Search results for: trademark bullying

AnatomyofTMWarning

We wrote about the above trademark warning ad a few years back, and the claimed trademark owner likely recognizing vulnerability as to validity:

“The idea generally is, let’s show and create a record that we are educating the public about our trademark rights and hopefully deterring misuses that otherwise might find their way into the public eye and influence the relevant public’s understanding of a term or symbol as being generic and part of the public domain, free for anyone to use, even competitors.“

Now, the validity of Car-Freshner Corporation’s federal non-traditional trademark registrations for the shape, configuration, and silhouette of a tree design, are seriously being questioned.

Sun Cedar, a non-profit based in Lawrence, Kansas, with the able pro-bono assistance of Marty Schwimmer of the Leason Ellis firm, has filed an answer and counterclaim in federal district court in the Northern District of New York, denying Car-Freshner Corporation’s allegations of trademark infringement, dilution, and unfair competition, and seeking cancellation of U.S. Reg. Nos:

on functionality grounds, and the ‘016, ‘233,  ‘888, and ‘854 registrations on abandonment grounds.

You can read more about this trademark dispute here at Techdirt — calling it another example of trademark bullying.

Here is an image of the Sun Cedar product that is alleged to infringe and dilute Car-Freshner Corporation’s federally-registered trademarks in the so-called Little Trees design:

SunCedarTree

A few questions come to mind.  Would you have put your non-traditional trademark rights at risk for the above alleged infringement?

Will the registrations be exposed to have ticking time bombs inside them?

If so, will Marty declare timber! as they fall and then gather up the debris to stack like cord-wood?

Or, will there be a mixed result, and if not chopped down altogether, might the registrations simply be chopped down to size.

Endless possibilities abound, so stay tuned, this is sure to be an interesting one.

When we hear the word “overbreadth” in close connection with the word “trademark,” the often discussed “trademark bullying” topic will frequently come to mind.

Yet, discussions about “trademark overbreadth” are not limited to exaggerated and unrealistic trademark claims by a trademark owner.

We previously have discussed how one might deal with prior registrations that contain overbroad descriptions of goods or services, utilizing Section 18 challenges to compel certain narrowing.

Trademark overbreadth also can have real meaning in connection with the representation of the chosen mark an applicant might select in attempting to federally register at the USPTO.

An applied-for mark, in standard character format, is the broadest possible method of protection: “Registration of a mark in the standard character format will provide broad rights, namely use in any manner of presentation.” (emphasis added)

Broad isn’t always best, especially when a new comer and Applicant is hoping to coexist with prior federally-registered rights that already enjoy the many benefits of that very broad standard character protection at the USPTO:

“[T]he TTAB decides likelihood of confusion “on paper” at the USPTO as opposed to how a federal district court finds likelihood of confusion in “the real world” with the specific marks in use in their full and complete marketplace context:

  • If a mark (in either an application or a registration) is presented in standard characters, the owner of the mark is not limited to any particular depiction of the mark. Cunningham v. Laser Golf Corp., 222 F.3d 943, 950, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000); In re Cox Enters., 82 USPQ2d 1040, 1044 (TTAB 2007).
  • The rights associated with a mark in standard characters reside in the wording (or other literal element, e.g., letters, numerals, punctuation) and not in any particular display. In re White Rock Distilleries Inc., 92 USPQ2d 1282, 1284 (TTAB 2009).
  • A registrant is entitled to all depictions of a standard character mark regardless of the font style, size, or color, and not merely “reasonable manners” of depicting such mark. SeeIn re Viterra Inc., 671 F.3d 1358, 1364-65, 101 USPQ2d 1905, 1910 (Fed. Cir. 2012); Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 1353, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011).
  • Therefore, an applicant cannot, by presenting its mark in special form, avoid likelihood of confusion with a mark that is registered in standard characters because the registered mark presumably could be used in the same manner of display. See, e.g., In re RSI Sys., LLC, 88 USPQ2d 1445, 1448 (TTAB 2008); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re Pollio Dairy Prods. Corp., 8 USPQ2d 2012, 2015 (TTAB 1988).
  • Likewise, the fact that an applied-for mark is presented in standard character form would not, by itself, be sufficient to distinguish it from a similar mark in special form. See, e.g., In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); Sunnen Prods. Co. v. Sunex Int’l, Inc., 1 USPQ2d 1744, 1747 (TTAB 1987); In re Hester Indus., Inc., 231 USPQ 881, 882 n.6 (TTAB 1986).

“With this well-settled precedent governing most TTAB cases, it should become more and more clear that proving likelihood of confusion at the TTAB to prevent another from being able to register a standard character mark doesn’t necessarily mean that infringement should be assumed or that it can even be established in federal district court, based on the actual market conditions of the specific trademark uses of the parties.”

The reverse is true as well. Just because an Applicant might be successful in avoiding a finding of trademark infringement based on its particular stylized use, doesn’t mean the Applicant’s federal registration application — in standard character form — is sufficiently tailored and narrow enough to avoid a finding of a likelihood of confusion at the TTAB, especially when the new comer and Applicant is confronted by prior standard character trademark or service mark registrations.

So, there is certainly an advantage to being the first to obtain standard character protection at the USPTO, and there is no guarantee a new comer Applicant is entitled to one.

Applicants should think carefully about whether the broad standard character format puts them in the best position to defend against a likelihood of confusion claim at the TTAB.

Chrysler and Moab Industries LLC (“Moab”) have been battling over the Moab mark for years. Moab holds the federally registered trademark Moab Industries®. Its business involves customization or uplifting vehicles—primarily JEEP® Wrangler® vehicles manufactured by Chrysler.

In 2012, Chrysler sought to register a “Moab” trademark, but the application was denied based on a likelihood of confusion with Moab’s mark and another mark. On December 12, 2012, Moab filed a suit asserting claims for unfair competition and trademark infringement related to the Moab Industries® mark. This case is scheduled for trial in April of this year.

In another suit filed last month, Moab sued FCA US LLC (this is the name Chrysler changed to in 2014) alleging that Chrysler had tortiously interfered with its business expectancy and defamed it. In the Complaint, Moab alleges that Chrysler sought to punish Moab for not being able to register, or at least, to concurrently use the Moab mark. Specifically, Moab alleges that Chrysler asked Moab’s main supplier Chapman Automotive Group of Scottsdale, Arizona (“Chapman”) to quit selling vehicles to Moab. In making this request, Chrysler allegedly accused Moab of flipping vehicles, which had an adverse effect on Chrysler’s fair allocation of vehicles to its dealers. Further, Moab claims that Chrysler sent a “blacklist” of companies and individuals that were purportedly exporting vehicles to its dealerships. The dealerships were told not to sell Chrysler vehicles to those on the list. If they did so, there would be a chargeback for each vehicle sold, or worse consequences. Moab contends this was done to coerce Moab to drop its pending trademark infringement suit against Chrysler, or to put Moab out of business so that it can appropriate the Moab trademark. Chrysler has not yet answered, so we do not know its side of the story yet.

Some have characterized the lawsuit as an attempt to address Chrysler’s “trademark bullying” activities. The purported actions by Chrysler are a bit different than the allegations of overreaching by a trademark owner that are usually at issue when “trademark bullying” is discussed.

bullseye“Trademark bullying” has been a hot topic in recent years and has been discussed in many DuetsBlog posts. You may recall my colleague Steve Baird wrote about this topic and explained the importance of trademark owners taking action to maintain the scope of their initial rights to protect their valuable intellectual property. Steve used a great analogy to a bullseye to explain these rights.

Specifically, Steve explained that “if the original scope of the rights associated with a particular non-famous mark is represented by the black-colored concentric circles on the target, and the bullet holes represent third party unauthorized uses of confusingly similar marks, and if the trademark owner takes no action against them, then over time, the trademark owner’s scope of rights easily can shrink down to center of the bullseye, where the trademark owner is only able to control identical marks in connection with directly competing goods.” This is obviously not a good result for the trademark owner. Accordingly, actions that some may term as “bullying” are sometimes merely actions to protect a trademark owner’s valuable rights.

In the recently filed case by Moab, there is a bit of a twist in that Moab is claiming that Chrysler is using “bullying” tactics to drive it out of business to obtain its valuable trademark rights. It will be interesting to read Chrysler’s side of the story and see whether a judge or jury finds that this is a case of “bullying” or not. The outcome of the trial in April related to Moab’s claims of trademark infringement and unfair competition will likely impact the recently filed case too.

sidebysideoxytmobile

Techdirt is crying foul (again) and this time, wrapping the “trademark bully” mantle around the magenta-colored neck of the T-Mobile brand for enforcing its color trademark against OXY.

While I certainly don’t have the details of the dispute (and it appears Techdirt doesn’t either), and OXY hasn’t produced the actual demand correspondence, given the distinctiveness of T-Mobile’s identity and branding, it’s not surprising it’s viewed as an asset worthy of protection.

T-MobileMapWhat is surprising (to me) is that I was unable to find any single color trademark registrations for “magenta” on the USPTO’s Principal Register owned by Deutsche Telekom, the parent company of the T-Mobile brand — only a pair of Supplemental Registrations (here and here).

With more than a dozen years of prominent use of its “magenta” branding, you’d think it is long past due for an upgrade to the Principal Register. It also seems to me that having a Principal Registration for a claimed mark should go a long way to quieting trademark bullying skeptics.

Then again, maybe not. Some view the ownership of a single color as a trademark as ridiculous, dumb, and silly. So, having the USPTO validate such a claim with registration would probably not quiet the concerns of those folks.

Admittedly, sometimes the single color registration issued by the USPTO needs trimming, but single color trademarks have been legally validated for more than three decades now (ask Owens Corning what pink means to their consumers). Color trademarks aren’t going away any time soon, so long as they perform the three critical purposes of a trademark: (1) Identifying the goods or services at issue; (2) distinguishing the goods or services from those of others; and (3) indicating the source of the goods or services.

As I’ve said before and written before here, while so-called trademark bullying does exist, it is frequently a misunderstood and misapplied pejorative label, based on a heavy dose of skepticism and belief of what the law should be, not what the law actually protects.

According to Techdirt:

“What moves the needle on most of these stories from ‘trademark-gone-too-far’ to ‘trademark bullying’ is that these actions tend to be brought against other groups that aren’t even operating within the same industry as the offended. That’s key in trademark disputes where, in most cases, the two parties must be competing with one another for infringement to occur.”

As loyal DuetsBlog readers appreciate, for trademark infringement, i.e., likelihood of confusion to exist, it is black-letter-law that no competition between the parties is required, only likelihood of confusion (based on a balancing of multiple factors) — and not only likely confusion as to source, but also as to sponsorship, approval, affiliation, or some other sort of connection.

So, the lack of direct competition is not determinative of a likelihood of confusion analysis. And, Techdirt and OXY’s focus on the lack of direct competition actually misses the point and oversimplifies the analysis: “We are making a smartwatch – nothing that would eventually compete with Telekom’s products and services.”

OXY’s own marketing materials admit the complementary nature of their smart watch to a smart phone: “OXY is an Android running Smartwatch that is fully customizable and works with virtually any phone.” T-Mobile sells lots of smart phones, and I’d expect that selling smart watches is well within their natural zone of expansion. If so, it’s hard to blame T-Mobile for its concern.

My hope for 2016 is that we’ll see fewer trademark color calamity cliches; the so-called “trademark bullying” mantle will be much more carefully draped; and uninformed skepticism about the validity of trademark rights in single colors will subside.

Instead, hopefully we’ll see much more well-informed focus on the virtually unlimited subject matter of trademarks that identify, distinguish and indicate source, and we’ll look forward to seeing an intelligent application of the likelihood of confusion factors and standard.

How about you, what do you hope for in 2016?

– Draeke Weseman, Weseman Law Office, PLLC

Intellectual property enforcement continues to make news, and new solutions to curb abusive enforcement – i.e. trademark bullying, patent trolling, and copyright trolling – are being proposed regularly. Central to these solutions is the idea of a “fast-lane” that kicks bad claims to the curb before the bullied or trolled party has incurred significant legal costs.   For example, in copyright infringement cases, a motion for judgment on the pleadings may succeed very early in the process if fair use is obvious. The ability to end frivolous litigation early is critical to a balanced intellectual property system.

Although I haven’t seen it discussed much, one possible means for putting an early end to frivolous trademark litigation is for the bullied party to pursue dismissal on the grounds that the trademark bully has not met the required pleading standard of “plausibility” set forth in Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007) and extended in Ashcroft v. Iqbal, 556 U.S. 662, 129 S.Ct. 1937 (2009). (For the non-lawyers reading DuetsBlog, “pleading standard” refers to the threshold content that is required in a complaint so that a plaintiff can have access to the court). My opinion is that claims that deserve the trademark bullying label are not likely to meet the Supreme Court’s pleading standard and, therefore, should be dismissible. Early dismissal of bad trademark claims, if more routinely sought and granted, could provide bullied parties with relatively quick and cost-efficient relief and could be another tool in the toolkit for practitioners faced with responding to abusive intellectual property enforcement.

First, a quick summary of the change in pleading standards. From 1957 to 2007, civil litigants followed the “mere notice” pleading standard of Conley v. Gibson, 355 U.S. 41 (1957), wherein the Court held that a complaint need only state a “conceivable” set of facts to support its legal claims. That all changed in 2007, when, in Bell Atlantic Corp. v. Twombly, the Court replaced that standard with a stricter “plausibility” standard: a complaint “must contain sufficient factual matter, accepted as true, to ‘state a claim to relief that is plausible on its face.’” Because the Twombly case involved a specific set of facts involving allegations of anti-competitive behavior, the courts were confused about whether Twombly’s rule should be extended to all civil litigation. So, in 2009, in Ashcroft v. Iqbal, the Supreme Court confirmed that the new, stricter pleading standard of “plausibility” applied to all civil litigation.

According to the Supreme Court, in order to state a claim that is “plausible on its face,” a plaintiff must string together facts that amount to more than “[t]hreadbare recitals of the elements of a cause of action, supported by mere conclusory statements.” Legal conclusions can provide the framework for a complaint, but are insufficient on their own because legal conclusions are not entitled to an assumption of truth. Asking for plausible grounds “calls for enough fact to raise a reasonable expectation that discovery will reveal evidence” of unlawful conduct.

So, do trademark bullies bring plausible claims? In my view, no. And I think this view is often echoed in the media coverage of trademark bullying cases, where we see the sentiment expressed time and time again that “there’s no way anybody is confused about X and Y.” Those of us following this issue can all remember Vermont Governor Peter Shumlin’s public message to Chick-fil-A: “If you think that Vermonter’s don’t understand the difference between kale and a chicken sandwich, we invite you to Vermont and we’ll give you a lesson about the difference between kale and a chicken. There are some very distinct features . . . ” This seems to me to be a layman’s way of saying that Chick-fil-A’s claim of trademark infringement was just not plausible on its face.

Like Chick-fil-A in the Eat More Kale dispute, trademark bullies regularly and aggressively claim likelihood of confusion without actually alleging enough factual matter to make that claim plausible, rather than merely conceivable. Trademark bullies often claim a likelihood of confusion based entirely on the similarity of the marks, while ignoring the other elements necessary to establish trademark infringement – strength of the mark, relatedness of the goods, overlapping trade channels, bad faith intent, etc. In doing so, trademark bullies might show a conceivable claim – the marks are the same, so conceivably there could be confusion – but they lack the extra stuff necessary after Twombly to get over the hurdle of plausibility. In other words, the claim isn’t plausible because despite similarities in the marks, the mark is so weak or the goods so unrelated that there is not “a reasonable expectation that discovery will reveal evidence” of trademark infringement. I think if more of the bad trademark claims we see were actually held up to this standard, more of these claims would fail.

Moreover, courts have ample discretion to decide whether a claim is plausible, and thereby to decide whether to subject a bullied party to the burden of discovery. In Iqbal, the Supreme Court held that “[u]ltimately, determining plausibility is a context-specific task that requires the reviewing court to draw on its judicial experience and common sense.” Courts can look at the success or failure of prior trademark claims and rely on their own common sense about whether there really is any unlawful conduct that will be discovered. This might be a difficult subjective decision, but judges should not shy away from that responsibility.

As a matter of public policy, upholding the plausibility standard is important. Comments from the public, as part of the USPTO’s investigation into trademark litigation tactics in 2011, revealed the following views:

Aggressive tactics used by overreachers presents a problem for the entire intellectual property community by threatening legitimate activities and clogging the legal system with invalid claims.

[D]iscovery and deposition processes were too costly for many small businesses and provided a means for a party to thwart progress in a case and to drain resources from an adversary. . . .

[S]mall companies and individuals are placed in a difficult position where surrender of valid trademarks that are being lawfully used is the only rational financially-feasible option available.

It seems to me that one way to reduce the impact of frivolous trademark litigation is to demand that trademark plaintiffs actually meet the plausibility standard set forth in Twombly. Trademark practitioners should challenge trademark bullies under Twombly and expose the implausibility of claims made by trademark bullies.

While it’s a great song, Kenny Rogers’ classic The Gambler doesn’t provide much guidance on winning a game of poker.

Step 1: Know when to hold ’em
Step 2: Know when to fold ’em
Step 3: Know when to walk away
Step 4: Know when to run
Step 5: Never count your money at the table

You’re probably better off just watching the movie Rounders. What Kenny fails to explain anywhere in the song is which facts contribute to knowing whether to fold ’em or hold ’em. Or alternatively, whether to walk or run (step 5 is pretty unambiguous, though). If it was as simple as knowing when to hold or fold, poker would be a pretty boring game. Bluffing plays a major role, both knowing when to bluff and, perhaps more importantly, against whom to bluff.

Bluffing isn’t just a skill in poker, it is a skill in all types of negotiations, including negotiations of legal disputes (and for our purposes, trademark disputes). In some ways, the entire concept of “trademark bullying” is a bit like bluffing. The big company with a lot of money is bluffing with regard to the strength of the legal claim. The hope is that the smaller company will fold ’em. Even if the smaller company knows that they have a winning argument, they may not have the chips to ante up. But what happens when it is the smaller company bluffing the bigger company?

Well, one recent example involves Fox’s hit show Empire, which revolves around a Hip Hop record label named “Empire Entertainment.” The series premiered in January of 2015 and set all sorts of records a television show in the post-Netflix/DVR world. All great news for Fox. That is, until they received the dreaded cease and desist letter.

You see, there is a music label in the real world called Empire Distribution. They contacted Fox and demanded that Fox rename and provide Empire Distribution with payment in the form of millions of dollars (first 8, then 5) or, alternatively, provide Empire Distribution with free publicity by featuring the label’s artists as guest stars on the show. Fox chose to call their bluff, filing a declaratory judgment action.

But will Fox be successful? Assuming that the marks are confusingly similar, can there be infringement for use of a confusingly similar name as a fictional entity? A recent case from the Seventh Circuit suggests not. The case of Fortress Grand v. Warner Bros. involved a computer software company that marketed a program titled CLEAN SLATE, which movie buffs may recall is the name of the secret program in the recent Batman flick, The Dark Knight Rises. The district court dismissed the claim and the Seventh Circuit affirmed.

The facts may not be quite so clear with this clash of the Empires. After all, Warner Brothers never sold a CLEAN SLATE software program. However, Fox does offer tracks from the cast of Empire for download on iTunes. While that might help Empire Distribution, it may not be enough. After all, Fox isn’t actually operating a record label under the name Empire. And besides, “empire” isn’t exactly a fanciful mark. It is a commonly utilized English word. I  can remember a few movies with empire in the name, in particular, Empire Records (all about a record store) and Star Wars: the Empire Strikes Back (not about a record store). If I were a gambler, I think my money would be on Fox.

However, we’ll have to wait and see whether Empire Distribution decides to fight back. But as far as Fox goes, Empire was renewed for a second season. After the show’s success, I’m guessing they’re all-in.

 

Last week, while I was preparing for and had the unique opportunity of arguing a real, live TTAB final hearing on the merits, outside the TTAB’s typical oral hearing location (because it was selected by the TTAB to be part of the ABA’s IPLSpring continuing education conference in Bethesda, Maryland), the Supreme Court issued its long-anticipated decision in B&B Hardware, Inc. v. Hargis Industries, Inc. Hopefully this explains my delay. SCOTUSblog coverage is here.

B&B Hardware is the case we sounded the alarm about last June:

“If the U.S. Supreme Court decides to follow the advice it recently sought and received from the U.S. Solicitor General (SG) of the Department of Justice, those of us who care deeply about the enforcement and protection of brands and trademarks could be facing a real paradigm shift.”

Well, the paradigm has now shifted, unless and until Congress steps up to clarify (perhaps at INTA’s urging) that it never intended to have un-appealed TTAB decisions (concerning likelihood of confusion and the right to register a trademark) replace the ability of a federal district court to decide for itself, likelihood of confusion and the right to use, in the context of a later-filed federal trademark infringement action.

The law of the Eighth Circuit before this decision recognized the distinct difference between the right to use a trademark and the right to register a trademark. It was predictable. It was black/white. Under no circumstances would a federal district court ever be bound by an earlier administrative decision of the TTAB. It fully recognized that the lower stakes of defending the right to register are not the same as the higher stakes of defending the right to use as part of a charge of trademark infringement (with the plaintiff’s ability to pursue both injunctive and monetary relief in federal court — remedies the TTAB has never provided and cannot provide, at least under current law, even after B&B Hardware).

In essence, it allowed for a brand owner and trademark applicant to value those distinct rights differently. Under the pre-B&B Hardware law, a brand owner and trademark applicant could put forward a modest defense against an opposer’s challenge to registration, knowing it didn’t need to pull out all the stops in its defense, because the burden remained on the opposer to file suit in federal district court if it actually wanted to threaten the trademark applicant’s right to use. So, until now, at least in the Eighth Circuit, there hasn’t been a risk of questioning the applicant’s modest defense approach in the TTAB — if the losing trademark applicant was later sued for trademark infringement, it could decide then to pull out all the stops, given the significantly higher stakes, and vigorously defend the right to use more like a bet-the-company lawsuit.

After B&B Hardware, however, despite the Court’s attempt to draw a narrow decision and limit the number of actual TTAB cases where preclusion will prevent a federal district court from deciding likelihood of confusion for itself, brand owners will now, ironically, be faced with the potential for a cottage industry of litigation over the now very gray questions of whether preclusion will, in fact, apply in their specific cases and as to what issues.

Over the past several days, many opinions on the groundbreaking decision have been shared, and what has emerged as an overwhelming consensus among, at least, outside trademark counsel for brand owners, are the following observations:

  1. The B&B Hardware decision is an important one and it will definitely impact trademark enforcement strategies going forward;
  2. The stakes involved in TTAB enforcement just went up, a lot — they no longer impact only the right to register, but the right to use too;
  3. The complexity, intensity, size of the record, and cost of seeing a TTAB decision through final hearing just went up;
  4. The losing party at the TTAB is more likely to appeal the adverse decision to federal district court for a de novo review; and
  5. Given all this, more brand owners may opt to suspend TTAB actions while they pursue all their claims in federal district court.

I’m looking more forward to hearing about what in-house, corporate trademark counsel think about the decision and how it will influence their trademark enforcement strategies. . . .

But, in the meantime, what no one seems to be talking about (yet) is how the Supreme Court’s B&B Hardware decision might impact the lingering concerns surrounding trademark bullying. (I haven’t seen anyone talking about Section 18 counterclaims as a creative response strategy either, but we’ll save that topic for another day).

Although trademark bullying concerns were not before the Supreme Court, it seems likely this decision scored a victory for those who might fall into the category of trademark bullies. And, as you may recall, a couple of years ago, the Supreme Court didn’t allow trademark bullying concerns to influence its interpretation of the laws in question there: Supreme Court Upholds Nike’s Promise to “Break the Wrist, and Walk Away”.

Indeed, as to the likely unintended victory scored in B&B Hardware — the greater leverage to trademark opposers — this reality hasn’t gone unnoticed:

“With the Supreme Court’s ruling, companies that oppose another ‘s trademark in the TTAB and prevail on grounds of likelihood of confusion have a much greater chance of summarily running the table in a district court proceeding to enjoin the applicant’s marketplace use of the trademark.  The predicted result? Trademark opposers will have less of an incentive to amicably settle a trademark opposition and trademark applicants may have greater risk of losing the right to use their brand name in commerce.”

The unfortunate, but practical effect of the B&B Hardware decision is that trademark and brand owners who continue to value the right to register less than the right to use will now be more inclined to simply default at the TTAB and not litigate the likelihood of confusion issue at all, in order to avoid the possibility of preclusion, and to keep the onus on a trademark opposer to pursue infringement claims in federal district court if the opposer truly wants to challenge more than the applicant’s right to register. At least for the time being, absent help from Congress, the days are over, of putting in a modest defense in at the TTAB that simply compels the trademark opposer to prove its claims.

While it is true that a brand owner could still put in a modest defense of the TTAB opposition and take a de novo appeal if it miscalculated on the amount and type of evidence needed to convince the TTAB coexistence on the Principal Register is proper, the problem with the paradigm shift is that it puts the burden on the applicant to treat the appeal of a registration decision like a bet-the-company-lawsuit, and even more importantly, the onus has now flipped to the applicant to turn the dispute into a federal district court action, something I don’t believe Congress ever intended.

It seems reasonable to fear this will only embolden those who have a bloated view of their trademark rights. What do you think?

-Wes Anderson, Attorney

How much trouble can a double-U make?  If you’ve been following this blog over the years, you know the answer: quite a lot.

This blog has written extensively on the trials and tribulations that may accompany single-letter trademark applications, and the letter “W” in particular.  You may then conclude, quite correctly, that a whole lot of businesses lay claim to the letter “W” in one form or another.  A quick check of the Patent and Trademark Office database yields no fewer than 1,092 applications or registrations for the letter “W” (or, in some cases “WS” where the letters are intertwined).  Of those, there are 919 live registrations for “W.”

The latest chapter in the saga of our alphabet’s 23rd letter sets an app developer on a collision course with two of Major League Baseball’s most iconic franchises.   Evolution Finance, Inc. applied to register the stylized W mark shown below, featuring a sans-serif “W” on a rounded square with a green gradient.  It uses the mark in connection with WalletHub, a “personal finance social network.”

The WalletHub application claims the colors green and white and identifies, among other services,  “creating an on-line community for users seeking financial information” that allows users to “compare financial products” and “engage in . . . social networking services in the field of personal finance.”  After amending the identification of services in response to an Office Action, the mark was published in October 2012.  Smooth sailing, right?

Enter the Chicago Cubs and the Washington Nationals.  The two ballclubs lay claim to the letter “W” as part of their team heritage.  For the Cubs, a blue “W” (for “Win”) flies on a white flag atop the Wrigley Field scoreboard when the Cubs are victorious, ostensibly so commuters riding the “L” train on the north side of Chicago can see whether their team won.   The Nationals, as we have previously detailed, use a loopy, cursive “W” as their primary logo, and also lay claim to a variety of more basic, sans-serif “W” marks as vintage or throwback logos.  Interestingly, it doesn’t appear that the Nationals are currently selling any “throwback” caps on their official store’s website — they all bear the cursive “W.”

The Cubs’ “W” Flag

In the opposition, the Cubs cited its registration for the W mark in standard characters for “fabric flags,” and the Nationals cited its registration for a stylized W mark that identifies “clothing, namely, caps.”  Of course, the clubs’ notice of opposition claims additional common-law services, “including but not limited to, baseball games and exhibits services and a variety of goods as services.”  We’re left to assume the “variety of goods and services” most closely overlaps with WalletHub’s offerings.

The Nationals’ Registration for the W (Stylized) Mark

A brief disclosure: I am deeply and irretrievably biased as a lifelong Chicago Cubs fan.  In college, I was among the many who draped that very white-and-blue “W” flag in my apartment.  But given their travails into free agency during that time, I would be hesitant to seek financial information from the Cubs, except for the price of a bleacher seat this season.  (as much as $66 for a Saturday in June, if you were curious).

The opposition has been fairly dormant since its filing in early 2013.  The last filing on record is an extension of time from December 2014, containing a lengthy report on the back-and-forth(-and-back-and-forth) settlement discussions among the parties.

Things must have turned south since then.   WalletHub turned to the court of public opinion last month and penned a blog post entitled “Major League Bullies: Teams Seek Hypocritical Trademark Ruling.”

WalletHub considers the pending opposition to be “frivolous corporate bullying” and “pure hypocrisy” given the myriad of coexisting trademark applications and registrations that identify the letter “W.”  WalletHub then takes a swipe at the Cubs, quipping that “very few people would associate the Cubs with W’s these days.” Ouch.

In a way, you can understand where the ballclubs are coming from — sports teams are among the nation’s most iconic brands.  And remember those 919 live registrations for the letter “W”?  It turns out that only four of those are for the “W” mark in standard characters — among them, the Chicago Cubs.   A standard character registration conceivably encompasses every possible stylization of the letter.  The Cubs also seem to be very cognizant of the importance of trademark rights — as the blog Uni-Watch has noted, they may be the only professional sports team to embroider the ® symbol onto the logo of its on-field jerseys.

So where will this one come out? Who gets the “W”?  It seems the WalletHub application is more than just a letter – its background shape and color gradient form a stylization onto themselves separate from the letter.  This gives WalletHub’s mark features that distinguish it from a standard-character “W.”  When combined with the difference between the identified services, WalletHub has a fighting chance — if it can stomach an opposition.  Otherwise, here’s hoping for an amicable settlement — after all, it’s just two “U”s put together.  What harm can it do?

Three months ago we discussed a “trademark bullying” allegation against Monster Energy, detailed in a declaratory judgment complaint filed in Montana federal district court by energy-drink competitor Victory Energize.

Last week, Law360 reported the case settled on confidential terms, and the claims were dismissed with prejudice, at Victory Energize’s request, so the “trademark bullying” charge against Monster Energy won’t be pursued further by Victory Energize.

As a result, we’re left to speculate what the key settlement terms might have been. Did money change hands? Did both simply call a truce and walk away? Did Victory Energize agree to modify any trade dress? If not, why not?

There are a few things we know for certain:

  • No new federal trademark applications have been filed by Victory Energize to assist our speculation of possible terms.
  • Monster Energy appears unmoved by our criticism of failing to seek federal registration of the iconic green/black/white trade dress — no new filings.
  • The colorless and unchallenged Victory Energize mark remains registered, and surprisingly, the green/black/white Victory Energize can (to the right) remains on its website (at least, for now):

Lest you believe from these certainties that Monster Energy has lost the drive for vigorous trademark enforcement activities, think again, it might be time for a shot of taurine to sharpen your focus.

By my count, Monster Energy has filed no less than fifty-six (56) Notices of Opposition with the TTAB of the USPTO in 2014, three (3) so far this month, and eight (8) extensions of time to oppose have been filed in December so far too.

Indeed, Monster Energy appears to be on a rampage against marks containing MONSTER in Int’l Class 25 for any clothing items: RIDGE MONSTER, CHOREMONSTER, MONSTER CLOTHING CO., MONSTER BUCK, MONSTER RACKS, and CAMP MONSTER, among others.

While I can see the Camp Monster has a green eye, I’m still asking: Monster Energy’s rights can really reach the blue Camp Monster logo to the left for clothing?

Monster Energy filed a motion for summary judgment at the TTAB last month, based on the admissions resulting from Camp Monster’s failure to answer Monster Energy’s requests for admission.

If Monster Energy prevails at the TTAB on the issue of likelihood of confusion, won’t this be yet one more example of why our federal district courts should not be bound by the decisions of the TTAB?

Monster Energy has even pounced on another Monster (also labeled a trademark bully) — Monster Cable’s attempts to register the marks MONSTER GEAR and POWERED BY MONSTER, have been opposed by none other than, Monster Energy.

Each Monster has taken the position that its MONSTER word mark is famous. Although I suspect the visual identity of the MONSTER ENERGY brand (top left above) might qualify for a showing of fame, I’m thinking that neither Monster Energy nor Monster Cable can make the claim of fame stick in the context of federal dilution, as to the word MONSTER standing alone, given the existence of the other, and given how niche fame has been ruled out under federal dilution law.

Nevertheless, Monster Energy appears to have no shortage of stamina in pursuing Monster-based trademark enforcement targets, so with Victory Energize sitting out, who will stand in the way?

This Bo might not have won the Heisman Trophy, he might not have played in the NFL or MLB, he might not have enjoyed a lucrative Nike endorsement deal, and he might not have been named ESPN’s greatest athlete of all time, but this Bo — the defiant Vermonter, a/k/a Bo Muller-Moore, knows how to defend his “Eat More Kale” trademark and turn a trademark bully into fried chicken:

As you know, we have been following very closely — and very critically — for more than three years now, Chick-fil-A’s efforts to prevent registration of Bo’s EAT MORE KALE trademark, based on Chick-fil-A’s federally-registered rights in the EAT MOR CHIKIN fast-food slogan:

This dispute really became for me the poster-child example of trademark bullying, and keep in mind, I frequently report on media allegations of trademark bullying, but I have rarely agreed with the pejorative label, for a variety of reasons.

So, Bo, hearty congratulations to you!

What do you suppose was the deciding factor in Chick-fil-A chickening out and deciding not to pursue the filing of a formal Notice of Opposition with the USPTO? Was it, Governor Peter Shumlin’s support? Your able pro-bono legal team? Your successful Kickstarter campaign? Your deft use of the social media shame-wagon? The USPTO finally seeing clearly? Or perhaps the persistently persuasive DuetsBlog coverage?

Or, will we need to await completion of the promised documentary film, to know from Bo?

Either way, Chick-fil-A finally appears to have found a sense of humor, sending this email in response to a Huffington Post inquiry: “Cows love kale too!”

Let’s hope the cows have learned a lesson about straying past the trademark fence on the farm!