Posts Tagged: "likelihood of confusion"

Jack Daniel’s Gets Last Laugh for Now in SCOTUS’ Ruling in ‘Bad Spaniels’ Case

The U.S. Supreme Court held today in Jack Daniel’s Properties v. VIP Products that the Rogers test, used to “protect First Amendment interests in the trademark context,” is not relevant “when an alleged infringer uses a trademark as a designation of source for the infringer’s own goods.” The Court therefore vacated the U.S. Court of Appeals for the Ninth Circuit’s ruling that said VIP’s dog toy mimicking a Jack Daniel’s whiskey bottle was an expressive work entitled to First Amendment protection. Justice Kagan authored the unanimous opinion for the Court, while Justice Sotomayor, joined by Justice Alito, and Justice Gorsuch, joined by Justices Thomas and Barrett, each filed concurring opinions.

Federal Circuit Agrees with TTAB that SPARK LIVING and SPARK are Likely to Be Confused

Trademark applicant Charger Ventures LLC has lost its appeal to the U.S. Court of Appeals for the Federal Circuit (CAFC) from the Trademark Trial and Appeal Board’s (TTAB’s) finding that SPARK LIVING is likely to be confused with an earlier-registered mark, SPARK. The precedential decision was authored by Judge Reyna. Both marks cover real estate services, but Charger amended its application to specify residential real estate services, whereas the earlier mark specified services related to commercial real estate property. Charger also disclaimed the term “LIVING” in response to the examiner’s request. However, the examiner ultimately issued a final office action refusing the application on the grounds that “a comparison of the respective marks show[s] that they are comprised either in whole or significant part of the term ‘SPARK,’”…and both marks are for real estate services, with ‘overlapping identifications of leasing and rental management services.’”

SCOTUS Skeptical that Bad Spaniels is Parody, But Questions Need to Overturn Rogers

At today’s hearing in Jack Daniel’s v. VIP Products, the U.S. Supreme Court Justices suggested to both sides that there might be an easier way out on the facts of this particular case than either party is proposing, but weighed the need to overturn the Second Circuit’s test in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), which some of the Justices characterized as injecting unnecessary confusion. Though the Court seemed equally concerned about retaining a way for defendants making clearly parodic use of a mark to get out of litigation quickly, which Rogers is intended to do, they questioned both sides about why in this case they couldn’t either find for Jack Daniel’s by just saying that VIP is clearly using a source identifier on a commercial product, or remand to the district court to say they failed to properly weigh the parody or proximity factors of the product, for instance. Overall, the Justices seemed skeptical that the product in question represents a non-commercial use.

Jack Daniel’s Tells SCOTUS Rogers Test is Unworkable, U.S. Brands’ Identities Are at Risk

Jack Daniel’s Properties, Inc. filed its reply brief with the U.S. Supreme Court on Friday, March 10, in a major trademark case set to be argued on March 22. The brief contends that the country’s most popular brands are at risk of losing their brand identity if the Court affirms the U.S. Court of Appeals for the Ninth Circuit’s view that a poop-themed dog toy mimicking Jack Daniel’s Whiskey bottle is an expressive work entitled to First Amendment protection. In November 2022, the Supreme Court granted Jack Daniel’s petition for a writ of certiorari, which seeks to clarify whether the First Amendment protects VIP Products, LLC’s humorous use of Jack Daniel’s trademarks for commercial purposes against claims of infringement and dilution.

CAFC Says OXIPURITY and OXYPURE are Likely Confusing, Even to Sophisticated Consumers

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Thursday upheld a decision of the Trademark Trial and Appeal Board (TTAB) affirming an examiner’s refusal to register the mark OXIPURITY for chemical products. The court agreed with the TTAB that OXIUPURITY is likely to be confused with the previously registered mark, OXYPURE, for ““hydrogen peroxide intended for use in the treatment of public and private potable water systems and supplies.”