Articles Posted in Trademark News Stories

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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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On February 6, 2013, King.com Limited (“King”), the social game publisher of the popular Candy Crush Saga, filed a trademark application for the mark CANDY  in international classes 9, 25, & 41. Among other goods and services, King was looking to protect the term CANDY for computer games, downloadable software, clothing, and a variety of services in the entertainment and sports arena. The filing of the trademark application brought controversy to the gaming world once the media reported on it. Many gaming software developers thought this was an effort to gain control over a common word and exclude other smaller competitors from use it in broad categories of goods and services. King spoke out on its motives  for filing a trademark application for CANDY.

I can understand the point of view from King’s competitors. I also think King has a valid concern in protecting its intellectual property and in preventing consumer confusion in the marketplace. Those who understand trademark law would point out that a common word, can most certainly function as a trademark, as long as it is not used to describe a function, characteristic, quality, feature, purpose, use or ingredient of the goods or services. See TMEP §1209.01(b).

If a mark is merely descriptive of the goods and services, it will be be refused on the Principal Register, but may be able to register on the Supplemental Register.  In other words, if the mark is not inherently distinctive, it may register on the Principal Register, only upon a showing of acquired distinctiveness. See our blog post entitled Can A Flavor Or A Scent Receive Federal Trademark Protection? for a detailed discussion of acquired distinctiveness. Whether a mark is merely descriptive must be made after considering the goods and services in relationship to the proposed mark. Also, if only part of a multiword trademark is descriptive, then it may be appropriate to disclaim any exclusive right in the descriptive portion of the mark. However, the mark should be allowed to proceed to registration with the disclaimer.

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On May 19, 2013 Chef Dominique Ansel filed a trademark application with the United States Patent & Trademark Office (“USPTO”) for the trademark CRONUT in International Class 30. International Class 30 includes bakery desserts, bakery goods, breads, etc. Dominique Ansel’s identification of goods specifically named a “croissant and doughnut hybrid” among multiple baked goods, pastries, and other sweets.

Criticism immediately emerged from others in the industry. The criticism came from lay people lacking the knowledge and subtleties of trademark law. Legally speaking, Dominique Ansel followed the correct procedures and was entitled to seek trademark registration for the term CRONUT for the goods identified in his trademark application. In fact, he wisely capitalized on a food trend while simultaneously branding the sweets with a unique trademark. He accomplished all of the above, while beating his competitors to the Trademark Office.

A few weeks after Chef Ansel’s filing, on June 10, 2013 a trademark application was filed with the USPTO for the proposed mark THE CRONUT HOLE. The applicant was seeking to protect the mark for retail bakery shops. The application was filed on an intent-to-use basis. The examining attorney suspended the application on September 21, 2013 on the basis that Dominique Ansel’s application had an earlier filing date, and should the application proceed to registration then the applicant’s mark for THE CRONUT HOLE may be refused under section 2(d) of the Trademark Act (15 U.S.C. §1052(d)) due to a likelihood of confusion with the registered mark.

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Tiffany has been in the jewelry business since 1886. It holds 97 trademarks that relate to its company name “Tiffany”.  Tiffany and Company and Tiffany NJ LLC (“Tiffany”) sued Costco Wholesale Corporation (“Costco”) in the Southern District of NY alleging trademark infringement, dilution, counterfeiting, unfair competition, injury to business reputation, false and deceptive business practices, and false advertising. See Tiffany & Co. v. Costco Wholesale Corp. No. 13-CV-1041 (S.D.N.Y. Feb. 14, 2013). Costco counterclaimed arguing that the terms “Tiffany” and “Tiffany Setting” are generic words for ring settings that have multiple prongs shooting upwards from the base of the ring to hold a single gemstone (a particular setting type). Costco further asserts that Tiffany has no right to prevent Costco or any other third party from using the term “Tiffany” in its generic or descriptive sense.

engagement-ringTiffany alleges that Costco is using the TIFFANY trademark in the descriptions of two rings to sell diamond engagement rings. These rings are not manufactured by Tiffany. Tiffany argues that use of the TIFFANY mark in this manner is illegal. The jewelry manufacturer and retailer moved for summary judgment seeking dismissal of Costco’s counterclaim. The Tiffany registrations  that are relevant to this dispute are U.S. Registration No. 1,228,409 TIFFANY in International Class 014 for jewelry and other goods and U.S. Registration No.133,063 for the stylized mark TIFFANY for jewelry and other goods. Tiffany further alleges that it refers to one style of engagement rings as a TIFFANY setting ring (a six prong setting that holds one diamond). The USPTO registered these trademarks and as a result, there is a presumption of validity for Tiffany. This is one of many advantages of filing your trademark on the Principal Register . This places Costco in the position of having to overcome the presumption that consumers perceive the mark as inherently distinctive.

Trademarks are evaluated and are categorized based on the strength or weakness of the mark. The scope of protection given a trademark depends on whether it is considered inherently distinctive.  Generic terms cannot function as trademarks. See Trademark Manual of Examining Procedure (TMEP) §1209.02(b) where it states that a claim of acquired distinctiveness cannot overcome a generic refusal. This is because generic words are understood by the general public to refer primarily to the category of goods or services and does not distinguish the products or services on the basis of source.

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Disney filed a lawsuit in a California Federal Court, Disney Enterprises, Inc. v. Phase 4 Films, Inc. et al, 2:13-cv-09401,  alleging trademark infringement and unfair competition. Phase 4 Films released its movie entitled “The Legend of Sarila” on November 1, 2013, generating low box office revenue. Three weeks later on November 19, 2013 Disney released its animated film Frozen. Disney alleges that once Phase 4 Films learned about the success of Frozen, they decided to retitle the film to Frozen Land.  In addition, Phase 4 Films redesigned its artwork, packaging, and logo to take advantage of the financial success of the Disney Film.

To compare the promotional materials and looks of the logos, review the Complaint filed by Disney. Make your own decision as to whether Phase 4 Films replicated the trademark logo and look of Disney’s Frozen. Phase 4 Films may have hoped to rely on the fact that the title of a single creative work can not receive federal trademark protection and it may have overlooked the other legal protections available. See Trademark Manual of Examining Procedure (TMEP) §1202.08. However, a name of a series of creative works can be registered with the United States Patent & Trademark Office (USPTO) under TMEP §1202.08(c).  For example, the series titles of the Star Wars movies could seek protection while the single title of the movie Titanic could not.

movie-house-771223-mThe next logical question is how can the single title of a creative work be protected under the law? One means of protection would be to include a cause of action for unfair competition under §43(a) the Lanham Act in your federal complaint, if appropriate. See Lanham Act §43(a) 15 U.S.C. §1125(a). Disney included an unfair competition action in its lawsuit against Phase 4 Films. Keep in mind that this is a difficult case to prove because you must show that the title achieved secondary meaning. This usually requires demonstrating high advertising expenditures, significant media coverage, and consumer surveys. One may also consider filing for a state trademark registration as a means of protection. The registration process is much simpler than the federal process and its filing fees are lower. There is also no established legal mechanism to cancel a state registration. If you want to challenge a state trademark registration, you must file a civil action. Lastly, a state registration will have a strong deterrent effect on third parties because the state registration will appear in trademark search reports.

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