Firm Partner, Meredith Frank Mendez, will be the featured speaker at All Before Dinner’s “Business Bootcamp” on May 11 about how to protect Trademarks and other Intellectual Property. This event is free and open to non-members. All Before Dinner is a business group of female professionals balancing motherhood with their successful careers. Visit www.allbeforedinner.com to register.
Latest firm news
Instagram Faces Class Action Suit for Allegedly Encouraging Copyright Infringement with its Embed Tool
On May 19, 2021, two photographers initiated a class action lawsuit against social media giant Instagram in the Northern District of California for “encouraging, inducing, and facilitating third parties to commit widespread copyright infringement” since July 2013. The root of the conflict is Instagram’s in-app embed tool. In the complaint, “embedding” is defined as the process of copying the unique hypertext markup language (“HTML”) code assigned to each photo and video published to the Internet, and the insertion of that code into a target webpage or social media post so that photo or video appears within the target post. Using Instagram’s embed tool, third parties can allegedly copy the HTML code of an Instagram user’s post and paste it into a third party’s website, allowing the Instagram photo or video to be displayed on the third party website via the Instagram user’s account.
The plaintiffs complain that this tool encouraged third parties to display copyrighted works without any license or permission from copyright owners and misled the public into thinking all were free to embed such works through Instagram, “like eating for free at a buffet table of photos.” However, the photographers contend that things “dramatically changed” in June 2020 when Instagram publicly admitted that third parties, in fact, need a license or permission from copyright holders to embed copyrighted works.
This case is Alexis Huntley, et al., v. Instagram, LLC, Case No. 3:21-cv-03778 (N.D. Cal., May 5, 2021).
ADT is a long-time home security firm dating back to the late 19th century, specializing in alarm and smart home security services. Ring, founded in 2013, also manufactures smart home products, including a video doorbell product. In March of 2021, ADT sued its rival Ring in a Florida district court for violating its trademarks by using certain signage (shown below), which ADT alleges is confusingly to the blue octagon logo that ADT has used for several decades:
ADT continues to allege that “Ring’s unauthorized use of ADT’s Famous Blue Octagon will cause confusion with ADT’s customers, potential customers and the public at large, and will cause them to mistakenly believe that there is an affiliation or association between Ring and ADT.”
The U.S. Patent & Trademark Office’s (“U.S. PTO”) Native American tribal insignia database is a part of the Trademark Electronic Search System (TESS). This database records the official tribal insignias of federally or state-recognized American Indian and Alaska Native tribes (Native American tribes).
The U.S. PTO considers the tribal insignias in its database when examining trademarks in pending applications. Tribes who choose to participate allow the U.S. PTO to evaluate whether a trademark may suggest a false connection to their tribal insignia and refuse registration. This gives tribes the benefit of helping to protect their intellectual property and cultural heritage.
There are no fees or forms. For more information about participating in the database, see the refreshed Native American tribal insignia database page on the U.S. PTO website. Please contact Tribal.Insignia@uspto.gov, or call the Office of Liaisons and Petitions at 571-272-8950 with any questions. See U.S. PTO Trademark Alert bulletin.
A well-known trademark infringement/dilution case involving a Native American mark was brought in 2012 by the Navajo Nation (one of this country’s largest Native American tribes) against Urban Outfitters (a multinational lifestyle retail corporation) and its subsidiaries over the use of “NAVAJO”/”NAVAHO” on apparel, jewelry, and other goods in the U.S. District Court of New Mexico. The public knows acts like these as “cultural appropriation,” “cultural misappropriation,” and/or “cultural theft” of cultural words, insignias, or other forms of traditional cultural expressions which corporations use for profit without recognition to its origin. This case was ultimately settled in late-2016, and both parties agreed to work together under a license and supply agreement to create and market authentic Navajo products. See https://indiancountrytoday.com/archive/navajo-nation-and-urban-outfitters-reach-agreement-on-appropriation.
In 2016, Monster Energy Company (“Monster”) filed four Oppositions against Maple Leaf Sports & Entertainment Ltd. and NBA Properties (“Applicants”) on the basis of likelihood of confusion between the Applicants’ claw logo marks and its “M-Claw” mark. The TTAB recently dismissed Monster’s Oppositions. In its decision, the TTAB found that the Applicants fame was only in the context of energy drinks and did not extend to other products or services. In particular, the TTAB concluded that “the significant differences in appearance, sound (if any), meaning, and commercial impression” between the marks precluded a finding of likelihood of confusion. Additionally, the TTAB dismissed Monster’s dilution claims because its mark “is not sufficiently famous for dilution purposes.” In the same decision, the TTAB dismissed the Applicants’ Counterclaim alleging a likelihood of confusion between Monster’s mark and another claw mark. The TTAB concluded that the “Prior Claw Mark is so different from Monster’s M-Claw Mark in appearance, sound (if any), meaning, and overall commercial impression to preclude a finding of likelihood of confusion.”
To read the full decision, click here.
U.S. PTO Initiates a Pilot Prioritized Review Program for Appeals and a Conference Pilot Program for Oppositions Against Applications Related to COVID-19
In response to the COVID-19 pandemic and the critical need to develop and help speed to market medical products and services to combat COVID-19, the U.S. Patent & Trademark Office (“PTO”) initiated the COVID-19 Prioritized Trademark Examination Program in June of 2020. This program allowed applicants to file a Petition to Director (fees waived) under 37 CFR § 2.146(a)(3) seeking to have the Director exercise supervisory authority to advance the initial examination of the application out of its regular order. To be eligible for prioritized initial examination under this procedure, an applicant must seek registration for one or more of the following medical goods or services related to COVID-19:
- Pharmaceutical products or medical devices such as diagnostic tests, ventilators, and personal protective equipment, including surgical masks, face shields, gowns, and gloves, that prevent, diagnose, treat, or cure COVID-19 and are subject to approval by the United States Food and Drug Administration; and/or
- Medical services or medical research services for the prevention, diagnosis, treatment of, or cure for COVID-19.
For more information, click HERE.
To further support efforts to combat COVID-19, the U.S. PTO is now initiating a Pilot Prioritized Review Program for Appeals Related to COVID-19. With this program, the Trademark Trial & Appeal Board (“TTAB”) will expedite the review of and the issuance of ex parte appeal decisions for applications examined under the COVID-19 Prioritized Trademark Examination Program. Under this program, the TTAB aims to issue the appeal decision for an application examined under the COVID-19 Prioritized Trademark Examination Program within six (6) months of the filing of the notice of appeal, provided: 1) the applicant does not file a request for reconsideration, 2) no requests for remand are filed and granted, and 3) no extensions of time to file the briefs are requested. In addition, the U.S. PTO is initiating a Conference Pilot Program for Oppositions Against Applications Related to COVID-19. With this program, a TTAB attorney or judge may participate in the parties’ mandatory settlement and discovery planning conference (discovery conference) if the involved application was examined under the COVID-19 Prioritized Trademark Examination Program. These programs are being offered on a temporary basis. For more information, click HERE.
In 2016, Deckers Outdoor Corporation (“Deckers”), owner of the registered “UGG AUSTRALIA” mark since 1995 and holder of said mark in over 130 countries, brought a trademark infringement suit against a boot-making company based in Australia, Australian Leather Pty. Ltd. (“Australian Leather”), for selling thirteen pairs of so-called “ugg boots” through its website.
In responding to the infringement suit, Australian Leather decided to base its defense on arguing for the genericism of the term “ugg.” This argument stemmed from Australian culture, which has broadly used “ugg” to describe sheepskin-lined boots since the 1930s and whose surfers popularized the clothing item in the 1960s—nearly twenty years prior to Australian entrepreneur Brian Smith using the term as part of his American-based brand in the 1980s. Although unpersuasive to the court, Australian Leather further argued both that the term “ugg” deserved similar protection to the French term “champagne” and that prior to the registration of the “UGG AUSTRALIA” mark, the term “ugg” was used in a generic manner in the United States. As a result, the district court ruled in favor of Deckers—ordering Australian Leather to pay $450,000 in damages—finding that the doctrine of foreign equivalents did not apply and that the genericism of “ugg” in Australia did not support the notion that the term would have the same meaning in the United States. After the ruling was handed down, Australian Leather decided to appeal.
On May 7, 2021, the United States Court of Appeals for the Federal Circuit affirmed the district court’s decision. In doing so, the court declined to give any reasons for affirming the decision and instead implicitly chose to rely on the analysis provided by the lower court. In a conversation shortly after the May 7decision, Australian Leather’s owner Eddie Oygur announced that he has plans to appeal the decision to the U.S. Supreme Court.
The decision is Deckers Outdoor Corp. v. Australian Leather Pty Ltd. (Case No. 2020-2166) in the United States Court of Appeals for the Federal Circuit. The opinion can be found at the following link: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-2166.RULE_36_JUDGMENT.5-7-2021_1774612.pdf. The lower court decision is Deckers Outdoor Corp. v. Australian Leather Pty Ltd. (340 F. Supp. 3d 706) in the United States District Court for the Northern District of Illinois, Eastern Division. The opinion can be found at the following link: https://www.govinfo.gov/content/pkg/USCOURTS-ilnd-1_16-cv-03676/pdf/USCOURTS-ilnd-1_16-cv-03676-1.pdf.
Last month, Walmart Apollo, LLC (“Walmart”) filed a Notice of Opposition (“Notice”) at the U.S. Patent and Trademark Office (“USPTO”) against Yeezy, LLC (“Yeezy”), famed producer and rapper Kanye Omari West’s fashion brand, on the basis of, inter alia, a likelihood of confusion between Yeezy’s applied-for mark (“Applicant’s Mark”) and Walmart’s registered “spark” mark (“Protected Mark”). Walmart argued that its consumers would likely be confused as to the source or origin of Yeezy’s goods or services when viewing Applicant’s Mark, and this confusion would thus damage Walmart and any goodwill contained within its Protected Mark.
In the summer of 2020—almost a year before Walmart filed its Notice and only months after Yeezy had filed its intent to use application—and again in the early months of 2021, Walmart’s representatives reached out to Yeezy regarding the prospective issue, but the corporation claims it did not receive enough useful feedback to refrain from filing its Notice. Walmart, who has been using its Protected Mark since 2007, “remain[s] hopeful [that it will] . . . hav[e] productive discussions [with Yeezy] around Yeezy’s proposed use of” Applicant’s Mark. Yeezy, recently valued somewhere between $3.2 billion and $4.7 billion and solely owned by Kanye West, has not yet issued a statement.
The images above are provided in Walmart’s Notice filed with the USPTO on April 21, 2021. The Notice can be found at the following link: https://ttabvue.uspto.gov/ttabvue/v?pno=91268856&pty=OPP&eno=1
On May 3rd, Wm. Wrigley Jr. Company (“Wrigley”)—owner of popular candy brands Life Savers, Skittles, and Starburst—filed a trio of complaints in federal courts against Terphogz, LLC (“Terphogz”), Packaging Papi, LLC, and 2020Ediblez—producers and/or distributors of cannabis products that allegedly mimic the packaging of Wrigley’s brands—for, inter alia, trademark infringement of its protected marks.
One of the three cases, Wm. Wrigley, Jr., Co. v. Terphogz, LLC, specifically named Terphogz as manufacturer and seller of a variety of cannabis products under the brand name “ZKITTLEZ” and the slogan “Taste the Z Train Bro.” In the official complaint (“Complaint”), Wrigley alleged that by slightly modifying its protected marks “SKITTLES” and “TASTE THE RAINBOW” (among others), Terphogz was able to cash in on the reputation of the Skittles brand and command a 20% premium in the cannabis market for its Zkittlez goods.
In a statement made after filing the complaints, a representative for Mars, Inc. (Wrigley’s parent company) said the lawsuits are “intended to stop the illegal and dangerous misuse of [Wrigley’s] world-famous trademarks in the marketing and sale of THC-infused edibles, which resemble Mars Wrigley’s genuine products such as Skittles and Starburst.” THC (tetrahydrocannabinol) is the psychoactive component of cannabis, a schedule I drug as defined by the Food and Drug Administration (“FDA”) and Drug Enforcement Administration (“DEA”) under the Controlled Substances Act.
The case is Wm. Wrigley, Jr., Co. v. Terphogz, LLC (Case No. 21-CV-2357) in the United States District Court for the Northern District of Illinois, Eastern Division. The images above are provided by Wrigley in the Complaint, which can be found at the following link: https://www.docketalarm.com/cases/Illinois_Northern_District_Court/1–21-cv-02357/WM._Wrigley_Jr._Company_v._Terphogz_LLC_et_al/1/
Last month, the World Trade Organization met to discuss the suspension of intellectual property rights pertaining to COVID-19 vaccines, with the aim of assisting developing countries in the production of their own vaccines. The Office of the U.S. Trade Representative has now released a statement indicating that the United States will support those negotiations. According to sources, the European Commission is also ready to discuss this potential suspension of rights.
Negotiations at the World Trade Organization are typically slow and laborious given that the process is driven by reaching consensus among the voluntary member delegations. Thus, popular opinion appears to be that this waiver would not be implemented for several months. Additionally, developing countries continue to lag in vaccination rates even despite Moderna’s pledge in October that it would not enforce its intellectual property rights for the duration of the pandemic. This fact, coupled with the avilability of a “compulsory license” to patented inventions for developing countries under the existing WTO agreements, seems to suggest that access to materials, resources, and expertise may be a higher barrier to vaccine production than intellectual property rights.