Despite approval of its trademark application for the word ‘candy’ by the European Commission’s trademark office in early January, game developer King.com Limited expressly abandoned its application for trademark registration of the word ‘CANDY’ in connection with its blockbuster Candy Crush Saga app this past week.
King.com already owns the rights to ‘CANDY CRUSH’ and ‘CANDY CRUSHER’ in the United States, and despite having been granted preliminary approval with the USPTO, was faced with criticism for trying to monopolize a popular term after it sent out cease-and-desist letters to smaller developers based on their use of the word ‘candy’. And indeed, we previously noted that registering and enforcing a common word like ‘candy’ on its own for a wide range of goods might be difficult, if not overreaching. It’s true that King.com’s type of self-protective behavior can easily be mischaracterized by those without a strong grasp of trademark ownership and rights, but unfortunately, it’s also not surprising that a classic David versus Goliath situation would generate bad press.
Perhaps that’s why, even if its earlier actions were justifiable, it chose to withdraw its application for ‘CANDY’ with the USPTO; particularly in light of its upcoming $500 million initial public offering, generating bad will is the last thing King.com wants if it is seeking to establish and maintain excitement among its potential investors.
This past week, a federal jury in California found that Classmates.com, a social networking site, did not infringe the trademark MEMORY LANE owned by sports memorabilia company Memory Lane Inc.
Memory Lane owns a registration for its trademark, which it has been using since 2000, seen here:
Classmates.com used the phrase MEMORY LANE in connection with selling online videos. (It previously had registrations for MEMORY LANE and MEMORYLANE.COM, which were abandoned in early 2012.)
In its complaint filed in 2001, Memory Lane sought actual and punitive damages under California’s unfair competition law and the Lanham Act, claiming that Classmates.com’s use of MEMORY LANE was likely to confuse consumers. As evidence of actual confusion, Memory Lane pointed to the fact that it had received emails from Classmates.com customers complaining of unauthorized credit card charges. At the time, Classmates.com was selling its MEMORY LANE videos through the website www.memorylane.com. This domain name is only slightly different than Memory Lane’s www.memorylaneinc.com, which resulted in Memory Lane receipt of the misdirected emails.
According to Memory Lane’s complaint, “consumers are confused and mistakenly believe that Memory Lane has defrauded them or is the source of credit card charges they wish to dispute regarding transactions with defendants’ business activities.”
In response, Classmates.com argued that a relatively small number of misdirected emails (here, a few dozen) were not sufficient to support a claim of consumer confusion. It further asserted that Memory Lane lost no sales as a result of Classmates.com’s online video business, and that Memory Lane’s rights to MEMORY LANE were restricted to its logo which also features a baseball player, highlighting the very different appearance between the marks. Classmates.com argued that in light of these factors, it was unlikely that its use of MEMORY LANE would generate any customer confusion.
The test for likelihood of confusion balances various factors, including the appearance of the marks in question and evidence of actual confusion. While the words used here were identical and Memory Lane had evidence of confused customers mistakenly contacting Memory Lane rather than Classmates.com, those factors weren’t strong enough to convince a jury that customer confusion was likely. After reviewing the evidence highlighted at trial, the jury ultimately rejected Memory Lane’s customer confusion claim, finding in favor of Classmates.com. As of now, Memory Lane has plans to appeal the decision.
The case is Memory Lane Inc. v. Classmates International Inc. et al., case number 8:11-cv-00940, in the U.S. District Court for the Central District of California.
Perhaps prompted by the release of Oreo’s most recent new flavors, Nabisco has sent a letter to J.P. Licks, one of Boston’s most beloved ice cream companies, asking its owner Vincent Petryk to stop using the word “Oreo” in its Oreo Cookie Dough ice cream and frozen yogurt, according to the Boston Globe. Nabisco’s only proposed alternative, said Petryk, was for J.P. Licks “to become a long-form license-agreement third-party manufacturer.”
But is this the only true alternative? In theory, it depends. Nabisco’s motivations here may stem from the concern that J.P. Licks is unlawfully using the Oreo mark in a way that falsely suggests origin, sponsorship, or endorsement of its frozen treats. This concern is only strengthened given that Nabisco already licenses its OREO mark to grocery retail ice cream brands. Moreover, other ice cream makers have managed to avoid this very predicament by labeling their similarly-flavored ice creams “cookies and cream.” So if J.P. Licks is using the Oreo mark as a mark in light of viable naming alternatives, then sure, it would be infringing upon Nabisco’s famed brand name. But one could argue that what J.P. Licks is doing here is different: it is using the Oreo mark to accurately list Oreo cookies as an ingredient in its Oreo Cookie Dough flavors.
Courts have long confronted the debate as to whether one company may make unauthorized – yet accurate – use of another company’s protected mark. (As an example, the Southern District of New York in 2004 addressed whether the makers of tuna salad should be permitted to print “Made with Bumble Bee Tuna” on its label without permission from the holder of the “Bumble Bee Tuna” trademark.) The courts’ general consensus is that a company may use another’s trademark so long as it is not misleading the public into thinking there is affiliation between it and the mark holder (aside from mere use of the product as an ingredient). Ultimately, then, the outcomes of these types of cases turn on specific facts.
In this instance, it seems as though the battle will end before it starts. For now, at least, in an attempt to avoid future threats or licensee relationships with the mega-brand, J.P. Licks has plans to remove Oreo references from its menu, and has asked its customers to suggest replacement names for the flavor formerly known as Oreo Cookie Dough.
As was recently reported in the Boston Globe this past fall, on a trip to Las Vegas to promote its hometown as a destination for holding conventions, the Greater Boston Convention and Visitors Bureau decided to use a slogan conceived of a few years ago: “What Happens in Boston Changes the World.”
Never a town to let one past them, the Las Vegas Convention and Visitors Authority not only took note; it threatened legal action against the Greater Boston Convention and Visitors Bureau in a letter complaining that the phrase bore so much resemblance to its “What Happens in Vegas, Stays in Vegas” trademark that it was likely to cause customer confusion and dilute the distinctiveness of the Las Vegas brand.
In response, legal counsel for the Greater Boston Convention and Visitors Bureau has proposed to retire Boston’s slogan last week, after using it one last time at a trade show being held at the Hynes Convention Center.
The real question here is: does Las Vegas’s confusion claim even have any merit? A likelihood of confusion exists only if, upon seeing Boston’s allegedly infringing slogan, a consumer would probably assume that the services of the Greater Boston Convention and Visitors Bureau were sponsored by or otherwise affiliated with the Las Vegas Convention and Visitors Authority. And since, granted, the alleged infringer and the trademark owner deal in competing services (here, travel), courts might not even look beyond the slogans themselves.
But are the slogans confusingly similar simply because they share the same first three words? The variation in connotation, meaning and sound of the marks suggest that the two share little in common. Because of this, among various other obvious reasons (consider Boston’s lack of brightly-lit hotel/casino/resort establishments, its non-desert climate, and its abundant colonial history and architecture), it seems rather unlikely that Boston’s advertising slogan would make it difficult for prospective tourists to differentiate between the two destinations, or the origin of the services, for that matter. While the Las Vegas Convention and Visitors Authority may have reason for aggressively protecting its well-developed brand, it’s possible it would have been better had this one just stayed in Vegas.
King.com Limited, the developer of the popular mobile game Candy Crush Saga, was granted approval of its trademark application for the word ‘candy’ by the European Commission’s trademark office this past week.
The ‘CANDY’ mark was approved to cover games and software, educational and entertainment services, and apparel. This approval now grants King.com the right to defend its mark in the European Union against other entities it deems to be infringing its trademark in various classes of goods.
It’s certainly not unusual to see use of existing or similar intellectual property to capitalize on a trend (for example, we recently examined the same predicament faced by Umami Burger). As a result, King.com has already started to send out cease and desist letters to alleged infringers with the word ‘candy’ in the names of their online games. Specifically, a spokesperson from King.com identified to tech innovation site Mashable that it was defending its mark against an App called ‘Candy Casino Slots – Jewels Craze Connect: Big Blast Mania Land,’ explaining that the App’s “icon in the App Store just says ‘Candy Slots’, focusing heavily on [King.com’s] trademark. . . [T]his App name was a calculated attempt to use other companies’ IP to enhance its own games, through means such as search rankings [via the Apple App Store].”
‘Candy Casino Slots’ is just one among many Apps with the word ‘candy’ in their names that are presently available for download. While King.com could seek to enforce its mark against other Apps with suggestive marks using the word ‘candy,’ developers could claim in response that they conceived of their App names independently. So though the trademark registration may be valid, enforcing it against other parties might prove tricky.
That said, there are unquestionably some “bad actors” in the App space with respect to IP infringement. And though ‘CANDY’ may not be a particularly easy registration to enforce, King.com is taking appropriate steps to protect its ability to create, and profit from, its popular games.
Having filed a trademark application for the word ‘CANDY’ with the USPTO over a year ago, King.com’s application remains pending.
The USPTO recently issued an Office Action refusing trademark registration for the trademark “REDSKINS HOG RINDS” for use in connection with pork rinds. The examiner cited Trademark Act Section 2(a) as the basis of the refusal, stating that the applied-for mark consists of or includes matter which may disparage or bring into contempt or disrepute persons, institutions, beliefs or national symbols. The decision further cited no less than five dictionary definitions of the word “Redskins” which refer to the name as either offensive, slang, disparaging or taboo.
In an unrelated case currently before the USPTO involving the Washington Redskins football team (Blackhorse v. Pro-Football, Inc.), the team owners are awaiting a decision on whether or not their registration of the trademark “REDSKINS” will be canceled. The controversy and legal battles over this trademark have been ongoing since 1992, when several prominent Native Americans petitioned the USPTO to cancel the trademark registrations owned by Pro-Football, Inc. The initial legal fight continued for seven years until the USPTO canceled the mark in 1999. However, on appeal, the court reversed the USPTO’s decision on the grounds of insufficient evidence of disparagement. Subsequent appeals were rejected on the basis of laches, which means that the Native Americans did not pursue their rights in a timely manner. The current case, however, was filed by younger plaintiffs whose standing might not be hindered by laches.
“REDSKINS” is not the only term the USPTO has recently determined to be derogatory. Towards the end of 2013, the trademark appeals board ruled that a rock band named “THE SLANTS” could not register its name, because the term was a derogatory slang phrase for people of Asian descent. The board was careful to state that the denied trademark did not prohibit The Slants from using their name, which they had used since 2006, and that “no conduct is proscribed, and no tangible form of expression is suppressed.”
For the owners of the Washington Redskins, the recent rejections of the applications for REDSKINS HOG RINDS and THE SLANTS do not bode well for a favorable outcome in their pending case. If their trademark registration is ultimately canceled, the team will still be able to keep the name and many of the same trademark rights, but it will lose several benefits conferred by a federal trademark registration, likely leading to significant loss of revenue.
Now that the craze has effectively become a way of life, it’s a good thing famed French pastry chef Dominique Ansel has trademarked his widely loved, often imitated yet never duplicated croissant-donut hybrid.
The Cronut™ was officially granted trademark protection from the USPTO on January 14, 2014 in International Class 30 (the staple foods category, which includes breads, pastries and confectionaries). This new registration will provide enhanced benefits and protections to Chef Ansel, including a broader geographical scope of protection and international deterrence of copycatters, the right to sue infringers in federal court and recover maximum monetary damages he would otherwise be ineligible for, and ultimately, the right to apply for incontestability status. And good thing, too – to date, the Cronut™ has seen impersonators not just domestically, but as far off as Spain, Australia and the Philippines.
So, Cronut™ fans, it’s a day to celebrate: set your alarm clocks nice and early to wait in line tomorrow for your deliciously sweet, newly-trademarked treats.
The Favorite Apparel Brand’s “Saturday” Mark Does Not Infringe
Soon after it launched its down-market SATURDAY brand, Kate Spade LLC, the American women’s retail apparel darling, filed suit in the Southern District of New York seeking a declaratory judgment that its new brand did not infringe Saturdays Surf LLC, a popular men’s retail apparel brand. In response, Surf LLC filed a counterclaim for trademark infringement and reverse confusion, alleging that Kate Spade’s use of the word “Saturday” would lead customers to believe that Surf LLC’s products were somehow affiliated with Kate Spade, or that Surf LLC was infringing Kate Spade’s SATURDAY mark.
This past month, the district court delivered an opinion in favor of Kate Spade. While it found that SATURDAYS SURF NYC was a validly-registered mark, the scope of Surf LLC’s protection would be dependent on the word “Saturday” standing alone. And while a day of the week used to describe apparel wasn’t necessarily ineligible for protection, the common use of “Saturday” or “Saturdays” in the apparel and accessories industry meant that Surf LLC would not be able to monopolize use of the word, which the court deemed suggestive at best, as a trademark.
Extending this reasoning to its likelihood of confusion analysis, and in considering the strength of the competing marks, the court ultimately found that the similarities between Kate Spade Saturday and Saturdays Surf LLC were unlikely to confuse customers, particularly in light of the popularity of Kate Spade’s brand.
Last, the court found that Kate Spade had adopted the SATURDAY mark in good faith, citing its consultation with counsel both before and after adopting the new mark. As the court found no likelihood of customer confusion, it ruled in favor of Kate Spade with respect to Surf LLC’s infringement counterclaims and deemed the original claim for declaratory judgment unnecessary.
This case highlights an issue we’ve addressed here on Trending Trademarks in the past: it is typically very difficult – even for relatively established brands – to develop enough secondary meaning in a word commonly used in an industry to garner protection for that common word standing alone. Use of a common word, like a day of the week, may earn some degree of protection, but it is typically very narrow in scope, and is almost always easily distinguished by coupling the word with another.
The case is Kate Spade LLC v. Saturdays Surf LLC, 2013 WL 2986454 (S.D.N.Y. June 17, 2013).
A three judge panel’s opinion, penned by Judge Richard Posner, ruled late last week to uphold a preliminary injunction in favor of Kraft Foods Group, while Cracker Barrel Old Country Store and Kraft Foods continue their courtroom fight over the Cracker Barrel mark.
Kraft Foods, seller of Cracker Barrel cheddar since 1954, filed suit in January of 2013, shortly after the Cracker Barrel Old Country Store, a restaurant chain, announced its plans to pair with Smithfield Foods and sell a line of Cracker Barrel-branded lunchmeats, hams, bacons and jerkys in grocery stores. The restaurant chain, comprised of over 600 restaurants, was founded in 1969, and selected its name to evoke a Southern country feel. Citing similar inspiration, Kraft Foods named its line of Cracker Barrel cheeses after the same iconic country store fixture around which people would gather to socialize. The question before the U.S. Circuit Court of Appeals was whether the restaurant chain should be prohibited from marketing and selling their meat line under its name because it could be confused with Kraft’s Cracker Barrel cheese.
Kraft Foods argued that the respective parties’ logos would be confusingly similar to customers and that the similar wordmarks had already confused even those who worked for the Cracker Barrel Old Country Store. Even more confusing, as Judge Posner pointed out in his opinion, was that “[i]n the brief period before the … injunction was issued, in which (Cracker Barrel Old Country Store) hams were sold in grocery stores, an online ad for Cracker Barrel Sliced Spiral Ham by a coupons firm provided a link to a coupon for Kraft’s Cracker Barrel cheese.”
At least for now, Posner’s decisive injunction will prevent the restaurant’s plans to sell its Cracker Barrel-branded meats in grocery stores, but it does not stop the restaurant from selling those products online or at its restaurant chains while the suit is pending.
This battle raises an interesting issue for successful brands looking to expand use of its existing marks into additional classes. Because trademark rights are typically limited to particular classes of goods or services, companies in operating different types of businesses may often use the same trademark simultaneously. Perhaps this is how, up until now, Kraft Foods and Cracker Barrel Old Country Store managed to co-exist without issue; since Kraft Foods focused on the retail food sector (specifically, selling its product in grocery stores), and the restaurant chain focused on restaurant services, the products were relatively unrelated such that customers would not be confused as to the source of origin of the products. That said, with food as a significant common denominator between the two, it’s not completely unforeseeable for such an issue to arise. How the court will ultimately come out, though, is unclear.
For the time being, the docket indicates that this trial’s next round will be heard on November 25 before U.S. District Judge Robert W. Gettleman. Stay tuned.
But Given The Delay, Why Would An Athlete Even Bother?
Over three years after filing for its registration, Tampa Bay Buccaneers cornerback Darrelle Revis was finally awarded trademark protection for the mark “Revis Island” by the U.S. Patent and Trademark Office.
The mark came about because of Revis’s ability to singly shut down opposing receivers without help from other defenders, in other words, alone on his own proverbial desert island.
This might have been more practical a registration – or at least, a somewhat more relevant one – three years ago, when he was playing for the Jets. (Revis missed most of the 2012 season with a torn ACL, and hasn’t been used as a shutdown corner since being traded to Tampa). But since it appears that the mark is less marketable than it might have been a few years ago, and acknowledging that the trademark registration process can take some time, why would Revis even bother registering a mark of fleeting (if any) interest to potential consumers?
The answer is plain and simple: “Revis Island” is now Revis’s intellectual property, and it has (rather, had, at least for now) tremendous potential value. Consider “Linsanity.” “Tebowing.” “Fear the Brow.” These are just a few of the many nicknames, phrases and slogans that have gone viral the moment the media gets its hands on them. And with the multitude of social media platforms upon which an athlete can build a brand, it makes sense to choose – and promote – one’s words carefully. Why? Because it translates to very obvious economic incentives for the relevant athlete, or whoever else may beat them in the race to register. No athlete would want others winning financial profits off of a name, logo or brand that is rightfully attributable to them; this effectively forces athletes to do as Revis did, and rush to secure any IP rights before others beat them to it. Since, in today’s world, an athlete is nothing without his or her persona (skill-based or otherwise), it is wise to start protecting individual property rights as new potential marks arise.
While trademark protection over “Revis Island” is perhaps less on point for the moment, Revis now holds his protected mark in his back pocket… just in case he gets called to task. It may seem silly now, given the delay in getting the mark registered, but when “just in case” has potential to translate to lucrative merchandizing opportunities and endorsement deals, it doesn’t seem so pointless after all. (Think about it, Jason Dufner.)