Posts Tagged: "confusion"

On September 23, the office of the U.S. Solicitor General filed a brief with the U.S. Supreme Court on the issues at play in Abitron Austria GmbH v. Hetronic International, Inc., a trademark case in which the U.S. Court of Appeals for the Tenth Circuit affirmed a $90 million damages award for trademark infringement based on infringement occurring almost entirely outside of the United States. The Solicitor General’s brief asks the nation’s highest court to grant cert on Abitron Austria’s appeal in order to properly limit the application of the Lanham Act so that damages are only awarded when the alleged infringement has a likelihood of causing confusion among U.S. consumers.

A small business owner is suing Meta Platforms, Inc., formerly known as Facebook (Facebook), accusing the internet giant of “brazenly violating fundamental intellectual property rights enshrined in U.S. law to obliterate a small business.” METAx, LLC (Meta) was founded in 2010 by Justin “JB” Bolognino, who is described in the complaint filed in the U.S. District court for the Southern District of New York, as a respected figure in the virtual creator community and “a true pioneer of the industry involving immersive and experiential technologies, including augmented reality (“AR”), virtual reality (“VR”), and extended reality (“XR”).” Meta has continuously used the term “META” as part of a composite mark, and has been commonly referred to as Meta in trade and commerce, since 2010.

Though the parties have quickly settled their case, the question remains open: was Lil Nas X’s “Satan Shoe” an exercise of free speech or a trademark violation? What we do know is that sneaker giant Nike’s complaint filed in the Eastern District of New York on March 29, 2021 alleged a dispute of biblical proportions against Brooklyn art collective MSCHF Product Studio, Inc. Nike targeted its own Air Max 97 shoe, which it claimed MSCHF and its collaborator Lil Nas X (who was not named in the lawsuit) materially altered to feature an upside down cross, a pentagram, and an injection of human blood into the sole to create the “Satan Shoe” – 666 of them to be exact. The Satan Shoe still displays Nike’s famous Swoosh, which inspired calls to boycott the brand for its alleged association with the controversial shoes. Nike asserted claims of trademark infringement, trademark dilution, false designation of origin, and unfair competition, and sought a temporary restraining order, a permanent injunction, and damages.

British automaker Jaguar Land Rover (JLR) has been engaged in a multi-jurisdiction battle against Chinese automaker Jiangling Motors (Jiangling) over JLR’s assertions that Jiangling copied distinctive design features of JLR’s RANGE ROVER Evoque (EVOQUE) in the LANDWIND X7 vehicle. JLR previously successfully took action in Brazil and the European Union, resulting in injunctions against the sale of Jiangling’s LANDWIND vehicle in those jurisdictions. JLR’s latest efforts has yielded additional success against Jiangling’s sale and production of the LANDWIND X7 in China, Jiangling’s home base. On March 13, the Beijing Chaoyang District Court in China found Jiangling liable for unfair competition in connection with the sale and manufacturing of the LANDWIND X7, finding that certain design features of the LANDWIND vehicle are “essentially identical” to JLR’s distinctive design features for the EVOQUE. This decision is the first case under China’s 2017 Anti-Unfair Competition Law to find in favor of a foreign company in the auto industry.

Smashburger asserts that In-N-Out stopped using the Triple Triple mark and thus, abandoned its rights, when the triple meat, triple cheese hamburger was rebranded as the 3X3 hamburger over three years ago, the generally understood benchmark for abandonment of rights. And, in my research of In-N-Out’s archived web pages, as far back as 2012, In-N-Out appears to have done exactly what Smashburger asserts – it replaced the Triple Triple hamburger from its Not-So-Secret Menu with the 3X3 hamburger. Magically, references to the Triple Triple mark reappear on its Not-So-Secret Menu in early September of 2017, right after Smashburger sought to cancel In-N-Out’s Triple Triple registration. This leapfrogging of rights may be the saving grace to Smashburger’s rights in its Triple Double mark.

Both the U.S. House of Representatives and the U.S. Senate are currently contemplating versions of the Defending Against Imitations and Replacements of Yogurt, Milk and Cheese to Promote Regular Intake of Dairy Everyday (DAIRY PRIDE) Act; the House version is bill H.R.778 and the Senate’s is S.130. If passed, the bill would amend the Food, Drug, and Cosmetic Act to prohibit the sale of any food using the market name of a dairy product, is not the milk of a hooved animal, is not derived from such milk and doesn’t contain such milk as a primary ingredient. The findings section of the bill notes that the U.S. Food and Drug Administration (FDA) already has regulations finding that milk is “the lacteal secretion, practically free from colostrum, obtained by the complete milking of one or more healthy cows.” The Senate bill is originally sponsored by Sen. Tammy Baldwin (D-WI) while the House version is sponsored by Rep. Peter Welch (D-VT). The House bill includes five original co-sponsors: Rep. Michael Simpson (R-ID); Rep. Sean Duffy (R-WI); Rep. Joe Courtney (D-CT); Rep. David Valadao (R-CA); and Rep. Suzan DelBene (D-WA).

On Monday, August 30th, national fast food chain In-N-Out Burger filed a lawsuit alleging federal trademark infringement and other claims against fellow fast food chain Smashburger. The suit, filed in the Central District of California, alleges that Smashburger has recently adopted certain promotional advertising marks which infringe upon both state and federal trademarks held by In-N-Out. In-N-Out holds a series of 10 federally registered trademarks as well as seven trademarks registered within the state of California.