Posts Tagged: "likelihood of confusion"

On May 3rd, the Trademark Trial and Appeal Board (TTAB) issued a decision in a trademark opposition proceeding which was petitioned by Andre Young, the rapper and record producer better known as Dr. Dre. The rap mogul filed the trademark opposition to challenge the registration of federal trademarks filed by Draion Burch, an obstetrics and gynecology (OB/GYN) medical specialist who had filed applications to protect trademarks related to his nickname, Dr. Drai. The TTAB’s found that, although Dr. Dre’s name has sufficient fame for trademark protection, the opposer did not prove a likelihood of consumer confusion or false suggestion of a connection.

Colgate-Palmolive (NYSE:CL) filed a lawsuit alleging trademark infringement in the Southern District of New York against Grand Rapids, MI-based oral healthcare company Ranir LLC. At issue in the case are toothbrushes being sold by Ranir which allegedly infringe upon the “360°” trademark, which is owned by Colgate… Since releasing the 360° branded line of toothbrushes and oral care products, Colgate has pursued federal trademark registrations to cover the use of the brand in commerce.

A jury in the Southern District of California entered a special verdict form in a trademark case playing out between a couple of American pop culture conventions. The verdict shows that the jury found in favor of plaintiff San Diego Comic Convention against a group of defendants using the “COMIC-CON” mark to publicize a similar event organized in recent years in Salt Lake City, UT. The verdict also awards $20,000 in corrective advertising damages to San Diego Comic Convention for defendants’ infringement of multiple trademarks held by the San Diego event organization.

In a recent trademark opposition, the Opposition Board of the Japan Patent Office (JPO) dismissed an opposition by Mattel, Inc. – maker of the world-famous Barbie doll – who claimed “Salon BARBIES” is likely to cause confusion or association with famous Barbie doll when used on restaurant and fan club services.

Characters for Hire also argued that the trademark infringement claims lacked the essential element of confusion. Citing to Naked Cowboy v. CBS, a case decided in Southern New York in 2012 involving trademark infringement claims asserted by a Times Square street performer against the use of his likeness in the soap opera The Bold and the Beautiful, Characters for Hire argue that the use of the names of fictional persons are merely descriptive of the entertainment services provided by the defendants. “Indeed, Plaintiff Disney is well aware of the limits of trademark enforceability having successfully defended a claim brought against them for using the famous ‘Caterpillar’ trademark for construction trucks in one of their films,” Characters for Hire argued. This statement references Caterpillar Inc. v. Walt Disney Co., a 2003 case decided in the Central District of Illinois wherein the court ruled that Disney’s use of construction vehicles with Caterpillar logos in the movie George of the Jungle 2 created no likelihood of confusion that Caterpillar either endorsed or sponsored the movie.

The trademark landscape is evolving rapidly, with both brand owners and trademark professionals trying to keep up. The changes are mostly driven by the steep rise in trademark applications — there was a 13.7% increase in trademark filing activity in 2015, according to WIPO — and shrinking budgets as all involved are tasked with doing more with the same or fewer resources. Trademark professionals and brands alike need to be consistent in the way they approach search and make use of the same practices they have used in the past to avoid risk, while considering challenges they face and the way that the trademark landscape is evolving.

On Tuesday, September 19th, Victorinox AG, the manufacturer of the well-known Swiss army knife, saw a successful outcome of an appeal decided by the U.S. Court of Appeals for the 2nd Circuit, which affirmed in part a judgment in a trademark case filed in the Southern District of New York. The 2nd Circuit’s decision upholds a $1.75 million judgment entered in district court against Dallas, TX-based e-commerce company B&F System over the sale of red-handled, multi-functional pocket knives that infringed upon Victorinox’s registered trademark.

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).

In re i.am.symbolic, llc, William Adams, better known by his stage name “will.i.am”, was refused registration of a Trademark for “I AM” on the ground of a likelihood of confusion with registered marks. The Federal Circuit affirmed the Trademark Trial and Appeal Board… Identical registrations for the same or similar goods may present overwhelming evidence of likelihood of confusion, regardless of other factors supporting registration.

In order to keep operating under the “Pierogi Festival” name, the Edwardsville committee has filed a suit against the coordinators of the Whiting Pierogi Fest in the Middle District of Pennsylvania. A complaint filed by the Edwardsville Hometown Committee against the Whiting-Robertsdale Chamber of Commerce seeks a declaration that “there is no possibility of consumer confusion between the Edwardsville event and the suburban Chicago event.” The Edwardsville committee is also seeking relief for tortious interference. It alleges that the Whiting-Robertsdale chamber has willfully interfered in business relationships forged by the Edwardsville committee to finance the Edwardsville Pierogi Festival.

William Adams is the well-known front man for the music group The Black Eyed Peas and is known as will.i.am. Adams’ company – i.am.symbolic, llc – already owns trademarks on WILL.I.AM for certain goods and services, and also the mark I AM (typed drawing) for clothing in class 25. The trademark examining attorney refused registration of the standard character trademark I AM on the ground of likelihood of confusion with existing registered trademarks. The Trademark Trial and Appeal Board affirmed. Because the TTAB did not err in its likelihood of confusion conclusion the Federal Circuit, in an opinion by Judge Lourie (joined by Chief Judge Prost and Judge Schall) affirmed.

The Federal Circuit heard the case of Earnhardt v. Kerry Earnhardt, Inc., where Teresa Earnhardt appealed from the dismissal of its opposition to the trademark registration of EARNHARDT COLLECTION by Kerry Earnhardt, Inc (“KEI”). Teresa Earnhardt is the widow of Dale Earnhardt and the owner of common law rights and trademark registrations for the mark DALE EARNHARDT in typed and stylized form, in connection with various goods and services. Kelly Earnhardt is the co-founder and CEO of KEI, the son of Dale Earnhardt, and the stepson of Teresa Earnhardt.

The Ninth Circuit clarified the requirements for pleading and establishing a trademark infringement claim under a reverse confusion theory in Marketquest Group v. BIC, Case No. 15-55755 (9th Cir. July 7, 2017). The court relieved plaintiffs from having to specifically plead reverse confusion if it is compatible with the theory of infringement alleged in the complaint, and supported a more malleable standard for proving intent in reverse confusion cases. The court also held that good faith is an element—not just a factor—of a fair use defense, and that the fair use defense may only be raised after a likelihood of confusion is established. Marketquest further reinforces courts’ reluctance to decide trademark cases on summary judgment, and makes it more difficult for defendants to dispose of reverse confusion claims through pretrial motions. 

The Appeal Board of Japan Patent Office (JPO) has reversed an initial decision by JPO examiner to refuse the mark “GOTHAM CITY” with a logo, and ordered to grant protection for the mark by decision of March 14, 2017 [Appeal case no. 2016-9140]. The JPO decision states that consumers are unlikely to confuse or associate the mark “GOTHAM CITY” with Batman’s place of residence and DC Comics when used on apparel, bags and fashion accessories.

On August 8, 2016, plaintiff became aware of defendant’s unauthorized use of the Marilyn Monroe marks and likeness and sent a cease and desist letter. Defendant continued with their allegedly unauthorized activities, leading to the filing of the complaint that starts this legal dispute. It is worth noting, however, that the defendant did not use the name Marilyn Monroe in any of its marketing, packaging, or other branding. Any association to Marilyn Monroe is based solely on defendant’s use of her visual likeness.