We’ve been stalking Kevin O’Leary’s nutty Mr. Wonderful trademark application, for a while now.

In April, we thought the USPTO would refuse registration of Mr. Wonderful for nuts, based on this:

In June, we were shocked to see the USPTO missed issuing the obvious refusal, and in August, we noted and reported that The Wonderful Company LLC had filed an Extension of Time to Oppose.

Just last month, O’Leary’s trademark counsel filed a Request for Express Abandonment of the Mr. Wonderful trademark application, and the USPTO promptly issued a Notice of Abandonment.

One of O’Leary’s most famous lines from Shark Tank seems to fit this very moment, as we mourn the loss of O’Leary’s Mr. Wonderful trademark application for roasted nuts, with a popular meme:

Two months ago, our attention seized on a nutty and woefully deficient USPTO examination of a trademark application to register — Mr. Wonderful — for roasted nuts, and nut-based snack foods, among other food products, given the prior WONDERFUL trademark rights owned by these folks:

Just like clockwork, events now appear to be playing out as expected, so keep your eyes peeled and your watches synchronized. Last Friday, The Wonderful Company LLC, filed an extension of time to oppose registration, so the new deadline for opposition is September 8, 2018.

We’ll likely soon see whether a Letter of Protest was filed behind the scenes, giving the USPTO a chance to correct this mistake and issue a likelihood of confusion refusal —  as it’s hard to imagine the Examining Attorney’s failure to issue a refusal won’t be considered clear error, so stay tuned.

Wonderful likely has made contact with Mr. Wonderful by now — my question would be, how hard will Mr. Wonderful play to salvage the other food items currently in the identification of goods?

What do you think, are these goods sufficiently related to roasted nuts to become toast, as well?

Jellies and jams; Banana chips; Dried fruit-based snacks; Fruit preserved in alcohol; Nut butters; Olive oil for food; Potato chips; and Yogurts.

The weather is finally getting warmer up here in Minnesota and it’s a great time to watch baseball, as I’ve been doing frequently of late. It’s been fun watching my home team, the Twins, enjoy a strong start to the season (anything above .500 is huge after our record-breaking disappointment last year), with our younger players making big improvements.

You may think that with the baseball season now in full swing, the MLB might be too busy to aggressively enforce all of its trademarks. You would be wrong. Major League Baseball Properties and the Office of the Commissioner of Baseball (“Opposers”) filed a notice of opposition last week before the Trademark Trial and Appeal Board against the registration of the word mark FOR BASEBALL USE ONLY (Application Serial No. 87153257).

The individual applicant, Joshua Morell filed the application last year, and it published for opposition in January, without any office actions issued. The application identifies numerous clothing goods in International Class 25,  including for example, hats, shirts, rainproof jackets, and sweat shirts.

The Opposers assert a likelihood of confusion under Trademark Act Section 2(d). The bases for this opposition are loaded with a barrage of baseball-related registrations owned by Opposers (or their related/affiliated companies), as listed below. You’ll see it is quite a long list, but it’s worth a glance through to consider the Opposers’ strategy and their chance of success. I won’t drone on with all the identified goods and services, but many include, for example, clothing, entertainment services, and promotion services.

  • Word Mark Registrations
    • MAJOR LEAGUE BASEBALL (Reg. Nos. 1528807, 1620020, 3326191, 3862153)
    • MAJOR LEAGUE BASEBALL ALL-STAR FANFEST (Reg. No. 1719587)
    • MAJOR LEAGUE BASEBALL PRODUCTIONS (Reg. No. 1745625)
    • THIS WEEK IN BASEBALL (Reg. Nos. 2743153, 2769617)
    • OFFICIAL BANK OF BASEBALL (Reg. No. 3565847)
    • THE BASEBALL CHANNEL (Reg. No. 3592912)
    • THIS IS BEYOND BASEBALL (Reg. No. 3746838)
    • ALL OF BASEBALL (Reg. Nos. 3779854, 3849163)
    • BASEBALL EVERYWHERE (Reg. No. 3845051)
    • R.B.I. BASEBALL (Reg. Nos. 3864816, 4687412, 4687414, 4750683, 4971324)
  • Design Mark Registrations
    • MAJOR LEAGUE BASEBALL & Design (Reg. Nos. 955967, 1055317, 1055318, 1055319, 1057260, 1057264, 1617698, 1625617)
    • R.B.I. BASEBALL MLB.COM & Design (Reg. Nos. 4758577, 4758578, 4758579, 4758580)
    • BASEBALL & Design (Reg. No. 1220334)
    • BASEBALL FEVER CATCH IT! & Design (Reg. No. 1230519)
    • MAJOR LEAGUE BASEBALL HOME VIDEO & Design (Reg. No. 1741015)
    • OFFICIAL GAME OF SUMMER BASEBALL & Design (Reg. No. 2791550)
    • NATIONAL LEAGUE OF PROFESSIONAL BASEBALL CLUBS SINCE 1876 & Design (Reg. Nos. 3644993, 3648872)
    • BASEBALL IQ MLB NETWORK & Design (Reg. No. 4294588)
    • LAS GRANDES LIGAS DE BEISBOL (Translation: “Major League Baseball”) (Reg. Nos. 2976531, 2976538)
    • SABOR A BEISBOL (Translation: “Flavor of Baseball”) (Reg. No. 3700391)
    • Design-Only (Reg. No. 2573503)
  • Opposers also cited two pending applications:
    • ONE BASEBALL (Serial. No. 86783219)
    • WE ARE BASEBALL (Serial No. 87095504)

In my view, some of the registrations cited by the Opposers are a bit off-base regarding a likelihood of confusion, particularly some of the design registrations. Quantity is not always better than quality. Even for the word mark registrations, the fact that those registered marks contain the descriptive or generic word “BASEBALL” (which, by the way, is disclaimed in many of the asserted registrations), is not necessarily sufficient for a likelihood of confusion based on the applicant’s arguably dissimilar mark FOR BASEBALL USE ONLY.

The strategy here seemed to be to assert any registrations owned by Opposers that contain the word “baseball.” Opposers even go so far as asserting in the Notice of Opposition that the public has come to recognize and refer to Opposers and their related entities “by the short-hand nickname ‘Baseball’.” That’s quite an interesting contention. Do you agree?

The applicant Joshua Morell has stated that “I am by no means damaging [the MLB] brand and none of the marks are even close to being identical to any of the MLB marks.” Morell has also explained that he is building a family of “Use Only” brands for athletes in different sports–he has also applied to register the marks MARATHON USE ONLY and RUNNING USE ONLY, among others.

Who do you think will prevail in this opposition proceeding? Stay tuned for updates.

WatchingCreation

This past weekend, with what appears to be our first lasting snowfall, I enjoyed following my daughter around the chilly alleys of downtown Minneapolis while she created for her photography class. As you can see from the moment I captured, she inspired me to create a bit too.

Thankfully I’m not being graded for my efforts.

Yet, as I reflected on capturing my daughter’s creativity in action, it occurred to me that the results of the creative efforts of our friends in the branding world are frequently watched too, but not always by those with as good of intentions as mine toward my daughter’s activities.

I’m not talking about jealous peers or green-eyed monsters or even the talented and skilled judges who review and evaluate creative submissions for industry awards. The watchers I’m thinking about have a different perspective as the IP counsel for brand owners who evaluate potential enforcement targets as new creative works endlessly flow into the marketplace.

One type or method of this kind of watching is automated and quite routine in the IP world. Many professional trademark search firms provide services allowing brand owners and/or their counsel the ability to be alerted when another files an application seeking registration of a mark, when the new creation has the potential to cause likely confusion.

Receiving a cease and desist letter after an application is filed is a pretty reliable sign that the brand owner behind the letter is watching — either the applicant directly or the penumbra surrounding the brand owner’s trademark rights, to maintain or grow a vibrant scope of rights.

Sophisticated brand owners also are well-versed in using, where appropriate, a more stealth approach of watching with the letter of protest strategy. The letter of protest option can avoid the need for direct interaction with the trademark applicant because it positions the USPTO to do the brand owner’s bidding by erecting road blocks to registration.

Of course, if the concern stems from more than registration and includes a concern of use too, then the brand owner eventually will need to unmask and reveal its concerns directly to the applicant. Having said that, having the USPTO on your side as a brand owner watching the filings of concerning marks can be a powerful tool when one decides to finally unmask and speak up.

With these IP realities in mind, are you watching or being watched or both?

Best to do the former and assume the latter.

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?

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!

As you may recall, last September we wrote about Coca-Cola’s Significant Interest in Zero Marks, discussing Coca-Cola’s defense of a trademark infringement suit brought by an individual named Mirza Baig, who claimed rights in “Naturally Zero” for Canadian natural spring water, and Coca-Cola’s contrasting attempts to own and federally-register various marks containing the term ZERO (interestingly those applications all being opposed by RC Cola):

“Coca-Cola has been careful to straddle the fine lines of trademark protectability, since it has found itself on both sides of trademark disputes. Taking the position that ZERO is descriptive permitted Coke to defend the above-referenced trademark infringement challenge, while at the same time maintain that Coca-Cola’s juggernaut of marketing, sales and promotion established that is has acquired distinctiveness in its ZERO marks.”

Yesterday, the Seventh Circuit Court of Appeals spoke on the subject, affirming the Northern District of Illinois’ grant of summary judgment in favor of Coca-Cola in the trademark infringement suit brought by Baig, reasoning:

“[W]e conclude that Baig has not provided evidence from which a rational jury could determine ‘Naturally Zero’ had established secondary meaning. . . . [It] was a tiny and brief entrant with negligible sales in the bottled-water portion of the beverage industry; its trivial role made it ‘difficult, maybe impossible’ for it to develop secondary meaning in the beverage industry for its mark. Moreover Baig’s narrow advertising efforts — limited to trade publications, which are primarily read by industry insiders, and some pamphlets handed out at gas stations — are also insufficient to show that a substantial segment of consumers associated ‘Naturally Zero’ with a single source. And Baig’s relatively insignificant and intermittent sales from 1998 to 2004 are insufficient for a finding that a substantial number of consumers would consider ‘Naturally Zero’ to be uniquely associated with Baig’s brand.” (case citations omitted).

Given the Court of Appeals’ agreement with Coca-Cola that no trial was necessary to address Baig’s claimed trademark infringement, and given the “tiny,” “brief,” “negligible,” “trivial,” “insignificant,” and “intermittent,” references characterizing Baig’s claimed use of “Naturally Zero,” one has to wonder whether attorney’s fees ought to be awarded Coca-Cola, at least on Baig’s pro se appeal of the case.

The beverage giant must be pleased with the win, but in the end, given all it has been forced to spend on defending this deep-pocket lawsuit, I’m guessing Coke may still be left with a bad aftertaste in its mouth on this one. Recall, the Seventh Circuit has shown a willingness to grant fees in trademark bullying fact patterns, and we know from 3M’s experience that Goliath can be bullied by David too, so relative size isn’t determinative.

In case you’re wondering about the status of the consolidated ZERO trademark oppositions brought by RC Cola (on genericness grounds) that Coca-Cola is currently defending at the TTAB, the parties are waiting for the Board to schedule a date for oral argument — this one might be worth attending, as I’ve written previously:

[I]t remains to be seen whether Coca-Cola will prevail in the consolidated opposition brought by Royal Crown Company, perhaps its most significant challenge to date regarding the ZERO series of marks. I’ll have to say, RC’s Trial Brief makes out a pretty strong case for finding ZERO generic for zero calorie beverages. In other words, is ZERO like LIGHT for beer, STONE OVEN for pizza — basically denoting the name of a product category instead of a source identifier?

In the end, given the Board’s recent genericness rulings regarding Subway’s claimed FOOTLONG mark, and Frito-Lay’s successful PRETZEL CRISPS challenge, it will be worth watching to see whether the Board finds that “ZERO” primarily means Coke or just a soft drink having “no calories, you know, a drink about nothing . . . .”

Stay tuned, hopefully we’ll know before the end of the year exactly where the meaning of ZERO stands.

— Jessica Gutierrez Alm, Attorney

In the wake of our 49th Super Bowl (er, “The Big Game”), it seems the Seahawks are not only making headlines with their last minute calls, but also with their IP strategies.

https://www.duetsblog.com/files/2015/02/seattleseahawks.gif

Over the past couple of years, the Seahawks have filed for registration of several marks, including at least a dozen applications filed in 2014.  Some of the applications drawing attention lately include the Seahawks’ attempts to register the phrase GO HAWKS and the word BOOM, both in standard script form, for various goods and services.  Additional applications filed in 2014 include phrases such as WE ARE 12, THE 12s, and LEGION OF BOOM.

So far, the team’s attempts to register GO HAWKS brought challenges from the NHL (for the Chicago Blackhawks) and NBA (for the Atlanta Hawks).  The application is also drawing attention from the University of Iowa (the Hawkeyes).  But arguably, the broadest application recently filed by the Seahawks is for the number “12” for use on capes, jerseys, sweatshirts, and long-sleeved and short-sleeved shirts and t-shirts.

Seattle Seahawks’ 12th Man Flag

For anyone who, like myself, is an infrequent football fan at best, the number 12 signifies the fans.  That is, each team usually has eleven players on the field at a time.  “The 12th Man” recognizes fans’ role in supporting the team to victory.  But then, doesn’t every American football team have a 12th Man in the overzealous crowds of painted faces and nacho cheese?  Texas A&M doesn’t think so.

The University has held a registration for 12TH MAN since the 1990s.  In 2006, Texas A&M sued the Seahawks for using “12th Man” to describe Seahawks fans.  The suit ended in a license agreement, in which the Seahawks agreed to pay an annual licensing fee of $5,000 to use the phrase in limited circumstances. Under the license, the Seahawks are permitted to raise a flag at the start of each game and call it the “12th Man Flag.”  The flag can have the number 12 on it, but not the word “man.”  The ‘Hawks also can’t sell any merchandise featuring the phrase.

Batch No. 12 Bourbon

The Seahawks do hold a registered trademark for their blue and white 12th Man Flag, and are  apparently now working to further protect their use of the phrase in relation to their own team.  In addition to filing their own recent applications, the Seahawks have also formally challenged pending applications for 12 NATION, filed by former Seahawks kicker Norm Johnson and his son Jordan Johnson, and BATCH NO. 12, filed by a small Washington distillery in relation to a line of spirits.  Norm and Jordan Johnson abandoned their application after the Seahawks’ challenge, stating that they didn’t have the funds to pursue the fight.  The Washington distillery has different color combinations for its Batch No. 12 labels, one of which is an admittedly familiar blue and green.

The team even challenged an application for DISTRICT 12, filed by Lions Gate Films in connection with the Hunger Games franchise, but, perhaps due to public backlash, has since withdrawn and allowed the application to move forward.

The Seahawks also recently filed an application for the number “12” in a  stylized font similar to what appears on their jerseys.  New England Patriots quarterback Tom Brady may have something to say about that one.

Tom Brady: New England Patriots #12

While the Seahawks’ IP strategy may be somewhat aggressive, a large trademark portfolio is not unique to the team, nor is trademarking everyday terms and phrases.  For a couple of examples, the Raiders own JUST WIN BABY, and the Patriots own DO YOUR JOB.  Trademarks for standard form numbers for various goods and services are also not new.  (How about “31” in connection with retail ice cream services, or “5” for a certain Chanel perfume?)

Based on a USPTO online search, the Seahawks currently hold 51 active trademark registrations (including granted and filed applications).  Teams use their marks not only for licensing and merchandising profit, but also to instill the team’s brand in the minds of fans.  Perhaps one reason the Seahawks brand is so well recognized is due to their increased efforts to leverage their IP.  However, the team’s latest round of applications may be stretching the brand’s reach a bit too far.  Maybe it’s time the Seahawks take a page from the Patriots’ playbook, and deflate their strategy.

In the context of the holiday season, what comes to mind when you see a shiny bright red star?

If you’re reading this post from Russia, perhaps the top of a New Year Tree is brought to mind.

Of course, I have brands on my mind, and it has been hard to miss the barrage of holiday advertisements of two different, but well-known, if not famous, brands that feature a red star:

 

MACY’S claims use of the federally-registered solo red star logo for retail department store services since at least as early as 1892.

Macy’s once owned federal registrations for the red star logo in connection with a variety of products, including golf clubs, medicines, tooth powder, and wines.

The Macy’s red star registration for wines was not renewed, however, and expired in 1994, apparently opening the door to federal registration of the above Heineken logo.

So, does that mean Heineken now owns exclusive trademark rights in a single red star in the context of beverages? No, that context is likely too broad, given the rights SanPellegrino has acquired from its use of a red star logo in connection with “mineral and aerated waters and carbonated fruit drinks” since 1900 (or, perhaps 1961).

Heineken actually opposed registration of the SanPellegrino red star logo in 1997, but the opposition was withdrawn two years later — likely an interesting back-story, if anyone knows it, please share.

But, even limiting rights to the context of beer appears too broad for Heineken, as this non-verbal and non-traditional trademark application to the right is as close as Heineken has come to seeking federal registration of the red star logo without being tied to the Heineken brand name. (The colorless version of the same registered logo is almost a decade old now).

It is a curious decision for Heineken to bind rights in the red star for beer to the green/white/black trade dress — given the substantial brand equity in the red star logo for beer — because what it might end up with on another’s beer taps could leave it pounding its own fist (note the red/green/white trade dress on the Anti Hero IPA specimen to the right of the non-verbal trademark registration on the left below):

It is even more curious that Heineken sat on its hands and its heiny, not even attempting to slap Revolution Brewing’s wrist with an extension of time to oppose registration of the red star tattooed fist tapper trademark. Apparently, Iron Fist Brewing thought about it, but then said never-mind.

At this point in time, let’s just say the “red star” beer has been and continues to flow from the tap to the floor, making it almost impossible to put it back into the keg, as evidenced by these multiple third party uses of a “red star” or something close to it, also in the context of beer branding:

 

Not to mention the Redstar bar in Brooklyn, NY, the Red Star Craft House in Exton, PA, the Red Star Bar & Grille in Baltimore, MD, or the closer-to-home Duluth Red Star.

Briefly turning to the context of politics, given how the red star is also a recognized symbol of communism, how is it that Yum Brands appears to be the only one attracting objections on that basis?

I’m thinking we’re back to where we started with context.

Indeed, Yum Brands’ Bahn Shop — Saigon Street Food, appears to cater to those interested in Vietnamese cuisine, and based upon consumer outrage, it recently announced it would drop the red star logo from its visual identity.

Finally, back to Heineken, would you have pounded more than a fist against Revolution Brewing’s six-pointed red star logo on the beer tapper?

Not exactly a scientific survey, but I showed the tapper to one of my sons (who doesn’t yet fit Heineken’s target demographic), and he confidently assumed it was a Heineken beer tap.

Who should be more worried, Heineken, Revolution Brewing, or me?

Coca-Cola just announced it is introducing Coke Zero in India, which will make it the sub-brand’s 149th market in the world, a truly remarkable reach.

As the popular Coke Zero brand is approaching its tenth anniversary in the U.S., it seems like a good time to explore Coca-Cola’s trademark position in COKE ZERO and COCA-COLA ZERO here in the U.S., especially given the news last week that the beverage giant escaped a trademark infringement suit over the marks in the Northern District of Illinois.

After looking into that case, I was surprised to see, as long as Coke Zero has been on the market  — none of the ZERO marks sought by Coca Cola have registered, all seventeen remain pending in the U.S., including COKE ZERO, COCA-COLA ZERO, SPRITE ZERO, PIBB ZERO, VAULT ZERO, and POWERADE ZERO, among others.

In fact, the series of ZERO marks has been the subject of at least two very large and significant consolidated trademark oppositions at the TTAB of the USPTO, since 2007, and the one brought by Royal Crown Company (RC) remains active — in fact, the case was fully briefed this past summer and Coca-Cola requested just last month that the Board schedule final oral argument in the case. In the Royal Crown opposition, RC contends that Coca-Cola must disclaim any exclusive rights in the term ZERO, as that term is either generic for zero calorie beverages or merely descriptive without any secondary meaning or acquired distinctiveness.

The other consolidated opposition was brought by AMBEV, back in 2007, also asserting mere descriptiveness and lack of secondary meaning, but AMBEV’s consolidated opposition was dismissed just over two years ago by the TTAB, as the Board was convinced at that time, Coca-Cola had established acquired distinctiveness in its ZERO marks based on the factual record developed in that case.

So, if ZERO marks can be owned in connection with beverages, how did Coca-Cola escape liability in the trademark infringement suit in the Northern District of Illinois last week? The plaintiff in that case had asserted exclusive common law rights in NATURALLY ZERO for spring water, but it admitted to gross sales of $150,000 between 1998 and 2004, no production or sales after 2004, and no attempt to resume sales until 2010, well after Coca-Cola had launched its ZERO series of beverage products in the U.S.

Moreover, the plaintiff there had admitted NATURALLY ZERO communicated “no calories, you know, a drink about nothing . . . .” As a result, the court granted summary judgment to Coca-Cola, ruling as a matter of law that the plaintiff’s merely descriptive mark had not acquired distinctiveness, and even if it had, the claimed NATURALLY ZERO mark had been abandoned.

Coca-Cola has been careful to straddle the fine lines of trademark protectability, since it has found itself on both sides of trademark disputes. Taking the position that ZERO is descriptive permitted Coke to defend the above-referenced trademark infringement challenge, while at the same time maintain that Coca-Cola’s juggernaut of marketing, sales and promotion established that is has acquired distinctiveness in its ZERO marks.

Yet, it remains to be seen whether Coca-Cola will prevail in the consolidated opposition brought by Royal Crown Company, perhaps its most significant challenge to date regarding the ZERO series of marks. I’ll have to say, RC’s Trial Brief makes out a pretty strong case for finding ZERO generic for zero calorie beverages. In other words, is ZERO like LIGHT for beer, STONE OVEN for pizza — basically denoting the name of a product category instead of a source identifier?

In the end, given the Board’s recent genericness rulings regarding Subway’s claimed FOOTLONG mark, and Frito-Lay’s successful PRETZEL CRISPS challenge, it will be worth watching to see whether the Board finds that “ZERO” primarily means Coke or just a soft drink having “no calories, you know, a drink about nothing . . . .”