Trademark

In late November 2020, the New York Times (“NYT”) brought suit against Time Magazine (“Time”) for trademark infringement, among other claims, in the U.S. District Court for the Southern District of New York. NYT alleged Time’s TIME100 TALKS was confusingly similar to its TIMES TALKS series. NYT alleged Time’s launched a “competing series of live and virtual recorded events consisting of conversations between journalists and leading talents and thinkers” in early 2020. See Case No. 1:20-cv-09787.

In mid-2020, Time filed U.S. Trademark App. No. 88/961,167 for TIME100 TALKS in connection with (Int’l. Class: 038) Streaming of video material on the Internet and (Int’l. Class: 041) Arranging, organizing, conducting, and hosting online educational and entertainment events; providing a website featuring non-downloadable videos. A few months later, and before the suit, an Examining Attorney at the U.S. PTO refused to register the mark on a likelihood of confusion basis with U.S. Trademark Reg. Nos. 2,475,639, 3,697,025, and 4,179,358 for TIMES TALKS, owned by NYFT.  

NFT dismissed the suit with prejudice, and the suit settled in late February 2021. Time’s trademark application became abandoned on March 02, 2021.

As published by the University of Miami Law Review (read full article here:  https://lawreview.law.miami.edu/trademark-modernization-act-2020/), the Trademark Modernization Act (“TMA”) introduces several changes to trademark law and administrative procedures.  Among them:

● Establishes expungement and ex-parte proceedings relating to the validity of marks in order to remove “dead wood” from the register
● Reinstates a rebuttable presumption of irreparable harm in infringement litigation, which has hindered the availability of injunctive relief in trademark enforcement cases
● Allows for third-party submission of evidence as part of letters of protest against pending trademark applications before the need to commence administrative litigation
● Authorizes the U.S. Patent and Trademark Office (“USPTO”) to shorten administrative response deadlines
● Affirms the political independence of administrative law judges of the Trademark Trial and Appeal Board (“TTAB”).

Kelly M. Malloy is a patent engineer and law clerk with Malloy & Malloy, P.L.  She is a J.D. candidate for 2022 at the University of Miami School of Law where she serves as President of the Intellectual Property Law Society, President of the Inter-Club Council, Junior Staff Editor on the University of Miami Law Review, and Executive Board Secretary of the Student Bar Association.

The U.S. PTO Trademark Trial and Appeal Board (TTAB) affirmed the Examining Attorney’s refusal to register "ONLINETRADEMARKATTORNEYS.COM " as a trademark because it was merely descriptive of its services.

Sausser Summer PC (Applicant) is the owner of a trademark registration for “ONLINETRADEMARKATTORNEYS.COM” on the Supplemental Register in connection with (Int’l. Class: 045) legal services.  See U.S. Trademark Reg. 4,590,561.  Five years after registration on the Supplemental Register, Applicant filed a trademark application for “ONLINETRADEMARKATTORNEYS.COM” on the Principal Register under a Section 2(f) claim for “acquired distinctiveness”.  See U.S. Trademark App. No. 88/626,569.  However, the Examining Attorney refused to register the applied-for mark on the basis that it was merely descriptive of Applicant's services.  Applicant filed an Appeal Brief in October 2020 requesting reversal and submitting evidence showing that the “ONLINETRADEMARKATTORNEYS.COM” mark had acquired distinctiveness as required by the Trademark Act and that the addition of a general top level domain “.COM” made the mark distinctive.

On the basis of the dictionary definitions, third-party uses of “online trademark attorneys,” and Applicant’s own description of its business model, the TTAB found that “on the scale ranging from generic to merely descriptive,” "ONLINETRADEMARKATTORNEYS.COM" was much closer to the generic end of the scale than to the merely descriptive end, making it is highly descriptive of the “legal services” identified in the application.  See Royal Crown Cola Co. v. Coca-Cola Co., 892 F.3d 1358, 127 USPQ2d 1041, 1048 (Fed. Cir. 2018).  The TTAB found that the combination of the words “online,” “trademark,” and “attorneys” with the top-level domain “.COM” immediately and unequivocally described the key feature or attribute of the “legal services” identified in the application, namely, that Applicant provides trademark attorneys who are “[a]ccessible via a computer or computer network.”  The TTAB ultimately concluded Applicant’s evidence on the Converse factors fell far short of carrying Applicant’s heavy burden of showing that its highly descriptive proposed mark ONLINETRADEMARKATTORNEYS.COM had acquired distinctiveness for legal services.  See Converse, Inc. v. ITC, 909 F.3d 1110, 1120, 138 USPQ2d 1538, 1546 (Fed. Cir. 2018) (Converse factors: (1) association of the 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 adverting; (4) amount of sales and number of customers; (5) intentional copying; and (6) unsolicited media coverage).

The TTAB did not find persuasive Applicant’s arguments that the addition of the “.COM” TLD to the highly descriptive phrase supported a finding that the mark as a whole had acquired distinctiveness.  In 2020, the U.S. Supreme Court rejected the rule that a proposed mark consisting of the combination of a generic term and a generic top-level domain, like “.com,” was automatically generic.  See USPTO v. Booking.com B.V., 140 S. Ct. 2298, 2020 USPQ2d 10729 (2020).  Notwithstanding, a mark must be capable of serving as a source indicator, rather than indicating that the term, as a whole, is merely the name of the class or category of the goods and/or services identified in the application, or merely descriptive of a quality, feature, function, or characteristic of an applicant's goods and/or services.  The TTAB concluded that the fact that some consumers may recognize that the “.COM” TLD in Applicant’s mark can identify only one entity at any one time has “little probative value” regarding the exclusivity of Applicant’s use of the mark as a whole, particularly when the record contains evidence of various third-parties describing their legal services as provided by “online trademark attorneys”.

On February 16, 2021, Peloton Interactive, Inc. (Peloton) filed five (5) Petitions to Cancel at the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board against Mad Dogg Athletics, Inc. (Mad Dogg).  Mad Dogg owns trademark registrations for “SPINNING”, “SPIN”, and “SPIN PILATES”.  U.S. Trademark Reg. 1,780,650 for “SPINNING” was filed on October 9, 1992, registered on July 6, 1993, and has its date of first use dating back to March of 1982.

In its Petition, Peloton alleged “[t]he terms SPIN and SPINNING are generic, and Mad Dogg should be barred from continuing to abusively enforce its improper trademark rights across the spinning industry.”  Peloton alleged “spin class” and “spin bike” are part of the fitness lexicon and that SPIN and SPINNING are generic terms to describe a type of exercise bike and associated in-studio class.  Peloton alleged “spin bikes” have become immensely popular in recent years because of the community and motivation provided by spin classes, typically held at a gym or workout studio, where multiple spin bikes are placed in a room, usually close together, with an instructor in front.  See Petition to Cancel, pp. 6.  Peloton cited to Internet evidence, including memes, to support its argument that the terms SPIN and SPINNING have fallen victim to genericide.

Genericide is the process by which a trademark owner loses trademark rights.  Generic terms are not eligible for trademark registration and protection because the relevant purchasing public understands them primarily as the common or class name for the goods or services.  See TMEP § 1209.01(c).  Some examples of trademarks which have fallen victim to genericide include: Escalator, Aspirin, Trampoline, Videotape, Zipper.  After five (5) years on the Principal Register and consistent use from the date of registration, a trademark becomes “incontestable”.  An incontestable trademark may not be challenged absent at least one of the few exceptions applying, such as the trademark becoming generic.  See 15 U.S.C. § 1064.

On January 13, 2021, Warner Bros. Entertainment Inc. (Warner Bros.) filed a Notice of Opposition  at the U.S. Patent and Trademark Office's Trademark Trial and Appeal Board against Lawrence Merle Nelson (Applicant) for U.S. Trademark Application No. 88/733,756 for "What's Up Doc?" in connection with "Personal coaching services, namely, providing life coaching and personal coaching services in the fields of self-empowerment, physical and emotional motivation, personal awareness and personal development for individuals, and groups to improve their physical and spiritual health and quality of life", in International Class 041.

 

Warner Bros. owns a trademark registration for "WHAT’S UP, DOC?" (U.S. Trademark Reg. No. 1,495,185) in connection with t-shirts in International Class 025.  Warner Bros. alleged it has common law rights in this mark for other goods and services.  In its Opposition, Warner Bros. alleged that as a result of its use and promotion of its mark and the success of the Looney Tunes franchise, its mark has developed secondary meaning and significance in the minds of the public and has become a strong trademark in identifying its goods and services exclusively.  You may recall Warner Bros. character Bugs Bunny's catchphrase "Eh...What's up, doc?" in cartoons.

 

Warner Bros. alleged that registration of Applicant’s mark in connection with the services set forth in the Application would likely cause confusion, cause mistake, or deceive the public into the false belief that the services offered by Applicant under Applicant’s mark come from or are otherwise sponsored by or connected with Warner Bros., in violation of Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d).  Warner Bros. further alleged its mark is famous, and became famous long before the earliest priority date upon which Applicant could rely upon support of Applicant's mark. As such, Warner Bros. alleged Applicant’s use and registration of Applicant’s Mark would damage Warner Bros. by trading on the enormous goodwill associated with its mark and diluting its distinctiveness.  Therefore, Warner Bros. concluded Applicant’s use and registration of Applicant’s mark in connection with the services identified in the Application would likely cause dilution by blurring of the famous Warner Bros. mark, in violation of Sections 13(a) and 43(c) of the Lanham Act, 15 U.S.C. §§ 1063(a), 1125(c).

In early January 2021, the Trademark Trial and Appeal Board (TTAB) refused to register A&T’s proposed trademark for “ENHANCED PUSH-TO-TALK” on a descriptiveness basis. See Opposition Nos. 91/241,178 and 91/241,179.

On October 17, 2017, AT&T filed trademark applications for “AT&T’S ENHANCED PUSH-TO-TALK” and “ENHANCED PUSH-TO-TALK” in connection with telecommunication services in International Class 038. On May 15, 2018, Sprint Communications Company L.P. (Sprint) filed a Notice of Opposition against each mark alleging the wording “PUSH-TO-TALK” was merely descriptive of a feature of “two-way radios, mobile phones and other communication devices which allows users to switch from reception mode to transmit mode with the push of a button” and that the wording was in common use by Sprint and many other telecommunications companies (as shown by the disclaimer of “PUSH-TO-TALK”).  Sprint argued the word “ENHANCED” was merely descriptive because “it does nothing more than convey to consumers that the services are improved, augmented or better than before” and that the word was frequently used by third parties in close connection with the wording “push-to-talk” to refer to push-to-talk services with enhanced features. On January 8, 2021, the TTAB found “ENHANCED PUSH-TO-TALK” highly descriptive of AT&Ts telecommunication services and “AT&T ENHANCED PUSH-TO-TALK” unregistrable in connection with Applicant’s services, absent a disclaimer of “ENHANCED PUSH-TO-TALK.”

Evermore Park, a fantasy theme park based out of Utah, recently filed a lawsuit against Taylor Swift alleging trademark infringement.  According to documents filed in the Utah District Court, Swift’s new music album entitled “Evermore” allegedly infringes Evermore Park’s trademarks and dilutes the fantasy park’s brand.  The theme park’s chief executive officer claims that over $37 Million has been invested “into the creation and promotion of Evermore Park and the EVERMORE trademarks,” that over 140,000 guests have visited the park since 2018, and that the park has “commission the creation of two original music scores that Evermore sells under the EVERMORE trademark through a variety of outlets, such as Apple Music.”  Attorneys representing Swift have denied the park’s allegations, contending that the trademark claims are baseless for several reasons, including that according to Swift, the “TAYLOR SWIFT EVERMORE ALBUM” mark is dissimilar in terms of appearance, sound, connotation, and commercial impression, and that consumer confusion is unlikely to exist.    

     World Wrestling Entertainment (“WWE”) recently filed an opposition with the U.S. Patent and Trademark Office, contending that the soda line marketed under “Stone Cold Jones”, which is owned by the NFL’s Chris Jones, is confusingly similar and infringes upon the WWE’s trademarks, “Stone Cold Steve Austin” and “Stone Cold,” which are associated with the legendary wrestler Steve Austin.   The NFL’s Chris Jones contends that “Stone Cold Soda” is widely recognized and that there will be no likely of confusion, but the parties have nevertheless been engaged in settlement discussions since December of 2020.  On January 20, 2021, a thirty-day extension was filed with the USPTO, so that the proceeding would continue to be stayed while the parties explored the possibility of a resolution.

     The owner of an incontestable U.S. trademark registration for “LETTUCE TURNIP THE BEET” previously sued Redbubble Inc., an online print-on-demand webstore, for trademark infringement based upon its use of this phrase on t-shirts, tote bags, and other related goods.  The district court found in favor of Redbubble, ruling that consumers are not likely to purchase products and associate this phrase with a particular source; instead, consumers are likely to purchase goods with the “Lettuce Turnip the Beet” phrase because they find the phrase aesthetically pleasing.  The owner of the “LETTUCE TURNIP THE BEET” trademark registration appealed, but on January 20, 2021, the U.S. Court of Appeals for the Ninth Circuit affirmed the lower court’s ruling, finding that the mark was functional because it “improves the usefulness or appeal of the object it adorns.” 

In 2014, VIP Products, LLC, (VIP Products) brought suit against Jack Daniel’s Properties, Inc. (Jack Daniel’s) seeking a declaratory judgment after receiving cease-and-desist letters. A declaratory judgment is a useful tool to seek a determination that using a mark does not infringe another’s trademark.  VIP Products designs, markets, and sells “Silly Squeakers” rubber dog toys resembling bottles of various well-known beverages, such as the Jack Daniel’s whiskey bottle.  The goal of VIP Products is to “reflect” “on the humanization of the dog in our lives,” and to comment on “corporations [that] take themselves very seriously.”  The district court held that VIP Products was not entitled to the defenses of nominative and First Amendment fair use because the trade dress and bottle design were used to promote a somewhat non-expressive, commercial product.

On appeal, the 9th Circuit affirmed the district court's finding that VIP Products was not entitled to the defense of nominative fair use; however, found the court erred in finding trademark infringement without first requiring Jack Daniel’s to satisfy at least one of the two Rogers prongs.  When an “artistic expression is at issue, the Rogers two-prong test requires the plaintiff to show the defendant’s use of the mark is either (1) “not artistically relevant to the underlying work” or (2) “explicitly misleads consumers as to the source or content of the work.”  See Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989).  The 9th Circuit found VIP Products’ dog toy was an expressive work protected by the First Amendment because it communicated a “humorous message” through its use of word play to alter the serious phrase appearing on a Jack Daniel’s bottle—“Old No. 7 Brand”— with a silly message—“The Old No. 2.”  As such, the 9th Circuit vacated the district court’s infringement holding and remanded the case for a determination of whether Jack Daniel’s can satisfy a prong of the Rogers test.  See VIP Prods. LLC v. Jack Daniel’s Properties, Inc., No. 18-16012 (9th Cir. 2020).  

On September 15, 2020, Jack Daniel’s filed a Petition For A Writ of Certiorari in the Supreme Court of the United States (SCOTUS) requesting a ruling that the dog toy called “Bad Spaniels” infringed its trademarks.  Jack Daniel’s argued the 9th Circuit’s concern for First Amendment interests was “egregiously misguided.”  On January 11, 2021, SCOTUS denied certiorari for Jack Daniel’s petition.  This left in place the 9th Circuit’s ruling that VIP Products’ dog toy “Bad Spaniels” is an expressive work protected by the First Amendment.  

This case is similar to the 4th Circuit’s decision in Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007).  In that case, dog toys which “loosely resemble[d]” small Louis Vuitton handbags were held to be “successful parodies of LVM handbags and the LVM marks and trade dress[,]” and therefore did not infringe the LVM trademark.  Id. at 258, 260, 263.  The 4th Circuit reasoned that although “[t]he dog toy is shaped roughly like a handbag; its name ‘Chewy Vuiton’ sounds like and rhymes with LOUIS VUITTON; its monogram CV mimics LVM’s LV mark; the repetitious design clearly imitates the design on the LVM handbag; and the coloring is similar,” “no one can doubt . . . that the ‘Chewy Vuiton’ dog toy is not the ‘idealized image’ of the mark created by LVM.”  Id. at 260.

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