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Trending Trademarks

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

You Can’t Rip Off CrossFit

Posted in Infringement, Trademark

CrossFit, Inc., the high-intensity fitness company with a reputation for diligently protecting its trademarks, has been pursuing a seemingly routine infringement action against a Chelmsford, MA gym for nearly a year. Recently, however, the case took an unexpected turn when a CrossFit executive was revealed as the voice behind the CrossFit Ripoff Report (the “Ripoff Report”), a website devoted to identifying—and advising its readers to avoid—gyms that advertise CrossFit training but are not licensed CrossFit affiliates.

In June 2013, CrossFit sued Donny Mustapha, owner of the Chelmsford Sports Club, for infringing on its trademark by offering “CrossFit style training.” CrossFit contended that Mustapha was not a licensed, dues-paying CrossFit affiliate. In response, Mustapha argued that CrossFit had abandoned its trademark by failing to police its use by third parties and by engaging in naked licensing. Mustapha also counterclaimed that certain negative online comments about his gym posted by CrossFit members and encouraged by the Ripoff Report were defamatory.

Initially, CrossFit denied any relationship to the Ripoff Report and sought dismissal of Mustapha’s defamation counterclaims. The court has since rejected all but one of the counterclaims on First Amendment grounds, but not before Mustapha was able to prove, based on a subpoena of the website’s domain name information, that the Ripoff Report was in fact created and published by CrossFit’s social media director. In a recent interview, CrossFit’s general counsel said he was “surprised” to learn of the executive’s involvement.

From a trademark law perspective, regardless of whether the Ripoff Report was created independently by an employee or was authorized by CrossFit itself, the website is a useful way for CrossFit to monitor and raise awareness of infringing use of its trademark. Federal trademark law requires trademark owners to take affirmative steps to enforce their marks to prevent abandonment of trademark rights. As an infringement watchdog, the Ripoff Report helps CrossFit defend against claims that CrossFit abandoned its mark, or that the mark has become generic—a fate that has befallen a number of well-known trademarks over the years, including ASPIRIN and THERMOS, and, more recently, PILATES.

From a marketing perspective, the effects of the Ripoff Report are less clear. CrossFit may have viewed the Ripoff Report as a dynamic guerilla marketing effort—a supposedly fan-created alternative to the company’s existing IP infringement reporting system. The Ripoff Report claims it was “created by the CrossFit community, for the CrossFit community.” Such sites can help build brand awareness, foster a sense of community around the brand, and help deter potential counterfeiters and grey marketeers. Once it was revealed to be part of an astroturfing advocacy campaign created by CrossFit itself, however, the credibility of the site’s image of a grassroots community united to protect the CrossFit brand was undermined. Moreover, one has to question whether better control and monitoring of content on the Ripoff Report website could have avoided the defamation counterclaim the company is now facing, and all the costs and headaches that may arise from that litigation.

Trademark owners who are interested in using websites, blogs, and other social media to protect and develop their brands need to make sure that the message is controlled by the company, and not its employees. Although the question of whether the CrossFit employee who was operating the website was authorized by CrossFit to do so may have legal ramifications in court, in the marketplace it falls to CrossFit to clean up the mess left behind.

The case is CrossFit, Inc. v. Mustapha, case number 13-11498-FDS, in the U.S. District Court for the District of Massachusetts.

“Glass” Half Empty in Google Trademark Registration Fight

Posted in Registrations, Trademark

In a recent letter to the USPTO, Google has signaled that it will continue its fight to register the word “Glass” as a trademark for its innovative “Google Glass” product, the wearable electronic smart glasses.

This move follows the USPTO’s September 2013 letter in which a trademark examiner raised two separate objections to Google’s initial attempt at registration. First, the examiner contended that the mark would create a likelihood of confusion as to the source of Google’s product. The examiner concluded that Google’s “Glass” would “create the same overall commercial impression” as similar, previously registered marks for computer hardware and mobile devices.

Second, the examiner found that the word “Glass” is “merely descriptive” of “a feature or material component” of Google’s product. 15 U.S.C. § 1052(e)(1). Under federal trademark law, “merely descriptive” marks cannot be registered unless they have acquired distinctiveness in the marketplace as an identifier that the trademark owner is the source of the goods.

In response to the USPTO’s objections, on March 20, 2014, Google’s counsel submitted a massive 1,928-page letter contesting the examiner’s conclusions. Google filled nearly 1,900 pages of its letter with excerpts of news articles about Google Glass, arguing that there is no likelihood of confusion as to source because of the link between the producer, “Google,” and the product, “Glass,” that these articles have created in the minds of consumers.

Moreover, Google contended that its use of “Glass” is not, in fact, descriptive. The company argued that because Google Glass is made of titanium and plastic components, and “do[es] not consist of glass at all,” the word “Glass” is not merely descriptive of a material component of its product. Thus, Google contended, its stylized use of “Glass” does not function to “inform potential consumers as to the nature, function or use” of its product, but is rather distinctive based on the mark’s acquired secondary meaning.

The “Glass” registration fight is a textbook example of the frequent internal struggles between companies’ marketing and legal teams. While the catchy, one-word “Glass” mark might be easier to sell to consumers, registration of the mark with the USPTO is far from certain. Of course, Google need not register its mark to use it.  The mark could still be protected under federal law as an unregistered trademark. If its application is ultimately denied, however, Google would miss out on the considerable advantages of registration, such as nationwide constructive use and notice, the presumption at trial that the mark is valid, and the ability to record the mark with US Customs, to help fend off and seize counterfeits trying to enter into the US—a problem that seems highly likely to emerge if Google’s product is successful in the marketplace.

Unilever Sets Off Firecrakers, Suing To Protect Trade Dress Of Its Frozen Treats

Posted in Trademark

With summer just around the corner (fingers crossed!), it looks like Unilever wants to freeze out any customer confusion that may arise at ice cream trucks around the country. On Monday, the consumer goods giant sued Wells Enterprises in New York Federal District Court claiming that Wells’s newly-designed Bomb Pops packaging “mimics and imitates” Unilever’s Firecracker Popsicle packaging, resulting in a claim of trade dress infringement. Unilever also alleged unfair competition and deceptive trade practices.

It should be noted, to start, that the frozen treats themselves are more or less identical: Bomb Pops were originally created in 1955 and, since 1991, have been sold by Wells’s Blue Bunny brand. Unilever’s Popsicle-branded iteration followed shortly after, and now both red white and blue pops are fondly familiar national favorites sold from ice cream trucks and grocers across the country.

But it’s not the frozen treats themselves that are at issue here; Unilever has taken issue with Wells’s redesigned packaging in particular. Unilever argues that the similarities between the new packaging for Bomb Pops and the existing packaging for Firecrackers are “blatant and outrageous.” For example, Unilever highlights that both boxes depict three frozen treats arranged in the same configuration. Next, Wells’s packaging added the phrase “The Original” in white letters against a red and blue oval that, according to the complaint, “was clearly designed to emulate plaintiff’s Popsicle logo.” In addition, Wells no longer displays its BLUE BUNNY mark on its boxes, which previously offered additional distinction between Popsicle and Blue Bunny packaging.

Since the likelihood of confusion analysis is central to a claim of trade dress infringement, it will be important to focus on both the similarities (some of which, as described above, were highligted by Unilever) and differences of the packaging to determine how the case will play out.

Granted, both marks have considerable strength in the marketplace, but this factor cuts in Wells’s favor. Both BOMB POPS and FIRECRACKERS are strong word marks that appear prominently on the packaging, so even if the word marks are both printed in red font, shadowed in white and blue, and with blue stars featured, the prominence of the word marks alone may be all a customer needs to dispel any confusion.  Additionally, there are some visual dissimilarities between the packaging.  The Bomb Pops box fades from blue to yellow with faint beams highlighting the background, and features frozen treats with blunt circular tops, whereas the Firecracker packaging is solid yellow with prominent explosions and stars in the background, featuring frozen treats with pointed rocket-shaped ends.

Ultimately, though, and assuming that Unilever can not show bad intent on Wells’s behalf (i.e., that Wells intentonally sought to mimic Unilever’s packaging), the biggest question mark here likely falls on the sophistication of the average frozen treat consumer.  Do most consumers know the difference between a Bomb Pop and a Firecracker?  The New York Post reports that a cease and desist letter sent by Unilever’s counsel to Wells in February asserted that “more than 60 percent of respondents believed that Bomb Pops are made by the same company that makes Popsicle products.”  If that survey can be substantiated during discovery, it will be strong evidence to support Unilever’s trade dress infringement claim.

In its complaint, Unilever is seeking unspecified damages and an injunction for a recall and redesign of the newly-released Bomb Pops packaging. Trending Trademarks will keep you updated as this frosty faceoff proceeds.

The case is Conopco Inc. v. Wells Enterprises Inc., case number 1:14-cv-02223-NRB, in the U.S. District Court for the Southern District of New York.

Make Way for Johnny Football: Heisman Winner One Step Closer To Registering His Mark

Posted in Registrations, Trademark

In honor of Johnny Manziel’s pro day, there’s something for the Texas A&M star to celebrate.  Just last week, the U.S. Patent and Trademark Office rejected an application made by an entity unaffiliated with Manziel for the mark JOHNNY FOOTBALL, paving the way for Manziel’s application to proceed.

Manziel rose to fame in 2012 breaking numerous records in his first season with Texas A&M.  Along with the Heisman Trophy, the Manning Award, and the Davey O’Brien National Quarterback Award, Manziel also won a nickname – “Johnny Football” – that followed his rise to popularity.

On November 1, 2012, just as the nickname had started to gain popularity, a local investment firm named Kenneth R. Reynolds Family Investments, unassociated with Manziel, filed an application with the U.S. Patent and Trademark Office for the mark JOHNNY FOOTBALL, claiming the mark was not associated with any particular individual. When Manziel sought to register the mark three months later through JMAN2 Enterprises, his filing was placed on hold due to the already-pending Reynolds filing.

The U.S. Patent and Trademark office refused the registration, according to its examining attorney, because “the applied-for mark consists of or includes a name, portrait, or signature identifying a particular living individual whose written consent to register the mark is not of record.” The examiner also attached to the rejection notice, as support, news articles specifically referring to Johnny Manziel by his nickname.

The examiner’s rejection is supported by 15 U.S.C. §1052(c), which provides that a name that identifies a living person cannot be registered as a trademark without such person’s written consent. This includes nicknames, provided that a person is sufficiently known in the field of the product or service that the relevant public would associate the person with the mark in question.  Certainly, a trophied star quarterback with a significant fan following could qualify in this instance.

Manziel is now one step closer to calling his nickname his own; Reynolds has up to six months to either request reconsideration by the U.S. Patent and Trademark Office or appeal to the Trademark Trial and Appeal Board. Once the Reynolds filing is resolved, Manziel’s application can be reopened.  The takeaway here, though, is one we’ve discussed on Trending Trademarks before; since a popular nickname has the potential to be quite lucrative for an athlete, it makes sense for that athlete to run to the U.S. Patent and Trademark Office to register the mark as soon as the nickname takes off, before someone else tries to beat them to it.

King.com Withdraws ‘CANDY’ Application

Posted in Registrations, Trademark

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.

Classmates.com Takes a Walk Down “Memory Lane”

Posted in Infringement, Registrations, Trademark

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.

The Way the Cookie Crumbles: Nabisco Sends J.P. Licks Cease and Desist over Oreo Ice Cream

Posted in Licensing, Trademark

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.

What Happens in Vegas…Goes To Boston? A Likelihood of Confusion Reality Check

Posted in Trademark

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.

‘CANDY’ Trademarked by Candy Crush Developer

Posted in Registrations, Trademark

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.

USPTO Rejects Trademark Application for Disparaging Phrase “Redskins Hog Rinds”

Posted in Litigation, Trademark

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.