Who do you think would win in a fight to the death: a beaver or an alligator? Sure, alligators seem scarier. They’re known for sharp teeth and strong jaws. They even have a 1980 horror movie about them called Alligator (Sidenote: the plot summary makes this sound like a must-see). Beavers? Not so much. Small and furry. They cut down trees. Sure, there was a television series called Angry Beavers, but it was a kids cartoon on Nickelodeon. Those beavers didn’t live in the Chicago sewers feasting on discarded animal carcasses from secret government laboratories testing mutating growth hormones (Again, this Alligator movie sounds like a must-see).

But what if this isn’t just a regular beaver? What if this is a beaver with an entire travel center full of deli stations, gasoline pumps, bathrooms, and over three decades of use? Oh! And did I mention the red baseball cap? It may not sound that scary to you, or alligators in general, but for the Choke Canyon Alligator, the fear might be starting to build. While an alligator likely gets the best of a beaver in the animal kingdom, the courtroom is an entirely different venue.

The animals underlying this dispute are beavers and alligators, but the parties are Buc-ee’s, Ltd., Shepherd Retail, Inc., and Harlow Food, Inc. The plaintiff is Buc-ee’s, the operating of a chain of Buc-ee’s travel stations throughout Texas. The defendants Shepherd Retail and Harlow Food operate a travel center under the name Choke Canyon, also in Texas. The dispute centers around Buc-ee’s claim that Choke Canyon’s design logo is similar to Buc-ee’s logo. A jury was impaneled earlier this week to help decide whether these logos are confusingly similar, but in the meantime, you can put on your juror hat and compare the parties’ logos yourself.

Thoughts? And to finish any potential arguments before they get started, this is an alligator, not a crocodile. Crocodiles can’t stick out their tongues (We’re not just a trademark blog, we’re a science blog, too.)

Here’s how Buc-ee’s summarized the similarity of the marks in the Complaint:

Defendants’ anthropomorphic and cartoon representation of the alligator as shown above in connection with a convenience store copies the most important aspects of the iconic BUC- EE’S Marks. Specifically, besides Defendants’ improper use of a friendly smiling cartoon animal, Defendants have copied the BUC-EE’S Marks with: (i) the use of a black circle encompassing the alligator (compare to the black circle around the beaver), (2) use of a yellow background (compare to the yellow surrounding the beaver), (3) use of the red-colored tongue of the alligator (compare to the red hat on the beaver), (4) prominent use of sharply drawn black edges for the alligator mascots (compare to the sharp crisp black edges defining the beaver, and (5) the use of letters in raised block font in the name “CHOKE CANYON”

This also isn’t the first trademark battle for Buc-ee’s. The beaver has already defeated two chickens (settled out of court):

And a rival (but hatless) beaver (settled out of court):

As a general matter, I think trademark plaintiffs are too easily branded with the label of a “trademark bully,” but this one seems like a stretch.

Granted, I’ve never been in any of either party’s stores. Perhaps the manner in which the marks are advertised adds to the confusion. In fact, Buc-ee’s also claimed that Choke Canyon’s trade dress infringed upon Buc-ee’s trade dress. The layout of a store or restaurant can be protectable trade dress under the Lanham Act. Even if the individual elements may not be protectable (for example, cactus in a Mexican restaurant), the overall selection and arrangement of even unprotectable elements may give rise to protectable trade dress.

Buc-ee’s claimed trade dress for its travel store-restaurant-convenience store-gas station consists of:

(a) consistent use of bell-gabled roof lines;
(b) Use of a red, white, yellow and black color scheme in store signage;
(c) Use of stone siding on the exterior of the store;
(d) Consistent use of a specific and distinctive fountain drink set up in the interior of the stores;
(e) In-store computer ordering kiosks;
(f) Horse-shoe shaped in-store carving stations;
(g) Open counter deli stations;
(h) Freshly prepared signature food choices;
(i) Consistent, prominent use of the BUC-EE’S Marks in signage above and on the products offered for sale;
(j) Large square footage;
(k) Numerous fuel pumps;
(l) Abundant and oversized parking spaces;
(m) Oversized bathrooms;
(n) A multitude of cashier stations;
(o) Entrances from three of the four sides of the building.
(p) Antique-looking displays;
(q) Country-themed signage; and
(r) Khaki paint colors.

I’m no expert in convenience stores, but most of the elements seem like generic elements of a travel center, restaurant, or convenience store. The antique and country themed signage is not as much of a required element for these types of store, but it hardly seems unique for a convenience store or gas station to have a country theme. Like the claim of trademark infringement based on the use of a cartoon character with a hat, I also have doubts as to the success of the trade dress infringement.

But is the combination of the two enough to nudge these claims over the edge into potential infringement? Based on publicly available information, the best I see from this case is that Choke Canyon may make consumers think of Buc-ee’s stores and beaver, but consumers dont’ seem likely to assume that that there is a connection between the two. While it can be a fine line, trademark law is pretty consistent that merely “calling to mind” is insufficient to establish trademark infringement. There must instead be a possibility of consumer confusion as to source, sponsorship, or some other connection.

It is possible additional facts will come out during trial to bolster Buc-ee’s claims. Perhaps there really was a pattern of intentional copying, from the yellow background of the circle logo, to the store layout, down to individual products being offered, like the purportedly famous “Beaver Nuggets” (aka, caramel corn). Stay posted for future updates as the trial proceeds and ends. We’ll also keep a lookout for comments from our neighbor to the east, the other cartoon Bucky:

 

 

We’ve written on several occasions (for example, here, here, and here) about the aggressive policing by Adidas of its well-known “three-stripe” mark for shoes, including attempts to enforce its mark against other two-stripe or four-stripe designs (with some success).

Adidas is at it again, with a new lawsuit asserting trademark infringement based on Puma’s four-stripe design for a soccer cleat. The complaint was filed on Friday last week in the U.S. District Court, District of Oregon. Adidas also filed a motion for a preliminary injunction on the same day.

Puma is a competitor and longtime rival of Adidas. The two companies are headquartered within walking distance of each other, in the German town of Herzogenaurach. Adidas and Puma were founded decades ago by brothers Adi Dassler and Rudolph Dassler, respectively, which has led to fierce and sometimes bitter competition between the two companies over the years. In 2013, Forbes ranked the Adidas v. Puma rivalry as one of the greatest business rivalries of all time.

Below is Puma’s soccer cleat that is the subject of the infringement lawsuit filed by Adidas:

puma

And here is the three-stripe design on one of the Adidas soccer cleats:

adidas-puma

What do you think? Would consumers be likely to confuse the Puma shoe for an Adidas shoe? This dispute is in its early stages, as Adidas just filed its complaint last week, so it remains to be seen how Puma will respond. Stay tuned for further updates.

For years, Samsung and Apple have battled over intellectual property rights associated with each party’s smart phones. Apple sued Samsung in 2011 and the jury found that Samsung had infringed Apple’s trade dress, design patents, and utility patents. On May 15, 2015, the Federal Circuit upheld the findings regarding infringement of design and utility patents, but found that Apple’s claimed trade dress was functional and vacated the damages award associated with the trade dress claims. Earlier this week, Samsung filed its request for Supreme Court review of the ruling. Although Samsung won an important battle for itself and all of Apple’s competitors, a recent filing by Samsung with the U.S. Patent and Trademark Office suggests that the smart phone trade dress battle may not be over.

On December 7, Samsung filed an application to register claimed trade dress for the product configuration of a smart phone. Samsung submitted the following drawing of the mark:

Samsung - Trade Dress DrawingThe drawing appears to show the Samsung Galaxy S6 Edge, shown below:

Samsung Phone

Samsung’s application contains a number of features that overlap with Apple’s claimed trade dress. So why file the application at all? Well, the latest rumors suggest that Apple may be introducing a curved display for its iPhone 7, similar to the Samsung Edge feature. Apple also recently received patent registration for technology that would enable its products to employ a curved screen. Assuming that the parties’ technology does not infringe the other’s patent rights, it could be possible for Samsung to prevent Apple from selling a curved display if Samsung can prove that it has protectible rights in a curved display trade dress.

Currently, Samsung’s application does not claim any rights in a curved display, but instead describes the mark as “a three-dimensional configuration of a smartphone.” However, an application for trade dress must specifically identify the aspects that are claimed as a feature of the mark and, just as importantly, the aspects that are not claimed as a feature of the mark. For example, when Apple sued Samsung for trade dress infringement, Apple claimed rights in the following configuration: (1) rectangular product with rounded corners; (2) flat clear surface display; (3) black borders around the surface display; and (4) when in use, an unchanging bottom dock of square icons, with a matrix of changing square icons above it. Likewise, Samsung will be required to specifically identify these features in its application.

However, this isn’t the only hurdle that Samsung will face. In order to be protectible, trade dress must be both distinctive and non-functional. Trademark rights can normally be established where the claimed mark is either inherently distinctive or has acquired distinctiveness. But the Supreme Court’s decision in Wal-Mart v. Samara Bros. Inc. clarified that product configuration marks can never be inherently distinctive. Instead, there must be proof that the claimed mark has acquired distinctiveness. Normally this is done through a claim of a period of use of five years or more. However, Samsung’s claimed first use date for this design is Feb. 3, 2015, about four and a half years short. Acquired distinctiveness can also be proven through significant sales, advertising, and publicity. However, with less than a year of use, Samsung may have difficulty proving that this particular design has acquired distinctiveness among consumers.

Samsung’s burden doesn’t get any easier with regard to proving that the claimed mark is non-functional, either. Samsung succeeded in proving that Apple’s trade dress (referenced above) was functional. Specifically, the Federal Circuit found that these features provide utilitarian advantages, making the product more usable, providing user friendly features, quick access to programs, greater pocketability, and better durability. Most of these features, if not all of them, appear to be present in Samsung’s current application.

Of course, the primary difference is the curved display. Although I don’t own a Galaxy S6 Edge, I presume the feature is popular because it increases the screen size, allows users to view notifications even if the phone is face down, and provides increased functionality for applications. Samsung also appears to be digging itself a pretty big hole with quotes like the following on its own website:

The device’s unique curved Edge screen provides quick access to frequently used apps, alerts and device functionality all with the swipe of a thumb, even when the cover is closed.

Right now, Samsung’s odds of obtaining a registration for the claimed trade dress seem low. Maybe Samsung plans to disclaim a number of these functional features, possibly increasing its odds; we’ll have a better idea once Samsung defines its claimed mark. However, in light of Samsung’s past statements (and success) in the Apple litigation and its promotion of the “edge” feature, this application may be dead on arrival, regardless of any future amendments.

-Wes Anderson, Attorney

Here’s another fascinating pending application for the file of non-traditional product configuration marks — this time, an application from Sony for the configuration of an all-in-one lens/camera:Sony Lens

The drawing may look like an ordinary camera lens – cylindrical, familiar, and generally seen affixed to a fancy DSLR. But the application identifies “Digital cameras” in Class 9, not camera lenses. And the mark description reads: “The mark consists of the three dimensional configuration of a digital camera.” That’s no mistake — by my estimation, this drawing doesn’t depict an everyday lens, but Sony’s QX100 camera, a so-called “lens-style” camera that integrates a Carl Zeiss lens and digital sensor into one compact package. It has no LCD screen, viewfinder, our readout of its own — the camera is operated exclusively via a smartphone. It’s certainly a novel step in the evolution of digital photography, where smartphones have skyrocketed in popularity and have all but replaced the entry-level point-and-shoot cameras of the 2000s.

qx100_lifestyle-001

As so many other companies do with new products in the technology sector, Sony has sought to protect the uniqueness of its product through intellectual property. But trademark protection can be especially tricky for product configurations — and here, Sony has sought to protect the entirety of its product by filing its application with the above drawing. The lack of any dotted lines indicates a claim for trademark protection for the entire product – the lens opening, the shutter release, the on/off switch, the zoom slider, and the focus ring are all claimed as part of the mark, at least according to the drawing.

The PTO subsequently issued an office action for the mark (and later another office action continuing many of the cited issues). Aside from informalities regarding the identified goods, it has all the bells and whistles you could ask for in a product configuration refusal, and sheds some additional light on pitfalls to avoid in filing configuration trademark applications:

  • Drawing. The PTO quickly cited the dearth of dotted lines in the above drawing and requested that Sony provide an amended drawing that “features functional matter dotted out, such as the lens opening, the shutter, the buttons, the charge port.” This in and of itself seems extremely problematic for purposes of this application – nearly every groove, circle, and crevice on the lens has a function. Once it’s all dotted out, that leaves…a cylinder?
  • Nondistinctive Product Design.  As with every product design trademark, it is required to show some modicum of acquired distinctiveness to obtain registration on the Principal Register. According to the examiner, “consumers are aware that such designs are intended to render the goods more useful or appealing rather than identify their source.” Sony attempted to submit evidence in a response to support acquired distinctiveness under Section 2(f), consisting of advertising materials, sales figures, and a declaration. The PTO quickly deemed this evidence insufficient, stating that “applicant’s evidence shows nothing more than that the mark is the shape of the camera, which may have become a generic shape for cameras.” The examiner also sleuthed out a competing “lens-style” camera sold by Kodak to support its refusal.
  • Functionality / Request for Information. Finally, and perhaps most damningly, the examining attorney issued an advisory suggesting that the mark — or what’s left of it once an amended drawing is provided — may consist of unregistrable, functional matter (which we cover in spades on this blog). It’s only an advisory for now, because the office actions also contain a request for information. These requests are hardly benign – they mirror the Morton-Norwich factors for determining functionality. It’s akin to the police asking “Do you know how fast you were going?”

(1)       A written statement as to whether the applied-for mark, or any feature(s) thereof, is or has been the subject of a design or utility patent or patent application, including expired patents and abandoned patent applications. Applicant must also provide copies of the patent and/or patent application documentation.

(2)       Advertising, promotional, and/or explanatory materials concerning the applied-for configuration mark, particularly materials specifically related to the design feature(s) embodied in the applied-for mark.

(3)       A written explanation and any evidence as to whether there are alternative designs available for the feature(s) embodied in the applied-for mark, and whether such alternative designs are equally efficient and/or competitive. Applicant must also provide a written explanation and any documentation concerning similar designs used by competitors.

(4)       A written statement as to whether the product design or packaging design at issue results from a comparatively simple or inexpensive method of manufacture in relation to alternative designs for the product/container. Applicant must also provide information regarding the method and/or cost of manufacture relating to applicant’s goods.

(5)       Any other evidence that applicant considers relevant to the registrability of the applied-for configuration mark.

(6)       A written explanation of what, specifically, applicant has applied to trademark.

Sony’s first office action response addressed only the Section 2(f) issue and amended the identification of goods. And, perhaps charitably, the examining attorney continued the other refusals as non-final, rather than heading straight for a final office action. I’d keep an eye on this one for potentially some novel arguments in Sony’s favor, but it appears to be a tough road ahead.

So what do you think? Does Sony have a pathway to registration, or has the public already been overexposed to generic, functional cylinder-style cameras?

[Apologies for that last pun.]

Three months ago we discussed a “trademark bullying” allegation against Monster Energy, detailed in a declaratory judgment complaint filed in Montana federal district court by energy-drink competitor Victory Energize.

Last week, Law360 reported the case settled on confidential terms, and the claims were dismissed with prejudice, at Victory Energize’s request, so the “trademark bullying” charge against Monster Energy won’t be pursued further by Victory Energize.

As a result, we’re left to speculate what the key settlement terms might have been. Did money change hands? Did both simply call a truce and walk away? Did Victory Energize agree to modify any trade dress? If not, why not?

There are a few things we know for certain:

  • No new federal trademark applications have been filed by Victory Energize to assist our speculation of possible terms.
  • Monster Energy appears unmoved by our criticism of failing to seek federal registration of the iconic green/black/white trade dress — no new filings.
  • The colorless and unchallenged Victory Energize mark remains registered, and surprisingly, the green/black/white Victory Energize can (to the right) remains on its website (at least, for now):

Lest you believe from these certainties that Monster Energy has lost the drive for vigorous trademark enforcement activities, think again, it might be time for a shot of taurine to sharpen your focus.

By my count, Monster Energy has filed no less than fifty-six (56) Notices of Opposition with the TTAB of the USPTO in 2014, three (3) so far this month, and eight (8) extensions of time to oppose have been filed in December so far too.

Indeed, Monster Energy appears to be on a rampage against marks containing MONSTER in Int’l Class 25 for any clothing items: RIDGE MONSTER, CHOREMONSTER, MONSTER CLOTHING CO., MONSTER BUCK, MONSTER RACKS, and CAMP MONSTER, among others.

While I can see the Camp Monster has a green eye, I’m still asking: Monster Energy’s rights can really reach the blue Camp Monster logo to the left for clothing?

Monster Energy filed a motion for summary judgment at the TTAB last month, based on the admissions resulting from Camp Monster’s failure to answer Monster Energy’s requests for admission.

If Monster Energy prevails at the TTAB on the issue of likelihood of confusion, won’t this be yet one more example of why our federal district courts should not be bound by the decisions of the TTAB?

Monster Energy has even pounced on another Monster (also labeled a trademark bully) — Monster Cable’s attempts to register the marks MONSTER GEAR and POWERED BY MONSTER, have been opposed by none other than, Monster Energy.

Each Monster has taken the position that its MONSTER word mark is famous. Although I suspect the visual identity of the MONSTER ENERGY brand (top left above) might qualify for a showing of fame, I’m thinking that neither Monster Energy nor Monster Cable can make the claim of fame stick in the context of federal dilution, as to the word MONSTER standing alone, given the existence of the other, and given how niche fame has been ruled out under federal dilution law.

Nevertheless, Monster Energy appears to have no shortage of stamina in pursuing Monster-based trademark enforcement targets, so with Victory Energize sitting out, who will stand in the way?

Are your intellectual taste buds craving more discussion of non-traditional trademarks? It’s not every day we have the opportunity to write about a restaurant’s claimed trademark protection for the flavor or taste of certain food dishes and a restaurant’s claimed trade dress in the chef’s unique plating or visual presentation or appearance of certain food dishes, including the delicious-looking baked ziti to the left.

Last week Professor Eric Goldman wrote an interesting Forbes article about an unusual federal trademark infringement case from Texas involving those very unlikely non-traditional trademark claims. In that case, United States District Judge Gregg Costa dismissed both the taste trademark claim and the plating trade dress claim before the plaintiff even had a chance to be seated much less order an appetizer.

Although Judge Costa called the taste trademark claim “half baked” well into the third course of his decision, the first few lines should have tipped the reader off to his skepticism of the claims:

“Intellectual property plays a prominent and growing role in our Information Age economy.  High-stakes litigation over software patents, for example, is increasingly common in federal dockets.  In this case, though, the plaintiff seeks intellectual property protection for something quite traditional: the meal one might order at a neighborhood pizzeria.  New York Pizzeria, Inc. contends that the flavor of its Italian food and the way in which it plates its baked ziti and chicken and eggplant parmesan dishes are entitled to protection under the trademark laws.”

The plaintiff was denied the opportunity to try and prove taste infringement because its complaint failed to identify a valid taste trademark given the “insurmountable” functionality hurdle:

“The functionality doctrine is a significant hurdle for any party seeking to protect a flavor as a trademark. In In re N.V. Organon, for example, the Trademark Trial and Appeal Board (TTAB) denied a pharmaceutical company a trademark in the orange flavor of its pills on functionality grounds. Because medicine generally has ‘a disagreeable taste,’ flavoring ‘performs a utilitarian function that cannot be monopolized without hindering competition in the pharmaceutical trade.’

If the hurdle is high for trademarks when it comes to the flavor of medicine, it is far higher—and possibly insurmountable—in the case of food. People eat, of course, to prevent hunger. But the other main attribute of food is its flavor, especially restaurant food for which customers are paying a premium beyond what it would take to simply satisfy their basic hunger needs. The flavor of food undoubtedly affects its quality, and is therefore a functional element of the product.”

Sound familiar? It reminds me of our taste infringement blog post from a few years back, where I wrote:

“Of course, there is a reason for the lack of or scarcity of taste trademarks. Any product intended for human consumption is unlikely a candidate for taste trademark protection given the functionality doctrine. So, Coca-Cola can’t stop another from selling a beverage that has the same taste as Coca-Cola, just because it tastes the same, unless of course, the maker of the competitive beverage hired away key Coke employees who unlawfully revealed the closely guarded secret formula. That is how trade secret litigation happens, not “taste infringement” litigation.”

And, even longer ago than that, I answered the very question posed in the title of this blog post:

“I have suggested before that taste is only available as a possible non-traditional trademark when it is applied to a product not meant for human consumption (e.g., flavored ear rests on eyeglasses and flavored ballpoint pen caps). Foods, beverages, and other oral products that are meant to be consumed or placed in the mouth and have a pleasing taste most likely are to be disqualified from enjoying trademark protection in the taste or flavor, based on the functionality doctrine.”

Although the taste trademark claim was “half baked,” Judge Costa thought the plaintiff’s trade dress plating claim deserved a closer look.

“[T]here may be some rare circumstances in which the plating of food can be given trade dress protection. When plating is either inherently distinctive or has acquired a secondary meaning, when it serves no functional purpose, and when there is a likelihood of consumer confusion, it may be possible to prove an infringement claim. It is conceivable that certain well-known “signature dishes” could meet this very high standard.”

Nevertheless, Judge Costa dismissed the trade dress plating claim too, since the plaintiff failed to articulate the specific elements of its claimed trade dress in the visual presentation of certain food dishes.

Given all that, what do you make of U.S. Trademark Registration No. 1,623,869, registered more than twenty years ago, back in 1990.

The registered non-traditional configuration mark mentions flavors and is described this way:

“THE MARK CONSISTS OF AN ARCUATE CONFIGURATION OF FIVE FLAVORS OF ICE CREAM, NAMELY, CHOCOLATE, STRAWBERRY, PALMER HOUSE (NEW YORK CHERRY WITH NUTS), PISTACHIO AND ORANGE SHERBET, ARRANGED FROM BOTTOM TO TOP, AS IT IS SOLD ON A CONE.”

So, is the claimed combination of flavors actually protected by this federal trademark registration?

Or, does it merely protect the appearance, given the below drawing of the registered non-verbal mark?

And, given the color claim, detailed below:

“THE MARK SHOWN ON THE DRAWING IS LINED FOR THE COLORS BROWN, PINK, WHITE, GREEN AND ORANGE, AND COLOR IS CLAIMED AS A FEATURE OF THE MARK.”

 

Or, does the registration perhaps protect both taste and appearance?

Unlikely, but if so, it is the only federally-registered taste/flavor trademark I’ve seen (and not tasted) before.

What do you think?

Last week more allegations of “trademark bullying” appeared in the headlines. This time, Victory Energize, an energy drink company based in Missoula, Montana, is calling out Monster Energy for sending a cease and desist letter to Victory. Monster’s demand letter is said to charge Victory with infringement of Monster’s distinctive trade dress. So, what say you?

Victory’s preemptive strike and declaratory judgment complaint seeks to gain a hometown advantage, asking a federal court in Montana to declare that Victory Energize’s trade dress does not constitute unfair competition or violate any federal, state, or common law. It also asks for an award of costs and attorneys fees, labeling Monster a “trademark bully” for alleging likelihood of confusion claims that Victory asserts have “no legal or factual basis,” while dredging up some unflattering history pinning Monster as the poster-child for so-called prior “trademark bullying” conduct:

“Because of what is perceived as an overly aggressive stance on protecting its trademark rights beyond their actual scope of protection, [Monster], and its predecessor, Hansen Beverage Company, have been accused of being a “trademark bully” in the media and in law review articles. See, e.g., Leah Chan Grinvald, Shaming Trademark Bullies, 2011 Wis. L. Rev. 625 (using Monster Energy as the example of a trademark bully in the very first paragraph); Sara M. Andrzejewski, Leave Little Guys Alone!: Protecting Small Businesses from Overly Litigious Corporations and Trademark Infringement Suits, 19 J. Intell. Prop. L. 117, Fall 2011.”

“In part, [Monster’s] conduct (via its predecessor-in-interest, Hansen Beverage Company, which was perceived as a trademark bully led to Senator Patrick Leahy seeking Congressional funding to study trademark bullying. See, Ex. C: Rob Petershack, Trademark Bullies to be Studied, WTN News, Oct. 10, 2010; see also. Trademark Technical and Conforming Amendment Act of 2012; S. 2968, 111 Cong. (2d sess. 2010) (Pub. L. No. 111-146).”

What matters in this case, however, will be the allegations relevant to the facts of this dispute, not others’ opinions about prior Monster conduct unrelated to Victory Energize. Given the likely fame of the iconic Monster trade dress (although Monster gets an F for not seeking any federally registered trade dress protection, only one of its registrations even claims rights in the color green), the directly competitive nature of the products, and the close similarity of at least the visual impressions of the above logos, I’m having a hard time getting all jacked up about a “trademark bullying” claim here.

Amazon product reviews seem to suggest that consumers are able to differentiate the different energy drink brands, but that doesn’t refute the possibility that survey evidence could establish that consumers assume a connection with Monster and Victory — perhaps Victory is Monster’s lower cost version? Will discovery end up showing that Victory mimicked the elements of Monster’s trade dress to gain commercial traction and the media attention it has obtained through the filing of this lawsuit? Seriously, should Victory be surprised that Monster actually came knocking?

After all, the visual appearance of these competing logos is pretty similar. Are there differences? Yes, but the similarities will be weighed more heavily, and the price point of these products and their condition of purchase, probably puts them in the category of impulse purchases (which are more likely to result in confusion).

And, what about a dilution claim, where no likelihood of confusion is required for Monster to prevail? Monster must have a heavy dose of brand equity bottled up in the visual impression of its iconic green/white/black aluminum cans. Victory’s declaratory judgment complaint is silent on the question of dilution of a famous mark. Perhaps because Monster didn’t discuss in its opening cease and desist letter, but I suspect that if Monster answers it will not only counterclaim for trade dress infringement, but also take the position that its trade dress comprising a black background, with a green stylized single letter, and white stylized brand name above the word ENERGY in the color green is famous and diluted by the Victory trade dress for competing goods.

Depending on how Monster crafted its cease and desist letter, it might also decide to bring its own action in California and ask the Montana action to be dismissed as anticipatory — basically start a fight over where the fight will be decided. Query whether doing so, however, will play into Victory’s argument that Monster is Goliath, picking on David, simply because it doesn’t like cheaper competition (Victory’s energy drinks are positioned as low cost, only 99 cents per can). Time will tell, so stay tuned.

The complaint is pretty bare bones, but it appears to place too much emphasis on the fact that the USPTO issued this stylized trademark registration:

The problem for Victory, of course, is that the mark it registered claims no color as part of the mark, so the color similarities are invisible to the USPTO. So, this may be perhaps yet one more example of why registration decisions from the USPTO should not control or bind federal judges in infringement or dilution litigation.

Although it is clear that Monster knew about this filing and did nothing to oppose it, can you blame Monster, given the absence of a color claim?

What Monster might be blamed for is waiting too long to object, as Monster clearly knew about Victory’s application more than two years ago, and Victory claims to have been in the marketplace since at least as early as January 1, 2012, more than two years ago. What I’d want to know is when Monster first became aware of the Victory trade dress shown above in green/white/black aluminum cans (USPTO specimen was filed in November of 2012, so was Monster watching the progress of this application?).

Marketing types, would you expect the Victory trade dress to pass scrutiny of the legal team? Are you surprised that Monster Energy cares? Does that make it a trademark bully?

– Draeke Weseman, Weseman Law Office, PLLC

The reason Bhargava has won is that he plays tough. Sitting in that cemetery are a dozen or so neon copycats with names like 6-Hour Power and 8-Hour Energy. Each has been sued, bullied or kicked off the market by Living Essentials’ lawyers. In front of each are little placards with a skull and crossbones drawn in felt-tip pen. Bhargava points at the gravestone of one of his late competitors and says with a chuckle, “Rest in peace.”

— Clare O’Connor, The Mystery Monk Making Billions with 5-Hour Energy, Forbes.com (February 8, 2012)

5-Hour Energy is a monster* behemoth in the energy shot market it created in 2004. According to Forbes, retail sales for 5-Hour Energy hit $1 Billion in 2012, with advertising spending reaching almost $200 Million. Its market share is approximately 90%; its closest competitor’s share is about 3%. As CEO Manoj Bhargava puts it, 5-Hour Energy is “killing it.”

Last month, 5-Hour Energy appears to have put the final nail in the coffin of one of its would-be competitors, a persistent copycat extraordinaire named Jeffery Diehl. Operating through a few different corporate entities such as N2G Distributing, Inc. and Alpha Performance Labs, Diehl sold energy shots by the names of 6 Hour Energy Shot, Nitro2Go Instant Energy, and Extreme Monster** Energy Shot. Depicted below is a comparison of 5-Hour Energy’s bottle on the left and one of Diehl’s bottles on the right:

In 2008, 5-Hour Energy sued Diehl in federal court in Michigan and quickly won a preliminary injunction, immediately barring Diehl from selling any more of his products under confusingly similar names or in confusingly similar packaging while a complete trial on the merits played out. Of course, this didn’t stop Diehl from changing the name and changing the packaging, and each time he did, 5-Hour Energy added another product to its complaint. Three and half years later, after much procedural wrangling and a trial on the merits, Diehl was found liable for $1.75 Million in damages for trademark infringement and unfair advertising in connection with various iterations of his copycat product. The image below is from one page of the verdict form from the jury; the circled products represent infringing products:

In addition to monetary damages, the court ordered Diehl to stop selling infringing products. A few months later, through its own investigation, 5-Hour Energy discovered that Diehl was still selling copycat products online, albeit under a new corporate entity (his other corporate entities filed bankruptcy, of course). So 5-Hour Energy dragged Diehl back into court and the court was not happy: “[Diehl’s actions] are the actions of an individual trying to hide from and avoid his obligations under this Court’s order.” Diehl was held in contempt of court and ordered to immediately stop selling infringing products or face a $1,000 a day fine. Diehl stopped.

Now, this is America after all, and even crafty contempt-ing copycats have a right to appeal. So of course Diehl appealed (after losing his motion for a new trial); his view – the evidence didn’t show a likelihood of confusion! This is what the appellate court found:

• The jury could see that Diehl’s products used similar marks, despite minute differences in the words or images;

• The jury could listen to survey evidence and attacks on that evidence and determine that 5-Hour Energy was a strong brand and robust mark;

• The jury could recognize that Diehl was selling essentially identical products: two-ounce energy shots, often at convenience stores, near cash registers, where purchases are made impulsively;

• The jury could consider even a single instance of actual confusion as increasing the likelihood of confusion;

• The jury could disregard Diehl’s testimony that he only wanted to compete with 5-Hour Energy fairly in the free market; and

• The jury could infer that Diehl was laying claim to a mark when he testified that he just wanted to own the term ‘6 Hour Energy Shot’ the same way that the owner of 5-Hour Energy owns 5-Hour Energy, thus contradicting Diehl’s claim to a fair use defense.

Diehl also wanted to object to the verdict as inconsistent – one of the bottles was not circled! But the appellate court dismissed this objection because it must be brought when the jury is still assembled, so that the jury can resolve the inconsistency, if any.

Diehl tried another approach – the evidence was unfair and improper! For example, Diehl was upset that he had been denied access to 5-Hour Energy’s secret formula, which he said would show that his probably similar formula could produce more hours of energy – 6 or 7 or 14, as claimed – thus making his marks descriptive. Diehl was also upset that the jury learned about his copycat product, the Extreme Monster Energy Shot (photo below). Diehl further complained that the jury didn’t get to read an opinion from another court where Diehl had sued a competitor over similar trade dress AND LOST, because, Diehl claimed, when he lost he learned that you could get around trade dress laws with just a few little changes, and this showed he wasn’t intentionally infringing 5-Hour Energy’s trade dress with his little changes. Finally, Diehl complained that although he was able to show that 5-Hour Energy was litigious (i.e. a trademark bully), he didn’t get to present enough evidence on that point. The appellate court disagreed that any of these issues mattered.

Diehl struck out on a few other contentions as well, bringing his appeal at the Sixth Circuit, and six years of litigation, to an end. Those contentions, and more details about the case, can be found in the court’s opinion, here.

As for where exactly 5-Hour Energy and its lawyers get the energy for these types of cases, my money is on a secret 6-Year Litigation formula!

*Author’s Note: Poor choice of words.

**Author’s Note: Diehl, apparently, didn’t think so.

A few weeks back, Steve discussed Apple’s recent applications to register a trio of non-verbal trademarks, shown below:

(Each image links to the corresponding application on file with the U.S. Patent and Trademark Office – USPTO).

Spoiler alert:

This post contains the USPTO’s ultimate decision regarding the registrability of the design and layout of various application icons as part of a computer operating system, using rectangular geometric figures in rows. However, it isn’t a spoiler for Apple’s applications referenced above (those applications have yet to be assigned to an examining attorney).

No, instead, I’m referring to a since-abandoned application that provides some interesting contrast with Apple’s applications. In 2012, Microsoft filed an intent-to-use application for the mark shown below:

The USPTO examining attorney initially refused registration requiring a new drawing due to a potential for the existence of a phantom element of a mark, namely, the appearance of the “start” button and the “user name” element. The examiner also advised that, upon submission of evidence of use, the mark may be refused on the ground that it was merely ornamental and failed to serve any source identifying feature.

Microsoft submitted a substitute drawing and amended the mark to make clear that the “start” button and the “user name” element were not claimed as a feature of the mark. The examining attorney issued a subsequent refusal based on the presence of phantom elements in the mark, claiming that the mark contained “changeable elements.” After Microsoft failed to respond, the application was deemed abandoned. (Note that it appears there may be some issues with the examiner’s refusal, as a refusal for a “phantom element” normally requires that the phantom element be claimed in some way as a feature of the mark.).

It appears that Apple may have taken a few pointers from Microsoft’s unsuccessful efforts. Compare Microsoft’s description of its mark:

The mark consists of two groups of tiles arranged in at least five rows. In the first group, the first and second rows are comprised of a rectangle followed by two squares and the third, fourth and fifth rows are comprised of two adjacent rectangles. In the second group, the first row is comprised of a rectangle and the third, fourth and fifth rows are comprised of two adjacent squares. The second row comprises a rectangular boundary surrounding a rectangle formed from two combined squares. The borders of the mark, the rectangle formed from two combined squares, the terms “Start” and “User Name”, and other matter shown in broken lines are not part of the mark.

With Apple’s:

The mark consists of the configuration of a rectangular handheld mobile digital electronic device with rounded edges and an arrangement of twenty-two icons consisting of squares with rounded edges arranged in six rows on the screen of the device. The matter shown in broken lines is not part of the mark.

Apple’s description is much more concise. It also does not contain open-ended terminology such as “at least five rows.” Apple was also careful not to include any discernible words, like “Start” or “User Name,” in the drawing. Microsoft also included a number of additional tiles that were not claimed as a feature of the mark, but appeared identical to those icons which were claimed. In contrast, Apple specified its claim to reference all 22 icons, rather than only claim a portion of the icons.

Note that in two of three applications, Apple included the shape of the phone as well. Perhaps Apple feared that the mere layout of square icons might face the same fate as Microsoft’s application. Will this, along with the other changes, be sufficient for Apple to push the applications through to registration?

My immediate reaction is that, if you take away the shape of the phone and the content of the icons, I’m not convinced I would notice the difference between an iOS operating system, Microsoft Windows / Tiles, or an Android. It’s hard to imagine, but read through the mark descriptions and try to envision the layout with only the features claimed, with no other content. In my head, that just looks like a computer screen, regardless of whether its the size of a phone, Hardy Boys book, or a Trapper Keeper.

Apple certainly appears to have put some thought into their application strategy, though. I’m sure they’ve mapped out responses to potential refusals as well. Even if Apple is unsuccessful at registering these marks, at least they’ll have successfully given us something to talk about here, which I’m sure would be a wonderful consolation prize.