Shares in McDonald’s jumped surprisingly high earlier this week, causing some to wonder whether any notable investors might be involved, possibly with inside information. Or maybe it was somebody hoping to get an inside track on McDonald’s Monopoly game, which began yesterday (do the stock certificates come with as many peel-off game pieces as a super sized soda?). Or maybe, just maybe, it had something to do with the Trademark Trial and Appeal Board (the Board)’s impending decision in the McDonald’s v. McSweet opposition. Has the NFL become so dysfunctional that bookies have turned to taking odds on the outcome of Board proceedings?

McDonald’s opposed McSweet’s application to register its MCSWEET mark in connection with various pickled vegetables. The Board issued its decision yesterday. The issue before the Board was whether registration of MCSWEET would be likely to cause confusion or dilution with McDonald’s claimed family of MC- formative marks. Steve discussed this dispute back when oral arguments had just been scheduled. What was interesting is that McDonald’s claimed rights in numerous registered and unregistered marks, essentially arguing that, although it phased out use of various marks, that the overall effect was to create consumer recognition of any MC- formative mark as being associated with McDonald’s, at least in connection with food products. Steve wondered whether the Board would give any credence to McDonald’s MC- family of “fluid trademarks.”

Unfortunately, the Board didn’t venture into such interesting areas. Instead, the Board relied only on the MC- marks that are currently in use to find that McDonald’s owned a family of MC- formative marks. In reality, the legal issues in the case aren’t that entirely interesting. But wow. The decision certainly provides a ton of great trivia about McDonald’s history. For example, did you know that, at some point in time, McDonald’s has sold food under all of the following marks: MCPIZZA, MCCHILI, MCD.L.T., MCCOLA, MCCOOKIE, MCBURGER SUPREME, and more?

The decision even offers more than just the unbelievably strange notion that McDonald’s used to sell pizza (PIZZA!). In an effort to prove that consumers associate MC- formative marks with McDonald’s, the company relied upon a number of advertising campaigns to show their efforts to reinforce this association. The decision references what appeared to be a terrible 80s attempted-rap used in a commercial.

Proving yet again that the internet is truly the most amazing thing ever, containing so much of the most unimportant things ever, 30 seconds later I was enjoying this gem:

So it wasn’t a rap song, but still pretty terrible though (and come on, no way that’s a camera. That’s the size of a laptop…).

Back to the decision though. McSweet counterclaimed to cancel the registrations for MCPIZZA, and the other marks referenced above, based on abandonment. McDonald’s voluntarily surrendered them. But unfortunately for McSweet, the Board still found MCSWEET likely to create both a likelihood of confusion and dilution with the McDonald’s family of marks that were still in use. Thus, the Board sustained the opposition.

Although the decision doesn’t break any new legal ground, it provides a comprehensive outline as to why Board decisions should not be granted preclusive effect in infringement litigation (Just in case RBG or Alito are reading…). Among the arguments rejected by the Board:

  • McDonald’s products are only sold in restaurants! (no channel of trade limitations set forth in the identification of goods, so the Board presumes all normal channels)
  • We sell expensive gourmet products! (no class of consumer restrictions set forth in the identification of goods, so the Board presumes all classes of consumers)
  • Nobody would confuse the products based on the trade dress! (the application is for a standard character mark and not limited to any particular trade dress)

All of these factors would have been considered by a district court in an infringement analysis. And the trade dress claim in particular may have carried substantial weight (No golden arches, no red and yellow on the packaging, etc.). McSweet had a number of arguments that it was literally precluded from making in front of the Board because of the limited nature of the proceedings (not exactly a full and fair opportunity to litigate…). It’s a bit like going to McDonald’s and being told that they’re out of everything but the filet o fish. Yeah, technically you had an opportunity to eat, but did you really?

Here’s to hoping the Supreme Court does the right thing in B&B hardware. If not, it won’t be long until plaintiffs take their favorable Board decisions to district court to super size their successful oppositions into full fledged awards of damages and attorneys fees.

– Mark Prus, Principal, NameFlash

Schoolhouse Rock fans already know this, but it took a January 2014 publication in the Journal of Marketing for marketers to get confirmation.

I blogged about Procter & Gamble’s “Secret of the Number 7” a few years ago on DuetsBlog, and later observed that their “magic number” had dropped to 5.

Well now there is scientific evidence that the actual magic number is 3.

The publication was titled: “When Three Charms but Four Alarms: Identifying the Optimal Number of Claims in Persuasion Settings”. The authors Suzanne B. Shu & Kurt A. Carlson conducted a study where consumers were shown messaging that consisted of one, two, three, four, five and six positive claims about a product such as shampoo or a breakfast cereal or even a politician.

For example, in the case of the “six claim” breakfast cereal situation, participants were told:

“Imagine that you are shopping at the grocery store and you notice that a brand of cereal you sometimes buy has a new package design. As you look closer you discover that they have also changed the product itself. The packaging says that it is now:

“Healthier, better tasting, crunchier, sweeter, organic, and with higher quality ingredients.”

After the participants saw the messaging, the researchers measured the attitude of each respondent to gather positive or negative impressions. They also measured the amount of skepticism the respondent had about whether the messaging was intended to inform them or to push them to choose a particular product.

The results clearly demonstrated that those who read three claims rated all of the subjects of the ads (e.g., breakfast cereal or politician) significantly more positively than respondents who had read the ads with one, two, four, five or six positive claims. The results seemed to indicate that adding additional positive claims increased appeal until the third claim, but after the third positive claim, additional claims increased skepticism which in turn lowered the overall level of persuasion.

So 3 really is the “Magic Number,” at least when it comes to adding positive claims to your advertising!

Coca-Cola just announced it is introducing Coke Zero in India, which will make it the sub-brand’s 149th market in the world, a truly remarkable reach.

As the popular Coke Zero brand is approaching its tenth anniversary in the U.S., it seems like a good time to explore Coca-Cola’s trademark position in COKE ZERO and COCA-COLA ZERO here in the U.S., especially given the news last week that the beverage giant escaped a trademark infringement suit over the marks in the Northern District of Illinois.

After looking into that case, I was surprised to see, as long as Coke Zero has been on the market  — none of the ZERO marks sought by Coca Cola have registered, all seventeen remain pending in the U.S., including COKE ZERO, COCA-COLA ZERO, SPRITE ZERO, PIBB ZERO, VAULT ZERO, and POWERADE ZERO, among others.

In fact, the series of ZERO marks has been the subject of at least two very large and significant consolidated trademark oppositions at the TTAB of the USPTO, since 2007, and the one brought by Royal Crown Company (RC) remains active — in fact, the case was fully briefed this past summer and Coca-Cola requested just last month that the Board schedule final oral argument in the case. In the Royal Crown opposition, RC contends that Coca-Cola must disclaim any exclusive rights in the term ZERO, as that term is either generic for zero calorie beverages or merely descriptive without any secondary meaning or acquired distinctiveness.

The other consolidated opposition was brought by AMBEV, back in 2007, also asserting mere descriptiveness and lack of secondary meaning, but AMBEV’s consolidated opposition was dismissed just over two years ago by the TTAB, as the Board was convinced at that time, Coca-Cola had established acquired distinctiveness in its ZERO marks based on the factual record developed in that case.

So, if ZERO marks can be owned in connection with beverages, how did Coca-Cola escape liability in the trademark infringement suit in the Northern District of Illinois last week? The plaintiff in that case had asserted exclusive common law rights in NATURALLY ZERO for spring water, but it admitted to gross sales of $150,000 between 1998 and 2004, no production or sales after 2004, and no attempt to resume sales until 2010, well after Coca-Cola had launched its ZERO series of beverage products in the U.S.

Moreover, the plaintiff there had admitted NATURALLY ZERO communicated “no calories, you know, a drink about nothing . . . .” As a result, the court granted summary judgment to Coca-Cola, ruling as a matter of law that the plaintiff’s merely descriptive mark had not acquired distinctiveness, and even if it had, the claimed NATURALLY ZERO mark had been abandoned.

Coca-Cola has been careful to straddle the fine lines of trademark protectability, since it has found itself on both sides of trademark disputes. Taking the position that ZERO is descriptive permitted Coke to defend the above-referenced trademark infringement challenge, while at the same time maintain that Coca-Cola’s juggernaut of marketing, sales and promotion established that is has acquired distinctiveness in its ZERO marks.

Yet, it remains to be seen whether Coca-Cola will prevail in the consolidated opposition brought by Royal Crown Company, perhaps its most significant challenge to date regarding the ZERO series of marks. I’ll have to say, RC’s Trial Brief makes out a pretty strong case for finding ZERO generic for zero calorie beverages. In other words, is ZERO like LIGHT for beer, STONE OVEN for pizza — basically denoting the name of a product category instead of a source identifier?

In the end, given the Board’s recent genericness rulings regarding Subway’s claimed FOOTLONG mark, and Frito-Lay’s successful PRETZEL CRISPS challenge, it will be worth watching to see whether the Board finds that “ZERO” primarily means Coke or just a soft drink having “no calories, you know, a drink about nothing . . . .”

— Neil F. Anderson, Founder & President, The Courage Group, Inc.

Now days, it’s tough for any business, regardless of size, to successfully compete and win new business.

The days of signing up new clients or customers with ease are long gone. The past recession, the anemic economy, the fierce competition and impact of the internet have all made it very difficult to close the sale. Now you have to fight “tooth and nail” to get more new customers.

Breaking News: The reasons really don’t matter. What matters most is generating revenue, continuing to pay the bills, grow the business and stay out of the business failure graveyard.

What will help? Three words-offer more value. Try this strategy on for size, always give people more value for their hard earned money.

Eight Offering More Value Tips

1. Do Your Homework-To win new business, by adding more value, you first need to know what the other guy is doing. That means updating or writing your business plan.

A business plan is simply a written description of what you are going to do and how you are going to do it. It is your roadmap to success.

One of the best reasons for writing a business plan is that it will force you to examine your competition. You can’t add value to your products or services until you have a strong understanding of what your competitors are offering.

Note-Check out the below entrepreneurs, who recognized the value of writing a business plan. Recognized the opportunity to add more value, based on their knowledge of the competition, then delivered it in order to win business and successfully grow the company.

* Phil Knight/Founder of Nike/Annual Revenue-$24 BB/44,000 employees

* Fred Smith/Founder of FedEx/Annual Revenue-$46BB/300,000 employees

* Jim Koch/Co-Founder/Sam Adams/Annual Revenue/$794MM/840 employees

* Jeff Bezos/Founder of Amazon.com/Annual Revenue-$74MM/132,000 employees

Continue Reading Show More Value, or Lose The Sale

Our friend Professor Eric Goldman, over at his Technology and Marketing Law Blog, reported earlier this week that the Google trademark has survived a genericness attack by a fellow named David Elliot. Here is a link to Mr. Elliot’s complaint filed in Arizona federal court back in May of 2012, and here was Martha’s coverage. And, here is more coverage at the time labeling the challenge as being from the “land of slightly crazy lawsuits.” And, here is the Arizona federal court’s decision rejecting the genericness challenge. There.

Mr. Elliot’s focus in attempting to take down the Google trademark was primarily directed to the common verb meaning of the word to search the internet using any search engine, but the court wasn’t moved:

“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.”

The court noted that even if the third meaning was proven, the first meaning is the key meaning because the “undisputed evidence is that the consuming public overwhelmingly understands the word google to identify a particular search engine, not to describe search engines in general.”

Does this decision slam the door to all successful genericness challenges based on the verbing of your favorite brands? It would be a mistake to read it that broadly, in part, because the plaintiff was an individual, and the defendant was, well, Google — a brand reportedly worth more than $150 billion.

While you will recall that I have not been a nervous nellie when it comes to the risks of genericide based on the verbing of brands, if your opponent is not an individual and you’re not Google, this reading on the subject of trademark verbing and the risk of genericide is still highly useful and recommended:

Having said all that, I’m thinking the brand managers over at Rollerblade must be breathing a sigh of relief with this decision.

How concerned are you about genericide?

As some of you may recall, I posted about a lawsuit Manuel Noriega brought against purveyors of the Call of Duty video game franchise arising from his depiction in the game.  In essence, I suggested that Noriega’s lawsuit was unlikely to succeed because his fame and notoriety that he accused the game of misappropriating arose from ghastly acts that he committed in connection with his dictatorship in Panama, and the law would avoid rewarding such notoriety.

By way of update, Activision and its attorneys (who include Rudy Giuliani) recently filed a motion to strike Noriega’s Complaint.  Activision relies on California’s Anti-Slapp statute and the contention that Activision’s depiction of Noriega is protected by the First Amendment.  Slapp stands for “strategic lawsuit against public participation.”  As you can guess, then, an “Anti-Slapp” statute is intended to curb practices where targets of public criticism file  lawsuits to censor, intimidate, and silence critics.

It will be interesting to see how this motion plays out.  While the brief is very well written, and while my knowledge of California Anti-Slapp motions is minimal, my initial reaction is that this just doesn’t feel like a proper case for an Anti-Slapp motion.  As set forth in California’s statute itself, the purpose of the statute is to “encourage participation by all segments of our society in vigorous public debate related to issues of public interest.”   Activision admits throughout its brief that its portrayal of Noreiga is fictionalized.  And while this might ultimately help it prevail if the case moves past the Anti-Slapp stage, I’m not sure it helps in getting this case kicked out now.

As a practical matter, it doesn’t seem to me that a party’s right to use historical characters to lend context to fictional narratives has any relation to “public debate related to issues of public interest.”  The only thing the brief really says about the public interest is “there is an obvious public interest in, among other things, the historical contexts of Panama, Central America, and other ‘hot spots’ of the late 1980’s that the game depicts, as well as in creative works about the deployment of U.S. special forces in foreign countries.”  While this statement (which was relegated to a footnote) may be true, I don’t understand how an admitted fictionalization of these historical contexts supports vigorous public debate.

Its very possible that the Court will just want to get rid of this case early, and this gives it an opportunity to do so. I would not, however, consider this motion a slam dunk.

–Ben Kwan, Attorney

Dozens of former NFL players lit up the federal court docket here in Minnesota with filings on Monday targeted at Defendants including the National Football League, NFL Films, Inc., and NFL Productions, LLC.

The retired players’ suits are the latest in a line of cases dating back to about 2009 when former players first brought claims alleging, as the players have asserted in these new cases, that the Defendants “have earned substantial revenue by producing promotional films and selling products featuring the identities of retired NFL football players,” including the various plaintiffs who filed suit Monday.

The suit goes on to allege that the “Defendants’ glorification of NFL history is a vital component of its present marketing and revenue-generation efforts.”

The players are seeking compensation for the NFL’s use of their likeness and names in promoting NFL Films’ productions under Section 42(a) of the Lanham Act. The players who filed suit in this latest round of complaints have all opted out of a settlement class in a prior class action suit, Dryer v. NFL, 09-CV-2182 (D. Minn.), according to one of the new complaints filed by Plaintiff Douglas Buffone. Buffone played for the Chicago Bears from 1966 to 1979, according to his complaint.

The class action settlement these players opted out of resulted in, among other things, the creation of a licensing agency to market the group rights of retired NFL players, according to the Minnesota law firm representing the class, Zimmerman Reed, PLLP. The league also agreed to pay $42 million to a fund set up to support former players with health and welfare interests, according to class counsel.

Ostensibly, all the former players who filed suit this week are seeking to get a better deal.

This much is true of many of these players: they came of age in a very different era of American professional sports. It was an era where the riches of today were perhaps unforeseeable.

Back in 2009 after these claims started making their way into court, Bob Stein, a seven-season NFL veteran and attorney for several of the retired players, told Law360 that he didn’t have one teammate back early 1970s who did not have an off-season job.

“My fourth year, I went from $25,000 to $30,000,” Stein told Law360 in 2009. “I thought I was stealing, because we had all-pros making $35,000.”

Could those players – and the players who renewed their efforts to get sums they feel entitled to from the NFL this week – have foreseen the cash bonanza that their vocation would beget just a few decades later?

This is starting to sound like a time-old parable about history repeating itself, but brand management, including personal brand management, has to be more of an offensive play at the outset rather than a defensive recoupment someday down the line. I’ve grossly oversimplified today’s example to make the point. But it begs the question, what are you doing to protect your high-potential clients from the future heartache of clawing-back their portion of unforeseen-yet-not-wholly-unpredictable or impossible rewards?

More than three months ago, we sounded the alarm about an important trademark case to consider the interplay between the right to register and the right to use a trademark:

“Every so often there is a moment when trademark types, marketing types and brand owners need to pay close attention to where the law could be headed. Today, I’m sounding the alarm.

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.

The SG’s amicus brief encourages the Supreme Court to review the case, and it seems likely the Court will do so. If so, let’s hope the Court is flooded with thoughtful amicus briefs to help it get this important issue right. At a minimum, INTA should weigh in as a friend of the court.”

By way of follow-up to that discussion, the Supreme Court has agreed to decide the B&B Hardware case, it is hearing oral arguments on December 2, 2014, and I’m pleased to report that we weren’t the only ones recognizing the importance of having the Supreme Court reach the right answer to this question: “The impact (if any), of a prior win or loss (on the issue of likelihood of confusion) at the USPTO’s Trademark Trial and Appeal Board (TTAB) on a later federal district court trademark infringement case involving the same marks and parties.”

Although the Court wasn’t “flooded” with amicus briefs, it does appear to have received four briefs from some heavy-hitter amici:

The SG’s amicus brief, as well-written as it is, fails to appreciate the very limited scope of TTAB jurisdiction, the full extent of its unique practices and procedures in deciding likelihood of confusion for purposes of registration, and unfortunately the influential SG takes the following misguided position (without respecting the TTAB’s own view of its limited jurisdiction, much less appreciating the negative impact that the threat of preclusion will have by necessarily escalating the stakes, intensity and expense of administrative Board proceedings going forward):

“When the Board concludes in an opposition proceeding that a likelihood of confusion does or does not exist with respect to particular usages, that determination precludes relitigation of the likelihood of confusion question in a subsequent infringement action between the same parties for the same usages.”

IPLAC’s amicus brief oddly concluded:

“[T]he Supreme Court should be aware as follows: (1) a significant dichotomy exists in the nature of cases resolved by the Trademark Trial and
Appeal Board, (2) TTAB cases routinely function as typical federal litigation cases, with discovery and trial, pursuant in part to the Federal Rules of Civil
Procedure and Evidence, and (3) the Seventh Amendment may be implicated and trump any other consideration in the case.”

AIPLA’s amicus brief eschewed a bright line test, noting preclusion is possible, but rare:

“AIPLA respectfully requests that the Court clarify that a TTAB decision on likelihood of confusion can, in appropriate and narrow circumstances, have a preclusive effect, and that if a TTAB decision is denied preclusive effect because the issue is not the same, then no deference is due. However, deference may be appropriate where a TTAB decision is denied preclusive effect for other reasons.”

INTA’s amicus brief correctly concluded a bright line test is appropriate, no preclusion:

“INTA urges this Court to rule that: (1) TTAB determinations on the likelihood of confusion do not have preclusive effect in subsequent civil court proceedings; and (2) district courts should determine, on a case-by-case basis, whether, and to what extent, TTAB’s determinations should be afforded deference, but such deference should be limited to fact issues that were identical and fully litigated and should not prevent a party from offering other evidence and arguments that may nevertheless compel a different result.”

In my opinion, INTA’s amicus brief is the only one to score an A. INTA’s amicus brief did a very impressive job of communicating the clear difference between how likelihood of confusion is addressed at the TTAB in determining the right to register, as compared to how likelihood of confusion is addressed in federal courts across the country — with brand owners having far more at stake in the latter, including injunctive relief, damages, and attorneys fees.

What I don’t recall seeing in any of the amici briefs is the impact on likelihood of confusion in deciding requests to register standard character marks at the USPTO, a potentially much broader right than those acquired through actual use in commerce. (I double-checked, and it appears there is one small reference in AIPLA’s brief, and none in the other amici briefs). In any event, my experience is that the vast majority of oppositions and cancellations involve standard character marks of at least one of the parties, so it seems like a point worth making.

Simply stated, being denied a request for a broader registered right does not automatically warrant a finding of infringement. As we’ve said before: “[J]ust because a brand owner is denied the right to register doesn’t necessarily mean that actual infringement has occurred, injunctive relief is appropriate, or monetary relief is warranted.”

It seems to me that the TTAB’s frequent focus on the registration of standard character marks, in oppositions and cancellations, reinforces INTA’s point about how the 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. See In 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.

How do you see the Supreme Court deciding this important case for brand owners who enforce their trademark rights or have their right to register challenged at the TTAB?

Last week more allegations of “trademark bullying” appeared in the headlines. This time, Victory Energize, an energy drink company based in Missoula, Montana, is calling out Monster Energy for sending a cease and desist letter to Victory. Monster’s demand letter is said to charge Victory with infringement of Monster’s distinctive trade dress. So, what say you?

Victory’s preemptive strike and declaratory judgment complaint seeks to gain a hometown advantage, asking a federal court in Montana to declare that Victory Energize’s trade dress does not constitute unfair competition or violate any federal, state, or common law. It also asks for an award of costs and attorneys fees, labeling Monster a “trademark bully” for alleging likelihood of confusion claims that Victory asserts have “no legal or factual basis,” while dredging up some unflattering history pinning Monster as the poster-child for so-called prior “trademark bullying” conduct:

“Because of what is perceived as an overly aggressive stance on protecting its trademark rights beyond their actual scope of protection, [Monster], and its predecessor, Hansen Beverage Company, have been accused of being a “trademark bully” in the media and in law review articles. See, e.g., Leah Chan Grinvald, Shaming Trademark Bullies, 2011 Wis. L. Rev. 625 (using Monster Energy as the example of a trademark bully in the very first paragraph); Sara M. Andrzejewski, Leave Little Guys Alone!: Protecting Small Businesses from Overly Litigious Corporations and Trademark Infringement Suits, 19 J. Intell. Prop. L. 117, Fall 2011.”

“In part, [Monster’s] conduct (via its predecessor-in-interest, Hansen Beverage Company, which was perceived as a trademark bully led to Senator Patrick Leahy seeking Congressional funding to study trademark bullying. See, Ex. C: Rob Petershack, Trademark Bullies to be Studied, WTN News, Oct. 10, 2010; see also. Trademark Technical and Conforming Amendment Act of 2012; S. 2968, 111 Cong. (2d sess. 2010) (Pub. L. No. 111-146).”

What matters in this case, however, will be the allegations relevant to the facts of this dispute, not others’ opinions about prior Monster conduct unrelated to Victory Energize. Given the likely fame of the iconic Monster trade dress (although Monster gets an F for not seeking any federally registered trade dress protection, only one of its registrations even claims rights in the color green), the directly competitive nature of the products, and the close similarity of at least the visual impressions of the above logos, I’m having a hard time getting all jacked up about a “trademark bullying” claim here.

Amazon product reviews seem to suggest that consumers are able to differentiate the different energy drink brands, but that doesn’t refute the possibility that survey evidence could establish that consumers assume a connection with Monster and Victory — perhaps Victory is Monster’s lower cost version? Will discovery end up showing that Victory mimicked the elements of Monster’s trade dress to gain commercial traction and the media attention it has obtained through the filing of this lawsuit? Seriously, should Victory be surprised that Monster actually came knocking?

After all, the visual appearance of these competing logos is pretty similar. Are there differences? Yes, but the similarities will be weighed more heavily, and the price point of these products and their condition of purchase, probably puts them in the category of impulse purchases (which are more likely to result in confusion).

And, what about a dilution claim, where no likelihood of confusion is required for Monster to prevail? Monster must have a heavy dose of brand equity bottled up in the visual impression of its iconic green/white/black aluminum cans. Victory’s declaratory judgment complaint is silent on the question of dilution of a famous mark. Perhaps because Monster didn’t discuss in its opening cease and desist letter, but I suspect that if Monster answers it will not only counterclaim for trade dress infringement, but also take the position that its trade dress comprising a black background, with a green stylized single letter, and white stylized brand name above the word ENERGY in the color green is famous and diluted by the Victory trade dress for competing goods.

Depending on how Monster crafted its cease and desist letter, it might also decide to bring its own action in California and ask the Montana action to be dismissed as anticipatory — basically start a fight over where the fight will be decided. Query whether doing so, however, will play into Victory’s argument that Monster is Goliath, picking on David, simply because it doesn’t like cheaper competition (Victory’s energy drinks are positioned as low cost, only 99 cents per can). Time will tell, so stay tuned.

The complaint is pretty bare bones, but it appears to place too much emphasis on the fact that the USPTO issued this stylized trademark registration:

The problem for Victory, of course, is that the mark it registered claims no color as part of the mark, so the color similarities are invisible to the USPTO. So, this may be perhaps yet one more example of why registration decisions from the USPTO should not control or bind federal judges in infringement or dilution litigation.

Although it is clear that Monster knew about this filing and did nothing to oppose it, can you blame Monster, given the absence of a color claim?

What Monster might be blamed for is waiting too long to object, as Monster clearly knew about Victory’s application more than two years ago, and Victory claims to have been in the marketplace since at least as early as January 1, 2012, more than two years ago. What I’d want to know is when Monster first became aware of the Victory trade dress shown above in green/white/black aluminum cans (USPTO specimen was filed in November of 2012, so was Monster watching the progress of this application?).

Marketing types, would you expect the Victory trade dress to pass scrutiny of the legal team? Are you surprised that Monster Energy cares? Does that make it a trademark bully?

Ever tried to search for directions on your so-called “smart” phone by the name of your intended destination?   What if it directed you to the museum you searched, but unwittingly not the museum you intended to visit…in the same area?  As if there were not enough things to be afraid of in New Jersey like Snookis or bridge closures, that could very well happen to you in the borough of High Bridge.

This is the historic Solitude House in High Bridge, New Jersey.

 

This is also a historic house in Hampton, New Jersey referred to as Solitude House and operated by Union Forge Heritage Association (“UFHA”).  UFHA owns a federal trademark registration for SOLITUDE HOUSE MUSEUM for “museums.”  Their Facebook page identifies the house as Solitude Heritage Museum.  More on that page in a minute.

As I probably don’t have to tell you, they are not the same house.

Hampton, NJ and High Bridge, NJ are 4.9 miles apart.

The borough filed a trademark application for SOLITUDE HOUSE for services listed as “historic house and museum” claiming a first use date of December 31, 1776. I’m guessing that it wasn’t offering services as a historic house and as a museum as of that first use date, December 31, 1776, nor was it a use in interstate commerce since that requirement comes from the Commerce Clause in the Constitution, which was not ratified in New Jersey until 1787. But I digress.

Prior to filing the application, the borough petitioned to cancel UFHA’s registration through the Trademark Trial & Appeal Board on what appears to be a likelihood of confusion claim and possibly a void ab initio claim regarding UFHA’s right to register the mark, although not plead as such.

Apparently UFHA leased the Solitude House for High Bridge (the first one up there) and operated it as a museum, but their leasing deal ended in 2012 and an agreement to renew was not reached. If the lease agreement did not address ownership rights in any trademarks related to the property, generally the tenant would have all rights in a mark that they created and indicated the tenant as the source of the services. So there’s a tip here to make sure that even lease agreements properly establish ownership of trademark rights.

Back to the Facebook page, UFHA posted the following:

 

“There has not been a Solitude House Museum before or since” – that language implies that they have abandoned the trademark without intention to resume use, which would result in cancellation of the mark.

So, what can you take away from the Solitude House trademark issue? If you are working on a lease where naming rights of a property may ever be an issue, or there’s a name already associated with the property, you should consider adding trademark language to the lease agreement providing for which party would own the trademark. If you’re not working on a lease, this issue might give you some pause about doing a clearance search with an attorney before using a mark. And at the very least the Solitude House might make you consider searching by address and writing down your directions so there’s no chance of “re-routing” you to the wrong place.