Articles Tagged with Likelihood of Confusion

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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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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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