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Trending Trademarks

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

Strong Like Bull(y): Is Red Bull Overreaching, Or Just Trying To Protect Its Mark?

Posted in Consumer Products, Food & Beverage, Infringement, Registrations, Trademark

Recently, the maker of Red Bull energy drinks filed a notice of opposition against Old Ox Brewery’s trademark registration application, arguing that registration should be denied due to likelihood of confusion.  The opposition reasons that oxen and bulls “both fall within the same class of  ‘bovine’ animals and are virtually indistinguishable to most consumers.

In a likelihood of confusion claim, two of the main factors considered (among others) are (1) similarity of the marks, and (2) relatedness of the goods using those marks.  On its face, OLD OX bears little resemblance to RED BULL; the marks do not sound or look the same. Instead, Red Bull is relying on the similar meanings of the marks; that is, the name of a bovine animal, preceded by an adjective.  Whether the average customer would actually confuse the source of two products as the same is typically a relatively straightforward inquiry.  Insofar as the relatedness of craft beer and energy drinks, though, the question becomes more complex.  The scope of products produced by and associated with microbreweries is increasingly expanding from small-batch beers to distilled spirits, wines and sodas.  And it may be the potential of small, local craft breweries that that has Red Bull rushing to protect its mark.

In response to Red Bull’s petition, the President of the small Ashford, Virginia microbrewery posted a letter on Old Ox Brewery’s website making a plea for the “big Red Bully” to drop its trademark dispute, and agreeing in return not to make energy drinks.  However, Red Bull reportedly declined the offer, seeking a more restrictive resolution: that Old Ox would not use any red, blue or silver in its logo, or produce any soft drinks or energy drinks going forward.

To some, Red Bull’s reactions to Old Ox Brewery’s application may seem overreaching; it is not the first time we’ve come across a classic David versus Goliath tale that does little more than generate bad press.  And, in fact, the USPTO, a few years back, made a request for public comment on trademark bullying by larger mark holders against smaller businesses in the context of a similar energy drink versus beer battle.

In its defense, though, if not Red Bull, then who will protect and enforce its rights to use its marks?  The Lanham Act’s double-edged sword is that trademarks do not have clearly delineated boundaries; on the one hand, it permits more expansive trademark rights, but on the other, there may be increased likelihood of confusion around the source of similar marks.  The megabrand may indeed be concerned about the potential of increasingly popular small beverage producers.  (This is not, after all, Red Bull’s first rodeo: in 2013, it filed a similar complaint against UK-based microbrewery Redwell Brewing, claiming the “Redwell” mark was confusingly similar because it started with ‘Red’ and ended with two ‘l’s.’ Ultimately, Redwell agreed it wouldn’t make energy drinks, and Red Bull withdrew its claim.)  If Red Bull doesn’t enforce its rights to use its marks, the company could lose its rights in the marks altogether.

Insofar as how the foam will flatten in this battle of the beverages, stay tuned – Trending Trademarks will keep you up to date on any developments.  In the meantime, to better understand how you can police and protect your trademark rights, do not hesitate to contact one of our IP attorneys.

Fabric So Rich Even Xerox® Can’t Copy It

Posted in Copyright, Fashion, Infringement

Knock-off designs remain the bane of the designer’s existence and U.S. law still provides little in the way of intellectual property protection.  While many fabric designs meet the threshold of creativity necessary for protection, clothing designs themselves are functional and not subject to copyright or design protection.  Thus, a new design that debuts on a Paris runway in January is likely to appear in knock-off form in a discount retail outlet only a short time later.

In the article linked below, published in the January 31, 2015 issue of the Wall Street Journal, writer Meenal Mistry describes a new tactic in the war—highly inventive, original fabrics that are so complex and expensive to produce that economical knock-offs are nearly impossible to sell profitably.  As for the prices for these exotic creations?  Read on.

http://www.wsj.com/articles/forgery-proof-fashion-1422643680

If you have any questions about strategies for protecting your own designs, whether fashion or otherwise, please feel free to contact one of our IP attorneys.

#Registered – U.S.

Posted in Consumer Products, Food & Beverage, Infringement, Internet, Multimedia, Registrations, Technology, Trademark

As a follow-up to our January post, “#Hashingitout: Is It Worth Registering A Hashtag?” I was interviewed by LexisNexis about the registration of hashtags. The interview was published in an article, “#Registered – U.S.,” in Lexis PSL IP & IT.

Read the full article here.

Supreme Court’s Hana Financial Holding Could Increase Costs To Assert Trademark Tacking Claims

Posted in Decisions, Trademark

In a unanimous decision, the U.S. Supreme Court held this week that trademark tacking is an issue of fact to be addressed by the jury, and not a question of law to be addressed by judges.

The doctrine of trademark tacking lets a mark holder ‘tack’ the use of a pre-existing mark to a new mark with respect to priority of use; this allows a mark holder to modify its mark over time without losing that priority. The doctrine is available in situations where the two marks in question are similar enough to be deemed “legal equivalents”.  Said another way, the newer mark cannot be materially different from the older one, but must extend the preexisting commercial impression of the older mark. The question presented before the Court was whether it should be the jury or the court who makes this determination.

As Justice Sotomayor stated in her opinion, “[b]ecause the tacking inquiry operates from the perspective of an ordinary purchaser or consumer, we hold that a jury should make this determination… [The] application of a test that relies upon an ordinary consumer’s understanding of the impression that a mark conveys falls comfortably within the ken of a jury.”

This decision does not change the law with respect to what constitutes trademark tacking; what it does, however, is increase the cost of asserting a trademark tacking claim or defense.  Arguments presented to juries are far more expensive and difficult to prepare than those presented to judges, so litigants who seek to slow down the pace or increase the cost of trademark litigation will welcome the Hana Financial decision.  Likewise, even though the Supreme Court recognized that judges could still rule on trademark tacking claims in the context of, for example, a motion for summary judgment, the Court’s holding sends a signal to judges that, when in doubt, they should deny the motion and let the jury decide at trial.

The case is Hana Financial Inc. v. Hana Bank, case number 13-1211, in the Supreme Court of the United States.

#Hashingitout: Is It Worth Registering A Hashtag?

Posted in Consumer Products, Internet, Multimedia, Technology, Trademark

Recently, the Coca-Cola Company sought to register two hashtags as trademarks: #cokecanpics and #smilewithacoke.  For those who may wonder why: various online social networking services (like Twitter, Instagram, and Pinterest, to name a few) enable users to search a word or phrase preceded by a hash or pound sign (#) to identify postings on a specific topic.  Hashtags are used to promote brands, campaigns, ideas or events, and trending topics can be identified by frequency of use in their respective online communities.

Coca-Cola is not a pioneer in this area; other companies have successfully registered hashtags with the USPTO.  However, the hashtag’s legal status remains murky, and is considered a leading legal issue facing marketers in this new year. Plus, as with any trademark, registration can be a lengthy and potentially expensive undertaking.  So, is it worth registering, particularly when its legal status is unclear?

To start, a hashtag (i.e., not just the hash sign, but the hash sign followed by a registerable word or phrase – the hash sign alone would likely need to be disclaimed as it generally adds no source-identifying significance) can be registered just like any other mark, and the traditional rules apply.

For instance:

  1.  The hashtag can’t be generic (for example, a sandwich shop can’t trademark “#sandwich”);
  2. A hashtag cannot include a mark that is already in use (for example, if anyone but Coca-Cola tried to register #cokecanpics the trademark application would be rejected);
  3. The class of goods or services affiliated with the hashtag must be specified in the application (so, one party can’t prevent another party from using a similar hashtag in connection with unrelated products or services); and
  4. The trademark application must include acceptable specimens of use (for example, instances of the hashtags featured on packaging, labels, or in stores, catalogues or webpages where the product is sold).

Twitter’s Trademark Policy is consistent; a corporate name cannot be legally used by other Twitter users just because they throw a hashtag in front of it. “Using a company or business name, logo, or other trademark-protected materials in a manner that may mislead or confuse others with regard to its brand or business affiliation may be considered a trademark policy violation.

However, we enter a grey area when users use those trademark-protected words or phrases, even if they are subject to applicable trademark law: “[a]lthough Twitter may review reports of confusing keywords, we may not disable keywords in every case.”  This, after all, is the very basis of social media; a collaborative forum for sharing brands, campaigns, ideas or events.  By registering a hashtag, just as with any other mark, a company could prevent competition from using the same or similar hashtags, but it does not prevent social media users from using it (and in some cases, in a way that serves against a company’s interest).  Also, US trademark law permits others to use trademarks without authorization from the trademark owner for “nominative use,” in situations where that unauthorized user is using the mark to accurately identify the product.  For example, an individual who uses the hashtag #cokecanpics in connection with photos of actual cans of Coca-Cola may be protected from liability.  See, e.g., New Kids on the Block v. News Am. Publ’g, Inc., 971 F.2d 302 (9th Cir. 1992).

The use of trademarked hashtags in platforms based on the culture of widespread sharing raises big questions for brands struggling to understand intellectual property rights and boundaries, particularly with respect to where intellectual property laws, and laws of privacy and publicity, may or may not apply.

So, can Coca-Cola register its two new hashtags as trademarks? Certainly.  Is it worth the time and expense for Coca-Cola to do so? That depends on how Coca-Cola plans to use the hashtags.  Realistically, there is no guarantee that social media campaigns will generate increased revenues, even if the campaign is a successful one.  That said, if there is an intellectual property interest in the mark (i.e., the mark has value – such as use on packaging and marketing materials) beyond just a temporary hashtag on Twitter, registration with the USPTO may certainly be a worthwhile effort.  To discuss this topic further, please contact the author at nlederman@sandw.com.

Protecting Your Company’s Website From Imitators

Posted in Trademark

As a follow-up to our post in October, “Better Late Than Never – 20+ Years After the Popularization of the Worldwide Web, a Court Finally Recognizes Trade Dress Rights in Website Design,” Banker & Tradesman recently published our article, “Protecting Your Company’s Website From Imitators: Federal Law Catches Up With The Times, Uses Trademark Law To Protect Websites.”

Read the full article here.

 

Graffiti Litigation Update: Settlements and Procedural Wrangling

Posted in Copyright, Litigation, Trademark

Back in October, we surveyed some developments in lawsuits over public art and protection available under copyright law in graffiti art.  There has been some movement, and other developments, in these cases.

In a Chicago lawsuit, director and Monty Python alumnus Terry Giliam faces an injunction request over his new film Zero Theorem, which the plaintiffs allege infringed on street art in a mural in Buenos Aires (here again is a comparison set out in that Complaint).

Several defendants’ first response to the Complaint was to request that the case be transferred to federal court in Los Angeles.  Their primary argument is that Illinois has no relationship to the filming or production of the movie, or to the defendants.  Such motions carry a relatively high burden; so long as a court has jurisdiction, courts will defer to the plaintiff’s choice of forum, for the most part.  And, many of the defendants’ arguments refer to the foreign components of the case (filming in Romania, production in London).  Candidly, transfer to Los Angeles makes those witnesses no more accessible than from Chicago.  The plaintiffs have since responded forcefully, point out as well that one of the defendants has pursued infringement claims before in Chicago, undermining that defendant’s claim of inconvenience.

Elsewhere, the lawsuit against American Eagle in New York by David Anasagasti (better known as “Ahol Sniffs Glue”) over his mural “Ocean Grown” has been settled, without any details available.  The lawsuit has been dismissed with prejudice by stipulation, meaning it cannot be brought again.  Similar infringement claims against Sara Bareilles and Wal-Mart have also been resolved, according to Law360.

In California, clothing designer Robert Cavalli has taken the merits of the claim head on.  “In response to the recent lawsuit brought forward by artists Jason ‘Revok’ Williams, Victor ‘Reyes’ Chapa, and Jeffrey ‘Steel’ Rubin, the Roberto Cavalli company would like to state that no official notice of such suit has been received,” a spokesperson for the label was quoted in Vogue as having told New York Magazine.  The company has not yet formally appeared in the action, however, but yesterday several other defendants moved to dismiss the claims against them that were added in an Amended Complaint filed after the initial pleading arising out of: (1) the Digital Milennium Copyright Act (DMCA), 17 U.S.C. §1202 et seq.; (2) the Lanham Act (15 U.S.C. § 1125(a), governing trademarks); (3) an unfair competition claim under California Business and Professions Code § 17200; and (4) a claim for California common law unfair competition.

Staff USA Inc., Nordstrom, Inc., Amazon.com, Inc., and Zappos.com, Inc. are all accused in some respect of contributory infringement, that is, that they are selling the items made by Cavalli that the plaintiffs allege infringe on their street art.  In this motion, these defendants argue first that the DMCA does not apply because their alleged wrongdoing has no Internet component, that is, even if they sold the items over the Internet, the DMCA speaks only to actual electronic manipulation and infringement by those defendants themselves.  Since there is no allegation they they altered or copied the graffiti electronically, they argue, they cannot be liable under the DMCA.  The Lanham (trademark) argument is that to the extent that the plaintiffs accuse these defendants of a copyright violation, that is the sole remedy under federal law.  Likewise, the state law claims (unfair competition and California Business and Professions Code) are preempted by federal copyright law, they argue.

If successful, the motion would not resolve the entire case as to these defendants (the underlying copyright infringement claim would remain to be litigated), but it is clear that these defendants intent to defend themselves actively.

 

This post originally appeared in The Art Law Report blog.

Is it or isn’t it? An app to discern whether your bag’s the real thing.

Posted in Consumer Products, Fashion, Infringement, Technology, Trademark

Recently, Japanese IT company NEC Corp. announced that it is developing an app with image recognition technology that allows its users to determine, in real time, whether or not that long sought-after Hermès Birkin bag is a knock-off or notOnce a target of aggressive piracy itself, NEC created the app in response to the increasing importance of managing the mass production and distribution of products internationally.

The app – due to be released in 2016 – lets its users compare their photos of leather goods, such as handbags and wallets, to data stored on the app’s cloud-based database.  Extending existing biometric technology, NEC’s app can recognize “object fingerprints” (similar to human fingerprints, and also undetectable by the human eye), capturing details of fine patterns on leather, metal or plastic surfaces.  By comparing object fingerprints in user photos against images stored in the app’s database with impressive accuracy (an error rate of one in one million), the app helps users determine authenticity immediately.

Currently, there is nothing quite comparable available in the marketplace to help consumers identify counterfeit products.  While there exist various markers that brands will use to designate the authenticity of their goods (for instance, integrated circuit chips, hologram stickers, barcodes or other identification tags), these means can be both impractical to customers – not all leather goods bear one of these authenticating markers – and costly to the manufacturer.  Further, accurate identification can often require either an expert’s evaluation or dedicated equipment.

In light of the significant cost of counterfeit products worldwide (most recently anticipated by the International Chamber of Commerce to exceed $1.7 trillion by 2015), NEC’s app is a potentially promising development in the battle against counterfeiters.  But will it be able to reduce the problem in any meaningful way? Certainly, the app can be very helpful for consumers who purchase at brick-and-mortar retail outlets and care about purchasing genuine products.  With the snap of a photo, any user can instantaneously determine whether an item advertised as “authentic” is what it claims to be.  The app’s impact, however, may end where the internet begins.  With e-retail on the rise, counterfeiters have become increasingly cunning, with legitimate-looking websites and price points, and photos of authentic products lifted from sites of authorized merchants.  An unwitting customer could easily end up with a much different product than what was depicted online; and while the app may be useful in identifying that newly-acquired knock-off, the customer will likely have very little success in returning the fake product to its seller for a refund.  What’s more, as the app is used only on a voluntary basis, consumers looking to purchase counterfeit products will not be deterred from doing so.  Nevertheless, the mere threat of having counterfeits more easily detected by customers may help deter some level of counterfeiting activity.

In Mile-High Trademark Infringement Fight, Hershey Bests Colorado Marijuana Edibles Company

Posted in Dilution, Food & Beverage, Litigation, Trade Dress

Just in time for Halloween, the Hershey Company has settled its trademark infringement lawsuit against a marijuana edibles company that sold candy closely resembling several of Hershey’s iconic brands.

The settlement follows Hershey’s June 2014 suit in which it alleged that TinctureBelle, LLC, a Colorado-based manufacturer of marijuana edibles, sold THC-laced knock-offs of Hershey’s famous Reese’s, Heath, Almond Joy, and York brands. As seen in the images below, TinctureBelle marketed its candy products under confusingly similar trademarks and trade dress as Hershey’s originals—it sold “Hashees” instead of Reese’s, and “Ganja Joy” in place of Almond Joy.

              

              

Hershey also claimed that TinctureBelle’s use of similar marks and packaging was likely to dilute the distinctive quality of Hershey’s famous marks and create in the minds of consumers an association between the two companies. According to Hershey’s complaint, “individuals and families the world over trust Hershey and its various brands as signifying safe and delicious treats for people of all ages.” By drawing an association with a marijuana edible company, Hershey alleged that TinctureBelle’s products would tarnish Hershey’s famous brands, reputation, and goodwill. Even though recreational marijuana is legal in Colorado, Hershey contended that its adult-oriented connotation would harm Hershey’s family-friendly brands.

As a result of the settlement, TinctureBelle agreed to destroy all remaining products that bear confusingly similar names and packaging to those made by Hershey.

This case is not the only time Hershey has sued a marijuana edibles company for trading on its brand names. Hershey filed a similar lawsuit in June 2014 against a Seattle, Washington medical marijuana dispensary, which, among other things, sold marijuana-infused peanut butter cups under the brand name “Reefer’s.” That case is still pending.

As Halloween approaches, these cases have given parents a whole new type of “sugar high” to worry about. Not only have marijuana edibles companies faced lawsuits from candy makers, but they have also raised the ire of law enforcement and parents groups that fear children will mistake the marijuana edibles for familiar, name-brand candy. As this public service announcement from the Denver Police Department shows, marijuana-infused candy frequently is indistinguishable from traditional Halloween fare:

The case is Hershey Co. v. TinctureBelle, LLC, case number 14-cv-01564-WYD, in the U.S. District Court for the District of Colorado.

Better Late Than Never – 20+ Years After the Popularization of the Worldwide Web, a Court Finally Recognizes Trade Dress Rights in Website Design

Posted in Internet, Litigation, Trade Dress

A website’s distinctive appearance, layout, and design qualities—its “look and feel”—are often the most important and effective tools with which a company can make a first impression on consumers and market its brand. Now, according to one federal court, companies can use trademark law to protect their unique website designs from imitators.

On October 1, 2014, in Ingrid & Isabel, Inc. v. Baby Be Mine, LLC, the U.S. District Court for the Northern District of California ruled that the look and feel of a website used to market and sell products and services can constitute protectable trade dress under the Lanham Act. Here, the plaintiff, Ingrid & Isabel, Inc. (“I&I”), and the defendant, Baby Be Mine, LLC (“Baby”), were both online retailers of maternity clothing. I&I alleged that Baby had intentionally copied, in an attempt to imitate I&I, many specific characteristics of I&I’s website. These included: (i) the use of a logo in a “feminine script in pastel pink-orange hue”; (ii) photographs of models posed in similar positions, “featured from head to mid-thigh, wearing white tanks with jeans, with long naturally wavy hair”; and (iii) the colors, patterns, fonts, and wallpaper used throughout the website. The court held that Baby’s arrangement of similar, non-functional design choices on its website was, in part, sufficient to create a triable issue of fact as to the elements of I&I’s trade dress claim, and denied Baby’s motion for summary judgment.

This ruling represents a significant step forward for companies looking to protect their brand’s goodwill online. For the first time, a court has recognized that a website’s design can serve an important brand-identifying purpose worthy of trademark protection even though the website is not the product itself, but rather a marketplace in which products and services are sold. Previous case law suggested that a website could constitute protectable trade dress only if the website itself was the product. Courts had called the idea of protecting the trade dress of other websites a “novel theory,” but had not ruled on the issue.

With the Ingrid & Isabel ruling, the law seems to have caught up with the times, giving the trade dress of online stores the same protection as that for physical stores. In the same way the distinctive décor of a Mexican restaurant or the layout of a physical wine store can be protectable trade dress, the court recognized that the look and feel of a website—a virtual store—can be a protectable form of intellectual property. This is particularly important in today’s economy, as this year sales in U.S. online stores are expected to top $300 billion.

As we have stated before on Trending Trademarks, a “trademarked look” is not just a popular saying. By creating and consistently using a distinctive look and feel for its website to distinguish itself from competitors, a company may be able to protect its deliberate design choices from copycats. Still, it is yet to be seen whether other courts across the country will adopt this standard. Stay tuned to Trending Trademarks for future updates as the law develops.

The case is Ingrid & Isabel, LLC v. Baby Be Mine, LLC, case number 13-cv-01806-JCS, in the U.S. District Court for the Northern District of California.