not have had to concern himself with trademarks and intellectual property rights, but we trademark lawyers do.

Lately, I’ve been thinking a lot about this act of naming and names – not brand names, but specifically, baby names. My wife and I are expecting a baby on December 1, and among many of the things to do, naming the baby is perhaps the most important. So while my wife and I work on that, I thought I’d use the opportunity to take a closer look at a case that reminds us of how a personal name can become something else – a brand name – and what happens next.

Ten years ago, while I was in law school taking my first trademark law course, the famous fashion designer Joseph Abboud was learning about trademark law the hard way: in court. The lawsuit (about suits) against Joseph Abboud claimed that his marketing and promotional activities as Joseph Abboud for a new clothing line called “jaz” infringed trademark rights to the name – you guessed it – “Joseph Abboud.” So how did it come to pass that the real person named Joseph Abboud was being sued for using his own name?

Well, it turns out that in his rise to the top of the fashion industry through the 1980s and 1990s, Joseph Abboud registered his personal name and variations as trademarks in connection with his clothing. Then, in 2000, Joseph Abboud sold his company JA Apparel and its trademarks, including the trademarks “Abboud” and “Joseph Abboud,” for approximately $65 million. As part of the transaction, Joseph Abboud transferred all of his rights to the following:

[T]he names, trademarks, trade names, service marks, logos, insignias and designations [of Joseph Aboud]. . . . and [a]ll rights to use and apply for the registration of new trade names, trademarks, service marks, logos, insignias and designations containing the words “Joseph Abboud,” “designed by Joseph Abboud,” “by Joseph Abboud,” “JOE” or “JA,” or anything similar to or derivative thereof, either alone or in conjunction with other words or symbols . . . for any and all products and services. . . .

In addition, the designer Joseph Abboud further agreed not to compete with the JA Apparel for a period of time.

But wouldn’t you know, the designer Joseph Abboud couldn’t sit idle and, despite his agreement, he began to engage certain third parties in preparation for the launch of a new line called “jaz” and began promoting it as Joseph Abboud, the fashion designer. When JA Apparel found out, it sued to stop Joseph Abboud on the grounds that it had acquired the exclusive rights to use the name Joseph Abboud, not just the trademarks. In other words, while perhaps “jaz” didn’t infringe the trademarks, Joseph Abboud’s use of his own name to promote it did, and furthermore it breached the contract. In a page right out of Mad Men, the attorneys for JA Apparel even published a full-page ad announcing that “The Finest Trademark Attorneys in the World Wear Joseph Abboud®.”

After a bench trial, the district court agreed with these finest trademark attorneys in the world and concluded that the agreement made by Joseph Abboud transferred not just certain trademarks to JA Apparel, but also the right to use his own personal name for commercial purposes, including in the phrases “a new composition by designer Joseph Abboud” or “by the award-winning designer Joseph Abboud.” Nevertheless, although providing “sweeping injunctive relief” was necessary to ensure that JA Apparel received the full benefit of its bargain, the court determined Joseph Abboud could make media appearances as himself or as a fashion expert, but not to promote clothing in competition with JA Apparel.

On appeal, the Court of Appeals for the Second Circuit found the word “name” as used in the agreement ambiguous and vacated the decision of the district court, remanding returning it for a full refund. Additionally, the court of appeals held that if the contract was not breached, then the district court would need to determine whether Joseph Abboud’s use of his own name constituted trademark infringement by examining specific proposed advertisements. For example, one advertisement featured the “jaz” mark prominently with an image of Joseph Abboud and the disclaimer “Designer Joseph Abboud is no Longer Associated or Affiliated with JA Apparel Corp., the owner of the Trademark ‘Joseph Abboud’TM.” Such advertisements presented the “jaz” mark and Joseph Abboud’s name in ways which might not be infringing or could reasonably be fair use.

On remand, the district court examined additional extrinsic evidence and discovered that the word “names” appeared only in the final draft of the agreement and that nothing in the discussions between the parties explained the reason for its inclusion. Instead, the word “names” was part “laundry list of words” under the “more general penumbra of ‘trademarks’” – essentially a substitute for “brand names” not “personal names.”   Reversing its prior conclusion, the court concluded that Joseph Abboud had not sold his personal name. Unfortunately, for Josheph Abboud, the inquiry did not end there.

The problem, the court explained, was that while Joseph Abboud may not have sold all rights to commercially use his personal name to JA Apparel, Joseph Abboud did register his name as a trademark and he did sell that trademark to JA Apparel. And in such circumstances, Joseph Abboud would be permitted to use his name to advertise his affiliation with other businesses, so long as such use was not in an “overly intrusive manner:”

This is a case in which an individual elected to use his name for many years as a trademark, building up substantial goodwill; he then sold the same, but intends to continue to commercially exploit his name by designing clothes in competition with the purchaser of the trademark. This case therefore presents an inherently difficult scenario, because Abboud’s use of his name in the sale of clothing will inevitably lead to consumer confusion.

The court’s solution was to allow the following ad and similar ads, with the addition of a conspicuous disclaimer making clear that Joseph Abboud, the designer, was no longer affiliated with Joseph Abboud, the apparel brand:

The court was even stronger in its approval of the following possible ad, proposed by JA Apparel, noting that the placement, size, and useage of Abboud’s name, together with the disclaimer (unreadable in the image below), arguably would remove the likelihood of any confusion:

The court was not so enthusiastic about the following ad, which it called “utterly confusing” because Joseph Abboud’s personal name would be used in a virtually identical way as the Joseph Abboud trademark, suggesting “jaz” is merely a sub-line of clothing:


The review of the ads above helped the court craft the following permanent injunction against Joseph Abboud, showing just what happens when a name becomes a brand name:

Abboud may not use his name in any manner on “jaz” clothes, labels, hang-tags, or product packaging.

Should Abboud choose to use his name in promotional and advertising materials, he must do so in a way that is not inconsistent with this Court’s fair use analysis.

Abboud’s name must be used descriptively, in the context of a complete sentence or descriptive phrase, and must be no larger or more distinct than the surrounding words in that sentence or phrase.

Abboud is to prominently display his trademark “jaz” (or any other trademark) elsewhere in the advertisement, both to alert consumers that “jaz” is the source—in the trademark sense—of the new clothing line, and to minimize any resulting confusion.

Finally, should Abboud use his name as proposed in [the ads] or anything similar, he must include a disclaimer of any affiliation with JA Apparel and products sold under the Joseph Abboud trademarks. The disclaimer must be displayed in a font that is no smaller than the accompanying text in which Abboud uses his name.

The lesson for all of us is that a personal name, when it becomes a brand name, becomes something that can be bought and sold just like any other trademark. And after that sale, while some personal uses of a name will be fair use, any use of the name as a brand name will likely result in confusion (if the goods are the same or related).  Sometimes the use of a personal name is inevitable, but business owners and celebrities should take care when they decide to use their personal name as the brand name for their business, especially if they are not exactly ready to retire from what made them famous and successful when they sell their business.  Otherwise, they may find themselves with a name that’s become something they can’t use.

DYKES ON BIKES No Longer Idling After Matal v. Tam

Posted in First Amendment, Mixed Bag of Nuts, Trademarks, TTAB, USPTO

Simon Tam wasn’t the only one barred by the Lanham Act from reclaiming a historically derogatory term.

Dykes on Bikes is a nonprofit lesbian motorcycle organization.  According to their website, the group’s mission is to “support philanthropic endeavors in the lesbian, gay, bisexual, transgender, and women’s communities, and to reach out to empower a community of diverse women through rides, charity events, Pride events, and education.”  In 2015, Dykes on Bikes tried to register their logo as a service mark for entertainment.  The application was put on hold pending the outcome of Matal v. Tam, as the Supreme Court considered whether Simon Tam could register his band name—The Slants.  In view of the Court’s landmark decision holding the disparagement provision of the Lanham Act unconstitutional viewpoint discrimination, Dykes on Bikes will move forward with its trademark application as well.

It was in 2003 when Dykes on Bikes first sought to register the name of their organization as a service mark for education and entertainment services.  Registration was refused on the basis that the mark was disparaging to lesbians.  The organization appealed to the TTAB, arguing that the word “dyke” had become a positive term and a symbol of pride and empowerment.  Dykes on Bikes won their appeal before the TTAB.  But when the mark was published for opposition, an individual named Michael McDermott filed an opposition claiming the mark was disparaging to men.  Ultimately, McDermott’s opposition was dismissed for lack of standing.  In particular, McDermott failed to show either (1) he possesses a trait or characteristic implicated by the proposed mark; or (2) others share the same belief of harm from the proposed mark.  The TTAB dismissed McDermott’s opposition and the Federal Circuit affirmed.  DIKES ON BIKES was successfully registered in 2007.

Because they had already won the disparagement battle for their first mark, Dykes on Bikes was surprised to face another disparagement refusal for a second mark.  In 2015, the group sought to register their logo as a service mark.  They sought review by the TTAB, and the case was put on hold pending the outcome of Matal v. Tam.  Dykes on Bikes also filed an amicus brief in the Tam case, arguing in favor of Tam’s position.  After the Supreme Court held in Tam that “the disparagement clause violates the Free Speech Clause of the First Amendment,” the DYKES ON BIKES W M C logo was approved for publication.

Dykes on Bikes and The Slants had similar goals.  As Dykes on Bikes described in their amicus brief, both groups “have chosen to reclaim self-referential terms as trademarks for the benefit of the groups those terms refer to.”  They also drew a distinction with respect to a certain NFL team name: “the Washington Redskins have chosen a term that is unrelated to the people who identify as members of the football team and is commonly understood to be a slur which members of the identified group have not reclaimed.  Whatever the constitutionality of the PTO’s treatment of the Redskins mark, the team’s use of that name is immoral and Dykes on Bikes encourages the Washington Redskins to give up their trademarked name as a matter of respect and decency.”

While the Tam decision may have opened the proverbial flood gates of offensive trademark applications, it also allows for these positive trademark uses in reclaiming derogatory terms.

Call of Duty Trademark Lawsuit: A Humvee Humdinger

Posted in Branding, Fair Use, Famous Marks, First Amendment, Infringement, Mixed Bag of Nuts, Trademarks

AM General, manufacturer of Humvee military vehicles, has sued Activision Blizzard for trademark infringement, based on the use of the “Humvee” and “HMMWV” marks for the virtual military vehicles displayed in Activision’s Call of Duty video games. See the complaint here, filed last week in the Southern District of New York. For those of you who are not avid video-gamers, Call of Duty is a military-themed first-person shooter game–and it’s one of the best-selling games in the world, selling more than 250 million copies since 2003.

AM General owns federal trademark registrations for the marks HUMVEE (Reg. No. 1697530) and HMMWV (Reg. No. 3026594), for use in connection with the military trucks that the company manufactures. (“HMMWV” is an acronym referring to High Mobility Multipurpose Wheeled Vehicle.)

This dispute raises issues similar to those I’ve discussed in recent posts (such as here) regarding the gap between trademark use in the real-world, versus trademark use in the virtual realm, such as in video games, which involve depictions of arguably related goods or services. Here, it is questionable whether consumers would be confused as to source. There is no indication that AM General sells video games, or that Activision sells military vehicles.

For example, in E.S.S. Entm’t 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095, 1100 (9th Cir. 2008), the court held that consumer confusion was unlikely based on a video game’s reference to the mark “Play Pen,” referring to a real-world strip club, because: “The San Andreas Game is not complementary to the Play Pen; video games and strip clubs do not go together ….  Nothing indicates that the buying public would reasonably have believed that ESS produced the video game or, for that matter, that Rockstar operated a strip club.”

Nevertheless, confusion as to source isn’t the only actionable type of confusion–there’s an argument that consumers could be confused as to whether there is an affiliation, sponsorship, or approval between Activision and AM General as to the Call of Duty video games and the references to the HUMVEE and HMMWV marks, such as a licensing deal. Such an argument is reinforced by AM General’s allegations in the complaint that it has licensed the use of its HUMVEE mark in several other video games.

However, Activision may also have several defenses, including a nominative fair-use defense. The defense of nominative fair-use may apply where a defendant uses a mark solely to describe and refer to the plaintiff’s product, but not the defendant’s product, for purposes such as comparison, criticism, or simply a point of reference. Here, it would seem that Activision is using the HUMVEE and HMMWV marks nominatively, to refer to AM General’s military vehicles, rather than any of Activision’s products.

A free-speech defense may also apply for artistic expression under the First Amendment. The Rock Star Videos case, cited above, has relevant discussion of this defense in a similar context. In that case, the court applied the Second Circuit’s “Rogers test,” under which “an artistic work’s use of a trademark that otherwise would violate the Lanham Act is not actionable unless the [use of the mark] has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless [it] explicitly misleads as to the source or the content of the work.” Rock Star Videos, 547 F.3d at 1095 (quoting Rogers v. Grimaldi, 875 F.2d 994, 999 (2d Cir. 1989)). The court held that this defense was established, because the San Andreas video game was an artistic work; the reference to the “Play Pen” mark for a strip club had “at least some artistic relevance” (this is a low threshold–the level of relevance “merely must be above zero”); and the reference did not explicitly mislead consumers as to the source of the work.  Id. at 1099-1101.

Similarly here, Activision could argue that its video game and the references to AM General’s marks are merely artistic expression; that the references to the HUMVEE and HMMWV have at least some non-zero level of artistic relevance; and such references do not explicitly mislead consumers.

It will be interesting to see the defenses raised by Activision and how this dispute ultimately plays out. Activision’s answer to the complaint will be due in a couple weeks. How do you think this case will be resolved? Stay tuned for updates.

 

Classic Trademark Fair Use of Google Mark?

Posted in Advertising, Articles, Branding, Fair Use, Genericide, Loss of Rights, Marketing, Trademarks

North Memorial Health must be spending significant advertising dollars at the moment, with a variety of ads appearing all over the Minneapolis skyway system, above is one current example.

In addition, there are a series of humorous and sarcastic TV ads that were designed to poke the bear of our broken health care system, congrats to Brandfire on their creative work here.

The current ad campaign follows the health system’s rebrand and slight truncation earlier this year, from North Memorial Health Care to North Memorial Health:

“The brand campaign consists of TV, out of home, digital and print advertisements. It pokes fun at the industry by showing experiences of customers and attitudes of healthcare that are universally frustrating.  The print and outdoor advertisements also demonstrate that North Memorial Health accepts its share of the blame, but commits to working harder to deliver an unmatched experience for the customer.”

So, I guess, if patients admit to having Googled their symptons prior to their appointment, they will no longer be scolded for doing so by doctors, nurses, and other health care providers, right?

But, what about the glaring Google reference in the above skyway ad, did North Memorial Health need permission from Google for the gratuitous reference?

You may recall, a few years back I wrote about Google surviving a genericness challenge (Tucker and Jessica have provided updates), drawing attention to possible meanings of the word Google:

“The word google has four possible meanings in this case: (1) a trademark designating the Google search engine; (2) a verb referring to the act of searching on the internet using the Google search engine; (3) a verb referring to the act of searching on the internet using any search engine; and (4) a common descriptive term for search engines in general.”

Seems to me, in the North Memorial Health ad shown above, Google could be understood as the verb meanings in both (2) and (3), as the capitalization doesn’t point uniquely to Google.

There is little doubt that no Google permission is required for the ad, because nominative fair use ought to apply, given the plausible, but not required meaning of the above definition in (2).

More interesting to me though, is the question of whether classic fair use could apply as well to the Google use, given the plausible, but not required meaning of Google in definition (3) above.

If so, I’m not sure I’ve encountered an example or case before where both classic and nominative fair use applied, perhaps this is a first, so what do you really think, without Googling it, of course?

This Friday: You Can Say Buh Bye to Dr. No!

Posted in Advertising, Articles, Branding, Marketing, Social Media, Trademarks

This Friday, yours truly will be presenting “Making Your Business Blogging Visible” at SME (Sales and Marketing Executives of Minnesota), and you can learn about all of the details here.

Given the title, as you might have guessed, I’ll be sharing some perspectives on how DuetsBlog came to be, where we’ve been, how we’ve been doing what we do, and where we’re headed.

As you well know, we’re passionate about bringing lawyers and marketers together, much earlier in the creative process, and in the process we’ve shined a spotlight on the infamous Dr. No.

If you have been here from the beginning or if you have been curious enough to check out our inaugural post on March 5, 2009, you know that we believed our audience to be two-part:

“If you are a lawyer and you find yourself getting in the way more than facilitating the process, you need a regular dose of Duets Blog. If you have no formal legal training and your intellectual property lawyer prefers roadblocks over intelligent collaboration, join our conversation on Duets Blog.”

Nowadays, following my recent and invaluable work in Seth Godin’s altMBA workshop, I’m thinking it might make sense to reframe “who this is for” in this way:

“People who love brands that need intellectual property lawyers, whether they know it or not.”

While on this amazing journey of more than 2,200 blog posts (roughly 1/3 are from me), we’ve grown, evolved, and we’ve shared scores of guest posts from dozens of non-lawyer guest bloggers.

We’ve also enjoyed getting to know you, and we’ve enjoyed your countless published comments, your perspectives and blog ideas, and all of our amazing off-line conversations and friendships.

Although we haven’t yet reached the remarkable goal of 7,000 blog posts (like the one who is admired), each one of us has enrolled for this work and each one of us lives by this sage guidance:

“I write every word. I don’t understand outsourcing something this personal, a privilege this important.”

Here’s a question, is it really a blog post, if the person’s name next to the title is not the actual, the real author? Blogging is really personal, even if individuals are writing on a team or group blog.

As I mentioned in the promotional video for this Friday’s SME luncheon event, “I’m looking forward to meeting you, this is a dialogue you will not want to miss, see you soon!”

UPDATE: Use promo code BAIRD for the bargain SME rate of $39.

The Hidden Section 2(f) Claim

Posted in Articles, Guest Bloggers, Mixed Bag of Nuts, Patents, Squirrelly Thoughts, Trademarks, USPTO

-Wes Anderson, Attorney

Hello (again) DuetsBlog! Readers may have noted my recent absence from the blog. I recently embarked on a new stage of my career as in-house corporate counsel, and Steve gave me the opportunity to contribute as a guest blogger.

Even in my in-house role, I remain a trademark law hobbyist. One of the great hidden gems of the Trademark Office’s online database are “file wrappers” – the aged paper folders that served as the formal records for trademark registrations until the early 2000s, when the PTO went fully digital. As a means of preserving the old paper records, the Trademark Office provides public access to full-color scans of these folders.

For example, I’m willing to wager that nearly every reader of this blog owns a pair of GOLD TOE socks. And sure enough, Gildan USA Inc. owns a trademark registration dating back to 1964, No. 770,389 for the GOLD TOE trademark.

One interesting thing to note – as the classic GOLD TOE socks have gold weaving on the toe section, one would expect a modern-day application to require a Section 2(f) claim of acquired distinctiveness. And sure enough, TSDR states the registration is subject to a Section 2(f) claim, but that limitation is nowhere to be found on the registration certificate itself. The renewal filings of record also fail to make any reference to a Section 2(f) claim. So where did it come from?

Here, the file jacket has the answer – and seems to suggest just how precarious PTO record-keeping once was. The first page contains a litany of stamps recording various filings dating back from 1963 all the way to 2004 – still, no Section 2(f) claim. But on page 2, at the very bottom, some Trademark Office employee appears to have made the notation “2(f),” in pencil:

When exactly was this claim made? Did the registration owner make a declaration as to sufficient past use? That’s unclear – all we have is a simple notation.

So, if you have some free time this weekend, I can think of no better way to spend it than delving into the trove of file wrappers preserved on the PTO website. If you find an interesting one, let us know!

Kim Kardashian Secures Hometown Advantage

Posted in Articles, Famous Marks, Fashion, Law Suits, Marketing, Product Packaging, Trademarks

Kim Kardashian West’s (“Kardashian’s”) company Kimisaprincess, Inc. won its motion to transfer a pending case against the company from Illinois to California. Danish makeup artist Kirsten Kjaer Weis (“KKW”) sued Kimisaprincess in Illinois alleging claims of trademark infringement, false designation of origin and unfair competition against Kardashian’s company.

Kim Kardashian and her family are no strangers to Duets Blog or the Courts. See Kardashian/Jenner TrademarksKardashians Caught Without Makeup, But Not The Way You’d Expect, and Keeping Up With The Kardashians.

Danish makeup artist KKW sells and distributes her products with a stylized KW brand or with her full name through fancy retailers such as Barney’s. In contrast, Kardashian’s company sells products in less expensive superstores such as Target, CVS and online. Kimisaprincess sells a brand of makeup called “KKW Beauty” after her initials that was released in June 2017. The products are sold exclusively online.

Makeup artist KKW alleges that she and Kardashian’s company are direct competitors. Because of Kardashian’s fame and celebrity, it is likely consumers will mistakenly believe KKW’s products—despite its prior rights to the trademark—is associated with Kardashian. This will damage KKW and prevent KKW from controlling the reputation and goodwill that KKW has established for her products.

Kardashian’s company brought a motion to transfer the pending case to California. Her company argued that that there is better access to documents and witnesses in California where Kimisaprincess and Kardashian herself are both located. In addition, third parties such as Kardashian’s momanger (as she’s known by the press), Kris Jenner and the company that designed Kardashian’s KKW Beauty products are also in California. Plaintiff lives in New York. There are not people or documents at issue located in Illinois.

In opposing the motion, Plaintiff Danish makeup artist KKW argued that Illinois was an appropriate venue, because actual confusion between her products and the KKW Beauty products had occurred in Illinois during a survey conducted about the products. The Court found this argument to be unpersuasive, because the KKW Beauty products are sold nationwide, so confusion would also occur in California.

The Court noted that there would be a marginal increase in cost to go to California, but it does not create a cost where none was. Plaintiff KKW would have to travel to Illinois too.

The showdown between the Danish makeup artist (KKW) and Kardashian’s Kimisaprincess will take place in California. Do you think the dispute will end up on the “Keeping up with the Kardashians” reality show?

Gucci: The Other Stripe Mark

Posted in Fashion, Genericide, Infringement, Non-Traditional Trademarks

Normally when we talk about stripes trademarks , we’re talking about iconic sportswear brand adidas. An avid litigant with respect to use of “three stripe” designs on footwear and clothing, adidas is a regular feature here at DuetsBlog, where we have discussed disputes with lululemon, Puma, and retail store Forever 21. But today we’re talking about a different three stripe brand, the blue-red-blue and green-red-green three stripe designs featured by luxury brand Gucci. Not everything is new though. Gucci’s foil in this dispute is no stranger to stripe-infringement claims, as our friend Forever 21 makes another appearance.

Over the past year, Gucci sent cease and desist letters to Forever 21 regarding the sale of clothing and accessories featuring a familiar striped pattern. Following an exchange of letters, Forever 21 struck first, filing a complaint requesting declaratory judgment that its sale of the products does not infringe Gucci’s rights, and requesting that the court cancel Gucci’s registrations on the grounds of lack of secondary meaning and/or genericness. In its answer, Gucci asserted claims of trademark infringement, trademark dilution, and unfair competition. Excerpts from Gucci’s answer displaying the clothing at issue are shown below (with additional examples here and here). 

 

In its answer, Gucci only addressed Forever 21’s non-infringement count. Prior to filing the answer, Gucci filed a Motion to Dismiss all the claims related to cancellation of Gucci’s registrations. On Monday November 6, the District Court issued an order granting the motion, providing Forever 21 with 10 days to file an amended complaint.  In the order, the court suggests that Forever 21 may have an uphill battle in pursuing these claims, stating

[T]he court is skeptical that plaintiff has sufficiently alleged facts to support its claims for cancellation based on lack of secondary meaning, aesthetic functionality, and genericism.

So while I’d love to get into the substance of whether Forever 21 has a chance at cancelling these “three-stripe” registrations, we’ll have to see whether Forever 21 is able to craft an amended complaint to overcome the court’s concerns. In the interim, I’m left considering Gucci’s three stripe marks alongside adidas’ three stripe marks. In reviewing each parties’ registrations, an interesting detail emerges. Both parties own registrations for stripe designs associated with clothing, but that doesn’t mean both parties have the same type of registered rights.

For adidas, it registered its stripes as trade dress for its products. For example, Reg. No. 3,029,127 describes the registered mark as “three parallel stripes running along the sleeve of a shirt, t-shirt, sweatshirt, jacket or coat.” The drawing of the mark is shown below.

Clearly, adidas’ registrations is specifically for a stripe patterned applied to jackets.

Gucci’s registered rights? Not so much. Based on the registrations identified in Gucci’s answer and counterclaim, none of Gucci’s registrations cover trade dress. All of the registrations instead appear to be for an image of stripes. The descriptions for Gucci’s marks are all similar to Reg. No. 4,379,039, which describes the mark as “a stripe containing three distinct bands of color with a red band in the middle of two green band.” The drawing for the registrations is simply a square with three stripes.

Does Gucci’s failure to register its mark as trade dress affect Forever 21’s ability to cancel the registrations for these design logos? Normally use as a trademark is on a tag, label, on the pocket, or emblazoned across the shirt. If Gucci’s actual use of the registered mark is limited solely to the trade dress along the bottom or cuffs of jackets, does it open up any potential claims for cancellation based on non-use? Does Gucci’s failure to register its mark as trade dress affect Gucci’s ability to assert that Forever 21 is infringing a federally registered trademark? I guess we’ll find out whether Forever 21 wades into these waters when (or if) it files its amended complaint. Stay tuned.

 

Rosland Drops “What’s in Your Safe” Tagline?

Posted in Advertising, Articles, Branding, Marketing, Television, Trademarks, USPTO

Cause and effect is difficult to establish when all the relevant facts have not been assembled.

We certainly don’t claim to have all of them here, with Rosland Capital’s current TV commercial.

But, it was easy to wonder about timing, after noticing William Devane’s omission of the previous “What’s in Your Safe?” tagline in favor of “Are You Safe?” — especially given this precious gem:

What’s in Your Tagline, A Strong Trademark?

On November 9, 2015, we questioned the strength of Capital One’s “What’s in Your Wallet” tagline:

“Capital One has taken no apparent action against Rosland Capital’s trademark registration for the tagline What’s in Your Safe? for “telephone ordering services in the field of precious metal ingots and numismatic coins” — the first registration it obtained was not stated in the form of a question (What’s in Your Safe) for “retail store services featuring precious metal ingots and numismatic coins; on-line retail store services featuring precious metal ingots and numismatic coins; retail catalog ordering services via telephone featuring precious metal ingots and numismatic coins.” Capital One didn’t even put in an extension of time to oppose either of those or What’s in Your Pocket? for a credit card holder, leaving me to wonder will any mark other than an identical one get Capital One’s serious attention?”

The USPTO files now reveal that Rosland Capital surrendered its What’s in Your Safe registration and surrendered its What’s in Your Safe? registration, oh yes, six months later, on May 17, 2016, so sorry for our delay in reporting these developing facts.

Are we causing a ruckus, or are we simply reporting the facts?