Posts Tagged: "likelihood of confusion"

Three law school faculty and students filed an amicus brief earlier this week urging the U.S. Supreme Court to reverse a trademark decision of the U.S. Court of Appeals for the Seventh Circuit regarding the legal standard for trademark confusion. The brief asks the Court to “end the contradiction and confusion” around the different approaches taken to the likelihood of confusion analysis by federal courts.

Relish Labs LLC and the Kroger Company (who own the “Home Chef” brand and mark) petitioned the U.S. Supreme Court this week, asking the Justices to review a decision by the U.S. Court of Appeals for the Seventh Circuit that held Home Chef had not proven consumers were likely to confuse their marks with Grubhub and Takeaway.com’s logo.

The U.S. Court of Appeals for the Second Circuit today invoked the Supreme Court’s decision in Jack Daniel’s Properties v. VIP Products to affirm a district court’s finding that MSCHF Product Studio, Inc.’s shoe, the Wavy Baby Sneaker, likely infringed Vans, Inc.’s Old Skool shoe. The Second Circuit ultimately affirmed the district court’s grant of a preliminary injunction and temporary restraining order for Vans. The Wavy Baby Sneaker is made by MSCHF, a Brooklyn-based art collective that “has recently focused its artistic expression on ‘sneakerhead culture.,’” according to the Second Circuit opinion. Upon release of the Wavy Baby Sneaker, MSCHF’s co-Chief Creative Officer said in a statement: “’The Wavy Baby concept started with a Vans Old Skool sneaker’ because no other shoe embodies the dichotomies between ‘niche and mass taste, functional and trendy, utilitarian and frivolous’ as perfectly as the Old Skool.”

On August 9, the U.S. Court of Appeals for the Fourth Circuit issued a ruling in Dewberry Engineers Inc. v. Dewberry Group, Inc. in which the appellate court affirmed a series of district court orders, including a $43 million profit disgorgement award for trademark infringement. The Fourth Circuit also affirmed an attorneys’ fees award for pervasive breaches of a previous agreement settling trademark claims between the commercial real estate firms in the 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.

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.’”

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 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.

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.”

The U.S. Patent and Trademark Office’s (USPTO’s) Trademark Trial and Appeal Board (TTAB) ruled in favor of Sony on October 28 in a decision that sustained the corporation’s opposition to an  application to register the mark SONISTREAM for a streaming platform. The TTAB ruled last Friday that the “SoniStream mark is likely to dilute Opposer’s famous SONY mark by blurring.” The Board found that SoniStream is similar enough in name “to trigger consumers” of SoniStream to think of the Sony brand. Of the six factors used to evaluate the case, the TTAB found that four were likely to dilute the Sony brand.

The process of bringing a new pharmaceutical drug to market is time-consuming and expensive. The process of naming the new drug, while not as scientifically complex, is often no less work. Drugs have several names, including their chemical (or scientific), generic (or non-proprietary) and brand (or proprietary) names. The chemical name specifies the molecular structure of the drug. The generic name specifies the underlying compound of the drug and includes a “stem” that informs health care professionals about how the drug will work in the body. In the United States, generic names must be approved by the United States Adopted Names (USAN) Council and the World Health Organization (WHO) INN Programme. While the chemical and generic names may be available for use by others in the industry, the brand name—under which the new drug is typically marketed—is unique and exclusive to the brand owner and is the focus of this article.

In a case that echoes they key issue in a recent U.S. Court of Appeals for the Second Circuit ruling for PepsiCo, Inc., U.S. District Court for the Southern District of New York Judge Lorna Schofield denied a brand owner’s request for a preliminary injunction enjoining model and influencer Hailey Rhode Bieber, who is also the spouse of superstar Justin Bieber, from selling products under the name “Rhode,” which is also her middle name.

On July 22, the U.S. Court of Appeals for the Second Circuit issued a decision in RiseandShine Corp. v. PepsiCo, Inc., authored by Senior Circuit Judge Pierre N. Leval, reversing a preliminary injunction entered by the Southern District of New York that prevented Pepsi from marketing its “Mtn DEW Rise Energy” canned energy drink. In reversing, the Second Circuit held that the district court had improperly construed certain likelihood of confusion factors as favoring the merits of RiseandShine’s reverse confusion theory.

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential trademark decision upholding a Trademark Trial and Appeal Board (TTAB) ruling that sustained two oppositions filed by Barclays Capital Inc. against Tiger Lily Ventures’ applications for registration of the standard character mark “LEHMAN BROTHERS.” The court also affirmed the dismissal of Tiger Lily’s opposition to Barclays’ application for registration of the LEHMAN BROTHERS mark and dismissed Barclays’ cross-appeal.