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Lottery, a state agency, began operating traditional lottery drawing games and instant lottery scratch-off games in North Carolina in 2006. It introduces new scratch-off games on the first Tuesday of each month and asserts that it has continuously used the mark FIRST TUESDAY since July 2013 in print materials, on its Website, and on point-of-sale displays. In 2014, Lottery applied for registration of the mark FIRST TUESDAY for “Lottery cards; scratch cards for playing lottery games” and for “Lottery services,” submitting specimens that have explanatory text such as “[n]ew scratch-offs” or “[n]ew scratch-offs the first Tuesday of every month.” The examining attorney refused registration, finding that the mark used in the context of Lottery’s promotional materials “merely describes a feature of [its] goods and services, namely, new versions of the goods and services are offered the first Tuesday of every month.” The Trademark Trial and Appeal Board and the Federal Circuit affirmed. Lottery’s promotional materials make clear that “new scratch-off games are offered on the first Tuesday of every month” and that fact would “be so understood by the relevant consumers who encounter the designation FIRST TUESDAY.” No “mental thought or multi-step reasoning is required to reach a conclusion as to the nature of the involved goods and services.” View "In re: North Carolina Lottery" on Justia Law

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Symbolic owns the mark I AM (typed drawing) for “clothing, namely, hats, caps, socks, shirts, t-shirts, sweatshirts, tank tops, shorts, pants, sweatpants, jeans, swimwear, swimsuits, beachwear and footwear, namely, shoes, athletic footwear, boots, clogs, sneakers and sandals” in class 25, and owns the mark WILL.I.AM (standard characters) for certain goods in class 9 and services in class 41. Symbolic’s predecessor-in-interest (William Adams) filed trademark applications for registration of the mark for goods in classes 3, 9, and 14 on an intent-to-use basis under 15 U.S.C. 1051(b). The applications were amended during prosecution to include the statement “associated with William Adams, professionally known as ‘will.i.am.’” The examining attorney refused registration on the ground of likelihood of confusion with previously registered I AM marks pursuant to 15 U.S.C. 1052(d) for the same or similar goods. The Board affirmed, noting that Adams is the well-known front man for the music group The Black Eyed Peas and is known as will.i.am but that the record did not establish that Adams is “widely known by ‘i.am’ or that ‘i.am’ and ‘will.i.am’ are used interchangeably by either Mr. Adams or the public.” The Federal Circuit affirmed, upholding the “likelihood of confusion” finding. View "In re: I.AM.Symbolic, LLC" on Justia Law

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Kerry is the CEO of KEI, the son of Dale Earnhardt (a professional race car driver who died in 2001), and the stepson of Teresa. KEI's ventures include the EARNHARDT COLLECTION lifestyle brand. KEI licensed that mark to Schumacher for use in connection with custom home design and construction. Teresa, Dale's widow, owns trademark registrations and common law rights containing the mark DALE EARNHARDT in connection with various goods and services and has sold licensed merchandise totaling millions of dollars since 2001. Teresa filed notices of opposition to KEI's trademark application. The Trademark Board found that Teresa did not establish a likelihood of confusion and that EARNHARDT COLLECTION is not primarily merely a surname, 15 U.S.C. 1052(e)(4). The Board found that “collection” is “not the common descriptive or generic name” for KEI’s goods and services. The Federal Circuit vacated. The Board's decision could be understood as finding that “collection” is neither generic nor merely descriptive of KEI’s goods and services, and adding “collection” to “Earnhardt” alters the surname significance of Earnhardt in the mark as a whole; it could be understood as finding that a mark consisting of a surname and a merely descriptive term is registrable as a matter of law if the descriptive term is not generic. View "Earnhardt v. Kerry Earnhardt, Inc." on Justia Law

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Parks was founded in the 1950s and was the first African-American-owned company to be publicly traded on the NYSE. Parks engaged in radio and television advertising, using a well-known slogan, “More Parks Sausages, Mom, Please.” Though the PARKS brand had likely developed prominence sufficient for common law trademark protection before 1970, the name was not registered in the Patent and Trademark Office until 1970. In the early 2000s, Parks failed to renew the registration. Following the death of its owner, the company had fallen on hard times and had licensed the production and sale of its products. In 2014, Tyson, the owner of the BALL PARK brand, launched a premium frankfurter product called PARK’S FINEST. Parks sued, alleging false advertising and trademark infringement. The district court determined that the false advertising claim was a repetition of the trademark claim and that the PARKS mark was too weak to merit protection against Tyson’s use of PARK’S FINEST. The Third Circuit affirmed. The fact that the PARKS mark has existed for a long time and that it enjoyed secondary meaning half a century ago cannot overcome the factors against Parks. There is almost no direct-to-consumer advertising; Parks has a minuscule market share, and there is practically no record of actual confusion. View "Parks LLC v. Tyson Foods Inc" on Justia Law

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In this trademark infringement suit under the Lanham Act, furniture manufacturer Omnia admitted that it blatantly copied and began selling the same goods branded with the mark of its (now ex) business partner, retail furniture company Stone Creek. The district court granted judgment for Omnia. The panel reversed and held that Omnia's use of Stone Creek's mark was likely to cause confusion where placing an identical mark on identical goods creates a strong likelihood of confusion, especially when the mark was fanciful. Furthermore, Stone Creek also sells in overlapping market channels and other factors heighten the likelihood that consumers will be confused as to the origin of the furniture. The panel rejected Omnia's invocation of a common-law defense—known as the Tea Rose–Rectanus doctrine—that protects use of a mark in a remote geographic area when the use is in good faith. In this case, Omnia's knowledge of Stone Creek's prior use defeated any claim of good faith. Finally, the panel confirmed that a 1999 amendment to the trademark statutes did not sweep away the panel's precedent requiring that a plaintiff prove willfulness to justify an award of the defendant's profits. The panel remanded this issue for the district court to make such a determination. View "Stone Creek, Inc. v. Omnia Italian Design, Inc." on Justia Law

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The Ninth Circuit reversed the grant of summary judgment for defendants in this trademark infringement suit regarding defendants' use of Marketquest's "All-in-One" and "The Write Choice" trademarks. The panel held that Marketquest's pleading was adequate to support a cause of action for trademark infringement under a reverse confusion theory of likely confusion; consideration of the intent factor in the likelihood of confusion analysis varies with the type of confusion being considered; the district court erred by granting summary judgment in favor of defendants based upon the fair use defense regarding their use of "All-in-One;" and the district court erred by applying the fair use analysis to defendants' use of "The Write Choice" after determining that Marketquest presented no evidence of likely confusion. View "Marketquest Group, Inc. v. BIC Corp." on Justia Law

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The rock group “The Slants,” chose that name to dilute the term’s denigrating force as a derogatory term for Asians. The Patent and Trademark Office (PTO) denied an application for registration of the name under 15 U.S.C. 1052(a), which prohibits the registration of trademarks that may “disparage . . . or bring . . . into contemp[t] or disrepute” any “persons, living or dead.” The Supreme Court affirmed the Federal Circuit in finding the clause unconstitutional. The Court first rejected an argument that the clause applies only to natural or juristic persons. The Court then held that the clause is subject to the Free Speech Clause, which does not regulate government speech. Trademarks are private, not government speech. "If trademarks become government speech when they are registered, the Federal Government is babbling prodigiously and incoherently.” The disparagement clause denies registration to any mark that is offensive to a substantial percentage of the members of any group. That is viewpoint discrimination. The “public expression of ideas may not be prohibited merely because the ideas are themselves offensive to some of their hearers.” The disparagement clause cannot withstand even “relaxed” review. It does not serve a “substantial interest,” nor is it “narrowly drawn.” View "Matal v. Tam" on Justia Law

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In 1999, Lyons and Gillette discussed possibly forming a veterinary specialist organization (VSO) for treating athletic animals. For American Veterinary Medical Association accreditation, veterinarians must form an organizing committee and submit a letter of intent. Lyons, Gillette, and others formed a committee. By 2002, the committee began using the mark as the name of the intended VSO. Lyons participated in drafting the letter of intent, the accreditation petition, and bylaws and articles of incorporation. Lyons left the committee and sought registration of the mark for “veterinary education services namely conducting classes, seminars, clinical seminars, conferences, workshops and internships and externships in veterinary sports medicine and veterinary rehabilitation,” based on actual use, alleging first use in commerce in 1996. In 2006, the PTO registered the mark. In 2010, the VSO, “American College of Veterinary Sports Medicine and Rehabilitation” received provisional recognition; it petitioned to cancel Lyons’s registration on grounds of priority of use and likelihood of confusion, 15 U.S.C. 1052(d), misrepresentation of source, 15 U.S.C. 1064, and fraud. Meanwhile, the district court dismissed an infringement action by Lyons and ordered the PTO to reject Lyons’s application for Principal Register registration, but declined to cancel her Supplemental Register registration. The Board later concluded that Lyons was not the mark’s owner and that her underlying application was void. The Federal Circuit affirmed. In ownership disputes surrounding service marks as between a departing member and a remnant group, the factors are: the parties’ objective intentions or expectations; who the public associates with the mark; and to whom the public looks to stand behind the quality of goods or services offered under the mark. View "Lyons v. American College of Veterinary Sports Medicine and Rehabilitation" on Justia Law

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Joseph Phelps Vineyards has produced and sold wines bearing the trademark INSIGNIA since 1978. In 2012, Fairmont received federal registration for the mark ALEC BRADLEY STAR INSIGNIA for cigars and cigar products. On Vineyards’ petition for cancellation, the Trademark Trial and Appeal Board (TTAB) denied the petition, stating that: while it appears that Petitioner’s INSIGNIA branded wine has met with success in the marketplace, we are not persuaded on this record that Petitioner’s mark is a famous mark. The Federal Circuit vacated. TTAB erred in its legal analysis, in analyzing the “fame” of INSIGNIA wine as an all-or-nothing factor and discounting it entirely in reaching the conclusion of no likelihood of confusion as to the source, contrary to law and precedent. TTAB did not properly apply the totality of the circumstances standard, which requires considering all the relevant factors on a scale appropriate to their merits. View "Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC" on Justia Law

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A claim of genericness or "genericide," where the public appropriates a trademark and uses it as a generic name for particular types of goods or services irrespective of its source, must be made with regard to a particular type of good or service. Plaintiffs petitioned for cancellation of the GOOGLE trademark under the Lanham Act, 15 U.S.C. 1064(3), based on the ground that it is generic. The Ninth Circuit affirmed the grant of summary judgment in favor of Google, Inc., holding that plaintiffs failed to recognize that a claim of genericide must always relate to a particular type of good or service, and that plaintiffs erroneously assumed that verb use automatically constitutes generic use; the district court correctly framed its inquiry as whether the primary significance of the word "google" to the relevant public was as a generic name for internet search engines or as a mark identifying the Google search engine in particular; the assumption that a majority of the public uses the verb "google" in a generic and indiscriminate sense, on its own, could not support a jury finding of genericide under the primary significance test; and plaintiffs have failed to present sufficient evidence in this case to support a jury finding that the relevant public primarily understands the word "google" as a generic name for internet search engines and not as a mark identifying the Google search engine in particular. View "Elliott v. Google, Inc." on Justia Law