On January 22, 2021, the U.S. Patent and Trademark Office published a Request for Information (RFI) that is an extension of a previous RFI issued in November 2020. The notice states the following:
The USPTO is undertaking a study of the extent to which patent or trademarks rights holders are experiencing infringement by state entities without adequate remedies under state law, and the extent to which such infringements appear to be based on intentional or reckless conduct.
All members of the public are welcome to submit comments. Instructions for how to submit comments through the Federal eRulemaking Portal can be found in the RFI, which is available at https://www.federalregister.gov/documents/2021/01/22/2021-01305/sovereign-immunity-study.
Note that all comments must be submitted on or before February 22, 2021.
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.
On November 18, LeBron James, the famous professional Basketball legend who is a key star player for the LA Lakers (and previously the Cleavland Caveliers and Miami Heat), filed a Notice of Opposition at the USPTO Trademark Trial and Appeal Board against Carnival’s “KING JAMES” mark.
Why would LeBron James file this opposition for a mark used in connection with “cruise ship services” and filed last year? Perhaps because the mark is also in connection with Class 41 services: “providing sports facilities; organizing of sports competitions and sports events; providing facilities for recreational activities; . . . providing facilities for recreation” and Class 35 identification: “sport bags, gym bags, sports bags, . . . gymnastics and sporting articles.” See U.S. Trademark Application No. 88/588,812.
LeBron James’s Complaint has two causes of actions: (1) “False Suggestion of Connection with LeBron James” and (2) “Trademark Consist of a Name Identifying a Living Individual.” LeBron James alleges that “”King James” has been a well-known nickname of LeBron James for many years, well preceding the date Applicant filed its application. The media and basketball fans consistently refer to LeBron James as “King James”, and LeBron James’ Twitter handle is actually @KingJames. King James has therefore become a popular nickname of LeBron James, and is used interchangeably with LeBron Jame.” See Opposition No. 91266024 [TTABVUE 1]. It is worth noting that LeBron James does not currently hold a U.S. Trademark Registration for “KING JAMES.”
On November 26, Carnival withdrew its Application for “KING JAMES” “with prejudice.” This means that Carnival will not be allowed to refile an application for the mark “KING JAMES” in the future. See Opposition No. 91266024 [TTABVUE 4].
Cartier's "LOVE" bracelets, designed in the 1960's, have acheived some reknown due to the locking mechanism that can only be opened with a screwdriver. While Cartier has had success in certain countries protecting the overall look of the bracelet itself, the Intellectual Property Office of Singapore has determined that Cartier can not excercise trademark rights over the word "LOVE."
Last year, Cartier opposed a trademark application to register the slogan "LOVE GOLD" as a trademark in Singapore. While Cartier owns registrations for its stylized variation of "LOVE," which includes a horizontal line through the "O" to mimic the appearance of the screws adorning its bracelet, the Intellectual Property Office of Singapore has apparently determined that these rights do not extend to the word itself. The opinion states, "'[l]ove' is a word which is commonly used by jewelry traders and should not be monopolized by any trader....The word 'love,' however, should be free for traders to incorporate into their trademarks for jewelry."
Thanksgiving traditions are deeply rooted in American culture. Ever since Abraham Lincoln first mandated Thanksgiving a national holiday in 1863, Americans have been rejoicing this popular national holiday on every fourth Thursday of November.
Accordingly, the history of Thanksgiving evokes many great memories for many Americans. Family and friends travel long distances to come together and spend quality time in each other’s company. As such, Thanksgiving is about spending time with family, watching football on television, feasting on traditional foods, shopping at malls, partaking in parades, volunteering at food drives, and taking naps.
Given this, many products and services contribute in helping American families come together to cherish these special moments, and invariably intellectual property is prevalent everywhere in them.