IPWatchdog.com is in the process of transitioning to a newer version of our website. Please be patient with us while we work out all the kinks.

Posts in Trademark

Third-Party Trademark Usage and Likelihood of Confusion

When examining trademark applications, the U.S. Patent and Trademark Office (USPTO) assesses whether the applied-for trademark presents a likelihood of confusion among consumers as compared to other registered U.S. trademarks. In making this determination, the USPTO considers a list of factors first laid out in In re E. I. du Pont de Nemours & Co. 476 F.2d 1357 (C.C.P.A. 1973), commonly referred to as the Du Pont factors. One of the Du Pont factors is the number and nature of similar marks in use by third parties on similar goods or services. Id. at 1361. This article examines the significance of third-party usage evidence to a likelihood of confusion analysis.

CAFC: TTAB Never Had a Pre-Arthrex Appointments Clause Issue

On September 1, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed the Trademark Trial and Appeal Board’s (TTAB’s) cancellation of a trademark owned by Sweet 16 Musical Properties (Sweet 16), concluding that there is no Appointments Clause issue with the TTAB…. On appeal, Sweet 16 raised a constitutional challenge to the composition of the TTAB panel that decided their case. Sweet 16 argued that the administrative trademark judges (ATJs) who sat on the panel were appointed in violation of the Appointments Clause of Article II of the U.S. Constitution, and therefore the TTAB’s decision must be vacated. The acting Director of the USPTO, as intervenor, asserted that the ATJs were appointed lawfully.

USPTO and Copyright Office Reports Attempt to Quantify Extent and Effect of IP Infringement by State Entities

On August 31, at the request of Senators Thom Tillis (R-NC) and Patrick Leahy (D-VT), the United States Patent and Trademark Office (USTPO) provided a report to Congress analyzing infringement disputes between patent and trademark rights holders and states and state entities. The U.S. Copyright Office produced a similar, much lengthier report, also in response to a letter from Tillis and Leahy, studying whether there is sufficient basis for federal legislation abrogating State sovereign immunity when States infringe copyrights. The Senators’ letters were prompted by the March 2020 Allen v. Cooper Supreme Court decision. While the USPTO report came to no conclusions, the Copyright Office found that “the evidence indicates that state infringement constitutes a legitimate concern for copyright owners.”

What Recent Case Law Tells Us About the Importance of Consumer Surveys in Trademark Cases

On August 3, 2021, the U.S. District Court for the Southern District of Florida ruled against plaintiff Vital Pharmaceuticals, Inc.’s claim of trade dress infringement against defendant Monster Energy Co. due in part to plaintiff’s failure to demonstrate secondary meaning or likelihood of confusion. On June 7, 2021, the U.S. District Court for the Central District of California granted defendant lululemon’s motion for summary judgment regarding allegations of trademark infringement, basing its decision in part on plaintiff’s failure to show likelihood of confusion. Similarly, in May 2021, the U.S. District Court for the Southern District of New York ruled against plaintiff Christophe Roberts’ request for preliminary injunction against defendant Puma’s alleged trademark infringement due in part to his inability to show consumer confusion. In each of these opinions, the court noted the absence of survey evidence (or, in the Vital Pharmaceuticals case, the inadequacy of an “almost comically flawed” survey). These recent rulings underscore the increasingly important role well-designed surveys play in courts’ consideration of evidence of consumer confusion and/or secondary meaning in trademark and trade dress cases.

Tenth Circuit Partially Affirms Decision Enforcing Lanham Act on Foreign Defendants Based on Extraterritorial Conduct

On August 24, the U.S. Court of Appeals for the Tenth Circuit affirmed in part, reversed in part and remanded a decision of the district court for the Western District of Oklahoma, holding that the Lanham Act applied to the defendants’ extraterritorial conduct…. The Tenth Circuit rejected Defendants’ first argument that the Lanham act cannot be applied extraterritorially. Citing Steele, the Tenth Circuit acknowledged that there is a general presumption against extraterritoriality, but that it may be applied abroad at least in some circumstances. Steele v. Bulova Watch Co., 344 U.S. 280, 282-285 (1952). In Steele, the Court reasoned that “the United States is not debarred . . . from governing the conduct of i[t]s own citizens upon the high seas or even in foreign countries when the rights of other nations or nationals are not infringed.” Id. at 285-86. Key to the Court’s decision was that the defendant’s “operations and effects were not confined within the territorial limits of a foreign nation,” but rather filtered through to the United States.

Is Your Brand Protection Strategy Defamation-Proof?

Robert Willison, an Atlanta real estate investor, could not believe what he was seeing on the computer screen. A business associate had mentioned that Mr. Willison might want to Google himself, as some odd search results were appearing. And there they were. Post after post after post, across numerous websites and social media platforms, alleging that Mr. Willison was a sociopathic criminal. According to the posts, Mr. Willison sold drugs to federal judges, stole credit cards numbers, stole money, made death threats, committed home invasions, masterminded a Ponzi scheme, and more…. Understanding the best practices for handling these situations can help turn them around, just as Mr. Willison did, to protect your online reputation – a valuable component to both an individual and their business’s intellectual property

INTA Brief to CJEU Says Locally Significant Unregistered Trade Names Can Co-Exist with Later Registered National Trademarks

The International Trademark Association (INTA) last week submitted an amicus brief to the Court of Justice of the European Union (CJEU) providing its input on the topic of whether earlier unregistered rights of local significance, like trade names, can coexist with later registered national trademarks. The case was referred by the Dutch Supreme Court.

Second Circuit Rebukes District Court in Two-Decade Old Patsy’s Pizza Litigation

On August 17, in the case of I.O.B. Realty, Inc. v. Patsy’s Brand, Inc., the United States Court of Appeals for the Second Circuit ordered that the June 4, 2020 judgment of the United States District Court for the Southern District of New York be vacated for not complying with the Second Circuit’s mandate, with judgment being entered for Patsy’s Brand and the case dismissed. The decision is related to two decades of litigation. As court documents have described, the case has been protracted, highly contentious, and, at times, even scandalous.

Commerce Office of Inspector General Says USPTO is Failing to Prevent Fraudulent Trademark Registrations

On August 11, the U.S. Department of Commerce Office of Inspector General (OIG) published a final report on the audit of the United States Patent and Trademark Office (USPTO) trademark registration process. Since 2015, the USPTO has seen a rapid uptick in potentially fraudulent trademark applications, and a previous audit in 2012 found that more than 50% of audited trademark maintenance filings contained goods/services not in use in commerce. The current audit determined whether inaccurate trademark applications are prevented by the USPTO from being entered and maintained on the trademark register, and further assessed the USPTO’s management of fraud on the register. The report ultimately found that the trademark registration process was ineffective in this respect.

Infringing Influencers? Federal Judge Says Sponsored Blogger Can Face Trademark Infringement Liability

When an influencer is paid to promote a brand – and the brand’s name is trademark-infringing – can the influencer be on the hook for the infringement? A federal district court just said yes. The result could widely expand trademark litigation against influencers – and could reshape how companies and their influencers relate to one another contractually.

Trademark Crush: A Perfect Storm is Threatening U.S. Trademark Applicants

Recently, USPTO Commissioner for Trademarks David Gooder wrote on the USPTO Director’s Forum Blog that registrations for U.S. trademarks are up 63% from the same period in 2020. The USPTO received over 92,600 trademark applications in December 2020 alone. This has caused delays in a number of stages in the trademark process, including a current pendency of 75 days (as of July 5, 2021) for the Pre-Examination Unit of a TEAS application. This is compared to a ten-day target. The USPTO also reached a dubious milestone in Q4 2020, breaking the 1 million mark in pending applications, with 1,002,768 in the queue. This has affected trademark registrants from the very beginning of the application process. First Action Pendency (months) in Q1 of 2020 was 2.8 months. For Q1 2021, the pendency was up to 4.0 months, with Q2 trending to almost five months for First Action. Delays like these affect the ability of trademark owners to protect their brands, could cause an increase in consumer confusion and impact the value of legitimate trademarks.

Eleventh Circuit Affirms Summary Judgment on Cybersquatting Claims Brought by Owner of ‘European Wax Center’ Mark

On August 6, the U.S. Court of Appeals for the Eleventh Circuit issued a decision in Boigris v. EWC P&T, LLC in which the appellate court affirmed a ruling by the Southern District of Florida granting summary judgment to EWC, the owner of the nationwide European Wax Center chain of beauty salons, on cybersquatting claims filed against the owner of several GoDaddy domains that were registered in bad faith to profit from EWC’s stores. Although the majority found that the accused domain names and EWC’s registered trademarks were confusingly similar in sight, sound and meaning, the dissent raises interesting questions regarding the proper standard on confusing similarity at the summary judgment stage.

Curbing Cannabis Copycats: How to Protect Your Brand’s Reputation as Marijuana Companies Try to Make Their Mark

To capture attention in the crowded new field of cannabis-related goods and services, many companies are using other companies’ brands to promote their goods and services, including puns in the edibles space. Not surprisingly, brand owners are responding with lawsuits, alleging trademark infringement, dilution, and unfair competition among other claims. The focus of these lawsuits is generally quick injunctive relief to stop harm to the brand, rather than damages. This makes sense because of the uncertainty of collecting from companies who do not rely on the traditional finance services industry. But injunctive relief is not guaranteed without demonstrating the four preliminary injunction factors: (1) likelihood of success on the merits, (2) likelihood of irreparable harm in the absence of preliminary relief, (3) the balance of equities, and (4) the public interest. This article focuses on the first two of these factors.

Indigenizing the Intellectual Property System

On August 9, we once again observe the International Day of the World’s Indigenous Peoples. Traditionally, international organizations take advantage of this time to promote the contributions of indigenous peoples across the globe. However, the day also presents an opportunity for States and international organizations to reflect on collective efforts to protect and preserve the culture and heritage of our indigenous communities. There are many threats to the rich cultures of our indigenous populations. These threats have remained widely unresolved despite the fact that indigenous peoples make up around 370-500 million of the world population. Included in these overlooked issues is the lack of protection given to the intellectual property (IP) of indigenous peoples. It is high time that we push for more accessible, effective, and durable protective measures for indigenous creations.

PPAC Announcements: Hirshfeld Doubles Down on Director Review Authority; Commerce Department to File for Registration of USPTO Trademarks; Committee Requests Release of $64 Million in User Fees

During the Patent Public Advisory Committee (PPAC) quarterly meeting held today, participants provided an update on the Director Review process under the Supreme Court’s Arthrex v. Smith and Nephew ruling, among other announcements. Patent Trial and Appeal Board (PTAB) Senior Advisor and Judge Linda Horner noted that, since the ruling, 14 timely requests for Director Review have been received; 11 of those were for a batch of related inter partes reviews (IPRs). Hirshfeld this week issued two decisions on the first two requests, denying both; the rest remain pending.