Posts Tagged: "Trademark Opposition"

How many types of fruit does one mega-company need to protect its trademarks? Apparently, Apple Inc. believes an image of a pear used in connection with a meal preparation app is too close for comfort and that it is entitled to prevent its use. Bananas, you say? Possibly, but it’s also not uncommon for companies that have invested millions in establishing, promoting and protecting a trademark to take no prisoners in the battle for brand supremacy.

The Trademark Trial and Appeal Board (TTAB) has recently issued a decision allowing an opposition proceeding to continue after finding that opposer AT&T Mobility had standing to bring the proceeding to the TTAB. Applicants Mark Thomann and Dormitus Brands had argued that AT&T Mobility did not have standing to oppose applications to register “CINGULAR” trademarks because the opposer abandoned its own marks when it changed its business name more than a decade earlier. Although AT&T Mobility has demonstrated to the TTAB its basic ability to bring claims in the opposition proceeding, Eric Perrott, trademark and copyright attorney with Gerben Law Firm, notes that the low threshold AT&T Mobility has cleared doesn’t mean that the entity will be successful on its claims.

Recent controversy surrounding Kim Kardashian’s truncated move to trademark the term “Kimono” for her new line of undergarment shapewear has subsided, with Kardashian formally announcing that she is abandoning the effort. Kardashian explained the mark as serving the dual purposes of being a play on her name and showing respect for the Japanese culture. In fact, Kimono is Japanese for a traditional long, baggy garment that has been worn by Japanese women for centuries. Kardashian’s effort caused an uproar among the Japanese community in Japan and here in the United States. The community accused Kardashian of trying to exploit a centuries-old Japanese tradition for commercial gain. The controversy prompted the mayor of Kyoto to write a letter to Kardashian, in which he noted the sensitivity of the Japanese people to her move and urged her to drop the effort. Although the immediate controversy has now subsided, Kardashian’s truncated effort has renewed debate around the larger issue of “cultural appropriation” and its intersection with trademark law.

On Wednesday, June 30th, the Court of Appeals for the Federal Circuit issued a decision in Royal Crown Company, Inc., et. al. v. The Coca-Cola Company which vacated and remanded an earlier decision by the Trademark Trial and Appeal Board (TTAB) regarding the use of “ZERO” trademarks on soft drink beverages marketed by Coca-Cola. The Federal Circuit panel, consisting of Circuit Judges Pauline Newman, Kathleen O’Malley and Richard Taranto, found that the TTAB had erred in its legal framing of the question regarding the claimed genericness of Coca-Cola’s mark and failed to determine whether the mark was at least highly descriptive if not generic.

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.

On March 21st, the Major League Baseball Players Association (MLBPA) filed a formal notice of opposition at the Trademark Trial and Appeal Board (TTAB) to challenge a federal trademark application filed by Michael P. Chisena of Garden City, NY. The trademark application, U.S. Trademark Application No. 87528440, seeks to protect the use of the standard character mark “HERE COMES THE JUDGE” in commerce on clothing including T-shirts, jerseys, athletic uniforms and caps.

In late December, Beyoncé’s trademark holding company lost out on a motion to amend the TTAB’s standard protective order to make certain information confidential under 37 CFR § 2.120(g). This statute allows parties to make a motion when discovery is sought if they can show good cause that a TTAB order is required to protect a party from annoyance, embarrassment, oppression or undue burden. BGK Trademark Holdings sought an order modifying the TTAB’s standard protective order regarding “private information concerning Applicant [BGK Trademark],” specifically “any and all information” related to Beyoncé, daughter Blue Ivy Carter and husband Shawn Carter, aka Jay-Z.

The notice of opposition filed by the Army to challenge the “VEGAS GOLDEN KNIGHTS” mark cites multiple grounds for opposition including priority and likelihood of confusion, dilution by blurring and false suggestion of a connection with an institution. In the case, the Army is asserting its own unregistered trademark of “GOLDEN KNIGHTS” used in connection with entertainment exhibition services, public relations and recruiting. Although the Army is opposing a standard character mark without a claimed color scheme, it also notes that the Vegas Golden Knights have chosen a similar black+gold/yellow+white scheme on uniforms and advertisements, which are used by West Point’s hockey team, known as the Black Knights, as well as the Tate Rink arena where the Black Knights play. This similar color scheme may further contribute to consumer confusion, the Army argues.

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.