Cease and Desist Letter

Last October, as you may recall, I wrote this in a post entitled “The Mark of a Real Trademark Bully“:

[T]he U.S. Patent and Trademark Office (USPTO) is currently seeking information about various litigation tactics, including whether “you think trademark “bullies” are currently a problem for trademark owners, and if so, how

Seems as though any trademark owner who sends a cease and desist letter is bound to be called a trademark bully by someone. In fact, the USPTO has extended the period for comments by a month with a new deadline of February 7, 2011.

If you had started selling shirts, pants, and  under the trademark and brand KAKATOO, and you received a cease and desist letter from someone selling shoes under the trademark and brand DELICIOUS, would you not be crying foul and/or applying the ever-popular label “trademark bully”?

Obviously, I don’t believe the USPTO is a trademark bully, but asking the question, and discussing some recent likelihood of confusion refusals issued by Examining Attorneys at the USPTO, I believe, helps put in perspective the recent flurry of discussion and concern of trademark bullying. It also reinforces the power of federal trademark registrations.

This is how the Examining Attorney at the USPTO initially refused registration of KAKATOO for clothing, based on a prior registration for DELICIOUS for shoes:

Applicant’s mark KAKATOO is confusingly similar to the registered mark DELICIOUS because KAKATOO is the foreign equivalent of “delicious.”

Under the doctrine of foreign equivalents, a mark in a foreign language and a mark that is its English equivalent may be held to be confusingly similar. TMEP §1207.01(b)(vi); see, e.g., In re Thomas, 79 USPQ2d 1021, 1025 (TTAB 2006); In re Hub Distrib., Inc., 218 USPQ 284 (TTAB 1983). Therefore, marks comprised of foreign words are translated into English to determine similarity in meaning and connotation with English word marks. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772,396 F.3d 1369, 1377, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005). Equivalence in meaning and connotation can be sufficient to find such marks confusingly similar. See In re Thomas, 79 USPQ2d at 1025.

The support for this refusal is below the jump.


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–Susan Perera, Attorney

Like most 20-somethings who went to college during the rise of this social media monster, I am quite familiar with Facebook. However, I wasn’t aware of the website Lamebook until the current legal dispute began. Lamebook, a self-proclaimed, “humor blog” was designed to allow people to share the most “ridiculous” things

Years ago I recall hearing a veteran trademark lawyer warn intellectual property continuing legal education attendees, "When your toolbox only has a hammer in it, everything in your world starts to look like a nail."

Fair enough. It’s time for all of us to revisit the contents of our professional toolbox.

Last week, following the firestorm of criticism surrounding Best Buy’s cease and desist

–Dan Kelly, Attorney

By now, I assume that our readership is familiar with the “God Squad” story of this week’s news cycle.  If not, the executive summary is that Best Buy recently sent a cease-and-desist letter to a priest in Fond du Lac, Wisconsin requesting that he cease using a logo on his black Volkswagen