Emily Mola

Emily Mola

Ms. Mola earned her Bachelor’s degree in History, magna cum laude, from the Florida International University, and a Juris Doctor degree and Certificate in Intellectual Property Law from the Florida International University, College of Law. While at FIU Law, she served as the President of the Intellectual Property Student Association. As a result of her dedication to intellectual property law, she earned three CALI Excellence for the Future Awards in focused academic coursework. Ms. Mola is the recipient of the International Trademark Association’s 2020 Ladas Memorial Award for her article, Trademark Law’s Capability to Protect Traditional Cultural Expressions from Unauthorized Borrowing and Theft. Ms. Mola is a 2018 Microsoft/Hispanic National Bar Association’s Intellectual Property Legal Institute scholar.

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.”

Earlier this month, the Supreme Court of the United States (SCOTUS) denied certiorari for a Petition seeking the Justices clean up the legal “chaos” over the protection of fictional characters under U.S. Copyright Law.  In the November Brief in Opposition, Respondents alleged “[t]he petition’s premise is false.  There is no chaos.  Instead, there is striking coherence and comity among the circuits, which freely cite each other’s decisions as a shared explication of a legal standard first articulated by Judge Learned Hand in 1930."

 

In 2017, Denise Daniels and The Moodsters Company (Plaintiffs) brought suit against The Walt Disney Company (Defendant) in the U.S. District Court of Central District of California.  See Denise Daniels and The Moodsters Company v. The Walt Disney Company, et al, 17-CV-4527 PSG (SKx) (C.D. Cal. 2018).  In its complaint, the Plaintiffs’ alleged copyright infringement of the individual characters and the ensemble of characters “The Moodsters”, a cartoon world populated by characters that embody individual emotions, to help children understand and regulate their emotions.  Each Moodster is color-coded and anthropomorphic, and each represents a single emotion: happiness (yellow), sadness (blue), anger (red), fear (green), and love (pink).  In the 2015 film Inside Out, Disney Pixar introduced the public to anthropomorphized emotions living inside the head of an 11-year-old girl featuring five color-coded emotions as characters—joy (yellow), sadness (blue), anger (red), fear (purple), and disgust (green).  The District Court granted the Defendants’ Motion to Dismiss after finding the Plaintiffs’ characters lacked “specific traits on par with those of the iconic characters” that had achieved independent copyrightability, such as Sherlock Holmes, Tarzan, Superman, and James Bond.

 

Although characters are not an enumerated copyrightable subject matter under the Copyright Act, see 17 U.S.C. §102(a), there is a long history of extending copyright protection to graphically-depicted characters.  See, e.g.Olson v. Nat’l Broad. Co., 855 F.2d 1446, 1452 (9th Cir. 1988); Walt Disney Prods. v. Air Pirates, 581 F.2d 751, 755 (9th Cir. 1978).  Characters standing alone are not entitled to copyright protection absent the character (1) having “physical as well as conceptual qualities,” (2) being “‘sufficiently delineated’ to be recognizable as the same character whenever it appears,” AND (3) being “‘especially distinctive’ and containing ‘some unique elements of expression.’”  See DC Comics v. Towle, 802 F.3d 1012, 1020-21 (9th Cir. 2015).  Consistently recognizable characters like Godzilla or James Bond, whose physical characteristics may change over various iterations, but who maintain consistent and identifiable character traits and attributes across various productions and adaptations, meet the test. See Tono Co. v. William Morrow & Co., 33 F. Supp. 2d 1206, 1215 (C.D. Cal. 1998) (finding Godzilla is consistently a “pre- historic, fire-breathing, gigantic dinosaur alive and well in the modern world”), Metro-Goldwyn-Mayer, Inc. v. Am. Honda Motor Corp., 900 F. Supp. 1287, 1296 (C.D. Cal. 1995) (noting James Bond has consistent traits such as “his cold-bloodedness; his overt sexuality; his love of martinis ‘shaken, not stirred;’ his marksmanship; his ‘license to kill’ and use of guns; his physical strength; his sophistication”).

 

In 2020, the Ninth Circuit affirmed the District Court’s dismissal of the Plaintiffs’ suit because “lightly sketched” characters such as The Moodsters, which lack “consistent, identifiable character traits and attributes,” do not enjoy copyright protection.  See DC Comics v. Towle, 802 F.3d 1012, 1019, 1021 (9th Cir. 2015).  The Ninth Circuit found the notion of using a color to represent a mood or emotion is an idea that does not fall within the protection of copyright and that colors themselves are not generally copyrightable.  The Ninth Circuit concluded the Plaintiffs could not copyright the idea of colors or emotions, nor could she copyright the idea of using colors to represent emotions where these ideas are embodied in a character without sufficient delineation and distinctiveness.

 

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 Christmas Eve, the Girl Scouts of the United States of America (Girl Scouts) filed a 119-page Memorandum of Law in Opposition to the Boy Scouts of America’s (Boy Scouts) Motion for Summary Judgment. Read here.  

The Girl Scouts brought suit against the Boy Scouts in 2018 in the U.S. District Court in Manhattan over unfair competition and trademark infringement regarding ongoing marketplace confusion caused by the Boy Scouts throughout the United States, and to prevent future harm to the famous GIRL SCOUTS brand. The Girl Scouts allege the level of confusion arises from the Boy Scouts’ use of terms such as GIRL SCOUTS, SCOUT, SCOUTS, SCOUTING, SCOUTS BSA and SCOUT ME IN to market its core programs to girls. The suit came after the Boy Scouts announced in 2017 that it would accept girls into its organization and changed its BOY SCOUTS program to SCOUTS BSA.

The issue in this case is: who owns any rights in the terms SCOUT, SCOUTS and SCOUTING for use in connection with girl’s leadership and development services? The Girl Scouts allege the trademark infringement and unfair competition claims are premised both on its GIRL SCOUTS trademark, the fame of which Boy Scouts concedes, and the Girl Scouts’ rights in the above terms standing alone. The Boy Scouts deny the Girl Scouts own any rights in those terms. The Boy Scouts argue the Girl Scouts have not used the above three terms standing alone as trademarks without the word GIRL. The Girl Scouts assert there is “clear public association of the terms SCOUT, SCOUTS and SCOUTING with Girl Scouts in connection with girls leadership and development services”, which gives “Girl Scouts rights in those terms for such services that are superior to those of Boy Scouts.” Further, the Girl Scouts claim the Boy Scouts use of the GIRL SCOUTS trademark and related intellectual property by Boy Scouts’ councils, troops and volunteers around the United States is secondary trademark infringement.

The Girl Scouts maintain it has used the trademarks SCOUT, SCOUTS and SCOUTING, unaccompanied by the word GIRL or another gender-specific modifier, in a number of ways: (i) in its earliest years, on or in connection with badges, program names, publications, posters and other communicative materials; (ii) for many years prior to 1994, and since 2018, as part of the registered SCOUT COOKIES trademark; (iii) as part of “Scouts’ Own,” a term that refers to a Girl Scouts ceremony; and (iv) on products like patches and t-shirts sold by Girl Scouts councils through Girl Scouts official online store. Moreover, the Girl Scouts assert it has reinforced its rights and policed the terms with respect to the Boy Scouts since at least the mid-1970s.

The Girl Scouts cite to Girls Clubs of Am., Inc. v. Boys Clubs of Am., Inc., in support of its trademark infringement claims. In 1988, the Boys Clubs of America decided to admit girls and announced plans to change its name to Boys and Girls Clubs of America. The Girls Clubs of America objected to this name change, filed suit, and obtained a preliminary injunction after the Court found that the proposed new name – Boys and Girls Clubs of America – would falsely communicate to the public that the two organizations had merged, given the new overlap of markets. See Girls Clubs of Am., Inc. v. Boys Clubs of Am., Inc., 683 F. Supp. 50, 52 (S.D.N.Y. 1988), aff’d, 859 F.2d 148 (2d Cir. 1988)

Ultimately, the Girl Scouts conclude the Boy Scouts’ marketing of expanded services for girls is “extraordinary and highly damaging to Girl Scouts” and has set off an “explosion of confusion” by children, parents, schools, religious organizations, and the general public.

The Great Gatsby is the well-known 1925 novel written by F. Scott Fitzgerald. The novel is based on the narrator Nick Carraway’s interactions with mysterious multimillionaire Jay Gatsby during the Roaring Twenties.1 Most recently, this novel was adapted into a film with American actors Leonardo DiCaprio and Toby Maguire in 2013.

As of January 1, 2021, this novel entered the “Public Domain.”2 Entering the Public Domain enables low cost, if any, access to previously U.S. Copyright protected work to use and build upon without acquiring a license or paying royalty fees. The duration of current copyright law protects works for the life of the author plus 70 years after the author’s death. The 1998 Copyright Term Extension Act (also known as the Mickey Mouse Protection Act) extended the length of protection for works published between 1923 and 1977 by an additional 20 years, 95 years in total, such as The Great Gatsby. What benefits does work in the public domain provide? The public domain promotes innovation, creation, and education.

The book cover with title against a dark sky. Beneath the title are lips and two eyes, looming over a city.

 1. https://en.m.wikipedia.org/wiki/The_Great_Gatsby; and 

 2. https://youtu.be/PMp_-OX15Jc.

Earlier this month in the U.S. District Court Southern District of Texas (Houston Division), King’s Hawaiian Bread Co., known for its sweet bread rolls wrapped in an orange packaging with a clear window on the front, brought suit against Harlan Bakeries LLC and Southern Bakeries LLC. King’s Hawaiian Bread Co. brought the following causes of action (I) Federal Trade Dress Infringement, due to the respondent’s deceptively similar packaging for its sweet bread rolls; (II) Federal False Designation of Origin and Unfair Competition; (III) State Common Law Trade Dress Infringement; (IV) State Common Law Unfair Competition; and (V) State Common Law Misappropriation.

 

In its complaint, King’s Hawaiian Bread Co. alleged it first started selling sweet rolls and other baked goods in the 1950s in Hilo, Hawaii. King’s Hawaiian Bread Co. further alleged that the first 12-pack of Original Hawaiian Sweet Rolls was introduced in 1983, and that the Packaging Trade Dress (seen below) has been used since at least the early 1980s. King’s Hawaiian Bread Co. described its sweet roll packaging trade dress as follows: (1) the prominent use of the color orange; (2) on the front of the package a clear window, with the color orange as the primary element around such clear window; (3) within the window, a light-colored element with contrasting writing; and (4) on the light-colored element, no word appears in larger font than the word “Hawaiian.” 

 

King's Hawaiian Holding Co. Inc. et al. v. Southern Bakeries LLC et al., Case No. 4:20-cv-04283.

 

See King's Hawaiian Holding Co. Inc. et al. v. Southern Bakeries LLC et al., Case No. 4:20-cv-04283.

On December 21, 2020, Congress passed a $900 billion pandemic relief and government funding package. In the over 5,500-page bill, the lawmakers included the Trademark Modernization Act of 2020 ("TM Act of 2020" or “TMA”)1. On December 27, 2020, the TMA became law, effective a year from the date of the President’s signature. Some of the changes and/or additions are discussed below.
 
Particularly, the TMA clarified and created a uniform standard for obtaining injunctive relief in litigation under the Lanham Act: “A plaintiff seeking any such injunction shall be entitled to a rebuttable presumption of irreparable harm upon a finding of a violation identified in this subsection in the case of a motion for a permanent injunction or upon a finding of likelihood of success on the merits for a violation identified in this subsection in the case of a motion for a preliminary injunction or temporary restraining order.”  Further, the TMA authorized the UPSTO to shorten office action response periods, by regulation, from 6 months to a time period between 60 days and 6 months. Applicants may request extensions of time to reply or amend “aggregating six months from the date of notification,” if the request is filed on or before the date on which a reply or amendment is due. The TMA also created a new mechanism to allow individuals to file petitions to expunge2 or re-examine3 trademark registrations based on an argument that the mark is not currently or has has never been used in commerce in connection with the identification of goods and/or services. The TMA codified the existing letter of protest procedure, permitting third-parties to submit evidence bearing on the registrability of an applied-for mark.  Under this act, the USPTO Director will have two months to review the evidence and determine whether evidence should be included in the record of the applicationFinally, the TMA authorized the USPTO Director to reconsider, modify, or set aside certain decisions made by the Trademark Trial and Appeal Board.
 
1. See H.R. 6196; S. 3449.
2. A registration may be challenged through the expungement proceeding within 3 and 10 years of the registration date. 
3. A registration may be challenged through the reexamination proceeding within 5 years of the registration date.
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