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Trending Trademarks

Comments and analysis on trademark issues affecting the fashion, high-tech, multimedia and consumer products industries

Federal Circuit Rules ITC Cannot Stop Infringing Digital Files From Entering U.S.

Posted in Infringement, Litigation

3d printer 01

In a decision that will have considerable interest for the entertainment, tech and 3D printing industries, the Federal Circuit, in a split decision in Clearcorrect Operating, LLC v. International Trade Commission, 2014-1527, today overruled an earlier ruling of the International Trade Commission, in which the Commission blocked the importation of digital files that would permit operators of U.S. 3D printing facilities to manufacture dental braces that infringed the patents on the well known “Invisalign” brand of clear braces.  The Federal Circuit concluded that the ITC’s power to block “articles” that infringed U.S. intellectual property rights was limited only to material things, and did not include digital transmissions.  The ITC decision gained attention because it signaled a potential new governmental interest in regulating internet traffic, perhaps even a way to provide additional intellectual property remedies for the entertainment and music industries.  This new avenue of enforcement, however, appears to be closed for now.

The issue for the Federal Circuit was one of statutory construction. The legislation creating and empowering the ITC permits it to block infringing “articles.”  The Federal Circuit interpreted the term “articles” to apply only to material things, and not digital transmissions. The court found this definition to be clearly expressed both with respect to the literal text, as well as the context in which the term “articles” was used within the statute.  Because the digital files at issue were not articles, the ITC lacked jurisdiction to prevent their importation.

While it is too early to tell whether the Federal Circuit’s decision will be appealed to the U.S. Supreme Court, it would be a long shot to expect the Supreme Court to reverse a ruling on statutory interpretation here, where Congressional intent appears to be clearly expressed within the four corners of the statute.

As 3D printing becomes more prevalent and spreads to a wider range of industries, the need to fix this gaping hole in the U.S. border with continue to grow unless and until Congress takes action, either by amending the statute or passing additional legislation.  Having an effective border strategy for dealing with transmission of infringing files is particularly important in situations where, as here, the manufacturing facilities to produce infringing products – 3D printers and the materials needed to make the infringing goods – can be moved with relative ease from location to location in order to avoid detection. The growth of 3D printing poses a threat that infringement and counterfeiting will be accomplished faster and more easily.  A nimble and thoughtful response at all levels of government to adequately protect intellectual property owner’s rights under this changing landscape will be required.

NANOTAINER vs. MICROTAINER: Theranos Battles BD Over Trademarks, but FDA Draws First Blood

Posted in Litigation, Trademark

Blood Drawing to fingertips.Medical equipment manufacturer Becton, Dickinson and Company (“BD”), has been making its MICROTAINER blood collection containers since 1945. According to The New York Times, the MICROTAINER containers are a $25 million a year business for BD. It was not surprising, therefore, that BD called its trademark lawyers when Silicon Valley start-up darling Theranos, a company now valued at around $9 billion, applied on an intent-to-use basis to register the name NANOTAINER in connection with blood collection containers. Theranos and its products have gained wide attention based on claims that Theranos could perform numerous medical tests quickly and inexpensively using a tiny sample of blood from a finger prick, rather than tubes of blood drawn from the arm.

Legal proceedings naturally followed. First, BD in March, 2014 filed an opposition proceeding in the U.S. Trademark Office seeking to prevent registration of Theranos’s NANOTAINER Mark. Theranos opened a second front by filing in November, 2014 a civil action in federal court in the Northern District of California. Theranos sought a declaratory judgment that the NANOTAINER mark did not infringe the MICROTAINER mark, primarily because the Theranos nanotainers were sold and marketed through different channels of trade. Theranos further argued that BD’s trademark should be invalidated on the grounds that the MICROTAINER mark had become a generic term to identify a group of blood collection vessels. BD replied that Theranos’s conduct was particularly troublesome in light of the fact that Theranos had not yet received FDA approval for the use of its nanocontainers. Before the cases reached the discovery phase, however, the parties arbitrated and settled their dispute on September 28, 2015 with apparently no money changing hands.

While we do not have access to information regarding the details or motivation for the settlement, a few observations are in order. First, as subsequent developments seem to suggest, Theranos may have been interested in settlement to staunch potential problems with the FDA compliance. Since it settled the suit with BD, Theranos finds itself in a recent swirl of FDA-related controversy. In late October of this year, the FDA issued two reports stating that Theranos had used an unapproved medical device, did not adequately follow up on customer complaints and had various deficiencies in quality control procedures. Theranos has temporarily stopped shipping nanotainers until FDA approval is obtained. Although claiming it was doing so voluntarily, pressure from the FDA to make this happen cannot be discounted. The Theranos story is just another in a long lineage of companies who enter litigation prepared to fight over an issue, but end up settling because pre-existing vulnerabilities – sometimes completely unrelated to the issues being litigated – come to light.

What about BD’s motivation to settle? How dangerous to BD was Theranos’s challenge that BD’s MICROTAINER mark had become generic? The facts supporting or disproving Theranos’s allegations may never be known, but the Theranos genericness challenge does point out the risk of using one’s trademarks as the product name, rather than a brand name for a type of product. Just ask the people who brought you ASPIRIN brand analgesics and THERMOS branded containers for liquids. When the mark becomes the product name, you open an artery towards making your mark generic.

With Victory Over MTM, Amazon Can Still Use Brand Name Searches

Posted in Consumer Products, Decisions, Internet, Litigation, Trademark

Amazon Victory over MTM

When shopping for watches on Amazon.com, you might be surprised to find that a search for the luxury military-style watch “mtm special ops” brings you to a list of watches designed by competitors of Multi Time Machine, Inc. (MTM).  According to the 9th Circuit Court of Appeals, this practice does not infringe on MTM’s trademark rights.

The 9th Circuit appellate panel reversed its own decision In Multi Time Machine, Inc. v. Amazon.com, Inc.; Amazon Services, LLC, published last Wednesday. In issuing summary judgment in favor of Amazon, the court held that no reasonable trier of fact could conclude that a likelihood of confusion existed based on the layout of Amazon’s search results page.

From the watchmaker’s perspective, Amazon’s search results created “initial interest confusion” that generated awareness of competitors’ products.  Initial interest confusion may damage sales by taking advantage of a trademark’s good will and thus could create a cause of action for trademark infringement.  MTM asserted that such confusion was even more likely because Amazon’s search results page did not include a message such as “no search results found” to suggest (accurately) that it does not sell MTM watches.

The court concluded that there was no likelihood of initial interest confusion because the non-MTM watches were “clearly labeled by Amazon” such that a “reasonably prudent customer accustomed to online shopping” would not be deceived.  The court reasoned that the buyer could see clear images of the watches next to the boldly-lettered brand name (which Amazon opportunely included two times next to each product – for example, “Luminox Men’s 8401 Black Ops Watch by Luminox”).  Even a couple of books appeared in the search results for “mtm special ops,” which as noted by the court, made it even less likely that a reasonably prudent online shopper would be confused.

Because the decision does not forbid online retailers from using proprietary product names as keyword terms, it seems likely that Amazon and other online marketplaces will continue to capitalize on brand name searches.  Still, consumers seeking to purchase an authentic MTM watch should be advised that they will not find it on Amazon.

PETA Thinks Monkeys Can Own Copyrights

Posted in Copyright, Infringement, Internet, Technology

Last Monkey_selfieAugust we wrote about a dispute between photographer David Slater and the Wikemedia Foundation over what is known as “The Monkey Selfie.”  Because we’re brave, the photo appears again in this post.  At that time, the Copyright Office released a public draft of the Third Compendium of U.S. Copyright Practices, in which it took the explicit position that photographs taken by monkeys are not copyrightable subject matter because they are not “the fruits of intellectual labor that are founded by the creative powers of the mind.”

Fast forward to this week when Naruto, the monkey in question, along with his “next friends” PETA (People for the Ethical Treatment of Animals, Inc.) and Antje Engelhardt, Ph.D., filed suit against Slater, his publisher, and another party, claiming that Naruto is, in fact, the owner of a valid copyright in the Monkey Selfies (there are more than one) and that the defendants infringed that copyright by republishing the photos in a book entitled “Wildlife Personalities.”  The book includes a general copyright ownership claim to the photographs and text of the books, but does not include notice on each photo.  Thus, it is not clear that Slater intended the general claim to apply to the Monkey Selfies.

The plaintiffs describe in some detail the process by which Naruto experimented with the click of the camera and the alteration of her image in the lens resulting from pushing the shutter button.  The crux of the Complaint, however, boils down to this allegation: “The Monkey Selfie resulted from a series of purposeful and voluntary actions by Naruto, unaided by Slater, resulting in original works of authorship not by Slater, but by Naruto.”  If Nartuto and PETA cannot establish that the photos were the result of “purposeful and voluntary actions” they are unlikely to succeed, assuming of course that they can get by the fact that Naruto is, well, a monkey. At this time there are no indications that Dr. Doolittle or someone with similar talents will be asked to testify.

The Complaint seeks a declaration of Naruto’s rights, an injunction against use of the photos, an accounting of all profits attributable to the infringement and appropriate damages, permission for the Next Friends to administer and protect Naruto’s rights, an order that the proceeds from the sale, licensing, or other use of the photos be used solely to benefit Naruto and his community, and full costs and attorneys’ fees (to which even a successful foreign monkey is not entitled to unless his/its copyright is registered prior to the commencement of the infringing act).

Primates everywhere will be watching this case with great anticipation. Unfortunately, Naruto was unavailable for comment.


Shufflin’ Ain’t Hustlin’ When It Comes to Copyright Law

Posted in Copyright, Decisions, Infringement, Litigation, Multimedia, Trademark

live music background

Back in March we wrote about Taylor Swift’s efforts to register as trademarks certain lyrics and phrases related to her 1989 album and world tour. Those applications remain pending in the U.S. Patent and Trademark Office. In the meantime, dance rap duo LMFAO just obtained summary judgment in its favor on a copyright infringement claim brought by rapper Rick Ross over merchandise bearing the phrase “Everyday I’m Shufflin’.” Ross claimed that the phrase used on merchandise infringed the copyright in the musical composition “Hustlin,’” which consists of a repeated refrain of the phrase “everyday I’m hustlin’” and the words “hustle” and “hustlin’.”  Ross’ claim boiled down to this:  the copyright in the musical composition as a whole also covers the oft-repeated phrase. Or to put I more simply, Ross claimed copyright in the phrase “Everyday I’m Hustlin’.” As a longtime copyright lawyer, I was LMFAO when I learned that the case got as far as it did. The case is William L. Roberts, II, et  al. v. Stefan Kendal Gordy, et al. 

It is basic, black letter copyright law that words and short phrases are not copyrightable subject matter and the court ruled accordingly. Furthermore, as discussed in detail in the court’s opinion, there have been more than a few prior cases that applied this rule to song lyrics, raising the question of why the Ross team thought this case was different. Ms. Swift obviously understood the different treatment accorded short phrases or slogans under trademark and copyright law and, accordingly, sought protection for her phrases as trademarks. Mr. Ross relied on copyright instead with predictable results.

Is that a “Tiffany?”: Consumers get little credit in recent court decision

Posted in Consumer Products, Fashion, Infringement, Trademark

Diamond Ring

After a court battle spanning more than two years, the US District Court for the Southern District of New York recently confirmed that to sell a ring of a style described as “Tiffany,” its maker must be Tiffany & Co. At issue was the word “Tiffany” posted in Costco’s display cases next to a series of diamond rings sold by the discount superstore. Was “Tiffany” a generic word for a six-pronged ring setting as Costco argued, or did it confuse consumers into thinking the rings were authentic Tiffany products?

A trademark becomes generic and loses legal protection when the meaning of the mark becomes associated with an entire market of products rather than the brand name. Famous genericized marks include Escalator and Thermos. In this case, despite Costco’s introduction of dictionary entries showing that “Tiffany” has become a generic descriptor of a ring setting, the court held that Costco presented inadequate evidence to show that any generic use of the word “Tiffany” undermined the strength of the Tiffany trademark. Therefore, the use of the word “Tiffany” in the display cases next to six-pronged rings infringed upon Tiffany’s rock-solid trademark rights.

In addition to trademark infringement, the court held that Costco violated the Lanham Act by selling “counterfeit” Tiffany jewelry. For a mark to be counterfeit, the Lanham Act requires that the mark is “spurious” and “identical with, or substantially indistinguishable form, a registered mark.” In addition, the use of the mark must be likely to confuse or deceive the consumer. Costco opined that the appearance and packaging of the rings were simply not confusing. The “Tiffany” trademark was not anywhere on the rings themselves, and the rings were not accompanied by false Tiffany paperwork. Plus, absent was Tiffany’s signature blue packaging and satiny white ribbon. (Coincidentally, that particular color of blue packaging is also trademarked by Tiffany, known for vigorously protecting its trademark rights).

Nevertheless, the court found that the word “Tiffany” on signs in Costco’s display cases exactly where the brand name would typically be located on other Costco products was enough to confuse consumers about the source of the rings. To justify this result, the court cited testimony from six consumers who were dismayed to learn that their rings were not made by Tiffany (including a particularly tearful consumer whose diamond fell out of her Costco ring). This evidence of likely confusion, combined with evidence of Costco’s lack of good faith in the form of damaging emails and photographs suggesting that Costco tried to copy some stylistic elements of Tiffany products, led to Tiffany’s victory on the counterfeiting claim.

The upshot is, if you are about to propose to that special someone, bear in mind that the only place you will be able to get your fiancé a “Tiffany” ring is at Tiffany & Co.

Rah-Rah-©-Boom-Bah! Cheerleading Uniform Designs Win Copyright Protection

Posted in Consumer Products, Copyright, Decisions, Fashion, Litigation, Sports


Though the U.S. Copyright Act does not currently offer protection for functional aspects of apparel designs, copyright protection does extend to purely decorative features of clothing that can exist independent of their functional aspects. This murky area of copyright law, known as the “Conceptual Separability Doctrine”, was the focus of a recent decision by the Sixth Circuit in Varsity Brands et al. v. Star Athletica. The court ruled that the decorative chevron designs on cheerleading uniforms are eligible for copyright protection.

In reaching its conclusion, the court carefully distinguished between fabric design and garment design: fabric design covers designs printed on a completed article of clothing, whereas dress design refers to the shape, cut, style and dimensions of a finished article of clothing. Dress design has historically been deemed inseparable from an article of clothing’s utilitarian aspects, and so is ineligible for copyright protection. Focusing on the graphic design elements, the majority held that chevrons, stripes, and other decorative elements of plaintiff Varsity Brands Inc.’s cheerleader uniforms were “identifi[able] separately from, and are capable of existing independently of, the utilitarian aspects of cheerleading uniforms[;]” consequently, Varsity’s graphic designs were held to be copyrightable. (This was a threshold consideration in this case before the court could determine whether defendant Star Athletica, a competitor of plaintiff, had infringed Varsity’s designs.)

Historically, the conceptual separability doctrine is applied by courts to distinguish the functional aspects of a useful article from its purely decorative elements. But as both the majority and dissenting opinions noted here, the appropriate scope of protection to be afforded to apparel is one of the more obtuse areas of U.S. intellectual property law. While other countries have adopted laws recognizing rights in designs, including apparel designs, separate and apart from traditional intellectual property law, efforts to provide quasi-copyright protection for apparel designs in the U.S. have failed on multiple occasions (as we previously discussed here in further detail). Consequently, designers are forced to undertake the Sisyphean task of bending copyright and/or trade dress law to protect their designs from quick-copying fast-fashion retailers, and typically fail to obtain protection. It came as no surprise, then, that in his dissent, Circuit Judge David McKeague expressly requested from Congress or the Supreme Court some “much-needed clarification” in light of the law’s uncertainty, echoing concern over the piecemeal rulings have plagued the fashion industry for some time.

The case is Varsity Brands Inc. et al. v. Star Athletica LLC, case number 14-5237, in the U.S. Court of Appeals for the Sixth Circuit

Perhaps the Door to Registration of Scandalous and Smutty Trademarks Will Remain Closed After All, At Least to the Washington Redskins

Posted in Litigation, Sports, Trademark

Back in April, my colleague Mike Palmisciano published a blog post noting the decision of the Court of Appeals of the Federal Circuit to rehear In re Tam en banc in order to address  the sole issue of whether the bar to registration of disparaging marks in 15 U.S.C. § 1052(a) violates the First Amendment. Mike noted that a decision that Section 2(a) does violate the First Amendment would open the door to registration (or maintenance) of marks such as REDSKINS, KHORAN, and SQUAW VALLEY.  Now it appears that Judge Gerald Bruce Lee of the U.S. District Court for the Eastern District of Virginia may have knocked out the First Amendment argument once and for all.

In an opinion issued today, Judge Lee ruled, inter alia, that the Trademark Trial and Appeal Board’s decision to cancel six registrations for Pro-Football, Inc.’s REDSKINS trademarks did not even implicate the First Amendment because: (a) cancellation of the registrations does not prohibit PFI’s use of the “disparaging” trademarks; and (b) the trademark registration program is “government speech” and, therefore, is not subject to the First Amendment.  Pro-Football, Inc. v. Blackhorse, et al., Case No. 1:13-cv-01043-GBL-IDD (E.D. Va., July 8, 2015). The opinion is available at http://assets.law360news.com/0676000/676857/Redskins.pdf.  (The decision also analyzes PFI’s Fifth Amendment argument, the question of whether the REDSKINS mark is disparaging, and whether the doctrine of laches bars the Blackhorse defendants’ claims, but those issues are outside the scope of this blog post).

In denying PFI’s argument that its trademark registrations were protected speech, Judge Lee distinguished some well-known First Amendment cases cited by PFI.  Clatterbuck v. City of Charlottesville, 708 F.3d 549 (4th Cir. 2013) held that a city ordinance prohibiting individuals from begging for money was unconstitutional.  The court observed that the ordinance in question in Clatterbuck prohibited actual speech whereas the cancellation of PFI’s registrations did not prevent it from continuing to use the REDSKINS name.  The court similarly distinguished Sorrell v. IMS Health Inc., 131 S. Ct. 2653 (2011) (finding unconstitutional a Vermont statute prohibiting, without the prescriber’s consent, pharmacies from selling prescriber-identifying information, pharmacies from disclosing the information for marketing purposes, and pharmaceutical manufacturers from using the information for marketing purposes) and Snyder v. Phelps, 131 S. Ct. 1207 (2011) (reversing jury decision against the Westboro Baptist Church’s picketing of soldiers’ funerals as WBC’s speech was in a public place and on a matter of public concern).

PFI also argued that trademark registrations themselves are “commercial or private speech” subject to First Amendment protection, as opposed to government speech, which is not.  The court dismissed the commercial speech argument by noting that proposal of a commercial transaction is the test for identifying commercial speech and that approval of a registration and subsequent publication in the Official Gazette does not propose a commercial transaction and, therefore, is not commercial speech.

Relying extensively on Walker v. Tex. Div., Sons of Confederate Veterans, Inc., 135 S. Ct. 2239 (2015), a case holding that the State of Texas did not violate the plaintiff’s First Amendment rights when it refused to approve a state license plate design bearing the confederate flag, the court found that trademark registration is also government speech.  In Walker, the Supreme Court held that license plates are government speech because: (a) “insofar as license plates have conveyed more than state names and vehicle identification numbers, they long have communicated messages from the States”; (b) the public closely identifies license plates and their designs with the state; and (c) license plates are essentially government IDs, and the state maintains direct control over the messages the plates convey.

Judge Lee applied the Walker test as follows:  (a) registration communicates that the federal government approved the trademark; (b) the public closely associates trademark registration with the federal government because it associates the ®symbol with the federal government; and (c) the federal government exercises control over the federal registration program.  His analysis strikes this writer as somewhat tortured, but he offers additional support for his conclusion via the Fourth Circuit’s Mixed/Hybrid speech test and the Supreme Court’s decision in Rust v. Sullivan, 500 U.S. 173 (1991) (holding that the government may determine the contents and limits of its programs).

While a Virginia federal district court decision is not binding on the Federal Circuit, Judge Lee’s analysis may well be a preview of the conclusions to be reached by that court.  For the moment at least, the door to registration of scandalous and smutty trademarks remains closed.

A Post About Beer! – Kölsch to be Precise

Posted in Consumer Products, Registrations, Trademark

beer-510354849Not long ago a colleague brought to my attention a “mea culpa” published on the Down The Road Beer Company website, www.downtheroadbrewery.com.  Apparently the brewery ran into a bit of trouble with the Alcohol and Tobacco Tax and Trade Bureau, the federal agency tasked with, among other things, policing product labeling for products containing alcohol. In designing a label for its “Down The Road Rasenmäher Kölsch,” the brewery broke the rules by depicting the character “Hans Mowermann” operating a power lawn mower while holding up a large mug of, presumably, Down The Road Rasenmäher Kölsch. As we all (should) know, operating machinery while under the influence of alcohol ist verboten!

The article got me to thinking.  During my frequent travels to Cologne, Germany, I sampled my fair share of the local brew. On those trips my local friends regaled me with stories of the origins and traditions of their beloved Kölsch. If you’re really interested, the German Beer Institute has a nice summary hereOne of the key things I learned is that “Kölsch” is an acknowledged regional designation in Germany. Specifically, in 1986 the directors of 24 Kölsch breweries signed the “Kölsch Convention,” stating that Kölsch is both a kind of beer and a geographic designation of origin.  As a result of the convention, only these two dozen or so brewers can legally call their beers “Kölsch.” “Kölsch” is also a protected geographic indication in the European Union, (Trust me, that’s really what this means. If you doubt me there’s always Google Translate!).

So, if “Kölsch” is a protected geographic designation, how can American breweries call their beers “Kölsch?”

Geographic designations enjoy protection under U.S. trademark law as both certification marks and collective marks. Some well-known examples of protected regional designations include ROQUEFORT, DARJEELING,  BORDEAUX, COGNAC, ZELLER SCHWARZE KATZ, FRANKFURTER APFELWEIN, and DEUTSCHES ECK. DEUTSCHES ECK is a designation for beer from the middle Rhine and lower Mosel areas of Germany. U.S. courts have enforced such geographic designations on theories of both trademark infringement and false advertising (false designation of origin). While most of the reported cases involve registered certification or collective marks, the Trademark Trial and Appeal Board enforced common law rights in the “Cognac” designation in Institut National Des Appellations d’Origine v. Brown-Foremen Corp., 47 USPQ2d 1875 (TTAB 1998).

It seems clear that the Kölsch Convention (or any other entity the can claim title to the Kölsch designation) could move to protect rights in the Kölsch designation in this country, but it has not yet done so. Nevertheless, should that change in the future, artwork issues could become the least of worries for American craft brewers when it comes to brewing and selling a “Kölsch” beer.