Trademark owners should beware of a scam involving the Amazon Brand Registry. There have been several reports of rogue users exploiting the Amazon Brand Registry through the unauthorized modification of trademark registration records at the U.S. Patent and Trademark Office (USPTO). These scammers are submitting fraudulent requests to change the email addresses for trademark registrants, and thereafter, updating the brand ownership records with the Amazon Brand Registry.
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.
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.
Many people will access eBay this month to purchase that special gift for the holidays. In doing so, there are many products listed on eBay that are associated with valuable trademarks.
In a previous blog post, “New York Provides No Assistance to ‘The Little Blue Box’ Company,” we informed you that a district court had found that Tiffany & Co.—not eBay—was responsible for protecting its brand and trademark on the auction site. In other words, eBay was not responsible for keeping its users from selling fake jewelry with the Tiffany & Co. name. eBay was only required to take appropriate action after it had received notice of the infringement, presumably from Tiffany & Co. Since this post, the United States Court of Appeals for the Second Circuit affirmed the decision for the most part. The only issue remanded back to the district court was whether eBay’s use of Tiffany & Co.’s trademarks constituted false advertising.
In May 2009, the United Kingdom had issued a ruling in favor of eBay that it was not liable in connection with trademark infringement claims brought by L’Oréal SA, but had referred the question of what eBay should have to do to stop parties from selling infringing products to the European Court of Justice.
Last week, the advocate general to the European Court of Justice issued an opinion recommending vindication for eBay from L’Oréal SA’s trademark infringement claims. Specifically, he held, among other things, that eBay was not liable: for using trademarks as keywords or for trademark images posted by its users. The opinion discussed the differences between a paid Internet referencing service provider such as Google (where a recent EU decision had found it not liable for trademark infringement) and an operator of an electronic marketplace such as eBay. The advocate general opined that an operator of an electronic marketplace (such as eBay) benefits from the sale so it should be treated differently. Accordingly, once such an operator had knowledge of the infringement and failed to stop it, then the operator could be found liable. Although his opinion is not binding, the European Court of Justice will consider the advocate general’s opinion in issuing its own decision.
Trademark infringement is not the only intellectual property dispute facing eBay. It also is being sued in Delaware by XPRT Ventures LLC for patent infringement. Specifically, the suit relates to e-commerce payment systems (e.g., Pay Pal’s pay later, checkout system, buyer credit and balance manager). There are even allegations that eBay attempted to patent XRPT’s technology as its own.
These will likely not be the last actions brought against eBay involving intellectual property.