Who comes to mind when I list the following character traits: lives in a dystopian metropolis, has a deceased parent, fights criminals, rides a motorcycle, has seemingly-superhero strength, is fearless, has dark hair, and–oh, by the way–his name is “Wayne.” More than that, you learn all these facts about Wayne by watching a trailer for a series about Wayne on YouTube, which informs you throughout that Wayne is a character “from the guys who wrote Deadpool,” a fictional superhero. Take a look for yourself:

It should probably come as no surprise that many people watching the trailer–myself included–thought this Wayne might be “Bruce Wayne,” the well-known secret identity of Batman. The comments to the official trailer demonstrate as much. Consider, for example, the “top comment” for the trailer:

The Bruce Wayne most consumers know is the wealthy orphan owner of Wayne Enterprises by day, crime-fighting superhero by night. YouTube’s Wayne shares many of the same traits (except, perhaps, the wealth), and one could certainly believe that the Wayne series might be an origin story for one of the most popular superheros of all time. Of course, by the end of the trailer, you get the impression that the Wayne you’re watching probably isn’t (though there’s no disclaimer):

In total there are over 7,200 comments for the trailer at the time of writing this post. Since the official trailer, YouTube has released additional teaser trailers for the series, each making it clearer that Wayne probably isn’t Batman. Yet, viewers still aren’t quite sure:

What I find interesting about these comments is that they are a readily-available (though perhaps unreliable) data set for proving, or disproving, the existence of customer confusion. Assume that DC Comics, the owner of the Batman mark and Bruce Wayne character (which does not appear to have been registered, but to which DC Comics could have common law rights and copyright protection) could sue YouTube for infringement or dilution. Arguably, the comments on the Wayne trailers show that consumers are drawing a connection between DC Comics and the Wayne series given the name, mood of the series, and common character traits with Batman. In this, YouTube may be free riding on Batman’s popularity. Depending on just how many comments reference Batman, the comments themselves could serve as strong quantitative data of confusion–akin to the kind of survey data usually used to prove that element of a trademark claim.

On the other hand, many of the comments for the series do not reference Batman or Bruce Wayne. Do non-references indicate a lack of confusion, or perhaps a confusion that is dispelled quickly after watching the trailers? This relates to the doctrine of “initial interest confusion,” which is temporary confusion dispelled before a sale or some other commercial harm, but still may be actionable because the party creating the confusion free rides on another’s mark to gain attention. Since widespread access to the Internet, initial interest confusion cases have increased tenfold, but courts disagree about the vitality of the rule. Regardless, that confusion appears to persist in this situation–as demonstrated by the comments for each new trailer–shows that the confusion here may be of the continuing and uncured variety on which many trademark claims are based.

Wayne fully releases on YouTube in January 2019. There do not appear to be any lawsuits pending at the moment. And there does not appear to be a “Wayne” trademark registration for the series. But if YouTube (or the series’ creators) file for one, DC Comics could oppose the registration–and has done so for similar marks in the past. We’ll keep you updated with any new developments! In the meantime, let us know what you think in a comment below.

M. Shanken Communications, publisher of Wine Spectator — a popular magazine, website and mobile application that offers wine ratings on a 100-point scale — has filed a lawsuit against California-based Modern Wellness, Inc., based on that company’s use of “Weed Spectator” for ratings of cannabis. The federal complaint, filed in New York, alleges claims including trademark infringement, unfair competition, and dilution. The case is M. Shanken Communications, Inc. v. Modern Wellness, Inc. et al., Case No. 18-cv-08050 (S.D.N.Y.).

M. Shanken alleges that the website and social media pages offered by Modern Wellness use the terms “Weed Spectator” and “WS” for cannabis rating publications, which are confusingly similar to M. Shanken’s use of “Wine Spectator” and “WS” marks for its wine rating publications. For example, Modern Wellness also offers a similar 100-point rating scale for cannabis, and the parties’ marks allegedly contain similar font and style. Furthermore, M. Shanken cites to several Modern Wellness pages that associate cannabis with wine.

M. Shanken’s claims will require establishing a likelihood of confusion (except for the dilution claims) based on the Second Circuit’s eight Polaroid factors. Among those factors, two of the most significant are the similarity of the marks and the relatedness (or “competitive proximity”) of the parties’ services. Although there are some similarities of the marks, M. Shanken may have some difficulty establishing likelihood of confusion based on a lack of relatedness between cannabis rating and wine rating.

However, M. Shanken also brought a dilution claim, which does not require a showing that the services are related or competitively proximate. Therefore, M. Shanken may prevail on that claim, if it can prove the use of “Weed Spectator” is likely to cause dilution by blurring or tarnishment. M. Shanken alleged that its marks are tarnished by Weed Spectator because of the association with an illegal drug (under federal law and most states). Nevertheless, the federal dilution claim also requires a showing that M. Shanken’s marks are “famous,” which is a high bar to establish.

What do you think? Would you be confused as to the source of the Weed Spectator mark, or believe there was some affiliation or connection between the parties? Even if not, do you think that M. Shanken’s marks are tarnished or blurred by Weed Spectator? Stay tuned for updates.

Recently, we have been covering updates from a trademark infringement, dilution, and unfair competition action between Buc-ee’s and Choke Canyon, two rival Texas convenience stores with endless rows of gas pumps and checkout lanes (everything’s bigger in Texas, you know; even gas stations). About a month ago, a Texas jury found that the Choke Canyon alligator logo infringes on Buc-ee’s beaver logo:

But as I pointed out when covering the jury’s verdict, it wasn’t clear exactly why these two logos are confusingly similar and to what extent. Could it be the fact that both of the logos contain cartoon animals, who wear hats, who face right, who are smiling, who have red tongues, against a yellow-ish background? Some combination of these features? Additional features? The jury’s verdict doesn’t say; the jury only decided that the Choke Canyon logo infringed, but they weren’t asked to explain why.

However, the jury did send one note to the judge while deliberating, giving some clue as to infringement. In that note, the jury asked, “Does the logo to be considered by the jury in rendering an infringement judgment include a version without words?” To which the Judge responded, “Yes.” Not much insight, but at least we know the jury did not focus on Choke Canyon’s circular ribbon.

The reasons for the finding of infringement often have considerable implications. After such a finding, typically the prevailing trademark owner desires injunctive relief (in addition to damages) against the infringer–in the form of a court order prohibiting the infringer from using the too-similar mark. That form of equitable relief cannot be determined by a jury and has to come from the judge. Still, it seems like it might be useful for the judge, in crafting the injunction, to know why the jury felt the marks were so similar as to create customer confusion. This intuition has recently come to bear as the litigation between Buc-ee’s and Choke Canyon has progressed past trial.

Earlier this week, Buc-ee’s moved for a permanent injunction against Choke Canyon (you can read the motion here). Buc-ee’s seeks a permanent injunction barring Choke Canyon’s use of a whole host of similar logos, which were part of a package of example uses submitted to the jury and sampled below:

Buc-ee’s says that Choke Canyon’s proposed injunction is not expansive enough because it does not include or cover any of the black and white logos, only the colorful ones. Buc-ee’s says it “fought tooth and nail”–great imagery, given that it is represented by a beaver mascot–to obtain the finding of infringement of all marks, regardless of whether they include color. But the color similarities (the red tongues and yellow backgrounds) seem pretty important in the context of an infringement battle that otherwise comes down to smiling beaver versus a thumbs-up alligator.

Even though the jury may have technically considered all of the examples provided by Buc-ee’s, an injunction is an equitable remedy, and the Lanham Act (15 U.S.C. §1116) provides that courts shall issue injunctions “according to the principles of equity and upon such terms as the court may deem reasonable.” As part of this inquiry, courts consider (1) whether the trademark owner has suffered irreparable injury, (2) whether damages are adequate to compensate for the injury, (3) whether, considering the balance of hardships between the trademark owner and infringer, the requested relief is warranted, and (4) whether the public interest would be disserved by a permanent injunction. Courts frequently grant only limited or qualified injunctions and tailor them to the facts of the case, sometimes by restricting certain formats and locations and requiring disclaimers or corrective advertising.

This is all to say that the scope of an injunction in this case and others depends on the circumstances and the court’s view of what is equitable and reasonable–a flexible standard. In trademark, courts focus on what relief is necessary to remedy and prevent consumer confusion, as well as the potential effects an injunction would have on lawful competition–an important factor that should not be overlooked in this case (perhaps not only as to the parties, but also as to the precedent the court might set generally). What do you think that might be? Leave a thought in the comments below.

The Museum of Modern Art in New York City, commonly known as “MoMA,” has sued a cafe and art gallery, MoMaCha, also located in New York City. A couple months ago, MoMA filed a complaint in federal court against MoMaCha, asserting claims of trademark infringement, trademark dilution, and unfair competition. A few days after filing the complaint, MoMA also filed a motion for a preliminary injunction. The case is The Museum of Modern Art v. MoMaCha IP LLC et al., No. 18-cv-03364-LLS (S.D.N.Y.)

MoMaCha’s cafe and art gallery offers matcha green tea along with displays of modern and contemporary art. Similarly, MoMA is a museum that displays works of art, and also offers cafe services, in the same area of New York City. The complaint asserts that the parties’ marks are “extremely similar” because they both share the “MOMA” letters, they are both displayed in black-and-white text, and have similar capitalization, in that the “o” is lowercase and the second “M” is uppercase. Shown below are the parties’ stylized/design marks.In response to MoMA’s motion for preliminary injunction, MoMaCha argued that its name is not similar in look or meaning to MoMA’s name; rather, it is a combination of the words “mo” and “matcha” tea, creatively suggesting “more tea.” Furthermore, after the filing of the lawsuit, MoMaCha asserted that it would reduce any possibility of confusion by changing the style of its name to be all capital letters, “MOMACHA,” and by adding a disclaimer to its doors, menus, and website stating, “We have no affiliation with the Museum of Modern Art or any Museum.” (Their current website already shows these changes.) Additionally, MoMaCha argues that MoMA’s mark is weak and therefore entitled to only narrow protection, because it is simply “four letters written in black and white” which are nearly identical to “the commonly used Franklin Gothic font.”

MoMaCha’s arguments, and its voluntary re-design and disclaimer, are creative. But courts have held that disclaimers are not necessarily sufficient to avoid a likelihood of confusion–and sometimes disclaimers can even add to confusion. MoMA might have a difficult time winning a preliminary injunction, based on the high standards that are applicable. Nevertheless, the allegations of the complaint are compelling, based on the similarity of the marks and the relatedness of the parties’ goods/services that are offered in the same city.

How do you think this one will turn out? The briefing on MoMA’s preliminary injunction motion was completed last week. The court denied MoMA’s request for an oral argument, so a decision could be issued at any time, perhaps within the next month or two. Stay tuned for updates.

 

About a week ago, we reported on an interesting case out of the Southern District of Texas involving two competing convenience stores with cartoon animal mascots: Buc-ee’s (a beaver) and Choke Canyon (an alligator).

As someone who has personally visited Buc-ee’s stores, I can tell you that they are quite the destination. Buc-ee’s tend to be absolutely massive, with checkout lanes (everything’s bigger in Texas). People even buy T-shirts with Buc-ee’s logos on the front, with various Texan sayings on the back. I personally own three of them. So it’s kind of an understatement to call Buc-ee’s a “convenience store,” by Minnesota standards. And one can hardly complete a description of Buc-ee’s without noting that it is considered to have the “best bathrooms in Texas.”

Credit: Houston Chronicle

Choke Canyon? Yeah, its locations are pretty big too, but the mascot is far less cuddly. Though, it has a nice saying above the exit that probably wouldn’t work at Buc-ee’s: “See ya later, alligator.”

Credit: Yelp

Buc-ee’s sued Choke Canyon for a variety of claims, including: trademark infringement, dilution, unfair competition, and unjust enrichment. We cover these topics frequently on DuetsBlog (check out the topics column).

I must admit that when I first read about the suit, I could hardly believe it. I agree with my colleague that “the best I see from this case is that Choke Canyon may make consumers think of Buc-ee’s stores and beaver, but consumers don’t seem likely to assume that that there is a connection between the two.” And I also think that ” if it weren’t May, I’d assume this was an April Fools Day joke.”

But it’s no joke, and after a four-day jury trial and six hours of deliberation, Buc-ee’s won on all fronts. Specifically, the jury answered six questions (downloadable here):

  1. On Buc-ee’s claims for trademark infringement of its Buc-ee’s Logo, do you find for Buc-ee’s or Choke Canyon?
    • Jury answer: Buc-ee’s
    • Interestingly, the jury sent one note to the District Judge during deliberations, asking “Does the logo to be considered by the jury in rendering an infringement judgment include a version without words?” To which the Judge responded, “Yes.”
  2. Do you find that Buc-ee’s Logo was famous throughout Texas before Choke Canyon’s use of the Choke Canyon Logo?
    • Jury answer: Yes
  3. Because the jury answered “yes” to question 2, they skipped question 3 (which pertained to specific geographic areas in Texas).
  4. On Buc-ee’s claim for dilution by blurring of its Buc-ee’s Logo, do you find for Buc-ee’s or Choke Canyon?
    • Jury answer: Buc-ee’s
  5. On Buc-ee’s claim for unfair competition, do you find for Buc-ee’s or Choke Canyon?
    • Jury answer: Buc-ee’s
  6. On Buc-ee’s claim for unjust enrichment, do you find for Buc-ee’s or Choke Canyon?
    • Jury Answer: Buc-ee’s

I am surprised by the generality of the questions presented to the jury, and it’s interesting that the jury was not asked about damages–perhaps the issue was bifurcated and will be tried to a different jury.

Question 1, and the jury note, suggests to me that the jury was allowed to focus purely on the similarities between the cartoon animals in the above logos, disregarding Choke Canyon logo’s ribbon stating “Choke Canyon Travel Centers.” But even then, the only obvious similarities are the orientation of the mascots, the yellow background, the wearing of a hat, and their smiles and red tongues. It is hard to believe those basic, nominal characteristics are enough to show consumer confusion and infringement. Maybe Choke Canyon has a good chance on appeal or at judgment notwithstanding the verdict.

And I cannot help but wonder, in view of Question 2, whether the fact that Buc-ee’s mark was famous throughout Texas prior to Choke Canyon’s use of its alligator mark played the most important role in the jury’s verdict. Perhaps the jury felt that Choke Canyon intended to ride on Buc-ee’s mark. Indeed, at closing argument, Buc-ee’s counsel reminded the jurors that a survey showed more than 80% of Texans recognize the Buc-ee’s logo. But I tend to agree with Choke Canyon’s closing argument that the lawsuit seems directed at stifling competition, rather than truly protecting consumers–pointing to Buc-ee’s own prior statement that it only noticed the potential for consumer confusion when Choke Canyon began buying property in towns where Buc-ee’s operates. I find it hard to believe that a reasonable consumer would seriously confuse the two mascots and think they were associated. But apparently two actual-consumer witnesses testified in Buc-ee’s favor on this point. Texas sure is a strange place sometimes.

In recent USPTO news, Trader Joe’s, the supermarket chain known for its eclectic and unique foodstuffs, recently filed an opposition to registration of the mark “Trader Schmo,” which is described as designating a wide variety of Kosher foods. Understandably, Trader Joe’s took issue with the mark, and particularly its use in the food category. The company instituted an opposition (which I cannot help but note is #999,999), arguing that “Trader Schmo” will confuse consumers because consumers will naturally switch “Joe’s” with “Schmo,” given the popular phrase “Joe Schmo.”

This is not the first time Trader Joe’s has taken legal action to protect its brand. Notably, just a couple years ago the company sued “Pirate Joe’s,” a counterfeiter with a backstory almost too unbelievable to be true. Pirate Joe’s was a “rebel Canadian grocery operation,” which bought Trader Joe’s products in the United States and “smuggle[d] them across the border to Vancouver” to sell them. Pirate Joe’s eventually ran aground under the immense pressure of its legal fees.

Pirate Joe’s Comes Crashing Down, Credit: Georgia Straight

This new dispute reminds me of the famous “Dumb Starbucks” experiment by comedy TV series Nathan For You. Over one weekend in 2014, the show opened a coffee shop that looked just like a real Starbucks, except that its name and every drink it sold was preceded by the word “dumb.” The comedian behind the prank (or “art“) claimed that “Dumb Starbucks” was permissible fair use because both the use of the Starbucks mark, as well as the store itself, was one big parody. One cannot help but notice some parallels to Trader Schmo; the latter word refers to a hypothetical “dumb” person.

Comedian Nathan Fielder, Credit: New Yorker

Dumb Starbucks and Trader Schmo raise difficult questions about permissible comedic use under trademark law. On the one hand, the marks free ride on the notoriety of other marks, bringing attention. On the other, it seems unlikely the marks would cause actual consumer confusion, making them harmless jokes. Whether Trader Schmo runs afoul of the Lanham Act will likely depend on two major inquiries: (1) whether it constitutes infringement or dilution, and (2) whether statutory fair use defenses apply.

InfringementPreviously on this blog, I explained that infringement usually centers on likelihood of confusion, which is evaluated using a variety of factors:

whether the use is related, the strength of the mark, proximity of the use, similarities of the marks, evidence of actual confusion, marketing channels employed, the degree of care likely to be exercised by consumers, the user’s intent in selecting the mark, and the likelihood of expansion of product/service lines.

The factors could support a finding of infringement here. The uses are related (food). The strength of the Trader Joe’s mark rides the line between arbitrary and fanciful to descriptive; who is Trader Joe in the abstract, and what does he sell? Surely the marks are similar…sounding. But on the other hand, would an average Joe really mistake Trader Schmo for Trader Joe’s? As a counter, though, it seems reasonable to infer that Trader Schmo was selected because it is similar to Trader Joe’s.

Dilution: So there might be infringement. How about dilution? This occurs when the similarity between the accused mark and a famous mark is likely to impair the distinctiveness or reputation of the famous mark. Dilution does not require any actual or likely consumer confusion. Depending on how good Trader Schmo’s Baba Ganoush, Gefilte fish, Matzo ball soup, and Borscht taste, Trader Joe’s could have an argument for dilution–especially if Trader Schmo’s grows large enough to undermine the distinctiveness of Trader Joe’s as a famous brand.

Fair Use: Generally speaking, the fair use provisions for infringement and dilution both require: (1) that the accused mark be used in a descriptive sense and not as a mark, and (2) that use of the accused mark be fair and in good faith. However, fair use does not provide a defense to infringement if there is likelihood of confusion–but we’ll gloss over that for now.

First, Trader Schmo could arguably be descriptive, delineating traded products. And the word ‘schmo’ has Jewish roots, which could describe the Kosher foods the mark designates. On the other hand, Trader Schmo isn’t inherently descriptive in that it actually describes a product or a characteristic or quality (e.g., Vision Center, a store for glasses). And it’s being used as a mark. So fair use might not even apply.

Assuming descriptiveness, the second element (the ‘fair’ aspect of the doctrine of fair use) often implicates the kinds of First Amendment interests that protect parody, satire, and criticism. But there’s no indication that Trader Schmo is intended to comment on Trader Joe’s. Moreover, courts have rejected the idea that a use is “fair” or in good faith if its similarity to a protected mark is deliberately concocted to garner attention. Trader Joe’s could have a good case for that here–just as Starbucks likely had against Dumb Starbucks.

A high-level analysis of the Trader Schmo mark suggests it could constitute infringement or dilution and is not fair use. This conclusion underscores trademark law’s general distaste for humor when it comes to commerce, as opposed to actual social commentary and comparison.

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

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

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

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

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

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

-Wes Anderson, Attorney

I hesitate to add to the fallout from Matal v. Tam, the Supreme Court’s decision last week invalidating the disparagement clause of Section 2(a) of the Trademark Act. That said, here I go.

Many trademark practitioners, separate and apart from their reaction to the decision itself, now ask “where do we go from here?” The next shoe to drop, it seems, will see courts assessing the constitutionality of other provisions of the Lanham Act. One prevalent target – dilution, and it seems some observers are not optimistic about its future. Over at SCOTUSblog, Lisa Ramsey suggests “dilution laws and other expansive trademark doctrines that allow the government to prohibit or punish non-misleading uses of protected trademarks may not survive constitutional scrutiny after Tam.” She argues “Companies accused of trademark dilution may be able to argue that the dilution statute is an unconstitutional content-based regulation of non-misleading expression and is facially invalid under the First Amendment.”

This raises a broader question, one I have wondered since first studying trademark law: is the “bite” of trademark dilution as bad as its “bark”? It’s certainly fodder for trademark litigation – dilution claims are part and parcel of virtually all infringement complaints for famous trademarks. For a quick primer, “Trademark anti-dilution laws are intended to enable trademark owners to prevent the gradual weakening or whittling away of the strength of their marks, through blurring or tarnishment, even if the public is not likely to be confused.”

Screen Shot 2017-06-30 at 8.23.51 AM Screen Shot 2017-06-30 at 8.23.45 AM

An aptly-timed study from New York University entitled Is Trademark Dilution a Unicorn? An Experimental Investigation raises the same question, and raises a controversial conclusion: “dilution is theoretically plausible, but remains empirically unproven.” According to the study, the conventional wisdom to support trademark dilution relies on “a set of studies showing that respondents are slower to match brands to their product categories and product attributes after being exposed to an advertisement for a different product using the same or a similar brand name.” But the study’s authors say these studies were flawed – their “evidence of trademark dilution is actually the artifact of a flawed experimental design that fails to control for the effect of seeing a surprising advertisement.”

Food for thought as the Tam precedent spreads into other trademark statutes – the constitutional question may be less compelling than the empirical question – that is, whether dilution statutes protect consumers at all.

A specialty coffee roastery in San Francisco, Supersonic Coffee, has decided to rebrand to the name AKA Coffee, as reported yesterday.  The impetus for the rebrand was an opposition at the Trademark Trial and Appeal Board (TTAB) by the national fast-food chain Sonic, against Supersonic Coffee’s trademark application for the word mark SUPERSONIC.  This trademark application (Serial No. 86382164) sought registration of the mark SUPERSONIC for various coffee-related goods, such as “beverages made of coffee; beverages with a coffee base; coffee … roasted coffee beans,” etc.

Sonic filed its Notice of Opposition at the TTAB last year against Supersonic’s trademark application, alleging that registration should be refused under Trademark Act Section 2(d) based on a likelihood of confusion with Sonic’s registered marks, including: SUPERSONIC® for hamburgers and burritos; and various SONIC® word and design marks for drive-in restaurant services, hamburgers, onion rings, french fried potatoes, hot dogs, candy, and soft drinks.

The Notice of Opposition also asserted a likelihood of confusion with Sonic’s marks SONIC WAVE® for drinking water; SONIC SPLASH® for flavored waters and soft drinks; SONIC SUNRISE® for orange based fruit juice; SONIC CHILLERS® for candied ice milk confections; and SONIC BOOM® for energy drinks.

Sonic also alleged that its registered marks are famous, and that registration of the SUPERSONIC mark should be refused under Trademark Act Section 43(c) because the use of that mark would be likely to dilute Sonic’s famous marks.

Supersonic Coffee never filed an answer to the Notice of Opposition.  Therefore, in January of this year, the TTAB entered a default judgment against Supersonic Coffee and refused registration of the applied-for SUPERSONIC mark.

Now, Supersonic Coffee made the decision to rebrand to a new name:  AKA Coffee.  The press release by the formerly-named Supersonic Coffee, announcing the rebranding, seemed to suggest that it was bullied into the name change, characterizing its situation as a:

David vs. Goliath fight between a small business and a multi-billion-dollar company, where a small upstart is forced to close or change names … this time it’s happening in the specialty coffee industry.

On the other hand, Supersonic never filed an Answer to the opposition, and its own press release also explains that Supersonic hired “one of the top IP firms in the country” (which appears to be Kilpatrick Townsend & Stockton LLP, based on the attorney information in the trademark application and in the TTAB records for the opposition).

Rather than a case of bullying, perhaps this is a case where the startup applicant simply realized that it had unintentionally selected a mark that infringed on some major registered brands, and that it was unlikely to succeed in an expensive TTAB opposition proceeding.  Moreover, perhaps this case of “bullying” resulted in some mutually-beneficial rebranding to a more appealing and creative mark (at least in my opinion).  As the press release explains:

The AKA name is playful, personal, and embraces the moments when we enjoy a cup of coffee, whether it is a quick break or a meditative pause. Call it what you will, to us it is AKA Coffee.

The AKA Coffee website also explains:

Enjoying coffee is a personal affair, from the beans you brew to the cup you choose. Whether a quick break or a meditative pause, we’d like to make those moments more delicious. Call it what you will, to us it’s AKA Coffee.

Although the new AKA Coffee website is not yet operational, a preview of the rebranded AKA Coffee designs, products, and merchandise may be viewed in this news posting.  In my view, the rebranded AKA Coffee name and designs are more memorable and creative than the previous “Supersonic” name, which was based on the ambiguous tagline: “We are Supersonic. We’re on a mission to make awesome coffee that breaks barriers.”

I think the AKA Coffee rebranding is a big improvement.  What do you think?  Which brand do you like better?

Across the United States this week, fans rejoiced as baseball returned. Teams took to the diamond and played the first games to count since last year’s World Series. Players, coaches, and fans all turned the page on last season, starting with a clean slate and an undefeated record. But while the players battled on baseball diamonds across the country, a different type of “diamond” battle is taking shape in a New York court.

Cooperstown Bat Co. makes and sells bats with the mark PRO DIAMOND. Both the COOPERSTOWN BAT mark and the PRO DIAMOND mark appear on Cooperstown’s bats, as shown in the photograph below.

Cooperstown Diamond Pro Bat

On June 9, 2015, Cooperstown filed an application register its PRO DIAMOND mark with the U.S. Patent and Trademark Office. However, on Sept. 27, 2015 the Examining Attorney issued an Office Action refusing registration, finding that the PRO DIAMOND mark was likely to create confusion with prior registrations comprising the term DIAMOND in both standard character form and stylized variations, all owned by Diamond Baseball Company (doing business as Diamond Sports). Diamond Sports’ registrations covered other baseball equipment, including baseballs, gloves, protective gear, clothing, and bags.

On December 1, 2015, Diamond Sports sent Cooperstown a cease and desist letter, demanding that it withdraw the application. When the parties were unable to reach an agreement, Cooperstown filed a declaratory judgment action in U.S. District Court for the Northern District of New York, requesting a ruling that Cooperstown’s use of PRO DIAMOND does not infringe upon Diamond Sports’ rights in its DIAMOND mark.

The complaint alleges that the term is generic for “baseball fields” and that the word has a well-known association with baseball generally. Due to this meaning, Cooperstown claims that a number of third-parties use marks that include the word DIAMOND in connection with baseball-related goods and services. Cooperstown included the table reproduced below as a sample of these third-party marks (some of which are registered). Relying on this evidence, Cooperstown alleges in its complaint that DIAMOND “is generic and/or descriptive when used in association with baseball-related goods and services” and that the term “is not a strong or distinctive mark in the field of baseball.”

Third-party marks - DJ Action

Cooperstown also argues that there is no likelihood of confusion due to Cooperstown’s use of its COOPERSTOWN mark on the bats. Notably, the term is not included in its application to register the PRO DIAMOND mark and therefore would not be considered as part of the likelihood of confusion analysis as to the mark identified in the application (as opposed to the mark as used in commerce).

Cooperstown’s arguments have some merit. The term “diamond” is, at a minimum, highly suggestive of a baseball diamond. It could potentially be descriptive in the sense that DIAMOND describes the intended purpose of the goods – to be used on baseball diamonds. But the evidence is not overwhelming. A quick search of the U.S. Patent and Trademark Office database revealed a number of third-party registrations that contain the term DIAMOND in connection with some type of baseball product or service. However, only two registrations identify sporting equipment.

Further complicating matters is that Diamond Sports’ registrations for their standard character marks have been registered for more than five years, meaning that they cannot be challenged on the ground that the marks are merely descriptive. As a result of the foregoing, Diamond Sports’ also has a reasonable basis for its objections to Cooperstown’s attempt to register the mark. Even if Cooperstown were to ultimately prevail, the disparity between the parties’ legal positions is unlikely to justify an award of attorney’s fees.

If Cooperstown prevails, it could obtain a registration for the PRO DIAMOND mark, a mark which Cooperstown considers to be so descriptive and potentially generic that “it is not strong or distinctive.” In light of this, is the investment in a federal court action worth the potential payoff?

A preliminary clearance search prior to filing the application likely would have identified Diamond Sports’ registrations, and would have confirmed that, while there was an argument that the term DIAMOND is weak in the field of baseball generally, there was not significant evidence that the term DIAMOND was week in connection baseball sporting equipment specifically. The records of the U.S. Patent and Trademark Office suggst that an application was likely to receive a refusal. Would Cooperstown have been better off not applying to register the mark at all and instead “fly under the radar?” Filing the application and receiving a refusal ran the risk that Diamond Sports could learn of the Cooperstown’s use and send a demand letter (is it too late for a spoiler alert?).

While “hope springs eternal” is perhaps the most popular baseball quote at this stage of the season, I’m reminded of an equally well-known baseball maxim: never make the last out at third base. For those uninterested in baseball, it simply means don’t take unjustified risks. Even if you make it to third, you still need the batter to get a hit to score a run. Maybe by the end of the season we’ll know which maxim is more applicable to the PRO DIAMOND mark.