Posts Tagged: "trademark"

Under U.S. trademark law and court precedent, determining whether there is a likelihood of confusion involves weighing a number of factors (13 factors to be exact), known as the “Dupont factors,” set out in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). The CCPA (Court of Customs and Patent Appeals) is a predecessor court to the Federal Circuit. As noted by the Federal Circuit, not all the DuPont factors may be relevant or of equal weight in a given case and any one of the factors may control a particular case. Under 35 U.S.C. §101, patent-eligible inventions include any process, machine, manufacture, composition of matter and any new and useful improvement thereof. There are, in addition, three judicially created exceptions to the broad recitation of Section 101: laws of nature; natural phenomena; and abstract ideas…. If the goal of Section 101 is to act as a gatekeeper, rather than a roadblock, the factors approach seems appropriate to employ in a patentability analysis.

Under European Union (EU) law—specifically, Article 103(2) of Regulation 1308/2013—signs that qualify as protected designations of origin (PDOs) or protected geographical indications (PGIs) are shielded against any direct or indirect commercial use, as well as against any “evocation” of it that is likely to mislead a consumer as to the true origin of the product. This language raises the question of the conditions under which a sign may be said to be “evocative” of a PDO or PGI.

On September 17, the United States Court of Appeals for the Third Circuit issued a precedential decision that affirmed in part, reversed in part, and remanded a decision by the District Court for the District of New Jersey, holding that trademark cancellation proceedings before the Trademark Trial and Appeal Board (TTAB) do not preclude infringement claims in federal district court. In 1969, David Beasley formed a band named “The Ebonys” in Camden, New Jersey. The Ebonys were one of many bands that helped create the “Philadelphia Sound” which incorporated elements of soul, funk, and disco. The Ebonys achieved some commercial success in the 1970s but failed to reach the notoriety of other groups. As the decades wore on, the Ebonys’ popularity faded, though Beasley alleges they performed continuously since their formation. In the mid-1990s William Howard joined the band, and in 1997, Beasley obtained a New Jersey state service mark for THE EBONYS. Relations between Howard and Beasley soured and the pair parted ways. Each artist believed themselves the owner of the Ebonys name, and in 2012, Howard obtained Registration No. 4,170,469 (the ‘469 mark) for THE EBONYS, as a federal trademark. 

On the Monday of IPWatchdog LIVE, a panel of trademark experts discussed “International Trademark Rights: Best Practices for a Trademark Global Presence,” moderated by vice president of law firm strategy for Anaqua, Jayne Durden. The speakers included Mark Leonard, general counsel for the Jelly Belly Candy Company, and Heather Antoine, partner at Stubbs Alderton & Markiles and chair of the California Lawyers Association IP Section. Kicking off the discussion, Jayne Durden informed the audience that the value of brands has massively skyrocketed in recent years. For instance, the top ten brands over the last ten years, most of which include tech brands such as Apple, have grown on average four times in value, thus leading to a greater need for trademark protection. In the last quarter alone, said Durden, the filing of trademark applications has increased a whopping 49%.

When examining trademark applications, the U.S. Patent and Trademark Office (USPTO) assesses whether the applied-for trademark presents a likelihood of confusion among consumers as compared to other registered U.S. trademarks. In making this determination, the USPTO considers a list of factors first laid out in In re E. I. du Pont de Nemours & Co. 476 F.2d 1357 (C.C.P.A. 1973), commonly referred to as the Du Pont factors. One of the Du Pont factors is the number and nature of similar marks in use by third parties on similar goods or services. Id. at 1361. This article examines the significance of third-party usage evidence to a likelihood of confusion analysis.

On September 1, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed the Trademark Trial and Appeal Board’s (TTAB’s) cancellation of a trademark owned by Sweet 16 Musical Properties (Sweet 16), concluding that there is no Appointments Clause issue with the TTAB…. On appeal, Sweet 16 raised a constitutional challenge to the composition of the TTAB panel that decided their case. Sweet 16 argued that the administrative trademark judges (ATJs) who sat on the panel were appointed in violation of the Appointments Clause of Article II of the U.S. Constitution, and therefore the TTAB’s decision must be vacated. The acting Director of the USPTO, as intervenor, asserted that the ATJs were appointed lawfully.

On August 31, at the request of Senators Thom Tillis (R-NC) and Patrick Leahy (D-VT), the United States Patent and Trademark Office (USTPO) provided a report to Congress analyzing infringement disputes between patent and trademark rights holders and states and state entities. The U.S. Copyright Office produced a similar, much lengthier report, also in response to a letter from Tillis and Leahy, studying whether there is sufficient basis for federal legislation abrogating State sovereign immunity when States infringe copyrights. The Senators’ letters were prompted by the March 2020 Allen v. Cooper Supreme Court decision. While the USPTO report came to no conclusions, the Copyright Office found that “the evidence indicates that state infringement constitutes a legitimate concern for copyright owners.”

On August 3, 2021, the U.S. District Court for the Southern District of Florida ruled against plaintiff Vital Pharmaceuticals, Inc.’s claim of trade dress infringement against defendant Monster Energy Co. due in part to plaintiff’s failure to demonstrate secondary meaning or likelihood of confusion. On June 7, 2021, the U.S. District Court for the Central District of California granted defendant lululemon’s motion for summary judgment regarding allegations of trademark infringement, basing its decision in part on plaintiff’s failure to show likelihood of confusion. Similarly, in May 2021, the U.S. District Court for the Southern District of New York ruled against plaintiff Christophe Roberts’ request for preliminary injunction against defendant Puma’s alleged trademark infringement due in part to his inability to show consumer confusion. In each of these opinions, the court noted the absence of survey evidence (or, in the Vital Pharmaceuticals case, the inadequacy of an “almost comically flawed” survey). These recent rulings underscore the increasingly important role well-designed surveys play in courts’ consideration of evidence of consumer confusion and/or secondary meaning in trademark and trade dress cases.

On August 24, the U.S. Court of Appeals for the Tenth Circuit affirmed in part, reversed in part and remanded a decision of the district court for the Western District of Oklahoma, holding that the Lanham Act applied to the defendants’ extraterritorial conduct…. The Tenth Circuit rejected Defendants’ first argument that the Lanham act cannot be applied extraterritorially. Citing Steele, the Tenth Circuit acknowledged that there is a general presumption against extraterritoriality, but that it may be applied abroad at least in some circumstances. Steele v. Bulova Watch Co., 344 U.S. 280, 282-285 (1952). In Steele, the Court reasoned that “the United States is not debarred . . . from governing the conduct of i[t]s own citizens upon the high seas or even in foreign countries when the rights of other nations or nationals are not infringed.” Id. at 285-86. Key to the Court’s decision was that the defendant’s “operations and effects were not confined within the territorial limits of a foreign nation,” but rather filtered through to the United States.

Robert Willison, an Atlanta real estate investor, could not believe what he was seeing on the computer screen. A business associate had mentioned that Mr. Willison might want to Google himself, as some odd search results were appearing. And there they were. Post after post after post, across numerous websites and social media platforms, alleging that Mr. Willison was a sociopathic criminal. According to the posts, Mr. Willison sold drugs to federal judges, stole credit cards numbers, stole money, made death threats, committed home invasions, masterminded a Ponzi scheme, and more…. Understanding the best practices for handling these situations can help turn them around, just as Mr. Willison did, to protect your online reputation – a valuable component to both an individual and their business’s intellectual property

The International Trademark Association (INTA) last week submitted an amicus brief to the Court of Justice of the European Union (CJEU) providing its input on the topic of whether earlier unregistered rights of local significance, like trade names, can coexist with later registered national trademarks. The case was referred by the Dutch Supreme Court.

On August 17, in the case of I.O.B. Realty, Inc. v. Patsy’s Brand, Inc., the United States Court of Appeals for the Second Circuit ordered that the June 4, 2020 judgment of the United States District Court for the Southern District of New York be vacated for not complying with the Second Circuit’s mandate, with judgment being entered for Patsy’s Brand and the case dismissed. The decision is related to two decades of litigation. As court documents have described, the case has been protracted, highly contentious, and, at times, even scandalous.

On August 11, the U.S. Department of Commerce Office of Inspector General (OIG) published a final report on the audit of the United States Patent and Trademark Office (USPTO) trademark registration process. Since 2015, the USPTO has seen a rapid uptick in potentially fraudulent trademark applications, and a previous audit in 2012 found that more than 50% of audited trademark maintenance filings contained goods/services not in use in commerce. The current audit determined whether inaccurate trademark applications are prevented by the USPTO from being entered and maintained on the trademark register, and further assessed the USPTO’s management of fraud on the register. The report ultimately found that the trademark registration process was ineffective in this respect.

When an influencer is paid to promote a brand – and the brand’s name is trademark-infringing – can the influencer be on the hook for the infringement? A federal district court just said yes. The result could widely expand trademark litigation against influencers – and could reshape how companies and their influencers relate to one another contractually.

Recently, USPTO Commissioner for Trademarks David Gooder wrote on the USPTO Director’s Forum Blog that registrations for U.S. trademarks are up 63% from the same period in 2020. The USPTO received over 92,600 trademark applications in December 2020 alone. This has caused delays in a number of stages in the trademark process, including a current pendency of 75 days (as of July 5, 2021) for the Pre-Examination Unit of a TEAS application. This is compared to a ten-day target. The USPTO also reached a dubious milestone in Q4 2020, breaking the 1 million mark in pending applications, with 1,002,768 in the queue. This has affected trademark registrants from the very beginning of the application process. First Action Pendency (months) in Q1 of 2020 was 2.8 months. For Q1 2021, the pendency was up to 4.0 months, with Q2 trending to almost five months for First Action. Delays like these affect the ability of trademark owners to protect their brands, could cause an increase in consumer confusion and impact the value of legitimate trademarks.