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.

 

Two businesses in Indiana are squaring off in a trademark lawsuit over the right to use the term Square Donuts for…well, square-shaped donuts.

Back in 2005, Square Donuts, a cafe with four locations in Indiana, sent a letter to Family Express (a convenience store chain with 70 locations in Indiana), demanding that Family Express cease the use of the term “Square Donuts” for the square-shaped donuts sold in its stores.

The parties wrangled for years about a potential co-existence agreement, in which Square Donuts would allow Family Express to use the “square donuts” term, but they never reached an agreement.

Later, Square Donuts filed a federal trademark application for the word mark SQUARE DONUTS for “cafe services,” claiming use since 1968, and obtained registration in 2013. (Reg. No. 4341135). The USPTO initially refused registration based on mere descriptiveness, but the refusal was overcome when Square Donuts claimed acquired distinctiveness (secondary meaning based on long and substantially exclusive use).

A couple years ago, Family Express filed a preemptive, declaratory-judgment complaint in Indiana federal court, on several grounds–including that the term “square donuts” is generic, and therefore, Square Donuts’s trademark registration No. 4341135 should be cancelled, and Family Express has the right to use that generic term. Additionally, Family Express filed last year a petition for cancellation before the Trademark Trial and Appeal Board (TTAB), also claiming this registration should be cancelled based on genericness. (The TTAB proceeding is currently suspended based on the federal court action.)

The genericness claim is interesting for a couple reasons. First, in both its federal court complaint, and the TTAB petition, Family Express claims the SQUARE DONUTS registration should be cancelled because the term “square donuts” has become “generic…for square-shaped donuts.” But as discussed in previous posts, the genericness inquiry must be tied to the particular goods or services for which the trademark rights are claimed and registered. Magic Wand Inc. v. RDB Inc., 19 USPQ2d 1551, 1553 (Fed. Cir. 1991). Square Donuts registered and claims rights to the mark SQUARE DONUTS for its “cafe services,” particularly as the name of its cafe.

Indeed, in the Board’s order suspending the TTAB proceeding, the Board left a footnote that was critical of Family Express’s genericness claim, and suggested it must be re-pleaded in an amended petition, if the suspension is lifted, because the genericness inquiry must be “based on the recited services in the registration at issue,” namely cafe services, not “square-shaped donuts.” However, as also correctly noted by the Board, a term can be generic for a genus of services, such as cafe services, if the relevant public understands the term to refer to a key or featured good that characterizes that genus of services (e.g., serving square-shaped donuts).  In re Cordua Rests., Inc., 118 USPQ2d 1632, 1637 (Fed. Cir. 2016).

Therefore, the appropriate genericness inquiry here — which will be more difficult for Family Express to establish — is whether the term “square donuts” has become generic for the genus of “cafe services.” In other words, do the relevant consumers refer generally to the genus of cafes (even cafes that feature square donuts), as “square donuts”?

Second, another interesting point is that Family Express still appears to be claiming trademark rights to “Square Donuts” as a brand for their donuts, while arguing the term is generic at the same time. The Family Express website, “Our Brands,” prominently features a section discussing their “Square Donuts” brand, with an introductory paragraph about “our proprietary brands.” This cuts against their argument that the term is generic, meaning it’s not a “brand,” and no party can claim exclusive, “proprietary” rights. I wonder if that website will show up as an exhibit at some point.

What do you think? Will Family Express be able to establish genericness here? Stay tuned for further updates on this dispute.

 

My first post on this blog, nearly two years ago, was about a trademark dispute between the State of Michigan, and a Michigan company, M22, LLC.  M22 sells a variety of merchandise bearing an “M22” mark that appears similar to the route marker signs on Michigan Highway M-22, see photos below.

U.S. Registration No. 3992159

Posted to Flickr by Larry Page. License: CC BY 2.0.

M22 was granted several federal trademark registrations, including an “M22” word mark and several M22 design marks. The dispute escalated began back in 2013, when Michigan filed a petition for cancellation at the Trademark Trial and Appeal Board (TTAB) on several grounds, including that the registration violates federal regulations related to the Manual on Uniform Traffic Control Devices (MUTDC) (among several other grounds which are now less relevant). In August 2016, the TTAB denied Michigan’s motion for summary judgment.

Shortly after the TTAB denied summary judgment, Michigan turned to a different venue, filing a lawsuit in Michigan state court (ultimately resulting in suspension of the TTAB proceeding), against M22 seeking declaratory relief. M22 quickly removed the case to federal court. In its complaint, Michigan alleged that trademark protection for the M22 design in Michigan’s M-22 route marker signs is prohibited based on Federal Highway Administration standards under MUTCD, which provide that any road signage designs (“traffic control devices”) required on federally funded highways, including the M-22 signs, are in the public domain and shall not be protected by patent, trademark, or copyright.

However, last year, the federal court issued an opinion in favor of M22, dismissing the case for lack of jurisdiction. The court held that it lacked jurisdiction over Michigan’s claim for declaratory relief. Furthermore, the court held that Michigan lacked standing as there was no concrete injury alleged. Michigan’s main argument as to concrete injury was that Michigan risks losing federal highway funding if it does not comply with and enforce state and federal laws and regulations, including the MUTCD. The court disagreed, determining Michigan had not alleged facts showing how the registration of M22’s marks would prevent Michigan from complying with the MUTCD, that there was any risk of losing federal funding, or that Michigan has any power to enforce the MUTCD against private third parties.

But Michigan still didn’t give up after losing the federal court ruling. The case was remanded back to state court, where extensive motion practice ensued. The state court ultimately concluded that: (1) Michigan has standing; (2) the MUTCD has the force and effect of Michigan law; (3) M22 LLC is subject to Michigan law; and (4) the M-22 highway sign is a traffic control device under the MUTCD. However, the court declined to determine whether M22’s trademark registrations and use were unlawful under the MUTCD (as Michigan argued), and held the TTAB may lift its stay.

So now the dispute is right back where it started over five years ago, in the trademark cancellation proceeding at the TTAB.  The TTAB lifted its stay last year, and recently granted an extension of discovery to allow M22 to take a deposition of a designee for Michigan. Most recently–just yesterday in fact–Michigan moved again for leave to file a partial summary judgment motion, on Michigan’s claim that M22’s registration should be cancelled for unlawful use in commerce, based on violations of the MUTCD standards. However, the Board had already ruled twice that Michigan was prohibited from filing further motions for summary judgment. Today, M22 filed a request for a telephone conference with the Interlocutory Attorney, stating that briefing on Michigan’s third motion for summary judgment should be unnecessary based on the Board twice prohibiting such a motion.

This has been an interesting saga so far, and it’s fascinating that Michigan has been willing to invest so much time and money vigorously contesting this registration, when it is unclear (as it was to the Michigan federal court) whether there is a significant risk of any concrete injury to Michigan in allowing this mark to remain registered. How do you think this dispute will end up? Stay tuned for updates.

 

Last year I posted about the trademark infringement complaint by PayPal against Pandora, based on Pandora’s rebranded “P” logo that was introduced in October 2016.  See a comparison below of PayPal’s blue “PP” design mark (left) with Pandora’s blue “P” design mark (right).

Last November, the parties reached a written settlement agreement and stipulated to dismissal of the lawsuit.  There was some media coverage of the settlement, but no details of the settlement were discussed in the media nor in any comments from the parties. A spokesperson for PayPal commented only that “we have resolved this matter amicably.” Thus it appears the terms of the settlement were confidential.

Despite such confidentiality, it has seemed, at least for the past few months, that Pandora was on the winning side of the dispute, as it continued using its blue “P” logo without any changes. Nevertheless, since my post last year, I’ve kept an eye on the logo, as it’s relatively common for settlement agreements in trademark disputes to have extended “phase-out” periods, in which a party is given some time period (such as three months) to phase-out an infringing mark and switch to a rebranded mark.

Last week (roughly three months since the date of settlement), I noticed the Pandora logo on my iPhone app had suddenly changed, see below.

 

After some (very brief) searching, I could not find any announcement or mention of the new logo on Pandora’s website or blog, nor on Pandora’s Twitter feed. Nor have I found any other significant media or online discussion of the new logo, yet. This is a bit surprising in light of the extensive marketing and announcements surrounding the previous rebrand.

I believe the logo change occurred about a week ago, based on when my iPhone app updated, but I can’t be sure. Perhaps this is just a temporary or seasonal logo change for other reasons, but I can’t think of a reason why. Nor does it appear to be limited to the iPhone app–the new logo also appears in the Google Play store, on Amazon, on Pandora’s official Twitter account, and its YouTube channel.

Just a wild guess, but perhaps the written settlement agreement required Pandora to change its logo within three months, and also required both parties to remain silent and refrain from any announcements of the new logo? And just another guess, if that’s the case, perhaps Pandora requested confidentiality, and silence regarding the rebrand, to avoid any suggestion that PayPal’s claims were meritorious (i.e., that Pandora’s logo infringed or diluted PayPal’s logo), or that Pandora was on the losing end of the settlement.

What do you think? As I only searched briefly, let me know, have you found any other discussion or media coverage yet of the new logo? Also, what do you think of the new logo from a branding perspective? Not sure I like the contrasting color combinations, but I could get used to it.

Stone Brewing Co., an independent craft brewery based in California, has filed a trademark infringement complaint against MillerCoors LLC and Molson Coors Brewing Co. (collectively “MillerCoors”). The complaint is based on the recent rebranding of the MillerCoors “Keystone” beer. The rebranded packaging separates “Keystone” into two words, with the smaller word “KEY” on a separate line, above the larger word “STONE.” See the photograph below of the rebranded can (Stone Brewing’s co-founder Greg Koch is in the background, looking displeased).

See also the external packaging of the 30-packs, which further emphasize the word “STONE” on the cans:

Stone Brewing owns an incontestable federal trademark registration for STONE (typeset) for “beers and ales” (Reg. No. 2168093).  When MillerCoors rebranded last year, it appears it may have known about Stone Brewing’s registered rights in the STONE mark. MillerCoors had already filed an application to register “STONES” for beer back in 2007, but was refused registration by the Trademark Office, based on likelihood of confusion with Stone Brewing’s STONE registration. After that refusal, MillerCoors abandoned its STONES application.

Nevertheless, when MillerCoors announced its rebranded packaging for Keystone last year, it emphasized that the rebranded can “plays up the ‘Stone’ nickname” for the beer, and further noted that with this rebranding effort, “Keystone Light is grabbing 2017 by the ‘Stones.”

Stone Brewing’s complaint is aggressive and persuasive, but it also includes some playful and humorous language, along with frequent criticism of MillerCoors, including digs at the quality of its beer (or lack thereof), and its decline in recent years as one of the “Beers Americans No Longer Drink.”  Below are a few of my favorite lines (note that “Gargoyle” is a nickname/emblematic self-reference to Stone Brewing)

  • “Since 1996, the incontestable STONE® mark has represented a promise to beer lovers that each STONE® beer, brewed under the Gargoyle’s watchful eye, is devoted to craft and quality. Like all Gargoyles, it is slow to anger and seeks a respectful, live-and-let-live relationship with peers and colleagues – even those purveying beers akin to watered-down mineral spirits. But Stone and the Gargoyle cannot abide MillerCoors’s efforts to mislead beer drinkers and sully (or steal) what STONE® stands for.”
  • “The Gargoyle does not countenance such misdirection of consumers; nor does it support those who would disavow their own Colorado mountain heritage to misappropriate another’s ancestry. Stone accordingly brings this action to help usher Keystone back to the Rockies. Should Keystone not willingly return, Stone intends to seek expedited discovery in aid of a preliminary injunction”

Stone Brewing’s co-founder Greg Koch recently posted a video regarding the dispute, and MillerCoors issued the following public response:

  • “This lawsuit is a clever publicity stunt with a multi-camera, tightly-scripted video featuring Stone’s founder Greg Koch. Since Keystone’s debut in 1989, prior to the founding of Stone Brewing in 1996, our consumers have commonly used ‘Stone’ to refer to the Keystone brand, and we will let the facts speak for themselves in the legal process”

What do you think about this dispute? In my view, it’s more than a publicity stunt. The MillerCoors response about how some consumers may refer to “Stone” for Keystone beer is less relevant than the marks actually used in commerce by MillerCoors. Based on the rebranded packaging’s emphasis of “STONE,” and Stone Brewing’s incontestable registration for STONE for beer, this appears to be a relatively strong complaint. MillerCoors may be rolling a stone uphill on this one. But we’ll have to wait to see its answer and any defenses. Stay tuned for updates.

AM General, manufacturer of Humvee military vehicles, has sued Activision Blizzard for trademark infringement, based on the use of the “Humvee” and “HMMWV” marks for the virtual military vehicles displayed in Activision’s Call of Duty video games. See the complaint here, filed last week in the Southern District of New York. For those of you who are not avid video-gamers, Call of Duty is a military-themed first-person shooter game–and it’s one of the best-selling games in the world, selling more than 250 million copies since 2003.

AM General owns federal trademark registrations for the marks HUMVEE (Reg. No. 1697530) and HMMWV (Reg. No. 3026594), for use in connection with the military trucks that the company manufactures. (“HMMWV” is an acronym referring to High Mobility Multipurpose Wheeled Vehicle.)

This dispute raises issues similar to those I’ve discussed in recent posts (such as here) regarding the gap between trademark use in the real-world, versus trademark use in the virtual realm, such as in video games, which involve depictions of arguably related goods or services. Here, it is questionable whether consumers would be confused as to source. There is no indication that AM General sells video games, or that Activision sells military vehicles.

For example, in E.S.S. Entm’t 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095, 1100 (9th Cir. 2008), the court held that consumer confusion was unlikely based on a video game’s reference to the mark “Play Pen,” referring to a real-world strip club, because: “The San Andreas Game is not complementary to the Play Pen; video games and strip clubs do not go together ….  Nothing indicates that the buying public would reasonably have believed that ESS produced the video game or, for that matter, that Rockstar operated a strip club.”

Nevertheless, confusion as to source isn’t the only actionable type of confusion–there’s an argument that consumers could be confused as to whether there is an affiliation, sponsorship, or approval between Activision and AM General as to the Call of Duty video games and the references to the HUMVEE and HMMWV marks, such as a licensing deal. Such an argument is reinforced by AM General’s allegations in the complaint that it has licensed the use of its HUMVEE mark in several other video games.

However, Activision may also have several defenses, including a nominative fair-use defense. The defense of nominative fair-use may apply where a defendant uses a mark solely to describe and refer to the plaintiff’s product, but not the defendant’s product, for purposes such as comparison, criticism, or simply a point of reference. Here, it would seem that Activision is using the HUMVEE and HMMWV marks nominatively, to refer to AM General’s military vehicles, rather than any of Activision’s products.

A free-speech defense may also apply for artistic expression under the First Amendment. The Rock Star Videos case, cited above, has relevant discussion of this defense in a similar context. In that case, the court applied the Second Circuit’s “Rogers test,” under which “an artistic work’s use of a trademark that otherwise would violate the Lanham Act is not actionable unless the [use of the mark] has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless [it] explicitly misleads as to the source or the content of the work.” Rock Star Videos, 547 F.3d at 1095 (quoting Rogers v. Grimaldi, 875 F.2d 994, 999 (2d Cir. 1989)). The court held that this defense was established, because the San Andreas video game was an artistic work; the reference to the “Play Pen” mark for a strip club had “at least some artistic relevance” (this is a low threshold–the level of relevance “merely must be above zero”); and the reference did not explicitly mislead consumers as to the source of the work.  Id. at 1099-1101.

Similarly here, Activision could argue that its video game and the references to AM General’s marks are merely artistic expression; that the references to the HUMVEE and HMMWV have at least some non-zero level of artistic relevance; and such references do not explicitly mislead consumers.

It will be interesting to see the defenses raised by Activision and how this dispute ultimately plays out. Activision’s answer to the complaint will be due in a couple weeks. How do you think this case will be resolved? Stay tuned for updates.

 

A few months ago I posted about a trademark infringement lawsuit filed by Ornua, seller of Kerrygold® Pure Irish Butter, against Defendants Old World Creamery and Eurogold USA, who briefly sold Irish butter under the mark Irishgold. The court granted Ornua’s motion for a temporary restraining order (TRO), concluding that Ornua had a reasonable likelihood of success on its trademark infringement claims, and that Ornua would suffer irreparable harm based on Defendants’ use of the Irishgold mark.

I concluded my post by suggesting that the grant of the TRO may push the parties to settlement. When a TRO is granted, it sends a strong signal to the parties about how the court may rule down the road at the summary judgment stage, because a key factor in granting the TRO is the court’s determination that the plaintiff has a “reasonable likelihood of success on the merits.”

Following the grant of the TRO, the parties indeed shifted to settlement talks and a mediation. Last month, the parties executed a settlement agreement and filed a stipulated motion for a consent judgment and permanent injunction, which was granted by the court.

Unsurprisingly, several terms of consent judgment and injunction focus on the IRISHGOLD mark, and generally require Defendants to cease use of that mark in connection with the sale of butter and other dairy products, and to expressly abandon the trademark application for IRISHGOLD. However, it is interesting that the consent judgment allows Defendants to continue using the mark “EURO GOLD” for butter, and to maintain the trademark application for EUROGOLD, provided that an amendment is entered with a space or hyphen (EURO GOLD or EURO-GOLD), and provided that the identification of goods “butter and butter blends” is amended to add the exclusionary language “but excluding Irish butter and Irish butter blends.”

I wonder if there is any wiggle room here for the Defendants to the extent there is ambiguity in the meaning of “Irish butter,” as suggested in my previous post. At one end, it seems clear that imported butter that is manufactured, graded and packaged in Ireland, from Irish cow’s milk, is “Irish butter.” But what about butter that is manufactured, graded and packaged entirely within the U.S., but includes milk from Ireland as an ingredient–which is essentially how the Defendants’ butter is made. What do you think?

PayPal, one of the world’s largest online payment companies, has brought a trademark infringement suit against Pandora Media, Inc., the provider of an online music streaming service and application. PayPal alleges that its blue “PP” design mark (below, left) is infringed by Pandora’s recently re-designed blue “P” design mark (below, right).

The complaint alleges federal claims of false designation of origin and dilution, as well as similar state-law claims. False designation of origin is a trademark infringement claim based on an unregistered trademark (Section 43(a) of the Trademark Act), which requires a showing of a likelihood of confusion.

In the likelihood-of-confusion analysis, one factor is the similarity of the marks, on which PayPal’s complaint and media coverage focus heavily. Clearly there are some striking similarities between the marks as a whole, which may weigh in favor of a likelihood of confusion. However, another critical factor is whether the parties’ goods and services are “related” in the mind of consumers. Even identical marks can co-exist without trademark infringement if the goods or services associated with those marks are not related, such that consumers would be unlikely to be confused as to the source of those goods or services (see for example, DELTA airlines, DELTA faucets, and DELTA books).

Case law makes clear that relatedness is not necessarily established as between certain goods and services merely because they all involve software, computers, or the Internet in general. Rather, courts recognize that software is an enormously expansive field that may involve entirely unrelated goods or services. Thus, even where parties with similar marks offer software in a similar format, such as an iPhone app, the parties’ goods and services are not necessarily related if, for example, they involve distinct industries or fields of use. See, e.g., M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1383 (Fed. Cir. 2006) (holding that, despite similarity of parties’ marks containing “M2” for software, it would be “inappropriate to presume relatedness on the mere basis of goods being delivered in the same media format” given “the pervasiveness of software and software-related goods in society,” and “especially where, as here, the goods … are defined narrowly, along distinct industry lines,” namely, pharmaceutical and medical fields versus music and entertainment fields); Elec. Data Sys. Corp. v. Edsa Micro Corp., 23 USPQ2d 1460, 1463 (TTAB 1992) (“[T]he fact that both parties provide computer programs does not establish a relationship between the goods or services, such that consumers would believe that all computer software programs emanate from the same source simply because they are sold under similar marks.”).

It may be difficult for PayPal to establish relatedness as between its payment and money-transfer goods/services versus Pandora’s music streaming goods/services. If relatedness is established here, where is the limit for software? For example, Progressive Insurance also offers a mobile app with a blue “P” logo, shown below. Are insurance services related?

PayPal’s complaint focuses predominantly on the similarity of marks. But the lack of relatedness of the parties’ goods and services may carry the day. On the other hand, PayPal also brought a trademark dilution claim, which does not require the parties’ goods and services to be related. We’ll save discussion of dilution for another upcoming post, with an update on this dispute as it further develops.

What do you think about PayPal’s trademark infringement claim? Do you think consumers would be likely to assume incorrectly that Pandora’s music streaming application and services originate from or are affiliated with PayPal?

You’ve probably heard of and/or eaten Kerrygold® Pure Irish Butter, a deliciously popular (but higher-priced) butter imported from Ireland, made with milk from grass-fed cows. It’s available in most stores across the United States…except for Wisconsin. Sorry to all my Wisconsin friends, you’re missing out. However, the butter is so popular that there have been reports of Wisconsin residents driving across state lines just to buy the Kerrygold® butter.

salted_butter

The reason that Kerrygold® butter cannot be sold in Wisconsin is the state’s protectionist law that requires all butters sold in Wisconsin to be graded through either the Wisconsin or federal grading systems, which effectively bans butter produced outside the United States. Kerrygold® butter is produced, packaged, and graded in Ireland by the Dublin-based company Ornua, and thus can’t be legally sold in Wisconsin.

Recently, a company based in the United States, Old World Creamery, attempted to side step Wisconsin’s law against imported butter. A couple weeks ago, Old World Creamery announced plans to start selling a butter from Ireland in Wisconsin, under the brand name “Irishgold.” The company found a workaround to sell its Irishgold butter in Wisconsin by importing it from Ireland, processing and packaging it in the United States, and then having the butter graded by state-licensed graders in Wisconsin.

Irishgold Packaging

Soon after learning of Old World Creamery’s plans, Ornua Foods North America Inc. and Ornua Co-operative Ltd. (collectively “Ornua”) filed a federal trademark infringement complaint in the Eastern District of Wisconsin against Old World Creamery LLC and Eurogold USA LLC (the “Defendants”). On the same day, Ornua also filed a motion for a temporary restraining order (TRO), seeking to stop Defendants’ use and marketing of the IRISHGOLD mark. Ornua asserted its ownership of several federal trademark registrations, including KERRYGOLD® (stylized) (Reg. No. 883,443) in connection with “dairy products – namely, butter, cheese”, and several KERRYGOLD & design registrations (Reg Nos. 1,452,354; 4,518,032) also in connection with various dairy products.

Last week, the court ruled in favor of Ornua and granted the motion for TRO. Following the well-established factors for granting a TRO, the court decided that a TRO was appropriate because Ornua had a reasonable likelihood of success on its trademark infringement claims, Ornua would suffer irreparable harm if Defendants’ use of the IRISHGOLD mark continued, greater injury would be inflicted on Ornua by denying the motion, and granting the TRO served the public interest.

What do you think? It will be interesting to see whether the TRO will push the parties to settlement, or whether litigation will continue towards trial. For now, it seems that my fellow Wisconsinites will still be making road trips to satisfy their cravings for imported Irish butter. Stay tuned for updates.

Last month, Amazon Web Services (“AWS”) announced a new application, Amazon Chime, for online meetings, including video and voice conferencing, chat, and screen sharing. Amazon Chime will compete against a crowd of other well-established products with similar services, such as GoToMeeting, Cisco WebEx, and Skype.

Just two weeks after Amazon Chime was announced, on February 22, AWS was sued by CafeX Communications for common law trademark infringement. CafeX’s complaint asserted the marks CHIME and CAFEX CHIME, based on its CafeX Chime online conferencing application. CafeX Chime, which offers video and voice conferencing, chat, and document sharing, was launched in February 2016. It won the “Best Of Enterprise Connect” award at the 2016 Enterprise Connect trade show in March 2016.

CafeX brought a motion for a preliminary injunction, arguing a likelihood of success based in part on the parties’ “virtually identical” marks and “identical” products and services. CafeX also argued that AWS was aware of CafeX’s “CHIME” mark and adopted the Amazon Chime mark in bad faith. Regarding irreparable harm, CafeX repeatedly referred to the upcoming 2017 Enterprise Connect trade show in Orlando next week (March 27-29), at which CafeX Chime is the defending “best of” award winner, and at which both parties will be presenting their respective “Chime” products at booths facing each other, a mere 30 feet apart–see the exhibit map below:Exhibitor Booth Map

AWS’s opposing brief argues that CafeX is unlikely to succeed on the merits based on several arguments, including for example: (1) CafeX has not made use in commerce of its asserted marks; (2) CafeX has no protectable trademarks as “Chime” is descriptive for business communication services; (3) the marks are dissimilar based on the “prominent use of [defendant’s] well-known [Amazon] house brand”; (4) there are some differences in the parties’ products; and (5) AWS obtained an Eveready survey that found 0% confusion.  (Note that CafeX vigorously disputes the validity and methodology of AWS’s survey in its reply brief.)

AWS also disputes CafeX’s bad faith argument, stating that although an Amazon employee visited the CafeX Chime booth at the 2016 Enterprise Connect trade show, that employee “had nothing to do with naming Amazon Chime and had never worked on the Amazon Chime team” and that “to the best of Amazon’s knowledge, CafeX was never mentioned by anyone on the Amazon Chime product or branding team” until this litigation. However, AWS concedes that a trademark clearance search was conducted, and then seems to imply that AWS was aware of the CAFEX CHIME mark.

Regarding the balance of equities between the parties (a factor in whether a preliminary injunction is appropriate), AWS stresses that it would be forced to spend hundreds of thousands of dollars and months of time to rebrand its product, reprogram its application, revise websites and marketing materials, and reshoot promotional videos, and that it would be practically impossible to reverse such a re-branding if AWS later prevailed at trial.

What do you think?  Stay tuned for updates on this contentious and high-stakes dispute.  The motion hearing is scheduled for tomorrow, March 24.