The Wall Street Journal article linked below highlights the continuing peril in ignoring the Chinese market in the early stages of brand development. Briefly, Donald Trump was forced to engage in protracted and costly legal proceedings in order to register the TRUMP brand for real estate agency services. As is common, a Chinese national previously registered the TRUMP brand, almost surely in anticipation that someday the real Donald Trump would come along and be forced to pay dearly for the right to use his own name. Donald being Donald, he opted to fight rather than pay. However most trademark owners have neither the resources nor the will to fight such a battle.
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.
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.
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.
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.
On September 1, 2015 Google revealed to the world its first major logo update in 16 years. The iconic Google word mark has been transformed to a new image, using Google’s new proprietary "Product Sans" font:
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.
Not 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!
In a long-awaited move, the U.S. Court of Appeals for the Federal Circuit is set to consider whether the Lanham Act’s Section 2(a) bar to registration of disparaging marks violates the First Amendment.
Today the Supreme Court announced its decision in B&B Hardware, Inc. v. Hargis Industries, Inc. B&B Hardware (B&B) sells a fastener product in the aerospace industry under the trademark “Sealtight,” which it registered in 1993. Hargis Industries (Hargis) sells self-drilling screws under the mark “Sealtite” in the construction industry. After Hargis applied to register its mark in 1996, B&B opposed the application successfully and also sued Hargis for infringement. In that action B&B argued unsuccessfully that Hargis was precluded from litigating the likelihood of confusion issue due to the prior TTAB ruling. The Eighth Circuit affirmed the District Court’s holding.