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Parlous times for trademark dilution

Indeed.  If you’ve been following the action at all here, I’ve been watching with barely restrained glee as specious trademark dilution claims have gotten hammered by the courts recently.

The recent dings I linked to above have been based on core deficiencies of the respective complaints, and constitute classic IP overreaching or, as they used to say (you’ll notice the term has more or less disappeared), trademark bullying — that is, a very big company makes a claim sounding in infringement against a must smaller one, merits be damned.

bl-marksIn contrast, the infringement claim tweeted and linked to by Eric Ball a couple of days ago in the embedded tweet above, Bentley v. NBC Universal (CV 16-03693 TJH (KSx), C.D. Cal., Sept. 28, 2016), reported in popular media when the case was filed in articles such as this one, fell victim to a different flaw:

In 2006, Congress revised 15 U.S.C. § 1125(c), the trademark dilution statute, to specifically exclude dilution protection for marks whose fame extended only to niche markets. Dan-Foam A/S v. Brand Named Beds, LLC, 500 F. Supp. 2d 296, 307 n. (S.D.N.Y. 2007). The 2006 revision defined famous trademarks as those that are “widely recognized by the general consuming public of the United States.” 15 U.S.C. § 1125(c)(2)(A). “One of the major purposes of the . . . [revision] was to restrict dilution causes of action to those few truly famous marks like Budweiser beer, Camel cigarettes, Barbie Dolls, and the like.” Bd. of Regents, Univ. of Tex. Sys. ex. rel. Univ. of Tex. at Austin v. KST Elec., Ltd., 550 F. Supp. 2d 657, 679 (W.D. Tex. 2008) (citations omitted). The revision formally matched the statutory language to the limitations previously imposed by courts in cases such as the Ninth Circuit’s Thane Int’l.[, Inc. v. Trek Bicycle Corp., 305 F.3d 894, 911 (9th Cir. 2002).] . . .

Here, Bentley and O-Line failed to sufficiently allege facts to demonstrate that their marks are famous. Bentley and O-Line allege that their LB marks are recognized by people interested in football, sports performance, and fitness training. However, recognition in a niche market or among a limited segment of individuals does not satisfy the “widely recognized by the general consuming public of the United States” requirement of 15 U.S.C. § 1125(c)(2)(A). Moreover, Bentley and O-Line did not allege any supplemental facts regarding the extent of their marks’ advertising, publicity or sales. Thus, the allegations are not sufficient to conclude or infer that the LB marks are famous. Accordingly, O-Line and Bentley do not allege “enough facts to state a claim to relief that is plausible on its face.” Twombly, 550 U.S. at 570.

Good; fine.  What’s notable here, perhaps, is that the court construed “people interested in football, sports performance, and fitness training” as a niche market.  That’s somewhat surprising to me, and contains a warning to those drafting dilution complaints:  If your market is big enough not to be construed as niche, avoid limiting language such as that used here if you can under Rule 11 or, alternatively, add facts that can, in good faith, bootstrap the description of the market in which your mark is recognized out of the niche.

If you must, that is.

Louis Vuitton — the big IP player that keeps on giving

Ah hah!  Two of my favorite subjects, like peanut butter and chocolate, in one candy bar:

From the “On the Case” Reuters post by Alison Frankel:

To just about everyone but Louis Vuitton, the joke is obvious. Inexpensive canvas totes decorated with cartoon versions of famously expensive, iconic designer handbags? That’s funny – especially because the name of the company that makes the totes is My Other Bag, a play on the “My other car is a ” bumper stickers people used to paste on beat-up cars. To highlight the humor, the company name appears in large, loopy script on the other side of the tote bags. No one with even the faintest sense of irony would confuse My Other Bag’s $35 tote bags with actual Louis Vuitton (or Chanel, Hermes or Fendi) pocketbooks.

Louis Vuitton, of course, is famous for its inability to tolerate any ribbing, however gentle, that involves its classic toile monogram. In 2014, the company sued My Other Bag in federal court in Manhattan for trademark dilution and copyright and trademark infringement. U.S. District Judge Jesse Furman granted summary judgment to My Other Bag on all of Louis Vuitton’s claims last January, writing (with his own cheekiness) that the handbag maker “is perhaps unfamiliar with the ‘my other car’ trope. Or maybe it just cannot take a joke.” . . .

Proving that it has absolutely no sense of humor (in the unlikely event more evidence were needed), Louis Vuitton appealed the summary judgment ruling to the 2nd U.S. Circuit Court of Appeals, arguing that Judge Furman misapplied the law.

That’s when things got interesting: The case blew up into a full-fledged constitutional inquiry into the intersection of trademark law and the First Amendment.

Cool, right?  And here come the profs: Read More…

Best of 2009: Char’ed, I’m sure

Originally posted 2015-01-28 12:07:38. Republished by Blog Post Promoter

First posted December 8, 2009. 
black-bear-coffee-insidesmall-123005
Poor Starbucks.  So much trademark trouble they have!  Other trouble, too.  And now the people who gave you five-dollar coffee in a paper cup had lost another one — one they thought they had won, namely the Starbucks v. Charbucks case (decision here, posted by Marty; the real name of the case is Starbucks Corp. v. Wolfe’s Borough Coffee, Inc.) involving trademark infringement and its genetic freak of a cousin: trademark dilution.

In fact, Starbucks lost this case a lot.  They lost and lost and lost.

Then, they won.  Starbucks won!

10 Years of LIKELIHOOD OF CONFUSION®

10 Years of LIKELIHOOD OF CONFUSION®

At least, they won a shot at winning.  Which, given their litigation luck these days, must be like a double espresso administered intravenously, juridically speaking.  And, brand-wise.

That Law.com piece by Mark Hamblett in the last link is a good summary of the docket-slaloming.  For the law lesson, let’s just skip to smart person Rebecca Tushnet, who may or may not be fueled by caffeine when she blogs but all the same has done all the heavy lifting here:

As we all know, Starbucks is big and famous. Wolfe’s does business as Black Bear, a small business that sells coffee via mail order, the internet, and a limited number of New England supermarkets. In 1997, Black Bear began selling a dark roasted blend, Charbucks Blend, and later Mister Charbucks.

Read More…

ROLEX v. ROLL-X: Permanent vacation, and sideways vindication

Originally posted 2013-02-06 13:58:09. Republished by Blog Post Promoter

The TTAB recently ruled, based on internal reasoning that is entirely justifiable, that if you can’t afford to litigate — as far as is necessary — against a larger, richer adversary, it probably doesn’t pay to litigate at all.  The outcome, is, however, maybe a little troubling — but, on the other other hand, not so much, both on its own terms and because it seems to me to correct a substantive wrong in the first place.  It’s like this:

As reported by John “Trademark Elite 1000” Welch in this TTABlog post, there was — let’s put aside the underlying substantive details for now, to add to the simulated drama I am attempting to create here — a certain TTAB decision, refusing an opposition by the opposer and allowing registration, that had been appealed, see?  The opposer, ever oppositional, appealed that ruling to the U.S. Court of Appeals for the Federal Circuit.

[W]hile the appeal was pending, applicant AFP unilaterally withdrew its application to register. The CAFC then dismissed the appeal as moot and remanded the case to “allow the Board to consider a motion to vacate its decision in the first instance, in accordance with United States Bancorp Mortgage Company v. Bonner Mall Partnership, 513 U.S. 18, 29 (1994), and for any further proceedings deemed appropriate by the Board.” The Board concluded that U.S. Bancorp mandated that the Board’s decision be vacated. . .

AFP argued (without evidentiary support) that it was “forced” to withdraw its application due to the cost of litigation, but the Board found that to be irrelevant. AFP withdrew its application without [Opposer’s] permission, thereby mooting the appeal. Under those circumstances, U.S. Bancorp mandated that the Board’s decision be vacated.

Indeed, to decide otherwise would be manifestly unfair because applicant’s unilateral abandonment of the subject application has frustrated opposer’s statutory right to seek review of a decision it believes to be incorrect. In view thereof, the Board’s decision is vacated.

I hear it.  And this last passage quoted by John really gets the point across.  In for a penny, in for a pound, when it comes to litigation whose outcome could, one way or another, could have precedential value to one of the parties involved — which is often going to be the case in an opposition proceeding.  Here the now-vacated decision would surely have, absent the vacatur (not “vacation”!), cast a shadow over any future prosecution of similar claims in opposition by the same mark holder.  If there is, and indeed there is, a right to review of such a decision, you can’t just take the ball and go home when you’re winning.

Well and good.  But, you know me: Read More…

Bad for the Juice: The TTAB’s phantom tag

Originally posted 2015-05-13 15:50:58. Republished by Blog Post Promoter

New York Yankees LogoNo, not that Juice.  He’s got enough trouble already.  (And no, not the Juice that has this guy all in a froth either.)  I write, rather, about the too-clever-by-half would-be parodists recently sluiced through the ringer by a family-size panel of the TTAB in a case reported by, of course, John Welch, to wit:

An augmented panel (seven judges) of the TTAB sustained an opposition to registration of the mark THE HOUSE THAT JUICE BUILT for T-shirts, baseball caps, hats, jackets and sweatshirts, the mark “THE HOUSE THAT JUICE BUILT” for mugs, and the design mark shown immediately below for “T-shirts, baseball caps, hats, jackets and sweatshirts,” finding the first two marks likely to cause dilution-by-blurring of the Yankees’ registered marks THE HOUSE THAT RUTH BUILT and the third likely to dilute its “Top Hat” design mark. The Board declined to consider applicant’s parody defense in its Section 43(c) analysis, because applicant asserted an intention to use the opposed marks as source indicators, which by definition is not a noncommercial use or a “fair use” exempted from a dilution claim. New York Yankees Partnership v. IET Products and Services, Inc., Opposition No. 91189692 (May 8, 2015) [precedential].

Juice BuiltThere’s a lot going on here, and John methodically mows through this Murderer’s Row of trademark jurisprudence at his post.  What John is too delicate to mention is the central gag here:  The house that “juice built,” see, is the house that “juice” — steroids — built.  As the decision notes,

Applicant makes clear that it selected its THE HOUSE THAT JUICE BUILT mark to evoke Opposer’s famous mark for parodic purposes.  Applicant’s President, Steven Lore, testified that its marks “play off of the idea that steroids are a player on MLB teams and the Yankees.”

“A player…” Lots of inside-baseball type lingo in this case.  But by now, hopefully, you get the joke.  In any event, I recommend John’s post just to help you remember a whole bunch of trademark law or to learn what you never did, as I do whenever I read his blog. I was, however, particularly interested in this bit: Read More…

Giving up the Web

Originally posted 2010-11-05 17:11:33. Republished by Blog Post Promoter

ClickZ News says lawyers are “Giving Up on Web Trademark Infringement”:

“Trademark dilution is death by a thousand cuts,” said Joe Dreitler, partner at Frost Brown Todd. “And if there are a thousand people doing parodies of Louis Vuitton, at what point [does it occur]?”

It’s almost as if the claim of trademark dilution, regarding which we have long been very dubious, brings its own punishment: It is now so relatively easy for a truly famous mark (such as Vuitton, which we have represented) to make a meritorious dilution claim and yet it is even easier to dilute a trademark on the Internet. And the bigger the trademark the more dilutable… the more it cries out for dilution… the more lawyers and trademark owners trip over themselves trying to figure out what to do about it. As this article demonstrates, they’re increasingly frustrated over their inability to do anything as the truly anarchistic nature of the Internet defies enforcement regardless of budgets or ambitions.

Probably the smart thing would be to forget about dilution, which the world lived without since Creation, and focus on tight brand building and enforcement against real infringements. But of course that is a course the trademark owners are constitutionally incapable of considering. Are they on the verge of making utter fools of themselves in the RIAA “constant nuclear option” enforcement — I mean, “enforcement” — mode? Probably. And law firms will profit all the way, which is the up side. (You think I meant that as a bad thing?!)

Posner won’t butter up Dairy Maiden: In trademark dilution, fame isn’t everything

Land_O'Lakes_logo

Is this logo even allowed in the first place?

There is a puzzling aspect to much of what emits from U.S. Circuit Court Judge Richard Posner, he of the “strange new respect” earned on certain issues not (usually) germane to this blog.  But his expression of puzzlement in Hugunin v. Land O’ Lakes, Inc. (full opinion here) while impossibly coy, has done a great service in drawing the limits on just how far fame will and won’t get “enforcement” efforts for a trademark under federal trademark dilution statute.  This one just may result in another request to Congress to tweak the language … again.

As it stands now, however, even the holder of a famous trademark can’t, as explained by this important Seventh Circuit opinion, rely on a dilution claim to shut down all non-competing junior users just because a trademark is super famous.  Let’s work through this along with the opinion, which is a short one, and very clear as a result.

Procedurally speaking, the setting is as follows:  James Hugunin owns, basically, a bait and tackle shop in northeastern Wisconsin — the region called the “Land O’ Lakes,” which is what he called his bait shop.  In fact, he’s been calling his bait shop that for a long time, and even had a registered word trademark* for LAND O’ LAKES, for use in connection with worms and other things like that for ages, but it lapsed.  Attempting to re-up during this, the uber-due-diligence and all-monetizing, all-the-time era of “brand equity,” Hugunin was detected at the border presumably by the monitoring services and, then, confronted by the fountain-pen-tie-and-vest gang over at the dairy outfit, Land O’ Lakes, which moved $12 billion worth of delicious artery-clogging stuff in 2012, according to the opinion.

The stout dairymen demanded tribute from the hook-and-reel shack:  A so-called “license,” or else immediate ceasement and desistation of the trademark he’d been using for years.  An opposition in the TTAB ensued, which was then stayed pending big-boy District Court litigation brought by Hugunin who, it turns out, was a poorly chosen “mark.”  For his part there were affirmative claims, too, filed as a matter of course, but they are not of consequence and are justifiably both dumped and dumped on; nothing notable there, however.  The trial court dismissed everyone’s claims on summary judgment, up it went to the Circuit Court of Appeals.

Question number one, focusing on the “real” complaint here, namely the one originally styled as an opposition by Land O’ Lakes, the dairy:  Is there a “classic” trademark infringement claim here?  No, says the court, for two reasons (emphasis added):

We’re puzzled that the dairy company should have been worried by Hugunin’s use of the same trademark. Though besides sponsoring the fishing tournament the company has advertised in fishing magazines and made other appeals to fishermen to buy its dairy products, it neither makes nor sells any devices or materials used in fishing (such as hooks, lines, sinkers, floats, rods, reels, baits, lures, spears, nets, gaffs, traps, waders, and tackle boxes—compendiously, fishing tackle)—any products, therefore, that might be confused with Hugunin’s fishing tackle. It would be strange indeed for a dairy company to manufacture a product so remote from milk, butter, and cream, and there is no sign that the dairy company intends to take the plunge.

The court here makes two determinations, one of which strikes me as particularly notable, though it’s not the main point of this post.   Read More…

My Old Kentucky Ho

Originally posted 2005-03-05 23:23:00. Republished by Blog Post Promoter

Woman and Hoe

Woman and Hoe

When you think of the term “the world’s largest whorehouse” — and who among us doesn’t? — do you think of Kentucky? I guess I just don’t get around enough. The AP Reports on this chap, who preaches the “Gospel Truth” on his website about what a, er, “whorehouse” that big old state is. Natch, the State of Kentucky is threatening to sue him, because he’s parodying their cute little logo, which usually says “Unbridled Spirit.” (Whorehouse vs. unbridled spirit — so different already?)

Bart McQueary, the guy in question is evidently quite a character, though not much of a trademarks man. Neither is the AP reporter or his or her editor: “[McQueary] said the state cannot legally force him to pull the logo because he does not use it for commercial purposes. . . . While McQueary doesn’t appear to be using the logo for profit, ‘he certainly would have needed to inquire regarding permission or authorization prior to use of that mark,’ [a state lawyer] said.”

Not a state trademark lawyer, if there is such a thing. The AP did find one, though — one of the best (and a good friend of the blog), New York’s David Bernstein. “What he is doing is not trademark infringement,” he (correctly) said, according to the article. “People who are familiar with the logo and who know Kentucky know the state is not saying ‘Come visit Kentucky, we’re a whorehouse.'”

Thanks, David. Remember: The test is likelihood of confusion, okay?

Ah, but there is the matter of the “commercial purposes” issue, no? Read More…

Dilution, apres le deluge

Originally posted 2007-10-17 13:21:47. Republished by Blog Post Promoter

Michael Atkins Seattle Trademark AttorneyMichael Atkins rounds up “How Courts Have Interpreted the Trademark Dilution Revision Act.”  Better him than me, but we all win!

Editor and Publisher: Stop the new trademark dilution bill

Dilution

Steve Yahn at Editor and Publisher tries to stir up some interest in what should be — search-term advertising and other flavors of the month aside — the trademark story of the moment:

Embedded deep in H.R. 683, “The Trademark Dilution Revision Act,” which awaits what may well be a last look in the U.S. House of Representatives before being signed into law by President Bush, is language that would remove key free-speech protections that have been part of U.S. trademark law since 1996.

Read the whole thing. He’s right on: This bill will make the Lanham Act about as self- executing for plaintiffs as you could hope, at least for “famous marks.” Be very scared if you’re not the owner of such a mark… or its retained counsel.

UPDATE:  Reaction at Editor & Publisher.