Under certain circumstances, colors can act as indicators for the source of certain goods and services in a similar fashion as their more typical trademark counterparts. One example is Tiffany & Co.'s Registration for a certain color blue as applied to jewelry packaging. The estate of Prince filed an application to register a certain color purple (specifically a shade produced by Pantone after Prince's death) in connection with Prince's entertainment services and musical recordings. The Patent and Trademark Office has initially refused the application, taking the position that Prince had not established the requisite "secondary meaning" between this shade of purple and his music. The estate has responded with an overwhelming 400 pages of evidence showing Prince's use and association with the color purple over his career in an attempt to persuade the Patent and Trademark Office to allow the application. If persuaded, the application will move on to the publication phase, where third parties will have the opportunity to object to the registration. Otherwise, the estate will have additional opportunities to request reconsideration or appeal the refusal.
According to random audits by the United States Patent and Trademark Office (USPTO), over half of active trademark and service mark registrations include some goods or services that are not actually being used in commerce. Registrations with goods or services not in use may block mark owners from registering their own marks that are in use. As part of a response to this concern, the Trademark Trial and Appeal Board (TTAB) is piloting a program for cancellation proceedings limited to abandonment and/or nonuse claims with no counterclaims.
The program implements a procedure for addressing registrations or classes not use, which can save petitioners time and money. Click here for more information on this pilot program from the TTAB. A recent precedential case that was part of the pilot program also provides further insight, TV Azteca, S.A.B. de C.V. v. Jeffrey E. Martin, 128 U.S.P.Q.2d 1786 (TTAB 2018).
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."
Nirvana L.L.C. has brought suit in the U.S. District Court for the Central District of California against clothing designer Marc Jacobs International, Saks Fifth Avenue, and Neiman Marcus, along with a number of unidentified “Does” over use of the well-known smiley face logo allegedly created by the late Kurt Cobain in 1991. A copy of the Complaint can be found here.
Nirvana L.L.C. includes surviving band members Dave Grohl and Krist Novoselic, and the Kurt Cobain Estate controlled by his widow, Courtney Love.
The Complaint includes counts for Copyright Infringement and False Designation of Origin under the Lanham Act, as well as Trademark Infringement and Unfair Completion under California Common Law based on Marc Jacobs’ “Bootleg Redux Grunge” collection of clothing. For further information, see here.
It will be interesting to see the extent of protection which might be afforded to something as simple as a smiley face. :)
The Comphy Co. ("Plaintiff"), a California corporation selling luxury bedding products, filed a complaint against Amazon.com, Inc. ("Defendant") in the Northern District of Illinois alleging trademark infringement, contributory trademark infringement, and false designation of origin under federal law. The complaint also alleges violation of Illinois Uniform Deceptive Trade Practices Act and Consumer Fraud under Illinois law.
The claims primarily involve (1) the Plaintiff's "COMPHY," stylized "C," "COMPHY COMPANY," and "COMPHY SHEETS" trademarks and (2) Plaintiff's insistance that it has no interest and has expressly refused to sell its products on Defendant's website, amazon.com. According to the complaint, the Defendant is making unauthorized and infringing use of Plaintiff's trademarks by using the trademarks to promote bedding and related products not made or authorized by the Plaintiff on Defendant's website. In particular, the Plaintiff states that the Defendant is posting results for "inferior" third-party sheets when consumers search for terms including Plaintiff's trademarks on Defendant's website. Moreover, the Defendant pays third-party search engines to direct consumers to Defendant's website when searching for "COMPHY" brand sheets. Such actions are said to drive sales to competing products and are likely to cause and have caused actual confusion.
The Plaintiff asks the court for an injunction as well as a variety of monetary damages, fees, and costs.
The case can be followed at The Comphy Co., v. Amazon.com, Inc., 18-cv-04584 (N.D. Ill.).
This week the Eleventh Circuit ruled on service mark infringement claims brought by Savannah College of Art and Design ("SCAD") against Sportswear, Inc. for selling unlicensed apparel and other goods on its website. The district court in the Northern District of Georgia had found that though SCAD had registered marks in connection with education services, SCAD failed to establish its mark's rights extended to apparel. More specifically, in relying on precedent concerning unregistered marks, SCAD could not show common law priority because SCAD could not show prior use of the mark on apparel before Sportswear.
On appeal, Judge Adalberto Jordan published a decision reversing the district court's findings, relying on 1975 precedent Boston Prof'l Hockey Ass'n, Inc. v. Dallas Cap & Emblem Mfg., Inc., to find that SCAD's registered service mark protection may extend to goods as well. While recognizing that infringement claims under § 1114(1)(a) are based on federally-registered marks, claims under § 1125(a) can be based on federally-registered or unregistered marks, and the oft-blurred lines between both claims, both claims nonetheless required SCAD to establish the following: (1) enforceable trademark rights in the mark (validity and scope); and (2) likelihood of confusion from the infringer's unauthorized use of its mark. In informing the first part of the analysis, the Court found it instructive to follow Boston Hockey based on SCAD's registered service marks. The precedent, which is not without criticism, "extends protection for federally-registered service marks to goods, and therefore beyond the area of registration listed in the certificate." The case was therefore remanded for further proceedings under the § 1114(1)(a) and § 1125(a) claims in light of Boston Hockey.
See the full opinion here: http://media.ca11.uscourts.gov/opinions/pub/files/201513830.pdf
When applying for trademark/service mark registration with the U.S. Patent and Trademark Office (USPTO), an examining attorney reviews the application to determine whether it complies with applicable statutes and rules. If there are any substantive, technical, or procedural deficiencies, the examining attorney will likely issue an Office Action letter explaining any of these refusals. One of these refusals can be based on the proposed mark failing to function as a trademark because the proposed mark merely communicates information about the goods/services, uses widely used commonplace, social, political, or religious messages, or directly quotes passages or citations from religious texts. Some examples include: “I ♥ DC” for clothing items; “ONCE A MARINE, ALWAYS A MARINE” for various clothing items; “BRAND NAMES FOR LESS” for retail store services; and “PROUDLY MADE IN THE USA” for electric shavers.
The U.S. Patent and Trademark Office (USPTO) recently issued a guide for aiding in the determination of whether a proposed mark functions as mark. The guide creates categories for types of matter that may be considered merely informational, discusses when an examining attorney must refuse registration or require a disclaimer, provides applicant response options, and illustrates case law examples. For example, under applicant response options, should the applicant receive this type of refusal, the applicant must show that the public perception of the proposed mark is that of a source indicator. Evidence of the applicant's use as a mark or exclusive use in the relevant marketplace for the goods/services under the mark can be supportive towards overcoming this refusal.
Last Thursday, the Supreme Court announced it will hear Lee v. Tam, an appeal from a Federal Circuit decision that held Section 2(a) of the Lanham Act violates the First Amendment. The case involves a band that was denied registration for the mark “THE SLANTS” under Section 2(a) because the name may disparage individuals of Asian ancestry. This case may also effectively resolve the ongoing dispute involving the Washington Redskins trademarks.
The justices will hear arguments in Lee v. Tam early next year.
As a follow-up to a previous blog entry, it’s finally official -- reform legislation in the European Community (“EU”) will take effect on March 23, 2016 and bring major changes to the CTM (“Community Trade Mark”) registration system. Over the past 20 years, the CTM has become a staple of international trademark portfolios as a cost-effective way to achieve protection in 28 member countries in a single package. Among the most notable changes, the CTM name will be changed to the “European Union Trade Mark,” or “EUTM.” Also, the registrar’s office in Alicante, Spain, now known as OHIM (“Office of Harmonization in the International Market”), will be re-named as the “European Union Intellectual Property Office,” or “EUIPO.” In addition to minor, technical changes, the overhaul will increase filing fees for multiple-class applications, replacing the existing structure of up-to 3 classes for the initial filing fee. Of note, any application filed before March 23rd will still benefit from the 3-for-1 filing fee, so clients are encouraged to consider immediate filing to reduce costs. Other changes to the law will impose stricter rules for specific listings of goods and services, which will affect existing registrations and upcoming renewals, and there also will be enhanced enforcement provisions available to registrants, especially against counterfeit and gray market goods. The Firm continues to assist clients with trademark registration and enforcement in virtually every country of the world.
The CTM (Community Trade Mark) registration, which provides protection across most of Europe, has become a staple of international trademark portfolios since introduction in 1996. But, some big changes are coming for the 20th anniversary. Most notably, the CTM name will be changed to the “European Union Trade Mark.” Also, the registrar’s office in Alicante, Spain, now known as OHIM (Office of Harmonization in the International Market), will be re-named as the “European Union Intellectual Property Office,” and the Community Trade Mark Courts will be called the “European Trade Mark Courts.” Other technical changes will include new filing/renewal fee structures, stricter rules for listing goods and services, and some enhanced mechanisms for enforcement against infringers. Final approval by the European Parliament is expected imminently, at which time most changes will become effective, but portions of the overhaul package will require adoption into the national laws of member countries. The Firm continues to assist clients with trademark registration and enforcement in virtually every country of the world.