Trademark

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.”

 

 

This week, Chanel lost a trademark case in the European Union against Chinese technology company Huawei after nearly four years of battle. The dispute began in December 2017 when Chanel initiated an opposition proceeding with the EU Intellectual Property Office (EUIPO) to block the registration of Huawei’s logo (pictured below on the right) for computer hardware. Pointing to its world-famous interlocking “CC” logo, which is registered in Class 9, the luxury French fashion house argued that Huawei’s mark was confusingly similar. To see why, Chanel contended, just rotate Huawei’s mark by 90 degrees.

Nevertheless, Chanel met defeat before the EUIPO in 2019, appealed, faced dismissal at the Fourth Board of Appeal of the EUIPO, appealed again, and lost once more before the EU General Court. On April 21, 2021, the General Court held that the marks at issue “share certain characteristics” but are “visually different” at bottom, from “the more rounded shape of the curves” to the “greater thickness of the line of those curves” in Chanel’s mark as compared to Huawei’s. Ultimately, the marks were found to be different and the action was dismissed.

chanel

This case is Chanel SAS v. EUIPO, Case T-44/20. The General Court of the European Union’s April 21, 2021 judgement can be viewed here: https://curia.europa.eu/jcms/upload/docs/application/pdf/2021-04/cp210067en.pdf.­­­

After a nearly five-year battle, Apple, Inc. (“Apple”) prevailed in a U.S. PTO Trademark Trial & Appeal Board ("Board" or "TTAB") Opposition proceeding initiated by Charles Bertini (“Bertini”) over its APPLE MUSIC trademark.

Apple filed U.S. Serial No. 86/659,444 for “APPLE MUSIC” (“Apple’s Mark”) in connection with various entertainment services on June 11, 2015. Since its filing, APPLE MUSIC became one of the biggest music and video streaming services on the market, with over 75 million songs available on its platform. On September 6, 2016, Bertini, also known by his professional name as APPLE JAZZ, filed a Notice of Opposition against Apple’s Mark based on priority and likelihood of confusion with its mark APPLE JAZZ (U.S. Serial No. 87/060,640) in connection with various entertainment services, which was filed on June 05, 2016. Bertini alleged it had used its mark in commerce since at least as early as June 5, 1986, in connection with “a wide variety of services, including those which are the same as or substantially identical to services intended to be offered by [Apple]”.

To prevail on the ground of likelihood of confusion under Section 2(d) of the Trademark Act, based on a previously used mark, it is the opposer’s burden to prove both priority of use and likelihood of confusion by a preponderance of the evidence. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1848 (Fed. Cir. 2000). Bertini alleged that he had acquired common law rights in the mark APPLE JAZZ for the services identified in his application “long prior” to any date on which Applicant may rely for the applied-for mark. Evidence showed Bertini first used his APPLE JAZZ mark in commerce on June 13, 1985, and has since offered APPLE JAZZ concerts in and around the Cortland, New York area. On the other hand, Apple has used the APPLE word mark in connection with personal computers and mobile communication and media devices, as well as with a variety of related software, services, and accessories since at least as early as 1977. Since the 1980s, Apple has used the APPLE word mark in connection with an audio player and audiorecording functionalities on its computers and mobile devices. The Board, however, found Apple’s audio player and audio-recording functionalities did not establish use of the APPLE word mark in connection with the services identified in its Trademark Application because they were insufficiently related.

Apple relied on an acquisition of trademark rights from 2007 to establish priority over Bertini. In 1963, the musical group The Beatles set up a United Kingdom corporation to produce and distribute the group’s music, under the name The Beatles Limited. By 1968, the name of the corporation was changed to Apple Corps Limited ("Apple Corps"). Since 1968, Apple Corps continuously used the APPLE word mark in connection with the production and/or distribution of sound recordings and film in the U.S. In 1997, Apple Corps registered the mark APPLE in typed form (U.S. Reg. No. 2,034,964) for “Gramophone records featuring music; [pre-recorded audio tape cassettes featuring music;] audio compact discs featuring music [; pre-recorded video tape cassettes featuring music] [; video laser discs featuring music],” claiming a date of first use of August 1968. In 2007 Apple Corps registered the mark APPLE in standard characters (U.S. Reg. No. 3,317,089) for, inter alia, “musical sound recordings.” In January of 2018, Apple acquired all of Apple Corps’ trademark and service mark rights in its APPLE marks (above-referenced). The Agreement assigned to Apple all Apple Corps’ APPLE marks, which were defined as “any Trademarks of [Apple] Corps or any Apple Corps Group Company that utilize or feature the word ‘apple’ in any form . . . and/or any symbols, designations, signs, logos, depictions or representations of an apple, in whole or in part[.]” Apple then granted back to Apple Corps a license to continue using the marks, which use inured to Apple’s benefit.

The Board found Apple could gain priority over Bertini by tacking rights Apple obtained from Apple Corps in the APPLE marks to Apple’s APPLE MUSIC mark. “‘[T]acking’ is a defense that must be pleaded to put opposer on notice of new matter that applicant is placing at issue (i.e., a mark previously used by applicant that is the legal equivalent of applicant’s opposed mark, and that provides the basis or applicant to claim prior use).” See H.D. Lee Co., Inc. v. Maidenform, Inc., 87 USPQ2d 1715, 1720 (TTAB 2008). Tacking requires the acquired and later mark to be “legal equivalents” and have “the same or similar” goods or services marketed under the later mark. Therefore, by tacking the use of the APPLE mark by Apple Corps, Apple established use of the APPLE MUSIC mark for the “production and distribution of sound recordings” as early as August 1968.

 

Just two weeks after Nike filed suit against MSCHF over its Satan Shoes, the parties settled in the shadow of a preliminary injunction forbidding MSCHF from fulfilling any orders of the allegedly infringing sneakers. The Eastern District of New York found that Nike showed a substantial likelihood of success on “at least some” of its claims, specifically that “MSCHF’s actions are likely to confuse, and likely are confusing, consumers about the origin, sponsorship, or approval of MSCHF’s goods” and are “likely to dilute and tarnish Nike’s marks.” The injunction also bars MSCHF from using Nike’s marks, including the “SWOOSH”, in advertising and on any confusingly similar products. Additionally, in an effort to remove the Satan Shoes from circulation, Nike has reportedly asked MSCHF to initiate a voluntary recall to buy the sneakers from consumers at the original $1,018 price point.

Recently, the U.S. PTO’s Trademark Trial & Appeal Board (“TTAB” or “Board”) affirmed the refusal to register the Timberland Boot Design on the basis that the mark's drawing lacked acquired distinctiveness.

The Timberland Boot, invented in 1973, is outdoor footwear known for its yellow color.  By the late 90s, the Timberland Boot became a cultural icon and fashion statement through its association with musicians, athletes, and other celebrities.  In 2015, TBL Licensing LLC ("TBL") sought protection of the Timberland Boot Design in the form of a Federal Trade Dress Application.  See U.S. Serial No. 86/634,819 for use in connection with "footwear, namely, lace up boots" in International Class 025 with a first use date of December 01, 1988.  After receiving six Office Actions refusing registration of the design, TBL filed a Notice of Appeal with the TTAB on December 04, 2018.  Nearly 2.5 years later, the Board affirmed the Examining Attorney's refusal to register the Timberland Boot Design on the basis that the mark's drawing lacked acquired distinctiveness.  See image.  In the Appeal, TBL had the burden to prove that the product design sought to be registered was perceived by relevant consumers not just as the product (or features of the product), but as identifying the producer or source of the product.  In affirming the Examining Attorney's refusal, the Board referred to the Converse factors to determine whether TBL’s evidence supported a finding of acquired distinctiveness.  See Converse, Inc. v. Int'l Trade Comm'n, 907 F.3d 1361, 128 USPQ2d 1538, 1546 (Fed. Cir. 2018) (“(1) association of the trade[mark] with a particular source by actual purchasers (typically measured by customer surveys); (2) length, degree, and exclusivity of use; (3) amount and manner of advertising; (4) amount of sales and number of customers; (5) intentional copying; and (6) unsolicited media coverage of the product embodying the mark.”). 

In its analysis, the Board found TBL’s declaration testimony had little probative value on the issue of acquired distinctiveness because the declarations did not come from average consumers but retailers for these boots.  The Board also found the evidence of celebrities wearing the Timberland boots “demonstrate[d] the popularity of Applicant’s lace-up boots, but [did] not show that the celebrities wearing the Timberland boots associate[d] Applicant’s claimed trade dress with the source of the boots they are wearing.”  While TBL demonstrated over 30 years of continuous use of its applied-for product trade dress, the Board determined that the record showed TBL’s use was not “substantially exclusive” given the numerous third-party uses and lack of efforts by TBL to police its product design. TBL introduced evidence that it sold more than 15 million pairs of boots over the last 15 years, amounting to at least $1.3 billion in revenue, and spent $1.5 million on marketing and adverting its lace-up boots bearing the applied-for trade dress from 2011-2016.  While the Board found TBL’s sales figures impressive, there was little evidence that the “features which Applicant claim[ed] as its mark – the bulbous toe box, ankle collar, outsole shape and color, rear heel panel, vamp from back to front, and eyelets – have been advertised, or are recognized, individually or collectively as source indicators for the identified lace-up boots.”  Finally, the Board determined that while the record was replete with evidence of unsolicited media coverage of TBL's Timberland boot, “such coverage [was] insufficient to establish acquired distinctiveness, because there [was] simply no evidence that the media coverage and celebrity usage [] focused on the product trade dress Applicant seek[ed] to register.”  After considering all of the evidence relevant to the Converse factors, the TTAB concluded that TBL did not establish that its proposed product design had acquired distinctiveness as a source identifier in connection with its lace-up boots.

 

Monday, 05 April 2021 22:01

U.S. PTO Trademarks Data Q1 2021

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The U.S. Patent & Trademark Office ("PTO") recently released data indicating record levels of trademark application filings since the first quarter of 2020.

Over 260,000 trademark applications were filed by Q1 2021 compared to over 151,000 applications filed by Q1 2020. In light of the COVID-19 pandemic, there was a substantial increase in trademark applications filed by the end of 2020. Specifically, Q2 2020 saw 157,877 applications filed, Q3 2020 saw 180,961 applications filed, and Q4 2020 saw 247,807 applications filed. The majority of trademark applications through Q1 and Q3 2020 were filed on an intent-to-use basis. The average time for an Examining Attorney to be assigned to a trademark application has increased from 2.5-3 months to around 4-5 months. Please note that the U.S. PTO's target number of months from the date of application filing to the Examining Attorney's first office action is between 2.5 and 4.5 months. By Q1 2021, the total number of new application classes prior to the first office action awaiting examination was 358,298. By Q1 2021, 93,580 trademark applications matured to registrations. Similarly, there has been a gradual increase in registrations since 2018. Learn more on "Trademarks Data Q1 2021 at a glance".

 

On February 25, 2021, the United States Court of Appeals for the Sixth Circuit handed down a ruling that effectively clarified how the Lanham Act can be applied to direct infringement cases in the context of online marketplaces. In its decision, the Sixth Circuit broadened the scope of its test for direct infringement, holding “use in commerce,” a prerequisite for trademark infringement, can occur in its classic form—through actual product sales—and also through alternative forms such as distribution, advertisement, and the offering of a product for sale. See Ohio State Univ. v. Redbubble, Inc., No. 19-3388, 2021 U.S. App. LEXIS 5610, at *22-24 (6th Cir. Feb. 25, 2021).

The Sixth Circuit’s decision arose out of a March 2019 lawsuit where The Ohio State University (“OSU”) sued Redbubble, alleging, inter alia, Redbubble directly infringed on a number of OSU’s trademarks by selling a variety of products containing OSU’s iconic insignias and school mascot. Ohio State Univ. v. Redbubble, Inc., No. 2:17-cv-1092, 2019 U.S. Dist. LEXIS 53695, at *1 (S.D. Ohio Mar. 29, 2019). Redbubble, a so-called “print-on-demand” online marketplace whose products exhibit user-submitted designs, offers products ranging from tapestries to tank tops, from phone cases to couch cushions, and to many other items in between.

While other online global marketplaces, such as Amazon and eBay, have been able to avoid being held liable for direct trademark infringement due to their hands-off business approaches, the Sixth Circuit has left the door open for Redbubble to be liable for direct infringement due to the amount of oversight it exercises.

The case is Ohio State University v. Redbubble, Inc. (Case No. 19-3388) in the United States Court of Appeals for the Sixth Circuit. The decision can be found at the following link:  https://www.opn.ca6.uscourts.gov/opinions.pdf/21a0050p-06.pdf

This week, Nike filed suit against MSCHF, a Brooklyn-based streetwear company, in the Eastern District of New York for trademark infringement, false designation of origin, trademark dilution, and unfair competition. In collaboration with popular rapper Lil Nas X, who is widely known for his chart-topping hit “Old Town Road,” MSCHF launched their “Satan Shoes” on March 29, 2021. The Satan Shoes, which are unauthorized by Nike, consist of a genuine pair of Nike Air Max 97 sneakers modified by MSCHF with a host of hell-themed features. The additions include red liquid in the air bladder of each sole, a bronze charm with a pentagram attached to each shoelace, red embroidery of the number “6/666” on the body, an inverted cross depicted on each tongue, the words “MSCHF” and “LIL NAS X” embroidered on the back of either shoe, an outward-facing illustration of a pentagram on both insoles, and red embroidery of “LUKE 10:18” as a reference to a Bible verse about Satan falling from heaven. Further, MSCHF claims that the Satan Shoes have one drop of real human blood in each sole. Only 666 pairs were made available at $1,018 per pair, and the line is now completely sold out. The Satan Shoes launch also occurred in the wake of Lil Nas X’s newest single, “Montero (Call Me By Your Name),” which received backlash itself due to the music video’s imagery of hell and depiction of the rapper as the devil.

Despite MSCHF’s dramatic modifications to the Air Max 97s, Nike’s swoosh logo remains prominently displayed on the Satan Shoes. The stunt product is not the first of its kind for MSCHF, which also offered a line of limited-edition “Jesus Shoes'' in 2019. Those shoes consisted of a white pair of Nike Air Max 97 sneakers modified by MSCHF with custom stitching and water allegedly from the River of Jordan. Interestingly, however, Nike did not object to the Jesus Shoes.

 

 

This case is Nike, Inc. v. MSCHF Product Studio, Inc., Case No. 21-cv-1679, in the United States District Court for the Eastern District of New York. The image above is provided by Nike in the official complaint.

 

On November 5, 2020 Mexico enacted new laws to bring its intellectual property system into conformity with the standards set forth in the USA-Mexico-Canada Agreement. Previously, no evidence of use of a trademark was required to obtain or maintain a trademark registration in Mexico. However, under the new laws, a Declaration of Use must be filed within three months of the third anniversary of the registration date as well as on renewal of a trademark registration. 

The changes will help clear out unused trademarks from the register in Mexico. This type of "use it or lose it" regulation has long been the case in the United States and will likely lead to a reduction in trademark piracy. 

In 2019, Virginia Urology Center, P.C. (“Registrant”) filed a trademark application at the U.S. Patent and Trademark Office (“PTO”) for VASECTOMY MAYHEM in connection with (Int’l. Class: 044) “Physician services; medical services, namely, treatment services in urology for adults; medical evaluation services, namely, functional assessment program for patients receiving urological treatment services for purposes of guiding treatment and assessing program effectiveness; urologic surgery”. This mark became registered on September 01, 2020, Reg. No. 6,143,370. On February 4, 2021, the National Collegiate Athletic Association (“NCAA”) filed a Petition for Cancellation before the U.S. PTO’s Trademark and Appeal Board (“TTAB”) based on priority, likelihood of confusion, and dilution by blurring. In support of its Petition, the NCAA cited numerous of its trademark registrations for MARCH MAYHEM, MARCH MADNESS, and MUNCH MADNESS (the majority which have achieved “incontestable” status).

In its Petition, the NCAA alleged that Registrant adopted and used the mark VASECTOMY MADNESS to promote its medical services by “making explicit references to NCAA’s Tournament in order to associate Registrant and its services with NCAA and the Tournament.” Further, the NCAA alleged Registrant assigned its rights in VASECTOMY MADNESS to NCAA and that the NCAA licensed the mark to Registrant to use in a "proscribed manner for a limited period of time". Finally, the NCAA alleged that after the license expired, Registrant used and registered VASECTOMY MAYHEM to promote its medical services using basketball/NCAA references and imagery, in the same manner as it did with VASECTOMY MADNESS, without NCAA’s consent or permission. The NCAA alleged its marks have become “distinctive and famous in accordance with 15 U.S.C. § 1125(c).”

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