Trademark Cancellation

In Cosmetic Warriors v. Pinkette Clothing, the U.S. Court of Appeals for the Ninth Circuit filed an opinion a couple weeks ago, reconfirming that the equitable defense of laches (unreasonable and prejudicial delay in bringing a lawsuit) applies in trademark cancellation actions, even though the U.S. Supreme Court has recently curtailed that defense in copyright and patent cases, and even if such an action is brought within the five-year window for bringing certain types of cancellation claims under the Lanham Act, 15 U.S.C. § 1064.

In this case, Cosmetic Warriors, makers of LUSH brand cosmetics, filed a lawsuit against a fashion company, Pinkette Clothing, that markets LUSH-branded clothing, claiming trademark infringement and seeking cancellation of its trademark registration. But the Ninth Circuit affirmed that Cosmetic Warriors waited too long (nearly five years) to bring its case after it “should have known about its claims.” According to well-established precedent, because the Lanham Act contains no statute of limitations, courts apply a presumption in favor of laches if the plaintiff’s delay is longer than the most analogous state statute of limitations. The Ninth Circuit concluded that California’s analogous four-year statute of limitations for trademark infringement actions applied. Therefore, because Cosmetic Warriors’ delay was beyond four years, the court held a “strong presumption in favor of laches” applied.

Cosmetic Warriors argued that laches could not bar its claims for cancellation, based on a five-year period for cancellation actions specified in 15 U.S.C. § 1064, and based on recent U.S. Supreme Court precedent limiting the defense of laches in copyright and patent infringement actions, Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S. Ct. 1962 (2014) (Copyright Act), and SCA Hygiene Products v. First Quality Baby Products, LLC, 137 S. Ct. 954 (2017) (Patent Act).

The Ninth Circuit rejected Cosmetic Warriors’ arguments based on the Supreme Court precedent from copyright and patent cases, stating, “the principle at work in those cases—a concern over laches overriding a statute of limitations—does not apply here, where the Lanham Act has no statute of limitations and expressly makes laches a defense to cancellation,” see 15 U.S.C. § 1069. Regarding the five-year deadline of 15 U.S.C. § 1064, the court held “[t]here is no question that [15 U.S.C. § 1064] is not a statute of limitations in the usual sense of barring an action entirely once a defined period expires”; rather, that statute “merely limits the grounds on which cancellation may be sought. A petition brought within five years of registration may assert any ground …. By contrast, a petition brought five years after registration (against an incontestable mark) may only assert one of several enumerated grounds.”

This opinion by the Ninth Circuit accords with similar precedent from other federal courts and follows the position of the leading trademark treatise, McCarthy on Trademarks §§ 20:74, 76. It is another reminder to trademark owners and practitioners of the importance of monitoring for infringing uses, and acting quickly to initiate enforcement actions. As in this case, and according to the maxim often quoted by courts, “[t]hose who sleep on their rights, lose them.”

Yesterday we wrote about how petitions for partial cancellation under Section 18 of the Lanham Act can be creative and powerful tools when an applicant is confronted with likelihood of confusion registration refusals under Section 2(d), based on over-broad federal registrations.

Today, we’re speaking about this important tool that should be found in any trademark practitioner’s tool box, and in case you’re not able to attend, here is a table I put together that helps me consider which tool works in which context:

TTAB Proceedings ChartWhat do you think? Is it helpful in organizing your thoughts about the strategic use of TTAB proceedings to assist in overcoming likelihood of confusion refusals, or does it bring back bad memories of Jeopardy?

I’ll take Section 18 Restrictions for the Daily Double, how about you?

— Jessica Gutierrez Alm, Attorney

TJ Root/Getty Images

 

In appealing the cancellation of six trademarks, the Washington Redskins filed their opening brief in the Fourth Circuit this week.  Cancellation of the team’s REDSKINS trademarks was upheld by a federal district court in July.  The marks were deemed “disparaging” under Section 2(a) of the Lanham Act, which denies trademark protection to marks that are scandalous or disparaging.

The team is now appealing the district court’s decision.  A primary argument presented in the team’s opening appeal brief is the First Amendment argument.  Essentially, the Washington team argues that cancellation of its trademarks under Section 2(a) violates free speech rights, because the marks are a form of expressive speech.  Of course even without a federal trademark registration, a mark may still be used.  The team can still call themselves the Redskins and sell Redskins merchandise, but cancellation of the marks means they will not enjoy the protections and benefits that accompany federal registration.  The team argues that by denying those protections and benefits of the federal trademark registration, the government is infringing on the team’s free speech rights.

The lower court held that Section 2(a) does not violate the First Amendment, in part, because federal registration of a trademark represents a form of government speech, rather than private speech.  That is, the government may freely choose which marks it wishes to include as part of its federal trademark registration program.

In an effort to thwart this argument and show that federal trademark registration is not a form of government speech, the Washington team made the bold choice to include in its brief a long list of—colorful—marks that have been successfully registered.  The list seems primarily compiled from the adult entertainment industry, and includes, among many, many others, TAKE YO PANTIES OFF clothing, SLUTSSEEKER dating services, and MILFSDOPORN.COM pornography.  A footnote in the brief actually states that “word limits” prevented the team from adding even more to their offending list.

While the purported purpose was to address whether trademark registration represents government speech, the sheer length of the list leaves the distinct impression of an underlying argument: Well if these dirty words can be trademarked, why can’t we just trademark our team name?

At first blush, it may seem like a fair argument.  As presented in the brief, the list of clearly offensive marks makes one wonder why these too were not cancelled or denied registration.

One reason may be that potentially scandalous and disparaging marks are viewed in the context of the goods or services and the market with which they will be associated.  Consider that the goods and market of the porn industry are very different than the goods and market of an NFL team.  MILFSDOPORN.COM may not be scandalous or disparaging in the context of providing adult entertainment.

Another reason may be that most of the unsavory marks listed in the team’s brief are unlikely “disparaging,” and would more likely fall into the “scandalous” category of Section 2(a).  Section 2(a) excludes from registration marks that are scandalous and marks that are disparaging.  The test for scandalous marks is different from that for disparaging marks.

Disparagement relates to a particular person or group.  Some marks that have been denied as disparaging are HEEB and SQUAW for clothing.  To determine whether a mark is disparaging, the test looks to whether a substantial composite of the group referenced by the potentially disparaging mark would find the mark disparaging in the context of the particular goods or services.

In contrast, potentially scandalous marks are viewed with respect to the broader public’s opinions.  Marks such as COCAINE for soft drinks have been denied registration as scandalous.  The test for determining whether a mark is scandalous looks to whether a substantial composite of the general public would find the mark scandalous in the context of the particular goods or services.  Each test looks to a group of people to determine whether something is offensive, but the scandalous test looks to a larger and broader group, the general public.

TAKE YO PANTIES OFF, SLUTSSEEKER, MILFSDOPORN.COM, and many others on the team’s list would seem to fall under the more general “scandalous” category, because the terms do not seem to target a particular person or group in the way that a mark like REDSKINS does.  (Surely MILFS are not an identifiable group.)  Given that the scandalous test looks to the broad opinions of general public, rather than of a particular group, it may be an easier task to register a potentially scandalous mark than a potentially disparaging mark.  Just ask The Slants.

In case you missed the webinar from last year, we’re having another Strafford IP webinar on “Navigating Trademark Oppositions and Cancellation Proceedings at the TTAB,” next Tuesday August 18, at noon CST. Here are the details for the webinar.

This year, we’ll have the benefit of knowing how the Supreme Court decided the B&B Hardware case, so please join us. I’m presenting again with two very capable TTAB practitioners: Linda McLeod of Kelly IP in Washington, D.C., and Jonathan Hudis of Quarles & Brady’s D.C. Office.

To brush up on the impact of the B&B Hardware decision, you might want to review these posts beforehand:

Likelihood of Preclusion: Fallout From the Supreme Court Ruling on Likely Confusion

On Unintended Consequences: Will the B&B SCOTUS Ruling Encourage Trademark Bullies?

Channeling Justice Ginsburg of U.S. Supreme Court on the Right to Register a Trademark

(Just) the Right to Register a Trademark

The first three to post a comment here may attend for free, as my guests, without paying the typical registration fee — we hope you can join us!

Please join me for a live and informative 90 minute Strafford law webinar a week from tomorrow, on Wednesday August 13, at noon CST.

The topic to be covered is “Navigating Trademark Oppositions and Cancellation Proceedings at the TTAB,” and here is a link for more information.

For the discussion, I’m joined by two very capable TTAB practitioners: Linda McLeod of Kelly IP in Washington, D.C., and Jonathan Hudis of Oblon Spivak in Alexandria, Virginia.

We have written much about the right to register a trademark, here on DuetsBlog, and this is the very right determined by the USPTO’s TTAB in opposition and cancellation proceedings.

“Inter partes proceedings before the TTAB are proving to be worthwhile tools and a valuable part of a brand owner’s overall trademark enforcement and protection strategy. Despite the TTAB’s limited jurisdiction in only determining the right to register, as opposed to the right to use, and its inability to determine infringement, issue injunctive relief, or monetary awards, trademark oppositions and cancellation proceedings can be a less aggressive and cost effective venue for resolving existing and avoiding future trademark concerns between the parties.”

The TTAB venue is an important aspect of any coherent trademark enforcement program for a brand owner, the vast majority of disputes are resolved there without the need for federal district court litigation, so understanding how to navigate through these administrative proceedings is an important skill for any trademark type.

The Supreme Court will be shining a light soon on the importance of, and the impact of and circumstances under which, a TTAB decision on likelihood of confusion is to have on later federal district court trademark infringement litigation between the same parties.

The first three to post a comment may attend for free, without paying the typical registration fee — we hope you can join us!

How important is the DREAM ANGELS brand to Victoria’s Secret?

Victoria’s Secret has a robust portfolio of federally-registered trademarks to protect the DREAM ANGELS sub-brand for undergarments and a line of personal care products and fragrances. Years ago, apparently Victoria’s Secret entered into a consent-to-use agreement with Airs International, a company that had rights in ANGEL DREAMS for fragrances and personal care products.

Although the exact terms of the agreement are unclear, Victoria’s Secret was supposed to pay $25,000 each year to Airs International, but in late 2007 it sought registration of eight DREAM ANGELS marks itself and ceased making payments in 2008.

I’m thinking the payments must have been contingent on the continued existence of exclusive rights in ANGEL DREAMS. If so, nice lawyering because it appears those rights became abandoned. Had there been a license as opposed to a mere consent, I’m thinking it would have much more difficult for Victoria’s Secret to make the moves that it did.

In any event, Airs Aromatics, the successor to Airs International brought a breach of contract claim and a claim to cancel the DREAM ANGELS registrations obtained by Victoria’s Secret, but the district court dismissed both claims, and then Airs Aromatics appealed the dismissal, but only as to the cancellation claim.

Just over a week ago, the Ninth Circuit Court of Appeals affirmed the dismissal of the attempt to cancel the DREAM ANGELS registrations in Airs Aromatics, LLC v. Victoria’s Secret Stores Brand Management, Inc.

The Ninth Circuit made clear that the cancellation claim could not go forward, at least in federal district court:

“The plain language of Section 37 states that cancellation is available in ‘any action involving a registered mark.’ 15 U.S.C. § 1119. This language specifies that cancellation may only be sought if there is already an ongoing action that involves a registered mark; it does not indicate that a cancellation claim is available as an independent cause of action. Furthermore, each circuit to directly address this statutory language has held that it “creates a remedy for trademark infringement rather than an independent basis for federal jurisdiction.” Nike, 663 F.3d at 98; see also Ditri v. Coldwell Banker Residential Affiliates, Inc., 954 F.2d 869, 873 (3d Cir. 1992); Windsurfing Int’l Inc. v. AMF Inc., 828 F.2d 755, 758 (Fed. Cir. 1987). This interpretation also helps preserve the use of actions before the USPTO Trademark Board as the primary vehicle for cancellation. See McCarthy on Trademarks and Unfair Competition § 30:110 (4th ed.).

We therefore hold that Section 37 of the Lanham Act does not provide an independent basis for federal jurisdiction. Because Airs Aromatics has not appealed the dismissal of the only claims it brought that could support jurisdiction, the district court’s judgment dismissing this action with prejudice must be affirmed.”

So, will we now see petitions to cancel filed at the TTAB of the USPTO — “the primary vehicle for cancellation” — or have we seen the end of this DREAM ANGELS pillow fight?

Based on this decision, it would appear that DREAM ANGELS is a valuable piece of intellectual property to Victoria’s Secret, but if that’s true, why has it allowed the nearly identical DREAMANGEL mark to be federally-registered by another for pillows? Aren’t these Victoria’s Secret DREAM ANGELS registrations (here, here, and here) covering related goods?

Actually, I’m not sure I’d be able to sleep at night knowing this nearly identical mark is out there and unchallenged. How about you?

"Just because you can," is rarely a good reason to support a decision that really matters. This principle is no less true in the trademark world than it is elsewhere.

So, relying on your own navigation of the U.S. Patent and Trademark Office’s (USPTO) online search database without also seeking a trademark attorney’s competent analysis of the search results, can be a dangerous plan, even though you can go it alone. Likewise, just because you can file a trademark application yourself doesn’t make it a smart business decision to avoid engaging a professional with day-to-day working knowledge of all the USPTO nuances and pitfalls.

There are, however, limits on what outside trademark attorneys should do for their trademark owner clients. For example, another decision in the trademark world that really matters, but doesn’t get enough attention, is who should sign verified statements filed with the U.S. Patent and Trademark Office (USPTO). The Trademark Rules liberally permit certain attorneys, among more obviously appropriate persons, to sign such statements on behalf of the trademark owner:

(i) A person with legal authority to bind the owner (e.g., a corporate officer or general partner of a partnership);

(ii) A person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the owner; or

(iii) An attorney as defined in Section 11.1 of this chapter who has an actual written or verbal power of attorney or an implied power of attorney from the owner.

But, again, just because a trademark attorney can sign verified statements with the USPTO on behalf of the trademark owner doesn’t make it a good idea. In fact, it should be a last resort for a trademark owner to have its outside trademark counsel sign verified statements with the USPTO.

As a result, I continue to be amazed how many outside trademark counsel continue to make it a regular practice of signing verified statements on behalf of their trademark owner clients. While I fully recognize it may provide a convenience to have outside trademark counsel sign such statements, and there may well be times when the urgency of a looming deadline requires it, the frequency of validity and fraud challenges in trademark oppositions, cancellations, and district court litigation, should be enough to encourage trademark owners to first consider these risks:

  • The person signing the verified statements becomes a potential fact witness;
  • If outside trademark counsel becomes a witness, he/she may be disqualified and precluded from representing the trademark owner in a dispute involving the filing;
  • Concerning the factual accuracy of the statements made to the USPTO, outside trademark counsel will rarely have firsthand knowledge and never be closest to the true facts;
  • Trademark owners are unlikely to successfully defend any false statements made by their trademark counsel that are based on legal misunderstanding (i.e., "bona fide intent to use," "use in commerce," "interstate commerce," "substantially exclusive" use, and misuse of the federal registration symbol); and
  • The TTAB appears inclined to adopt "reckless disregard" as sufficient culpability to justify an inference of intent to deceive the USPTO in trademark fraud challenges.

So, can you think of and share any additional reasons not to have outside trademark counsel signing verified statements with the USPTO? Where do you stand on the issue with in-house trademark counsel? How about in-house corporate counsel who lacks trademark expertise?

And, what about the reasons in favor of outside trademark counsel signing such documents, are there any beyond convenience and deadline urgency? Finally, do you agree that outside trademark counsel should be the one designated to sign verified statements only as a last resort?

Today marks the end of the 2010 Minnesota State Fair.

Sad day, but Happy Labor Day!

It also marks an opportunity to talk a bit about the frequently encountered question of trademark priority, frozen trademark rights, the creation of common law trademark rights, and the frequently forgotten concurrent registration trademark tool, using my favorite frozen custard stand at the MN State Fair, as a laboratory and an example:

 No doubt, a clever play on words, and a great inherently distinctive name and mark for a frozen custard business.

Turns out, a frozen custard business in the Kansas City, Missouri area thought so too, so what to do? Who was first and where, and whether any federally-registered rights exist, will have a lot to do with the respective naming rights and the geographic scope of any common law trademark rights. 

Since the folks in Kansas City had the foresight to federally register, they filed a federal registration application on August 30, 2001, a couple of years after their claimed first use on November 5, 1999, with a registration certificate issuing on November 12, 2002, and without knowing when the use began in Minnesota, and assuming the dates set forth in the registration are accurate, here is a proposed three-way framework of analysis and some thoughts to consider, depending which side of the fence you might find yourself or your client, in a fact pattern like this:

Scenario A: MN-CLS’s First Use Predates KC-CLS’s First Use Date of November 5, 1999

  1. Normally one with priority — like MN-CLS has in Scenario A — may petition to cancel a confusingly similar trademark registration (thereby freeing itself of any impairment to expand), but since KC-CLS’s registration is more than five years old, MN-CLS is unable to do so based on priority and likelihood of confusion, it is limited to seeking cancellation on other less commonly viable grounds such as fraud and/or abandonment;
  2. This delay by MN-CLS may be costly to its rights because its common law rights may be frozen (no pun intended) to the geographic scope of those rights as of KC-CLS’s filing date of August 30, 2001, making any later geographic expansion a possible violation of KC-CLS’s rights;
  3. MN-CLS’s best position for having the freedom of geographic expansion is to seek a concurrent use registration, requesting some equitable allocation of the entire area within the United States; and
  4. If MN-CLS doesn’t care about geographic expansion, the use it had prior to KC-CLS’s filing date of August 30, 2001, most likely, is safe, and most likely, cannot be disturbed by KC-CLS.

Scenario B: MN-CLS’s First Use After KC’s First Use, But Before Filing Date of August 30, 2001 —

  1. As was the case in Scenario A, since KC-CLS’s registration is protected by the five year statute of limitations, running from the date of registration in 2002, and for the additional reason that MN-CLS lacks priority over KC-CLS’s first use, cancellation of KC-CLS’s registration is not possible on priority and likelihood of confusion grounds, so the most likely remaining way to attempt to knock out KC-CLS’s registration (to avoid impairment of its ability to freely expand) would be on fraud and/or abandonment grounds;
  2. As such, MN-CLS may want to probe whether KC-CLS ceased operations for a period of time sufficient to abandon rights, since a Section 8 Declaration of Use was filed (which only requires current use to maintain the registration), without the typical accompanying Section 15 Declaration (which more strenuously requires continuous use for the preceding five years, etc.), so this may be a possible abandonment red flag to explore;
  3. Assuming KC-CLS’s registration is not subject to cancellation, MN-CLS’s common law rights are most likely frozen to where they were as of KC-CLS’s filing date of August 30, 2001, unless MN-CLS pursues and obtains a concurrent use registration; and
  4. If MN-CLS doesn’t care about expansion,  the use it had prior to KC-CLS’s filing date of August 30, 2001, most likely, is safe, and most likely, cannot be disturbed by KC-CLS, provided MN-CLS was a good faith adopter in an area geographically remote from KC-CLS’s prior common law rights.

Scenario C: MN’s First Use After KC’s Filing Date of August 30, 2001

  1. MN-CLS may have stepped in it, and it is probably living on borrowed time without being in control of its own destiny, assuming there is no basis upon which to cancel KC-CLS’s registration;
  2. Even if MN-CLS had no actual knowledge of KC-CLS, its continued use in Minnesota is vulnerable to a complaint by KC-CLS, since the registration KC-CLS obtained treats KC-CLS as though it constructively used the "Custer’s Last Stand" mark throughout Minnesota as of the filing date of August 30, 2001, prior to MN-CLS’s first use in Minnesota.

Takeaways:

So, this framework of analysis doesn’t necessarily cover all possible factual scenarios and outcomes, but it is a good starting point for evaluating the respective rights of the parties in these all-too-common trademark fact patterns, where many forget about the concurrent use registration angle.

At least one more takeaway from this framework should be apparent: Those who register their rights early — and for those who don’t, but who monitor the Trademark Office filings, taking appropriate action within the first five years of a prior conflicting registration — generally are rewarded under the trademark law more than those who sleep on their rights and delay their registration efforts.

Perhaps, no surprise, at least, until you and/or your client steps in the chocolate custard.

What kind of success have you encountered when pursuing concurrent use registrations to avoid the freezing effect of otherwise conflicting trademark registrations?

         

They say that the best defense is a good offense. It appears that General Mills has adopted this strategy in a recent trademark dispute over the term LOADED in connection with instant potatoes.

Just yesterday, the Minneapolis St. Paul Business Journal reported the filing of a federal district court lawsuit by General Mills against Idahoan Foods, in which it apparently requests cancellation of Idahoan Foods’ federal trademark registration for LOADED BAKED, and further requests that General Mills be able to continue using the term LOADED in connection with instant potato products, including Betty Crocker’s Loaded Mashed:

 Here is Idahoan’s Loaded Baked —>

Apparently Idahoan Foods sent to General Mills a June 25, 2010 cease and desist letter, asserting infringement of its federally registered trademark LOADED BAKED for "dehydrated potatoes and mashed potato mix."

Trademark types will appreciate that since the LOADED BAKED trademark registration issued on July 19, 2005, it is quite curious that Idahoan Foods didn’t wait a few more weeks to play hot potato with or otherwise attempt mashing General Mills, i.e., until the fifth anniversary of its federal registration, when it promptly could have and should have submitted its combined Section 8 & 15 Declaration, in order to not only maintain, but achieve incontestable status for the LOADED BAKED trademark registration.

Timing can be everything in trademark litigation, and while I should reserve final judgment until obtaining, reviewing, and sharing with you a copy of the federal district court complaint, it appears to me — at least from U.S. Trademark Office records — that General Mills acted so promptly, in part, to prevent the LOADED BAKED trademark registration from becoming incontestable. Having done so, now General Mills is free to challenge the trademark on far easier descriptiveness grounds.

In other words, had Idahoan Foods filed the necessary papers to obtain incontestable status for the LOADED BAKED registration before complaining to General Mills, and before General Mills formally challenged the validity of the federal trademark registration, there would have been no ability by General Mills to invalidate it on descriptiveness grounds, a much easier challenge than proving genericness.

Now that the federal district court lawsuit has been filed, and now that General Mills also has filed a Petition to Cancel the LOADED BAKED trademark registration, with the U.S. Trademark Office, Idahoan Foods is precluded from making the necessary Section 15 Declaration filing that would have rendered the registration incontestable and left General Mills with the more difficult task of proving LOADED BAKED generic for "dehydrated potatoes and mashed potato mix."

So, stay tuned for more developments and additional thoughts after I’m able to obtain and share with you a copy of the complaint.

Hat tip to Barry Johnson for knowing I’d be interested in writing about this one.

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.