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.”
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.
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.
Who has the right to sue to prevent misleading and deceptive labeling of food and beverage products—private trademark owners, or the federal government? Trick question! According to the U.S. Supreme Court, the answer is both.
This week, luxury jeweler Fabergé filed a lawsuit against Brooklyn restaurant Faberge for what it has deemed a "shameless" appropriation of the jeweler’s famous mark and distinctive storefronts.
The original Fabergé was founded in 1842 in St. Petersburg, Russia, and has been most famous historically for designing elaborate jewel-encrusted Fabergé eggs for Russian Tsars and a range of other jewelry and luxury products sold internationally, including in New York. The restaurant/lounge opened last fall in Sheepshead Bay, Brooklyn, New York, and offers a menu of steak, seafood and cocktails.
The complaint, filed in the U.S. District Court for the Eastern District of New York, asserts that Faberge’s restaurant exhibits "an effort to free-ride on the enormous good will" established by the jeweler and simply "confuse[s] consumers and members of the general public."
The restaurant has responded that its name differs from the jeweler’s in that there is no accent on the final 'E' of the name, and the 'A' is shaped like the Eiffel Tower, thus distinguishing the restaurant’s mark from the jeweler’s. Even if the two marks are very similar, or even arguably the same, as we’ve previously discussed here on Trending Trademarks, trademark rights are typically limited to particular classes of goods or services; consequently, companies operating different types of businesses may often use the same trademark simultaneously. The owner of the restaurant rightfully pointed out that the two companies are in completely different and non-competing industries; fine jewelry versus food services.
These, however, may be distinctions without a difference. Owners of marks as famous as Fabergé have broader rights to use and defend their marks, including the right to prevent use of a confusingly similar mark if it is likely to generate confusion among consumers. It is also worth noting the restaurant’s façade, patterned in purple and gold diamonds (depicted above), which bears a striking similarity to the jeweler’s retail boutiques in London and Kiev. Finally, the complaint asserts that the restaurant’s menu “directly and obviously” alludes to the historical legacy of Fabergé (though specific items were not explicitly named). Considered as a whole, these facts could be sufficient evidence to support the restaurant owners’ bad faith and wilful misuse in adopting the name, look and feel of their establishment.
The case is Faberge Ltd. et al. v. Yusufov et al., case number 1:14-cv-03519, in the U.S. District Court for the Eastern District of New York.
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.
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.”
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.
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.
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.