Preliminary Injunctions

There’s been a major update in the trademark infringement lawsuit brought by the Museum of Modern Art (“MoMA”) against the cafe and art gallery, MoMaCha in New York City.

MoMA’s motion for a preliminary injunction was recently granted by Judge Louis Stanton of the Southern District of New York. As we discussed previously, the infringement allegations by MoMA were compelling, and it appears the court agrees that MoMA is likely to succeed on its claims, based primarily on the similarity of the marks and the relatedness of the parties’ goods/services in the same city (both parties display works of art along with offering cafe services). The court was particularly persuaded by the similarity of the vertical use of “MoMaCha,” as seen on the coffee cup above, with MoMA’s similar vertical use on the museum building signage above. (See Order at p. 18.)

The court’s preliminary injunction bars MoMaCha from continuing to use its name, logo, and the momacha.com domain name, at least while the legal proceedings are pending. As of today, the previous website, www.momacha.com is no longer accessible.

Instead, it appears that MoMaCha has already rebranded to a slightly different name, by changing one letter: MaMaCha, with a new website already available here: www.mamacha.nyc

Unfortunately, that probably won’t be sufficient to satisfy MoMA’s trademark infringement concerns. Indeed, the New York Times reported that MoMA has already sent a letter to “MaMaCha” regarding the new name and demanding that they cease use. The demand letter closes by stating:

Changing the ‘O’ in MOMACHA to an ‘A’ merely indicates your clients’ continued contempt for MoMA’s trademark rights. Your clients’ decision to change to a mark of such an infringing nature will be done at their peril.

As discussed in my last post, in the midst of trademark infringement allegations, extra caution is warranted. Just as one should be cautious with business expansion under an alleged infringing mark to mitigate damages, extra care is also warranted in selecting a new or modified mark (whether voluntarily or by court order) to avoid similar or further infringement claims, as there will be extra scrutiny and potentially over-aggressive enforcement by the opponent in the present dispute.

And as a practical matter, if one has to expend the effort and resources to re-brand, it may be more cost-effective to make a more significant, lower-risk change, rather than pushing boundaries with a minor change that may again be challenged, instigating further litigation expense, and requiring another re-brand. In many cases, simply changing one letter may not sufficient. Based on these developments thus far, I’m sure there will be interesting updates to come, so stay tuned.

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?

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.

HoustonLawsuitGraphic

A trademark problem, that is, as reported by the Texas Tribune on Friday of last week.

Lest you be fooled by the above reference to Houston College of Law being established in 1923, the name has only been around since June of 2016.

In fact, when South Texas College of Law rebranded to Houston College of Law in June, the University of Houston Law Center jumped into federal court with both boots and within five days of the announcement, seeking a preliminary injunction, to temporarily stop the use while the case proceeds through the court system to an eventual trial.

Last Friday the federal district court granted University of Houston Law Center’s request for a preliminary injunction, in a detailed 42-page decision, holding:

There is a substantial likelihood of success on the merits of UH’s trademark infringement claim under the Lanham Act: at least two of UH’s marks, “UNIVERSITY OF HOUSTON” and “UNIVERSITY OF HOUSTON LAW CENTER,” are eligible for protection; UH is the senior user of these marks; and there is a likelihood of confusion between UH’s marks (both individually and collectively) and Defendant’s use of “HOUSTON COLLEGE OF LAW.”

And, herein lies the problem for South Texas College of Law: Does it really make sense to litigate for a year or more to try and convince the court there really is no likelihood of confusion, after it already has ruled that University of Houston Law Center has established a “substantial likelihood of success on the merits” of its trademark claim?

South Texas College of Law appears to believe so, and is prepared for another lengthy legal fight, so stay tuned for more as this case proceeds.

The court has scheduled a hearing for Wednesday to determine a “feasible timeline” for South Texas College of law to comply with the injunction, and to determine whether the University of Houston Law Center will need to post a bond, and if so, in what amount, in case it is later determined that the grant of the injunction was not warranted.

As a marketing type or brand manager, suppose you faced this kind of problem, after running into a legal brick wall and being ordered to cease using the chosen new brand name, under what circumstances would you fight in the court system for a year or more for the legal right to hopefully change the court’s mind so you can change your brand name once again?

Is this why many trademark disputes resolve by way of settlement after the grant or denial of a preliminary injunction?

UPDATE:

Above the Law covers the story, here.

Move over likelihood of confusion, there is another sheriff in town, at least when it comes to looking for guidance on best practices and strategic considerations for a brand owner’s clearance, registration, protection and enforcement of trademark rights in the United States.

As if us dedicated trademark types didn’t already have enough likelihoods (confusion, dilution, success, jurisdiction) to consider, weigh and balance. Dabblers probably best step aside.

Now, thanks to the recent Supreme Court decision in B&B Hardware, Inc. v. Hargis Industries, Inc., we must factor in the likelihood of preclusion too, throughout the trademark life cycle.

After noting that “the idea of issue of preclusion is straightforward,” but admitting it “is challenging to implement,” the Court broadly held that “a court should give preclusive effect to TTAB decisions if the ordinary elements of issue preclusion are met.” (emphasis added)

This broad holding begs the question of what other types of issues decided by the TTAB — beyond the likelihood of confusion question before the Court — may result in the application of issue preclusion. Priority? Inherent Distinctiveness? Genericness? Functionality? Descriptiveness? Acquired Distinctiveness? Fame? Dilution? Intent to Deceive? Bona Fide Intent to Use? Fraud? Intent to Deceive the USPTO? Intent to Resume Use? Abandonment? Laches? Deceptiveness for False Advertising? False Suggestion of Connection for Right of Publicity Violations?

As to the likelihood of confusion question (which the Court found to be fundamentally the same for registration and infringement purposes), the Court unclearly directed: “So long as the other ordinary elements of issue preclusion are met, when the usages adjudicated by the TTAB are materially the same as those before the district court, issue preclusion should apply.” (emphasis added) As is typical when the Supreme Court speaks, more questions are raised than answered.

Does the Court contemplate anything other than the potential for unregistered common law rights and restricted channels of trade when it refers to “usages adjudicated by the TTAB”? What about applications and registrations for typed drawing marks versus stylized marks? What about the presence of house marks and/or famous trade dress on packaging, but not included in the drawing of the applied-for mark? What about goods listings that are appropriate under USPTO rules (e.g., jewelry), but broader than what might be in actual use to support the registration or application (e.g., lapel pins)? Does a cautious following of B&B Hardware counsel in favor of seeking to register narrower trademark claims that include only the stylized version of a mark used with the sleekest description of goods possible?

Exactly what does the Court mean by materially the same usages? Does it contemplate partial preclusion scenarios? Does the materially the same reference invoke the material alteration standard? Does it invoke the “can’t materially differ” standard in trademark tacking cases? If so, under Hana Financial, doesn’t that question go to a jury? Yet, in B&B Hardware (argued to the Supreme Court on the very same day as Hana Financial), the Court wasn’t troubled by the absence of juries in TTAB decisions.

Perhaps most notably, the word “should” appeared twenty-six times in the majority opinion of the Supreme Court’s B&B Hardware decision, and the word “shall” only appeared five times (each of the five references related to specific statutory language), leaving me to ask, must a district court apply issue preclusion when the Supreme Court thinks it should, when the Court specifically avoided use of the words shall and must? In other words, is the decision of preclusion left to the sound discretion of the district court?

One of the other million dollar unanswered question remains: How does one predict the likelihood of preclusion?

For those looking for absolute certainty, don’t clear and adopt a mark for use you can’t federally register, don’t apply to register a mark likely to be opposed unless you can win and you’re prepared to see it though, don’t start defending an opposition if you aren’t prepared to see it through, but if you do and lose, by all means take a de novo appeal to federal district court if you’re a losing opposer who may want to force the use to stop, or if you’re a losing applicant who wants to keep using the applied-for mark.

For the rest of us who are comfortable living with some level of uncertainty, it’s time to read the tea leaves with a view to predicting not only likelihood of confusion, but the likelihood of preclusion too.

Over the past five years, we have spilled a lot of black digital ink discussing trademark ownership of single colors. Color continues to be an important aspect of branding and differentiation in a variety of markets, including many you’d expect, and some you might not.

Christian Louboutin’s red color trademark helps to illustrate the importance of single color trademarks in the fashion industry.

Tiffany’s robin egg blue boxes help to illustrate the importance of single color trademarks in the luxury jewelry marketplace.

Although brown may not be the most glamorous color, it has done a lot for UPS, who has believed it can do a lot for you too.

Let’s not forget where this whole single color trademark ownership concept started, with Owens-Corning and the color pink for fibrous glass building insulation, remember the Pink Panther campaign?

And, while we’re on the subject of pink, what about T-Mobile’s magenta (hot pink) trademark recently afforded protection against AT&T’s use of a plum color in the wireless telecommunications industry? Here is a link to a copy of the decision granting T-Mobile a preliminary injunction against AT&T earlier this month.

Lest you operate under the misapprehension that color trademarks are limited to consumer goods and services, a couple of recent decisions from the Trademark Trial and Appeal Board (TTAB) demonstrate that color ownership is important to those in the medical device industry too.

As our friend John Welch covered so well over at the TTABlog, just last month:

“In a ‘somewhat unusual’ likelihood of confusion case involving the comparison of two color marks, the Board affirmed a refusal to register the color ‘teal’ for ‘medical devices, namely, guiding sheaths for use in conjunction with access needles, wire guides, and dilators for providing access for diagnostic and interventional devices in vascular and non-vascular procedures.’ The Board found the applied-for mark likely to cause confusion with a registered mark comprising the color “blue” applied to the tip and indwelling length of catheters. In re Cook Medical Technologies LLC, 105 U.S.P.Q.2d 1377 (TTAB 2012) [precedential].”

Now John — wearing the advocate hat for Covidien — as a service to all trademark types, has identified another tool that might be used to facilitate the coexistence of “teal” and “blue” marks, or in his client’s case, “red” and “pink” marks in the field of medical devices.

In Covidien LP v. Masimo Corporation, John defeated a motion to dismiss his petition for partial cancellation of a prior and blocking single color mark registration under Section 18 of the Lanham Act. His plan appears to be to compel a narrowing of the “red” registration, to the specific shade of red allegedly used by Masimo, “fire engine red” — Pantone PMS 185, so that Covidien’s pink (Pantone PMS 806) mark can peacefully coexist at the USPTO without any likelihood of confusion. Who knows, maybe he’ll be able to leverage a consent to registration now from Masimo?

But if not, the T-Mobile decision mentioned above didn’t seem to put much stock in the narrow shade-specific language found in the registration at issue there:

“This court finds and concludes that the Supplemental Register’s reference to Rhodamine Red U does not limit the mark protections T Mobile seeks.”

In part, because the facts showed that different shades of magenta had been used over time by T-Mobile. Any thoughts about whether this different perspective might be applied to impact whether Covidien is granted its request to compel a “narrowing” of Masimo’s single color registration from “red” to “fire engine red” and/or Pantone PMS 185?

How would you attempt to avoid having a broadly worded single color registration narrowed in a partial cancellation action under Section 18 of the Lanham Act?

Might it help to avoid slavish consistency of one exact Pantone shade of color? Might that impact your ability to establish acquired distinctiveness or secondary meaning in the first place?

A month ago the hot news was the federal copyright infringement lawsuit filed by Mike Tyson’s facial tattoo artist S. Victor Whitmill against Warner Brothers Entertainment, and Whitmill’s attempt to block the Memorial Day release of the highly anticipated blockbuster sequel movie The Hangover Part II, based on the film maker’s unauthorized reproduction and/or derivative of the tattoo design permanently inked on Tyson’s face, but still owned by the artist and creator of the design.

More recently, within the last week, the hot related news was the federal court’s decision to deny Whitmill’s motion for a preliminary injunction (brought to prevent the release of the film), but in reluctantly permitting the film’s timely release Chief Judge Catherine D. Perry seemed to foreshadow the likelihood of Warner Brothers paying dearly for not inking and negotiating a copyright license in advance.

What I find most interesting about the fact pattern of this lawsuit and the many presently unknown facts is the all-too-common potential for overlapping and competing intellectual property rights to the underlying subject matter in question — in this case, an artistic design that is copyrightable as an original work of authorship, and it also may function as a trademark or service mark, much like a logo or visual element of a brand. And, because the design now forms a permanent part of the visual appearance, persona, and likeness of a famous individual, it may also function as an element or aspect of Mike Tyson’s right of publicity.

When all possible intellectual property rights are bundled together and neatly owned by one party it permits the single owner to fully exploit the subject matter in a variety of ways by relying on multiple and differing legal rights, theories, and remedies. It gets pretty interesting, however, when not all of the intellectual property rights are owned by the same party — and, that’s when talented IP lawyers are needed to sort it all out, hopefully well in advance of the need for any enforcement.

Continue Reading Tattoos & Hangovers: The Headache of Competing IP Rights

More on single color trademarks today. Eighteen months ago, Wolf Appliance obtained a federal trademark registration in connection with "a red knob or knobs" of "domestic gas and electric cooking appliances, namely, ranges, dual-fuel ranges, cooktops, and barbeque grills."

Wolf put its registration to the test a couple of weeks ago in a federal trademark infringement action, venued in the Western District of Wisconsin, in which it asked the court for immediate injunctive relief to stop arch-rival Viking Range from offering a Red Knob Kit as an accessory for its competing high-end residential cooking ranges (typically equipped with standard black knobs).

Here is a pdf of the decision, granting Wolf’s request for a preliminary injunction. The Wisconsin State Journal reported on the decision. Last December, ApplianceAdvisor.com shared a rather cynical view of Wolf’s single color claim of exclusivity when the lawsuit was first filed.

So, how did Wolf pull it off? Well, here’s the short answer:

  1. Before bringing the lawsuit, Wolf obtained a federal trademark registration for the knobs, entitling it to a presumption of validity when the time came to enforce exclusive rights;
  2. To demonstrate secondary meaning in its red knobs, Wolf made good use of "look for advertising" on its website: "Choose black knobs, or let everyone know it’s a Wolf with our distinctive red knobs;" in catalogs: "Knob appeal. This is, perhaps, the first thing one notices about a Wolf product. The red knobs serve as a reminder of its distinctive nature"; and in advertising: touting the red knobs as "distinctive" and an "exclusive Wolf feature";
  3. Viking apparently stopped selling a range with red knobs back in 1993, and since 2000, Wolf had made "substantially exclusive" use of red knobs on domestic cooking ranges; and
  4. Greatly assisting its secondary meaning claim to the red knobs, Wolf enjoyed the benefit of significant media attention and stories, specifically mentioning Wolf’s "distinctive," "iconic," "classic," "recognizable," "status symbol," "trademark," and "signature" red knobs.

Trademark types, doesn’t the court’s recognition and reliance on this very helpful media attention evidence make you want to collaborate with your favorite PR type the next time your client is pursuing a single color trademark or some other form of non-traditional trademark rights?

With respect to the question of likelihood of confusion, the Court was moved that there could be initial interest confusion through this hypothetical scenario:

"Suppose a potential range customer is at a dinner party and the hostess tells the potential customer how much the hostess enjoys her range. The range happens to be a Wolf range with red knobs. Several weeks or months later, when the potential customer enters a retail store to browse ranges, he or she sees a stainless steel Viking range displayed with red knobs that looks similar to the red-knob range he or she has seen in the past. There are no other ranges displayed with red knobs. The customer does not remember the brand of the hostess’ range, but the customer knows that Viking is a well-known manufacturer in the high-end range market. The red knobs look familiar, so the customer thinks this is the range to which the hostess spoke so highly. . . . Such a situation could qualify as ‘initial interest’ confusion, because defendant would be reaping the benefit of the goodwill that the plaintiff has developed in its mark."

Are you concerned? Do you find this hypothetical scenario plausible?

What remains to be seen is whether the case continues to conclusion for the entry of a permanent injunction after a full trial. While it is true that the grant or denial of a preliminary injunction often results in an amicable settlement of the lawsuit, this case may not end that way.

Even though Viking lost the first round in this bout, it has brought a counterclaim to cancel the red knob trademark registration issued by the U.S. Trademark Office in 2008. Moreover, if Viking determines that it has a commercial and competitive need to offer the Red Knob Kit, it would be rather easy to resume distribution of the kits at a later time, provided it is able to either invalidate the registration or win on the ultimate issue of whether there is a likelihood of confusion in the marketplace for residential cooking ranges. 

To the extent Viking Range decides to continue its defense and counterclaim to invalidate Wolf’s red knob registration, I predict that discovery will vigorously probe functionality as a possible basis for invalidation. A win on functionality would be complete, it would knock out the registration, and make it unnecessary to even consider the likelihood of confusion question of infringement.

In case you’re wondering about scope, it would appear that both commercial ovens and toy ovens having red knobs are outside the scope of Wolf’s registered trademark.

Stay tuned for more on this interesting case.