Posts Tagged: "likelihood of confusion"

Trademark injunctions must take into account both online promotion and future expansion plans. A narrowly-tailored geographically limited injunction can be particularly damaging to growing businesses if the business is forced to accept trademark confusion in the event of future expansion. The geographic scope of a trademark injunction should, therefore, carefully take into consideration the total services, activities, and growth plans of the successful plaintiff’s business endeavors.

On October 5, 2016, a jury in Tiffany and Co. v. Costco Wholesale Corp. – litigated before Judge Swain of the Southern District Court of New York – awarded Tiffany & Co. (Tiffany) $8.25 million in punitive damages for willful and bad faith infringement of their trademark by defendant Costco Wholesale Corp. (Costco). This award, in combination with an earlier award of $5.5 million in profits and statutory damages, brings the total damages owed by Costco to $13.75 million. The case is particularly notable for several reasons, but specifically because punitive damages were awarded.

The Federal Circuit vacated the Trademark Trial and Appeal Board’s (“Board”) cancellation of two JobDiva service mark registrations—one in whole and the other in part—and remanded for further consideration. As the Court pointed out in its opinion, JobDiva could have avoided the issues in this case by initially registering “marks to identify both software and services performed by software.” Practitioners should take care to register a mark for all goods and services for which the mark may be used.

In late November, the Las Vegas NHL hockey franchise, which will begin playing with the National Hockey League (NHL) in the 2017-18 season, announced that it would be known as the Golden Knights. On December 7th, however, an office action issued by the U.S. Patent and Trademark Office indicated that the USPTO had refused registration of U.S. Trademark Application No. 87147239, which would have protected the use of the standard character mark of “VEGAS GOLDEN KNIGHTS” on entertainment services, specifically professional ice hockey exhibitions.

You’ve selected a unique trademark, marketed and sold products under the brand, and continue to build up a base of satisfied customers. But then a new company emerges with a very similar trademark, piggybacking on your success. Even your customers are outraged and post comments about your companies’ similar trademarks. You’re delighted, but can you skip the survey and use these internet comments as evidence of confusion? This article addresses the admissibility of internet evidence and its probative value.

hipotle Mexican Grill is gearing up to launch a new franchise brand of restaurants. The first Tasty Made will open this fall in Lancaster, OH, and locations will feature menus focusing on burgers, hand-cut fries and milkshakes. As Tasty Made has been making headlines, a Boston-based chain of burger fast food restaurants has raised a legal issue over trademarks, which it believes Chipotle is infringing. Reports indicate that Tasty Burger has issued a cease and desist letter to Chipotle which charges the latter company with using a brand name and logos that are similar to marks held by Tasty Burger. Tasty Burger operates six locations, including four Boston stores and two in Washington, D.C. The burger chain is alleging that not only are the names very similar but the color scheme and shape of the logos share many similarities as well.

Oakville Hills Cellar, Inc. (“Oakville”), doing business as Dalla Valle Vineyards, appealed from the decision of the Trademark Trial and Appeal Board (TTAB) of the United States Patent and Trademark Office (USPTO) dismissing its opposition to a trademark application filed by Georgallis Holdings, LLC (“Georgallis”) to register a MAYARI mark for use on wine. Oakville had previously registered the mark MAYA, also for wine. Because there was substantial evidence to support the finding of the TTAB that there would be no likelihood of confusion, the Federal Circuit affirmed a registration of the mark MAYARI for wine products, affirming the TTAB’s decision and dismissing Oakville’s opposition.

Since the inception of the search engine, trademark owners, advertisers, search engine providers, and the courts have struggled with the issue of the use of third-party trademarks in keyword advertising and search returns, and whether such trademark use is likely to confuse consumers when they are searching for information regarding a particular brand. Despite an array of holdings on this issue over the years, following the 2011 decision in Network Automation, Inc. v. Advanced System Concepts, Inc., the Ninth Circuit and other courts have generally held that the potential for “mere diversion” of a consumer caused by the use of a third party’s trademark in connection with sponsored keywords or search results does not constitute trademark infringement unless a trademark owner can demonstrate that particular search returns or sponsored keyword advertisements are likely to cause confusion based on the specific use or presentation of a trademark in a search return.

The Federal Circuit explained that evidence of third-party use bears on the strength or weakness of an opposer’s mark. In this case, which arose as an appeal from the TTAB, the evidence demonstrated“ubiquitous use of paw prints on clothing as source identifiers. According to the Federal Circuit, given the widespread use of paw prints, consumers would know to look for additional indicia of origin rather than just the paw designs. The evidence, therefore, demonstrated that consumers are not as likely confused by different, albeit similar looking, paw prints.

This week in the Federal Circuit Review: (1) Proposed rejections to claims added during Inter Partes Reexamination are not evaluated for substantial new question of patentability (Airbus S.A.S., v. Firepass Corp.); and (2) Likelihood-of-Confusion requires full consideration of strengths and weaknesses of existing mark (Juice Generation, Inc., v. GS Enterprises LLC ).

There was a split in the circuit courts as to what effect a TTAB decision will have, and this depends heavily upon where the litigation is happening. The weight of a TTAB decision will vary depending on the jurisdiction, ranging from none at all to complete preclusion. Here, the issue was whether one mark was confusingly similar to another, which the Supreme Court determined was exactly the same as what was being litigated.