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.

-Wes Anderson, Attorney

How much trouble can a double-U make?  If you’ve been following this blog over the years, you know the answer: quite a lot.

This blog has written extensively on the trials and tribulations that may accompany single-letter trademark applications, and the letter “W” in particular.  You may then conclude, quite correctly, that a whole lot of businesses lay claim to the letter “W” in one form or another.  A quick check of the Patent and Trademark Office database yields no fewer than 1,092 applications or registrations for the letter “W” (or, in some cases “WS” where the letters are intertwined).  Of those, there are 919 live registrations for “W.”

The latest chapter in the saga of our alphabet’s 23rd letter sets an app developer on a collision course with two of Major League Baseball’s most iconic franchises.   Evolution Finance, Inc. applied to register the stylized W mark shown below, featuring a sans-serif “W” on a rounded square with a green gradient.  It uses the mark in connection with WalletHub, a “personal finance social network.”

The WalletHub application claims the colors green and white and identifies, among other services,  “creating an on-line community for users seeking financial information” that allows users to “compare financial products” and “engage in . . . social networking services in the field of personal finance.”  After amending the identification of services in response to an Office Action, the mark was published in October 2012.  Smooth sailing, right?

Enter the Chicago Cubs and the Washington Nationals.  The two ballclubs lay claim to the letter “W” as part of their team heritage.  For the Cubs, a blue “W” (for “Win”) flies on a white flag atop the Wrigley Field scoreboard when the Cubs are victorious, ostensibly so commuters riding the “L” train on the north side of Chicago can see whether their team won.   The Nationals, as we have previously detailed, use a loopy, cursive “W” as their primary logo, and also lay claim to a variety of more basic, sans-serif “W” marks as vintage or throwback logos.  Interestingly, it doesn’t appear that the Nationals are currently selling any “throwback” caps on their official store’s website — they all bear the cursive “W.”

The Cubs’ “W” Flag

In the opposition, the Cubs cited its registration for the W mark in standard characters for “fabric flags,” and the Nationals cited its registration for a stylized W mark that identifies “clothing, namely, caps.”  Of course, the clubs’ notice of opposition claims additional common-law services, “including but not limited to, baseball games and exhibits services and a variety of goods as services.”  We’re left to assume the “variety of goods and services” most closely overlaps with WalletHub’s offerings.

The Nationals’ Registration for the W (Stylized) Mark

A brief disclosure: I am deeply and irretrievably biased as a lifelong Chicago Cubs fan.  In college, I was among the many who draped that very white-and-blue “W” flag in my apartment.  But given their travails into free agency during that time, I would be hesitant to seek financial information from the Cubs, except for the price of a bleacher seat this season.  (as much as $66 for a Saturday in June, if you were curious).

The opposition has been fairly dormant since its filing in early 2013.  The last filing on record is an extension of time from December 2014, containing a lengthy report on the back-and-forth(-and-back-and-forth) settlement discussions among the parties.

Things must have turned south since then.   WalletHub turned to the court of public opinion last month and penned a blog post entitled “Major League Bullies: Teams Seek Hypocritical Trademark Ruling.”

WalletHub considers the pending opposition to be “frivolous corporate bullying” and “pure hypocrisy” given the myriad of coexisting trademark applications and registrations that identify the letter “W.”  WalletHub then takes a swipe at the Cubs, quipping that “very few people would associate the Cubs with W’s these days.” Ouch.

In a way, you can understand where the ballclubs are coming from — sports teams are among the nation’s most iconic brands.  And remember those 919 live registrations for the letter “W”?  It turns out that only four of those are for the “W” mark in standard characters — among them, the Chicago Cubs.   A standard character registration conceivably encompasses every possible stylization of the letter.  The Cubs also seem to be very cognizant of the importance of trademark rights — as the blog Uni-Watch has noted, they may be the only professional sports team to embroider the ® symbol onto the logo of its on-field jerseys.

So where will this one come out? Who gets the “W”?  It seems the WalletHub application is more than just a letter – its background shape and color gradient form a stylization onto themselves separate from the letter.  This gives WalletHub’s mark features that distinguish it from a standard-character “W.”  When combined with the difference between the identified services, WalletHub has a fighting chance — if it can stomach an opposition.  Otherwise, here’s hoping for an amicable settlement — after all, it’s just two “U”s put together.  What harm can it do?

It’s no secret that Red Bull has a strong trademark enforcement strategy. Too strong, according to some. In its defense, IP counsel for Red Bull has stated that

With a brand as famous as Red Bull you can certainly imagine the type of coat-tailing that goes on by third parties and we invest a lot of time and money to stop such infringements as the brand is that important to the company.

I agree with the sentiment behind the statement. But sometimes the sentiment gets lost in translation. In 2014, Red Bull pursued legal action against a U.K. brewery that began selling beer under the brand Redwell. After a strong public reaction, the company clarified that:

Red Bull has all along been willing to allow Redwell to maintain its mark for beer so long as they do not use it for energy drinks.

Fair point, but I can’t help but wonder, was there ever any indication that Redwell might sell energy drinks? Do consumers expect producers of beer to also produce energy drinks (or vice versa)?

Fast forward and Red Bull finds itself in a similar situation. On Jan. 28, 2015 the company filed a Notice of Opposition to Old Ox Brewery’s application to register its OLD OX BREWERY mark in connection with beer, ale, lager, stout and porter. Red Bull claims that the OLD OX BREWERY mark is likely to create confusion with its RED BULL mark.

As a general rule, the two main factors in the analysis involves (1) the similarity of the overall commercial impression of the marks; and (2) the relatedness of the goods. Setting aside the issue of whether energy drinks are related to beer (which deserves an article all on its own), my initial reaction is that OLD OX BREWERY is simply too dissimilar to create a likelihood of confusion. Whether marks create an overall similar commercial impression depends on similarities between sight, sound, and meaning of the mark.

Other than the number of syllables, OLD OX doesn’t sound or look anything like RED BULL. Accordingly, Red Bull is relying heavily on the “meaning” of the marks. And that’s where things get interesting.

It certainly wouldn’t be the first time where the meaning of the marks trumped differences in sight and sound. Yet when this occurs, the goods are usually identical. For example, CYCLONE and TORNADO found confusingly similar in connection with wire fencing or PLEDGE and PROMISE found confusingly similar in connection with furniture wax.

So what is Red Bull’s argument for similarity in meaning? Paragraph 9 of the Notice of Opposition alleges that:

An “ox” and a “bull” both fall within the same class of “bovine” animals and are virtually indistinguishable to most consumers. In addition, an ox is a castrated bull.

Apparently Red Bull has little faith in the ability of consumers to distinguish between various classes of bovine animals. That would include cows, bulls, oxen, yaks, bison, buffalo, steer, longhorns, and apparently antelopes (Wikipedia threw me a curveball there).

But Red Bull’s claim does not rest solely on the bovine nature of oxen and bulls, but also the fact that an ox is a castrated bull. The implied claim being that the image of a castrated bull creates the same commercial impression as the RED BULL mark. If that’s the case, I’d suggest sending those legal fees to the marketing department to fix that issue. I knew that Red Bull gave you wings, but I guess I never asked what they took in return.

In my mind, the shared similarity in meaning of a bovine animal does not overcome the stark differences in sight and sound between the marks.  In particular an old ox, having suffered through a particular medical procedure, doesn’t scream “energy drink,” but instead, the polar opposite of the commercial impression that Red Bull tries to create. But maybe I’m missing something, kind of like an old ox.

Simon Bennett, partner and Rachel Cook, associate Fox Williams LLP

Social media companies are some of the biggest growth businesses out there and the very nature of their businesses is global. One of the stronger performers is Pinterest, which offers an online platform to manage images and other content on an online pinboard. As recently as October 2013 it was reported to be valued at USD 3.8 billion. It has also had some success in stopping others from using the name or variations of it in the USA.

Europe is, however different. A recent ruling from the European Trade Mark Registry has caused Pinterest a headache. Pinterest, which had been founded in March 2010, applied to register Pinterest as a trade mark in the European Union in February 2012. However, a UK company, Premium Interest Limited had already applied for a trade mark for Pinterest in January 2012.

Pinterest opposed this application relying on its earlier use of Pinterest it probably thought that it would easily win. However, the European Union Trade Mark Registry rejected the opposition. The big issue? While Pinterest could produce evidence showing that it had significant use in the US, it had failed to show sufficient earlier use in the European Union to prevent Premium Interest Limited’s trade mark application from proceeding. Without this the opposition failed.

What next? Pinterest can appeal, but proof of earlier rights is a factual issue and if the European Trade Marks Registry did not consider that Pinterest had put in enough evidence to show earlier rights in Europe it will be difficult to put in further evidence as the Appeal process only allows fresh evidence in exceptional circumstances. This leaves Pinterest potentially liable for trade mark infringement in the European Union for using the name of its business. No claims can be made until Premium Interest’s mark proceeds to registration and the appeal process in Europe can take between 2 – 5 years so Pinterest may have time on its side at least.

The other options are for Pinterest to either buy or take out a licence for the mark, but this is likely to have a high price tag. Pinterest may, however have little choice – a business, particularly an online social media business, can’t trade under one name in one country and another in another country. At best impracticable – at worst impossible. But how practical is a rebrand at this stage?

The moral of the story is that Pinterest could have avoided all these issues if it had applied to register its trade mark in Europe earlier. A month can be a very long time in the world of trade marks!