On June 4, 2021, the U.S. District Court for the Western District of North Carolina affirmed a decision by the Trademark Trial and Appeal Board (“TTAB”) that “PRETZEL CRISPS” is generic in connection with pretzel crackers. In 2004, the USPTO refused Princeton-Vanguard’s U.S. Application Serial No. 78/405,596 for “PRETZEL CRISPS” in connection with pretzels based on the position that the mark was merely descriptive. Nevertheless, the company subsequently filed U.S. Application Serial No. for “PRETZEL CRISPS” in connection with “pretzel crackers” in late 2009. Shortly thereafter, snack giant Frito-Lay filed a notice of opposition to the new application, arguing genericness. The TTAB agreed with Frito-Lay, finding “PRETZEL CRISPS” generic.
Princeton-Vanguard appealed to the Federal Circuit, which reversed the TTAB’s decision for application of the incorrect legal standard (but did not address the parties’ arguments). However, the TTAB reached the same conclusion on remand. Instead of appealing once more, Princeton-Vanguard filed a civil action in the Western District of North Carolina seeking review of the latest TTAB decision. While the Court acknowledged that Princeton-Vanguard’s product is “hugely successful,” it ultimately decided that “PRETZEL CRISPS” is generic and therefore not registerable.
This case is Snyder’s Lance, Inc. and Princeton-Vanguard, LLC v. Frito-Lay North America, Inc., Case No. 3:17-cv-00652-KDB-DSC in the Western District of North Carolina.
Image: https://www.walgreens.com/store/c/the-snack-factory-pretzel-chips-original/ID=prod6217047-product?ext=gooKBM_PLA+-+Grocery+(2019+Update)Grocery__pla_local&gclsrc=aw.ds&&gclid=Cj0KCQjwk4yGBhDQARIsACGfAetwqLQxdANyNU7X7oMWm0cls4VP2lT8oWJUK25X3HyT0LJtp4Q8FMaAtu5EALw_wcB (last accessed Jun. 11, 2021 at 4:01 PM).
This week, the USPTO will celebrate the 75th anniversary of the Lanham Act, the most prominent federal statute governing trademark law in the United States. This historic piece of legislation was drafted throughout the 1930’s by Edward S. Rogers, a renowned Chicago lawyer who specialized in trade identity law, as part of his activity with the American Bar Association (ABA). The Act was later introduced to the 75th Congress by Fritz G. Lanham, a congressman from Texas, in 1938 as H.R. 1654. Due to several disruptions (including World War II), the Act remained pending for several years until its passage in 1946. On July 5, 1946, the Lanham Act was signed into law by President Harry S. Truman and became effective one year later. Since then, the Act has been amended several times, including for implementation of the 1984 Trademark Counterfeiting Act and the 1999 Anticybersquatting Consumer Protection Act (ACPA). 
To celebrate the Act’s anniversary, the USPTO and the State Bar of Texas’ Intellectual Property Law Section will host a two-day event on July 17–18 including a trademark bootcamp, live Trademark Trial and Appeal Board (TTAB) hearings, and the world premiere of 75 Years of the Lanham Act, a documentary by the National Inventors Hall of Fame. Several keynote speakers and panelists will also join the celebration, including U.S. Secretary of Commerce Gina Raimondo, Texas Congresswoman Kay Granger, Commissioner for Trademarks David Gooder, Chief Judge Gerard Rogers of the TTAB, former USPTO Director Michelle Lee, former Commissioner for Trademarks Mary Boney Denison, Jennifer McDowell of the International Trademark Association (INTA), and more.
Over the years, our Firm has handled countless marks under the Lanham Act, including the following (which you may recognize):
Beverly W. Pattishall, The Lanham Act at Fifty - Some History an Comment, 86 Trademark Rep. 442 (1996) ( https://heinonline.org/HOL/LandingPage?handle=hein.journals/thetmr86&div=42&id=&page=).
A Guide to the Lanham Act of 1946, LAWS (Dec. 23, 2019) ( https://trademark.laws.com/lanham-act-of-1946/lanham-act-of-1946-background).
Lanham Act, Wikipedia ( https://en.wikipedia.org/wiki/Lanham_Act) (last accessed Jun. 10, 2021 at 3:40 P.M.).
Lanham Act 75th anniversary celebration, USPTO ( https://www.uspto.gov/trademarks/lanham-act-75th-anniversary-celebration?utm_campaign=subscriptioncenter&utm_content=&utm_medium=email&utm_name=&utm_source=govdelivery&utm_term=) (last accessed Jun. 10, 2021 at 3:51 PM).
At the beginning of this year, the Trademark Modernization Act was signed into law which chiefly introduced two new routes to expunge a registration from the records and address a few other issues. The legislation delegated to the USPTO the responsibility to implement rules and procedures, which the USPTO has now published as part of the agency's notice of proposed rulemaking requirement. Aside from the new proceedings, something of practical significance to all applicants and practitioners is the six month period for reply to an office action may be shortened to three months, extendable for another three months on payment of an extension fee.
On May 27, 2021, Elon Musk’s Tesla, Inc. filed three intent-to-use service mark applications in International Class 43 (services for providing food and drink; temporary accommodation) for “TESLA”, “TESLA” (stylized), and its well-known “T” (stylized). Specifically, Tesla wants the registrations to cover restaurant services, as well as pop-up, self-service, and take-out restaurant services. The applications come after years of Musk tweeting about his desire to build 1950’s themed drive-in restaurants at Tesla Supercharger locations. Moreover, in 2017 Tesla’s co-founder and former Chief Technical Officer, J.B. Straubel, reportedly told attendees at the FSTEC restaurant conference that Tesla had already started working on restaurant and convenience store concepts. Tesla’s applications will be assigned to a USPTO examiner for review in approximately three months.
 Tesla Supercharger, Wikipedia ( https://en.wikipedia.org/wiki/Tesla_Supercharger) (last accessed Jun. 3, 2021 at 10:23 AM).
 Rhett Jones, Elon Musk Says Rockin’ Drive-In Restaurant, Roller Skating, and Theater Coming to Tesla Supercharger Station, Gizmodo (Jan. 8, 2018 at 10:08 AM) ( https://gizmodo.com/elon-musk-says-rockin-drive-in-restaurant-roller-skat-1821870133).
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, 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
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.
U.S. PTO Initiates a Pilot Prioritized Review Program for Appeals and a Conference Pilot Program for Oppositions Against Applications Related to COVID-19Written by Emily Mola
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, 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.
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.
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.