The Museum of Modern Art in New York City, commonly known as “MoMA,” has sued a cafe and art gallery, MoMaCha, also located in New York City. A couple months ago, MoMA filed a complaint in federal court against MoMaCha, asserting claims of trademark infringement, trademark dilution, and unfair competition. A few days after filing the complaint, MoMA also filed a motion for a preliminary injunction. The case is The Museum of Modern Art v. MoMaCha IP LLC et al., No. 18-cv-03364-LLS (S.D.N.Y.)

MoMaCha’s cafe and art gallery offers matcha green tea along with displays of modern and contemporary art. Similarly, MoMA is a museum that displays works of art, and also offers cafe services, in the same area of New York City. The complaint asserts that the parties’ marks are “extremely similar” because they both share the “MOMA” letters, they are both displayed in black-and-white text, and have similar capitalization, in that the “o” is lowercase and the second “M” is uppercase. Shown below are the parties’ stylized/design marks.In response to MoMA’s motion for preliminary injunction, MoMaCha argued that its name is not similar in look or meaning to MoMA’s name; rather, it is a combination of the words “mo” and “matcha” tea, creatively suggesting “more tea.” Furthermore, after the filing of the lawsuit, MoMaCha asserted that it would reduce any possibility of confusion by changing the style of its name to be all capital letters, “MOMACHA,” and by adding a disclaimer to its doors, menus, and website stating, “We have no affiliation with the Museum of Modern Art or any Museum.” (Their current website already shows these changes.) Additionally, MoMaCha argues that MoMA’s mark is weak and therefore entitled to only narrow protection, because it is simply “four letters written in black and white” which are nearly identical to “the commonly used Franklin Gothic font.”

MoMaCha’s arguments, and its voluntary re-design and disclaimer, are creative. But courts have held that disclaimers are not necessarily sufficient to avoid a likelihood of confusion–and sometimes disclaimers can even add to confusion. MoMA might have a difficult time winning a preliminary injunction, based on the high standards that are applicable. Nevertheless, the allegations of the complaint are compelling, based on the similarity of the marks and the relatedness of the parties’ goods/services that are offered in the same city.

How do you think this one will turn out? The briefing on MoMA’s preliminary injunction motion was completed last week. The court denied MoMA’s request for an oral argument, so a decision could be issued at any time, perhaps within the next month or two. Stay tuned for updates.

 

— Jessica Gutierrez Alm, Attorney

A dog toy display at a local pet store caught my attention recently.

I did a double take on seeing the familiar fonts, coloring, and packaging.  Not long after, I happened to find these at a different pet store.

Once again, the familiar labels, coloring, and bottle designs caught my attention.

While certainly reminiscent of the actual brands, these all appear to be clear examples of parody.  The Chewy Vuiton case is particularly instructive here.  In that case, Louis Vuitton sued dog toy manufacturer Haute Diggity Dog for trademark infringement and dilution over a Louis Vuitton-themed dog toy.

The court held that the dog toy was indeed a successful parody, and Haute Diggity’s use of CHEWY VUITON did not constitute infringement or dilute the Louis Vuitton trademark rights.  In analyzing Haute Diggity’s parody defense, the court defined a parody as a work that (1) references the original/famous brand, (2) but makes clear that the work is not the original/famous brand, and (3) communicates some articulable element of satire, ridicule, joking, or amusement.  While recognizing the similarities between the dog toy and Louis Vuitton’s designer bags, the court also articulated several differences.  For example, the court highlighted that the dog toy is smaller, plush, and inexpensive—clear distinctions over LV purses.  The court characterized the dog toys as “simplified and crude,” rather than the “detailed and distinguished” purses.

While Jose Perro, Dr. Pooper, HeinieSniff’n and the others I recently stumbled on are probably parodies as well, they beg the question of where the parody line falls.  The Chewy Vuiton court made clear that there must be some readily identifiable differences between the original mark and the parodied work.  But how many differences are enough?

Consider the Snif peanut butter jar, for example.  While the words and the items themselves are different, there seems to be some room for suggested association between peanut butter and dog toys.  Peanut butter is frequently used as a dog treat by many owners.  Surely a dog owner might believe Jif peanut butter had entered the dog toy market.

What do you think?  Are all of these clear cases of parody like the Chewy Vuiton toys?

Although perhaps the most important question is: why are there so many dog toy parodies?

Over the weekend, the Star Tribune continued the growing drum beat of understandable excitement for Super Bowl LII, as it steadily approaches U.S. Bank Stadium in Minneapolis.

The article also plays the typical NFL-enabling drum beat of caution against local businesses that might see fit to fairly and truthfully reference the Super Bowl in some commercial manner:

“From the NFL’s viewpoint, if businesses use the terms or other trademarks, it could appear like it is an official part of the Super Bowl or its related events, said Dolores DiBella, one of the lead intellectual property attorneys for the NFL.”

Perhaps the NFL would like to live in a world where no business can use the words “Super Bowl” without paying a fee; that isn’t the world we live in, especially given the growing judicial drum beat and emphasis on Free Speech and the First Amendment in the trademark/copyright worlds.

Nowhere in the article is there any acknowledgement that the NFL has long been accused of behaving as a trademark bully and overreaching with its valuable intellectual property rights.

The legal test for trademark infringement (likelihood of confusion) is not shown when a use “could appear like it is an official part of the Super Bowl or its related events,” the mere possibility is simply not enough, the likelihood of confusion must be probable.

Nowhere in the article is there any mention of trademark fair use; classic or nominative fair use. Nowhere is there any mention of Free Speech or the First Amendment. Even, this kind.

And, for those wondering whether the Super Bowl trademark might be famous and deserving of dilution protection, let’s not forget, the future of trademark dilution law is in question.

So, while it is true that not uttering the words “Super Bowl” will help a business play it safe and avoid all the fire and fury of the NFL, for those who are properly advised and have insurance coverage for advertising injury, that would be a very big game worth watching (or playing) too.

— Jessica Gutierrez Alm, Attorney

Two Bros are competing over their Bro meal delivery services.

Jamie Giovinazzo is the owner of Eat Clean Bro, LLC, a meal delivery service providing “a convenient service that is designed to bring chef-prepared meals right to your front door.”  “Whether you are looking to lose weight, live a clean and healthy life, or build lean muscle mass through a natural diet, our service has a line of meals to fit your lifestyle.”  Giovinazzo has federal trademark registrations for EAT CLEAN BRO and POWERED BY YOU PROVED BY YOU EAT CLEAN BRO.  According to the website, Eat Clean Bro was founded in 2013.

Earlier this week, Giovinazzo filed a complaint in federal court against Bryan Calcott, owner of Ketoned Bodies. Through Ketoned Bodies, Calcott recently launched his own meal delivery service, Eat Keto Bro, delivering meals catered to a ketogenic diet.  A ketogenic diet is a low-carb, high-fat diet, recently lauded by fitness buffs.

According to the Complaint, Giovinazzo asserts, “Rather than engage in fair competition in the marketplace and allow consumers to exercise their own choice through the use of only the existing Ketoned Bodies trademark . . . Defendants have . . . recently resorted to promoting its EATKETOBRO Services and Products using a trademark eatketobro and domain name, EATKETOBRO.COM, that are confusingly similar to Plaintiffs’ EAT CLEAN BRO Trademarks and Plaintiffs’ EATCLEANBRO.COM domain name.”

Giovinazzo alleges both trademark infringement and dilution.

What do you think? Is Eat Keto Bro confusingly similar to Eat Clean Bro?  What about these other bro-related food services?

 

 

 

 

When trademark owners are accused of bullying and shamed in public, a common and knee-jerk defensive response to justify the cease and desist letter or enforcement action is: “We have a legal duty and obligation to police and enforce our trademark rights.” And, some might even go on to say: “If we don’t enforce our mark against this use, our trademark could become generic.”

Indeed, Monster Cable CEO Noel Lee — someone very experienced in receiving accusations of trademark bullying on behalf of his company — is quoted as saying:

We have an obligation to protect our trademark; otherwise we’d lose it.

Actually, as to the point about genericide and the feared complete loss of trademark rights, I think we should all take a deep breadth and ask how realistic is the risk of genericide for the trademark in question, as we have done with the hyper-active-blanket-concern over the verbing of brands and trademarks.

Now, as to the point about legal obligations and duties, this characterization seems more than a bit over-blown as well.

Let’s make no mistake, there are real consequences of trademark owners putting their heads in the sand and not policing and enforcing their trademark rights, but clearly, no one is breaking the law or going to jail, and no one is going to incur civil or criminal liability for merely being a lazy or inattentive trademark owner who fails to police. Consequences yes, liability and law-breaking, no.

As we have said before, in the context of Twitter’s once laissez-faire approach to trademark enforcement, in most cases, a failure to police or enforce has a direct impact on the scope of rights in a particular trademark, but the genericide worst-case-scenario risk often can be an overblown form of drama.

The skill and experience of a talented trademark type, of course, is being able to discern when the risk of genericide is real and when it is faux.

So, if your company or client is being sized up as a trademark bully, and the shoe doesn’t fit because you’re engaged in legitimate trademark enforcement activities, a more intellectually honest and helpful defense to the negative bully label might be to focus on explaining your genuine concern over likelihood of confusion, or likelihood of dilution (if the mark in question is famous), instead of blaming the law and our legal system, and hiding behind legal “duties” and “obligations” that don’t exist.

If you’re finding this difficult to do, maybe the shoe fits afterall, and you end up living with the label.

Likelihood of confusion? Likelihood of dilution? Blurring? Tarnishment? All to the left?

 

To closely examine Sears’ most recent trademark infringement and dilution law suit and complaint concerning the DIEHARD brand against the maker of DieHard Spray ("a numbing agent for male genitalia"), check out Sears, Roebuck & Co. v. Rockhard Laboratories, Inc., venued in the Northern District of Illinois (Complaint) (Exhibit 1) (Exhibit 2).  

I’m left wondering, might Bruce Willis make a cameo appearance in this trademark fight?

    

By the way, it appears that Sears is not the only affected trademark owner, Twentieth Century Fox owns the DIE HARD trademark for a "series of motion picture films," a "computer game and CD Roms," and a service mark for "entertainment services." Also, check out the red/white/black trade dress.

Do you suppose they flipped a coin or arm-wrestled to decide who would do the honors?

Many visitors traveling to Times Square since 2002 have caught a glimpse of the Naked Cowboy®, a/k/a Robert Burck. He sings and officiates weddings (charging $499 and up). He even ran for the Mayor of New York at one point (although he ended up withdrawing from the race). For those of you who have not travelled to the Big Apple, the Naked Cowboy also appears on television in venues ranging from Sunday football pregame shows to “The Apprentice.” Mr. Burck, a savvy businessman, secured a trademark for the Naked Cowboy. He dresses (or undresses) in a white hat, boots and underwear briefs. Mr. Burck also franchises this image and provides training for other would-be Naked Cowboys. With an income estimated at $5,000 an hour from tourist donations alone, and adding to that revenue from souvenirs, franchise fees and appearance fees, the Naked Cowboy brand is valuable. Mr. Burck vigilantly protects his trademark, likeness and brand. 

Naked Cowboy, doing business as Naked Cowboy Enterprises, previously sued the Naked Cowgirl. There were allegations that her vulgar hand gestures (i.e., giving the finger) harmed his valuable trademark and image. The parties are currently in settlement discussions.

Mr. Burck’s company also took on America’s favorite candy company. When Mars Company put up a billboard in the Naked Cowboy’s backyard (i.e., Times Square) featuring a cute M&M candy wearing the famous garb, the Naked Cowboy sued. Mars defended the lawsuit based on the First Amendment right to parody Burck’s character. Before there was a resolution on the merits, the candy company and the Naked Cowboy reached a settlement.

The latest target for Mr. Burck’s trademark enforcement is daytime television. It’s notJames Franco’s psychopathic artist character “Franco” on “General Hospital” (although wearing this garb may be an idea for the Oscar nominee/host to try). Instead, CBS and the producer of The Bold and the Beautifulare being sued over the character Oliver, who dresses as the Naked Cowboy on the show. To add insult to injury, the daytime “Naked Cowboy” was referred to as a “fool” on the show. Specifically, the Naked Cowboy has sued CBS and the producer of the show for trademark infringement, false designation of origin passing off and false advertising under the Lanham Act, dilution of the mark, and false description along with various state law claims. When they file their answers in the case, CBS and the producer of “The Bold and the Beautiful” may raise the First Amendment right to parody defense that was raised by the Mars Company. Only time will tell as to whether the Naked Cowboy can prevail in his suit against the daytime drama.

My first oral argument, as a very young lawyer, involved a small discovery dispute in a trademark case, in which there were complaints about inadequate and deficient discovery responses. During the hearing, the U.S. Magistrate Judge who decided the motion said something to the effect that my client’s positions reminded him of tilting at windmills. Needless to say, we didn’t get what we were asking for, and I’ve never forgotten that phrase.

A brand new trademark case, recently filed in the United States District Court for the District of Minnesota, caused my trip down windmill memory lane. Here is a pdf copy of the complaint, complete with exhibits. The case is Holland USA, Inc. v. Comda Ltd., and alleges, among other claims, trademark dilution, trademark infringement, and trademark counterfeiting of pens bearing the following "famous" "windmill design" logo:

   Can you see it on plaintiff’s pen clip?     Not easily, without a magnifying glass, and far more visible are the two horizontal bars, which appear to lack any trademark significance, because they appear on both plaintiff’s pen clips and defendant’s pen clips, yet plaintiff is not complaining about the use of the identically positioned horizontal bars:

  Besides wondering whether anyone pays attention to the subtle and barely visible windmill design that plaintiff claims famous trademark rights in, I’m left wondering why the only registered rights for this design cover "mail order catalog services"? No registered rights for pens?

OK, given that, I’m wondering something else too. Even assuming that defendant’s pens also bear a barely visible yet identical windmill design on the clip, can they really depict a "counterfeit mark" on pens, as defined by Section 34(d)(1)(B) of the Lanham Act, 15 USC 1116(d)(1)(B), since the federal registration in question only covers "mail order catalog services" in Int’l Class 35 — as opposed to pens — the allegedly infringing and counterfeit goods in Int’l Class 16?

Not every trademark infringement involves the unique scenario of counterfeit goods.

So, how likely will plaintiff’s allegation of trademark counterfeiting similarly be considered tilting at windmills, i.e., "attacking imaginary enemies, or fighting unwinnable or futile battles."

 

Last month the Trademark Trial and Appeal Board (TTAB) refused registration of the slogan THE OTHER RED MEAT for "fresh and frozen salmon," not based on likelihood of confusion, but because it is likely to dilute the distinctive quality of the famous THE OTHER WHITE MEAT slogan of the National Pork Board and National Pork Producers Council. Stay tuned for a more detailed discussion of this interesting case, but in the meantime, a pdf of the decision is here.

A search of the exact phrase "the other red meat" on Google discloses 1,670,000 results, so I’m left wondering whether the proverbial cow is already out of the dilution barn.

It appears, based on my admittedly quick survey, that "the other red meat" phrase is being attributed to a variety of other types of "red" meats that are supposed to be leaner and healthier than beef, well beyond the salmon at issue in the decision, such as bison, tuna, curry goat, lamb, and ostrich, to name a few.

In addition, it appears that in 1996 the identical THE OTHER RED MEAT slogan was federally registered for ostrich meat, and it was abruptly cancelled in 1998, but no indication on the TTAB database that it resulted from a successful cancellation by the National Pork Board and National Pork Producers Council.

At what point does a phrase like "the other red meat," if used to designate a healthy alternative to beef, become so commonplace that such references are incapable of diluting the distinctive quality of the famous pork-related slogan: The Other White Meat?