Articles Posted in Trademark News Stories

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Now that Melania Trump is to assume the role of First Lady of the United States on January 20, 2017, her trademark troubles may have just begun. Melania Trump has hired a law firm in Slovenia to stop the use of her name on numerous products without her consent. Similar to the laws of the United States, use of the name Melania Trump without Ms. Trump’s authorization for commercial purposes is a violation of the law in her native country. Since Donald Trump was elected President of the United States, various products in Slovenia have commenced use of Melania Trump’s name such as shoes, underwear, candy, cakes, etc. In Slovenia, not only did these products use Melania Trump’s name, some also placed her image on the packaging. I wouldn’t be surprised if the United States Patent & Trademark Office (“USPTO”) also starts to receive applications trying to take advantage of the recent fame of Melania Trump.

The soon to be First Lady, already owns several trademark registrations and one pending  trademark application with the USPTO. There is a registration in the name MELANIA for watches and jewelry, a second registration for the mark MELANIA in international class 3 for various cosmetic products, and a third registration for MELANIA TRUMP for jewelry and cosmetic goods. The earliest filing date of the three applications was in 2009 and the latest trademark application was filed in August 2016.

As anticipated, there was also a trademark application filed for the mark MELANIA DIET, but not filed by Melania Trump. This application was filed on July 20, 2016 seeking to brand weight reduction services. On November 16, 2016 a refusal was issued by the USPTO. The refusal states that based on Trademark Act Section 2(c), 15 U.S.C. §1052(c) a name in a trademark would identify a living individual if the person bearing the name will be associated with the mark when used on the goods or services because the person is so well known that the purchasing public would reasonably assume a connection with the person and the goods or services. See our web page entitled, Trademarks That Falsely Suggest A Connection With Other Persons, where we discuss similar cases involving the famous model Twiggy, Beyonce’s famous infant Blu Ivy Carter and numerous applications trying to incorporate President Obama’s name such as The Obama Collection, Bronx Obama, and The Obama Collection.

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William Adams (aka “will.i.am”) member of the well-known music group, The Black Eyed Peas filed a trademark application for the mark I AM at the United States Patent & Trademark Office. The trademark application identified products in international class 3 including but not limited to cosmetics, fragrances, beauty products and personal care products. The Examining Attorney refused registration on the ground of likelihood of confusion. The cited mark was a prior registration for the identical trademark I AM for perfume in international class 3. William Adams appealed to the Trademark Trial and Appeal Board (the “Board” or the “TTAB”) and after filing the appeal assigned the trademark application to i.am.symbollic, llc (the “Applicant”). See In re  i.am.symbollic, llc Serial No. 85044494 (TTAB October 7, 2015).

The Applicant insisted that the language included in the identification of goods distinguished the goods from those cited in the prior registration. Specifically, the identification of goods states that the goods are “associated with William Adams, professionally known as ‘will.i.am.’ “. The Applicant alleges that the marks are marketed differently, the cited mark is not famous, and most importantly the goods identify Applicant’s founder “will.i.am”. The Applicant further argues that since the goods are exclusively associated with the famous front man of the band, The Black Eyed Peas (will.i.am.) there cannot be confusion with the cited mark I AM for perfume.

The primary inquiry with a likelihood of confusion analysis is the cumulative effect of differences in the essential characteristics of the goods and differences between the marks. The test is the recollection of the average consumer. Likelihood of confusion will be found if there is any confusion with any items included in the identification of goods that could possibly cause confusion between the sources of the goods. See Apple Computer v. TVNET.Net, Inc., 90 USPQ2d 1393 (TTAB 2007). In making the determination as to the relatedness of the goods, the evaluation must be based on the language used in the identification of the goods or services.

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This blog post is a follow-up to our post entitled, Has One Of Tiffany And Company’s Trademarks Become Generic? posted on February 14, 2014. The U.S. District Court for the Southern District of New York answered the question we asked in our previous post after a two year court battle and the answer is no. Costco Wholesale Corporation (“Costco), the discount retailer displayed the term TIFFANY next to several diamond rings for sale, none of which were manufactured by Tiffany & Co. (“Tiffany”). Tiffany filed a lawsuit alleging trademark infringement, false advertising, unfair competition, counterfeiting, and dilution among other claims.

Costco counterclaimed alleging that the term Tiffany is generic for ring settings with six prongs. A trademark can become generic if the meaning becomes associated with the category of goods and services and the mark can no longer distinguish the goods and services on the basis of source. Essentially, Costco was alleging that the public had appropriated the term Tiffany to mean all rings with a particular setting type. See our blog post of February 14, 2014 where we discuss the legal concept of genericide.

Tiffany offered a significant amount of evidence to rebut Costco’s genericism claim. Among the evidence was a study of consumers. The study consisted of a survey administered to 464 men and women over the age of 21. The studied group received training for the survey. The group was first given a list of words and was asked to identify which words were brand names and which were descriptive terms. Then, they were each given a context to evaluate whether the term Tiffany was a brand name or a descriptive term. Nine out of ten of the prospective consumers considered Tiffany to be a brand identifier. Costco submitted evidence to rebut the survey. However, Costco was unable to raise a material issue of fact with respect to whether the primary significance of the Tiffany mark to the relevant public was a generic descriptor or a brand identifier. Therefore, the Court held that the counterclaim would be dismissed.

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Google announced a new branding identity to the world on September 1, 2015. Read more about Google’s logo update on its official blog. Certainly other brands look to Google to take the lead in innovative branding. Whether you love or hate the new Google logo, it was updated for some very practical reasons. The font has changed in the GOOGLE word mark. In addition, the lower case “g” icon is replaced with the upper case “G” which identifies most of its apps. Google’s trademark modifications are strategic and purposeful design changes that accommodate users who are moving away from laptop use and are moving towards use on a tablet, mobile phone, or other smaller devices, such as a watch. These new marks signify that Google believes that the momentum towards mobile media is here to stay.

Google’s choice of font style in conjunction with the bright primary colors of the new logo will be easier to read in smaller fonts and on smaller devices. In addition to the GOOGLE mark being redesigned, the company introduced a new mark, the “G” logo. The new upper case “G” logo incorporates the four primary colors found in the word mark, improving the aesthetic look and increasing the bold visual appearance for smaller screens. Now if there comes a time when the GOOGLE mark is too small in visual appearance, the company has the option of using the “G” logo mark as an alternative.

In addition, to the two new marks Google introduced to the world, a third animated mark was launched. See Google’s official blog page and view the new animated mark, click on the play button for the video and the animated mark appears towards the end of the short video . This mark is also based on the primary colors of the GOOGLE word mark. It contains four dots blue, red, yellow and green that move about in several different patterns before coming back together to form the GOOGLE word mark or the “G” logo.

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The most popular change at the United States Patent & Trademark Office (“USPTO”) is the fee reductions for trademark applications and trademark renewals. These reductions become effective on January 17, 2015. The Trademark Electronic Application System (“TEAS”) at the USPTO allows for two types of trademark application filings. One is the TEAS Plus application which requires the applicant to utilize an identification in the Trademark Manual of Acceptable Identifications and to provide very specific information in its filing. It is less expensive because it requires less of the Examining Attorney’s time. Further information regarding the TEAS Plus application can be found at Trademark Manual of Examining Procedure (“TMEP”) §819.01.

The other is a TEAS application that permits the applicant to create its own identification for its goods or services in free text and allows more general information in the trademark application. However, the applicant must provide an email address and authorize the USPTO to send email correspondence relating to the trademark application for the duration of the application process. In addition, the applicant has to agree to electronically file through TEAS for certain submissions, such as voluntary amendments, responses to office actions (except notices of appeal), requests for reconsideration of final Office Actions, appointment or revocation of a power of attorney, and appointment or revocation of a domestic representative. The USPTO is referring to this filing option as TEAS Reduced Fee (TEAS RF) application.

An applicant that files a TEAS RF application, but does not satisfy the requirements will be mandated to submit an additional processing fee of $50.00 per international class of goods or services. The following types of trademark applications are eligible for TEAS RF: (1) Trademark/Service Mark Application, Principal Register; (2) Trademark/Service Mark Application, Supplemental Register; (3) Certification Mark Application; (4) Collective Membership Mark Application; (5) Collective Trademark/Service Mark Application, and (6) Transformation Requests. For more details see the USPTO’s webpage on the Reduced Fee initiative.

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McSweet LLC (“Applicant”) filed two trademark applications to register the mark MCSWEET for “pickled gourmet vegetables, namely, pickled cocktail onions, pickled garlic, and pickled, marinated olive medley” and “pickled asparagus.” (the amended identification). McDonald’s Corporation (“Opposer”) opposed both trademark applications on the grounds of likelihood of confusion, dilution, and lack of ownership. Opposer based its oppositions on the allegations that it owns a family of trademarks that include the prefix “MC” followed by another term that is either descriptive or generic. McDonald’s also alleged that its “MCDONALD’S” mark and its family of “MC” marks are famous. Some of its “MC” registrations include: MC for restaurant services; MCDONALD’S for restaurant services; MC CHICKEN; MC DOUBLE; MCRIB; MCMUFFIN; MCNUGGETS; MCFLURRY; MCGRIDDLES; MCCAFE; and MCSKILLET for various food products and beverages. See McDonald’s Corp. v. McSweet, LLC, 112 USPQ2d 1268 (TTAB 2014) [precedential].

In terms of priority, Opposer has been using the mark MCDONALD’S for restaurant services since 1955. In addition, the Opposer has been using variations of the “MC” formative mark in connection with food, restaurant services, and merchandising since 1973. Applicant has been using its mark MCSWEET for pickled vegetables since 2006 and is now seeking to expand the use of the mark on the goods listed above. Based on these facts, priority was not at issue in the proceedings. However, the Trademark Trial and Appeal Board (the “Board”) had to determine if the Opposer owned a “family of marks” and if a family of marks did exist was that family of marks legally “famous”.

The Federal Circuit has defined a family of marks as a group of marks having a recognizable common characteristic, wherein the marks are composed and used in such a way that the public associates not only the individual marks, but the common characteristic of the family, with the trademark owner. Opposer currently uses all of the registrations listed above in paragraph one. According to witnesses, the Opposer’s efforts to establish a family of marks has been so successful that consumers use the MC prefix to refer to all of the Opposer’s food and beverage products. In addition, the Opposer has invested substantial resources in promoting the MC formative marks. McDonald’s operates 14,000 restaurants across the United States that collectively serve 26 million people. The Board concluded that the Opposer owns a family of marks consisting of the prefix “MC” and this weighs in favor of finding a likelihood of confusion.

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Happy Green Company LLC, (“Applicant”) filed a trademark application with the United States Patent and Trademark Office (“USPTO”) for the mark Anthō for goods in International Class 3 including, but not limited to beauty products and cosmetics; skin care preparations; and perfumes and colognes. Anthropologie, Inc. and U.O. Merchandise, Inc. (“Opposers”) opposed the registration with the Trademark Trial and Appeal Board (“TTAB”) based on likelihood of confusion grounds in connection with their two marks (registrations). These marks include: (1) ANTHROPOLOGIE for retail department store services, clothing, handbags, and clothing and fashion accessories and (2) ANTHRO for customer affinity loyalty services. Each of the Opposers established its standing for the proceeding. See  Anthropologie, Inc. and Urban Outfitters Wholesale, Inc. v. Happy Green Company LLC, Opposition No. 91204412 (Oct. 21, 2014) [not precedential].

Regarding the services rendered under the mark ANTHROPOLOGIE, the record shows that identical types of goods are sold through the retail store including moisturizers, perfumes and colognes, and bath salts, but under third-party manufacturers. In connection with the trademark ANTHRO the record demonstrated that it is used as a nickname and/or an abbreviation for ANTHROPOLOGIE, in addition to being used for customer loyalty programs. Customers receive a card branded with the name ANTHRO that they present at check out. This card keeps track of the customers’ purchases and allows them to return items without a receipt. There have been 2.3 million cards issued since the inception of the program. Evidence showed that ANTHRO is used on blogs and on social media platforms by consumers to refer to Opposer and its goods and services. Opposers also presented evidence showing common law rights for the mark ANTHRO for administering a customer service program in connection with retail services for a department store featuring cosmetics and beauty products.

For purposes of likelihood of confusion, the Board compared the marks Anthō and ANTHRO. Neither party submitted evidence of meaning for their respective marks therefore, it was not considered. However, based on the similarity of the appearance and sound alone, the Board held that the marks were very similar. The first Du pont factor favors the Opposers. Next, the Board considered the Applicant’s goods and the Opposers’ services. It is well settled law that goods and services need not be identical or even competitive to support a finding of likelihood of confusion. The goods and services only need to be related in some way or the conditions or the activities surrounding the marketing of the goods or services lead to the same consumers encountering the marks and due to the similarities between the marks, consumers could have the mistaken belief the marks originated from the same source.

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The Trademark Trial and Appeal Board (hereinafter the “Board”) rendered an interesting decision involving Section 2(a) of the Trademark Act and a famous pop singer’s clothing line. Gwen Stefani, one of the judges on the popular T.V. show The Voice has been battling a refusal issued by the United States Patent & Trademark Office (USPTO). Gwen Stefani’s company (the Applicant) appealed the refusal and twice sought reconsideration. After the Examining Attorney denied both requests for reconsideration, the appeal followed. The Applicant applied for the mark L.A.M.B. in International Class 25 for different apparel items, footwear and headwear. The refusal was based on the ground that the mark is deceptive for the identified goods. The Examiner’s argument is that consumers would be deceived into thinking that the clothes are made out of lambskin. See In re LAMB-GRS LLC, Serial No. 77756492 (September 30, 2014).

Pursuant to Section 2(a) of the Trademark Act, an application must be refused if a mark is deceptive of a characteristic or feature of the identified goods or services. The test for determining if a mark is deceptive has been delineated in In re Budge, 857 F.2d 773, 8 U.S.P.Q.2d 1259, 1260 (Fed. Cir. 1988), aff’d 8 U.S.P.Q.2d 1790 (TTAB 1987). The areas of inquiry are as follows:

  • Is the term misdescriptive of the character, quality, function, composition, or use of the goods?
  • If so are relevant consumers likely to believe that the misdescription actually describes the goods?
  • If so is the misdescription likely to affect a significant portion of the prospective purchasers’ decision to purchase the goods?

Section 2(a) bars registration on the Principal Register and the Supplemental Register. Therefore, continuous and long use of the mark in commerce cannot overcome the refusal on that basis alone. However, evidence of duration of use and recognition by consumers can be considered when evaluating the first two prongs of the test. This type of evidence was considered in the case of In re Woolrich Woolen Mills, Inc., 13 USPQ2d 1235 (1989). The applicant sought registration for the mark WOOLRICH for clothes not made of wool. In this case, the mark was found not to be deceptive since there was strong consumer and trade recognition of the term WOOLRICH as a trademark due to the duration of the applicant’s use.

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On May 20, 2014, Blue Sphere Inc. doing business as Lucky 13 (hereinafter “Lucky 13” or “Plaintiff”) and Robert Kloetzly filed a lawsuit in California Federal Court against Taylor Swift (hereinafter “Swift”) and her business entities alleging trademark infringement, unfair competition, trademark dilution, and common law misappropriation. Plaintiff is seeking injunctive relief, Swift’s profits, his lost profits, damages, including punitive damages and attorney fees. Lucky 13 owns multiple U.S. Trademark Registrations for LUCKY 13 for goods included but not limited to the following categories: clothing in International Class 25, various types of bags and purses in International Class 18, jewelry in International Class 14, hair products and body sprays in International Class 3, and other consumer goods related to automobiles and motorcycles. It is alleged that Swift started selling clothing under the mark LUCKY 13 sometime in 2012. In the Complaint, it is also alleged that Swift also started to sell other merchandise under the brand LUCKY 13 in and about that same time.

Lucky 13 further claims that Swift had filed about sixty federal trademark applications with the United States Patent & Trademark Office (USPTO). Many of these trademarks were for apparel and similar goods. It seems curious that Swift pursued trademark registrations for other clothing brands, but choose not to file an application for her mark LUCKY 13. Lucky 13 contends that this was because Swift was aware of their use of LUCKY 13, and knew that an application would be refused. There is ample discussion in the Complaint with regard to Swift being a smart entrepreneur. However, this is a strategic and backhanded compliment to imply that she should have known better, before violating Lucky 13’s trademark rights.

Plaintiff contends that Swift’s use of the mark LUCKY 13 is likely to cause confusion as to source and origin because both parties’ goods are sold in the same distribution channels at similar price points. The parties appear to be targeting the same consumer demographic. Plaintiff claims that Swift markets herself as liking fast cars and dangerous men and by admission Lucky 13 targets the same consumer type.

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New York start-up, FiftyThree, Inc. (“FiftyThree”) filed a trademark application with the United States Patent & Trademark Office (USPTO) on May 11, 2012 for the mark PAPER BY FIFTYTHREE. The trademark application sought protection for computer application software for smart phones and tablets, namely software for use in writing on smart phones and tablets with a stylus or finger. Essentially, the product permits you to draw, sketch and create designs on mobile devices. The company alleged that it first used the trademark PAPER BY FIFTYTHREE in commerce on March 29, 2012. The trademark was issued a Certificate of Registration on December 31, 2013.

On January 30, 2014, Facebook announced it was launching an app called Paper. Facebook’s standalone app is a content reader and does not have a drawing element. FiftyThree requested that Facebook change the name of its app and although, it has been reported that Facebook apologized for not contacting FiftyThree sooner with regard to the launch of its app PAPER, it has not agreed to change the name of its news reader app.

On the same day that Facebook announced its new app called Paper, FiftyThree filed a trademark application for the mark PAPER with the USPTO. The same goods included in the first trademark application (for PAPER BY FIFTYTHREE) were identified here , but FiftyThree expanded the goods description to also include computer application software and services for creating, editing, and compiling content to share with others via a social network, as well as computer hardware and software programs and services for multimedia applications. I believe that FiftyThree filed this second trademark application to reinforce its claim to the mark PAPER BY FIFTYTHREE, but also to test its rights to “Paper” alone. In addition, I think it was attempting to assert pressure on Facebook to change the name of its app. Since this application was filed less than 3 months ago, it has not yet been reviewed by an Examiner at the USPTO yet.

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