Las Vegas Trademark Attorney

XS v. SX -- Another Energy Drink Battle

2008-05-12T21:09:00.000-07:00

This is one of those trademark applications where at first I’m a little surprised the PTO even allowed it to be published for opposition, but then once you know how the PTO searched for conflicting marks, it becomes a little more obvious – and underscores the importance of the trademark opposition process.

On August 9, 2007, SX Energy Drink, LLC (“SX Energy”) filed an intent-to-use trademark application to register the word mark SX for energy drinks (in international class 32). The application was published on January 15, 2008.

On May 12, 2008, XS Energy, LLC (“XS Energy”), the owner of a line of energy drinks marketed under the stylized mark XS (shown below) filed and opposition against SX Energy's proposed mark. See XS Energy, LLC v. SX Energy Drink, LLC, Opposition No. 91184024 (T.T.A.B. May 12, 2008). XS Energy’s XS mark was registered on March 30, 2004 and covers fruit flavored dietary supplement energy drinks (in international class 5).

The different classifications is not what led the PTO to overlook the obvious similarities between the two marks. The PTO’s search focused solely on the mark “XS” (and “X S”) without transposing the letters and most likely would not have discovered XS’s registration anyway even if XS’s goods had been classified in class 32. Nonetheless, it does raise the question as to why the two types of energy drinks are classified in two separate classifications.

The key distinction is the language “dietary supplement”. In XS Energy’s original application filed March 21, 2001, the goods applied for were “drinks” in class 32. However, the PTO later requested clarification of this vague description – laying out three different classifications including fruit flavored dietary supplement energy drinks (in class 5), fruit flavored soft drinks (in class 32), and prepared alcoholic cocktail drinks (in class 33). By choosing the description which included the language “dietary supplement,” XS Energy was choosing to move forward under class 5, which is the class set aside for “pharmaceuticals and other preparations for medical purposes” including “beverages for medical purposes.” In contrast, class 32 is set aside for “non-alcoholic drinks.”

Well, the PTO must have realized subsequently that these “energy drinks” are more appropriately categorized as “non-alcoholic drinks” rather than as “dietary” drinks and updated its Acceptable Identification of Goods and Services Manual to include “Energy drinks” in class 32.

Of course, none of this impacts XS Energy’s trademark rights. XS Energy still holds a presumptively valid registration for the mark XS for energy drinks. When its mark is compared to the proposed SX mark (similar appearance and sound) for similar goods (energy drinks), which are likely to be distributed through similar marketing channels by consumers who are likely to purchase on impulse, XS Energy has a good case for likelihood of confusion.

Las Vegas Trademark Attorney Moving to the Las Vegas Intellectual Property Law Firm of Weide & Miller, Ltd.

2008-05-09T18:30:00.000-07:00

I am pleased to announce that, effective Monday, May 12, 2008, I will be joining the Las Vegas intellectual property law firm of Weide & Miller, Ltd.

Weide & Miller is a full-service intellectual property law firm which prides itself on providing quality legal services in all areas of intellectual property law at affordable rates compared to other large intellectual property law firms. The firm has received Martindale Hubbell’s highest peer review rating – an AV® certification.

Weide & Miller offers legal services relating to a wide range of intellectual property matters, including patent and trademark prosecution both in the U.S. and worldwide; intellectual property licensing and litigation; intellectual property clearance, management, and monitoring; intellectual property acquisitions and sales; copyright registrations and disputes; domain name disputes; and trade secret protection and enforcement.

I fully intend on continuing my blog posts after my move although there may be a brief hiatus while I get accustomed to my new surroundings.

I look forward to joining the experienced professionals currently working at Weide & Miller and to providing past and future clients with first-rate legal services for all of their intellectual property matters.

Battle of "The Rat Pack" Tribute Shows

2008-05-07T21:19:00.000-07:00

On May 7, 2008, TRP Entertainment, LLC (“TRP”) filed a trademark infringement lawsuit in the U.S. District Court for the District of Nevada against BC Entertainment, Inc. (“BCE”), Barrie Cunningham, and Ian Hammer (the “Defendants”). See TRP Entertainment, LLC v. BC Entertainment, Inc. et al, Case No. 08-cv-00579 (D. Nev.). A copy of the complaint can be downloaded here.

TRP is the production company behind the “Rat Pack” tribute show “The Rat Pack is Back” currently playing at the Plaza Hotel and Casino in Downtown Las Vegas, but which apparently has performed in many other cities nationwide.

TRP is also the current owner of two federal registrations for the mark THE RAT PACK IS BACK (one for “entertainment [sic] services, namely, live stage musical productions” and one for “clothing, namely, hats, t-shirts, jackets, and sweatshirts”). The marks were previously owned by DRDC Productions, Inc. (“DRDC”), but were recently assigned to TRP on April 24, 2008. Up until then, TRP used the marks under license from DRDC.

In addition to the THE RAT PACK IS BACK mark, TRP also claims to have used the mark “The Tribute to Frank, Sammy, Joe and Dean” since at least May 24, 2002 in conjunction with its “Rat Pack” tribute show.

TRP alleges that the Defendants began producing a show entitled “RAT PACK – Frank, Sammy, and Dean” “The Rat Pack A Tribute to Frank, Dean & Sammy,” or “Rat Pack.” BCE’s website lists several shows produced by BCE – one of which is its “Rat Pack” tribute show (described here – and which notably includes the disclaimer “This show is not associated in any way with The Rat Pack Is Back or any other Rat Pack show or production.”).

On March 15, 2007, TRP sent a cease and desist letter to Defendants BCE and Cunningham. Soonafter, and possibly in response to TRP’s letter, on March 19, 2007 BCE file an intent-to-use application to register the word mark THE RAT PACK (for various entertainment show, including a “live musical stage shows specifically paying tribute to Frank Sinatra, Dean Martin and Sammy Davis Jr with celebrity impersonators.”)

BCE subsequently filed an amendment to allege use on March 28, 2007, alleging first use in commerce on October 1, 2006. On July 2, 2007, the PTO rejected registration under Section 2(d) likelihood of confusion over TRP’s registered mark for “entertainment services.” The PTO also cited two other pending applications for the mark THE RAT PACK LIVE AT THE SANDS (word mark and design mark). BCE’s response to the PTO’s non-final action did not address the PTO’s likelihood of confusion rejection. Instead, BCE attempted to change the drawing of its mark to the following stylized design mark:

In the PTO’s suspension letter, BCE was notified that its proposed amendment to the drawing was unacceptable because it would materially alter the essence or character of the mark (see 37 C.F.R. §2.72; TMEP §§807.14 et seq.). BCE attempted to make an argument for no likelihood of confusion in a status inquiry; however, the PTO made its likelihood of confusion rejection final on January 18, 2008.

On April 13, 2007, TRP sent a second cease and desist letter to BCE and also demanded that BCE abandon its service mark application.

On December 13, 2007, BCE filed a second application to register the above stylized design mark (“A TRIBUTE TO THE RAT PACK FRANK, DEAN & SAMMY A BC ENTERTAINMENT, INC. PRODUCTION” for various entertainment services including “Entertainment in the nature of live performances by celebrity tribute shows featuring impersonators of frank sinatra dean martin and sammy davis junior”) and claiming first use in commerce date on October 1, 2006.

The PTO once again rejected registration of BCE’s mark on the basis of likelihood of confusion, citing TRP’s aforementioned registration as well as a second registration held by a California company named Direct From Vegas Productions, Inc.(“DFVP”) for the word mark “DIRECT FROM VEGAS THE RAT PACK” (for entertainment services). Interestingly, DFVP’s mark faced a similar Section 2(d) rejection over TRP’s registration, but was able to argue that its marks, when viewed in its entirety, is sufficiently different than TRP’s registration. DFVP cited several other registrations with the terms “THE RAT PACK” where the PTO issued notices of allowance. Also interesting is that the PTO required DFVP to disclaim the term “THE RAT PACK” because it merely describes the style or format of applicant’s live musical performances because applicant’s performances emulate the famous group of Las Vegas performers know as “The Rat Pack,” that included Sammy Davis, Jr., Frank Sinatra, Joey Bishop, and Dean Martin. The PTO added that “reenacting “The Rat Pack” and their manner is a popular entertainment concept.” One wonders how TRP was able to get its application through the PTO without a similar disclaimer . . . and also how come TRP has not challenged this mark.

On December 26, 2007, TRP sent yet another cease and desist letter to BCE and threatening to sue. According to the complaint, BCE continues to use the mark “The Rat Pack A Tribute to Frank, Dean & Sammy.”

TRP’s causes of action are federal trademark infringement under Section 32(a) of the Lanham Act (15 U.S.C. §1114(a)), false designation of origin/unfair competition under Section 43(a) of the Lanham Act (15 U.S.C. §1125(a)), and common law trademark infringement and unfair competition. TRP seeks injunctive relief, actual damages, BCE’s profits, treble damages, costs and attorney’s fees.

The "Real" Rat Pack

Vegas™Esq Comments:
TRP is quick to note that its THE RAT PACK IS BACK registration is incontestable – TRP having filed its §15 Declaration of Incontestability on November 5, 2007, which may also explain why TRP waited so long to file any kind of action against BCE. As such, there is no chance of BCE challenging TRP’s registration on the basis of descriptiveness (although even if it could, TRP has been using the mark for so long that it could probably show secondary meaning).

In applying the the Sleekcraft factors, I think BCE may have the advantage. First, while THE RAT PACK IS BACK may be incontestable, it is also weak to the extent that, as the PTO suggested, most consumers recognize the name “The Rat Pack” as the group of Las Vegas performers that included Sammy Davis, Jr., Frank Sinatra, Joey Bishop, and Dean Martin and that reenacting “The Rat Pack” is a popular entertainment concept. Second, the marks, when viewed in their entirety, are dissimilar. Third, BCE’s intent in selecting its mark certainly was not to take advantage of TRP’s goodwill, but rather to come up with a mark that describes its show. However, there are some factors favoring TRP, such as relatedness of the goods, which are identical in this case (entertainment services); similar marketing channels (online advertising, print ads, etc.); and degree of consumer care (consumers may not exercise a high degree of care in choosing their “Rat Pack” tribute show).

What would The Chairman of the Board say?

Exclusive Licensee of “Rush” Merchandise Rushes to Court to Stop Counterfeiters

2008-05-06T21:00:00.000-07:00

On May 1, 2008, a company named Showtech Merchandising, Inc. filed a trademark infringement lawsuit in Nevada District Court against various John Does, Jane Does, and ABC Company. See Merchandising, Inc v. Various John Does, et al, Case. No. 08-cv-00232 (D. Nev. May 1, 2008).

Showtech sells rock band merchandise for various bands, most notably the band Rush, for which Showtech has been the official merchandiser for over 30 years. Showtech’s Rush goods can be found at its Rush Back Stage website -- http://www.rushbackstage.com/.

And it just so happen that the band Rush is playing at the Mandalay Bay Events Center on May 10th as part of Rush’s Snakes and Arrows Tour.

Without reviewing the complaint, it looks like Showtech, as the exclusive licensee of authorized Rush merchandise, is going after some unknown purveyors of counterfeit Rush merchandise being sold in advance of Saturday’s concert.

Cover of Rush's Snakes & Arrows Album

Terraserver sues Microsoft for trademark infringement over Terraserver-USA.com

2008-05-05T20:28:00.000-07:00

I’m a little surprised this lawsuit has not received much press yet.

On May 2, 2008, Terraserver.com Inc. (“Terraserver”) filed a trademark infringement lawsuit in the U.S. District Court for the Eastern District of North Carolina against Microsoft Corporation (“Microsoft”). See Terraserver.com, Inc. v. Microsoft Corporation et al, Case No. 08-cv-00067 (E.D. N.C.). A copy of the complaint can be downloaded here (courtesy of Justia.com).

Terraserver.com Screenshot

Terraserver operates the satellite imagery database website terraserver.com. Terraserver claims that Microsoft is infringing on Terraserver’s trademarks with Microsoft’s competing satellite imagery database website named terraserver-usa.com.

Microsoft's Terraserver-USA.com

According to the complaint, Aerial Images, Inc. (“AEI”), Terraserver’s predecessor in interest, worked with Microsoft and Compaq back in the mid 1990s to develop a website database of worldwide satellite imagery – with AEI providing the satellite imagery and Microsoft and Compaq providing the hardware and software. Terraserver maintains that its agreement with Microsoft and Compaq at the time was that AEI would keep the name “Terraserver” because “Microsoft and Compaq were simply using Aerial Images, Inc.’s name (Terraserver) and imagery to test their hardware and software systems.” As evidence of such tacit approval, Terraserver points to the fact that on March 9, 1998, AEI applied to register the mark TERRA SERVER for “computer services, namely providing a database featuring photographic images and geographic information.” The mark registered on March 21, 2000 – without any objection from Microsoft or Compaq . The registration, however, was cancelled on December 23, 2006, when Terraserver failed to file a Section 8 Declaration of Continued Use – apparently because Terraserver was no longer using the mark “Terra Server” (with a space), but instead was using the mark Terraserver (no space).

The satellite imagery website and database was launched in 1997 using the domain name address “Terraserver.com.” Terraserver further maintains that when its “arrangement” with Microsoft and Compaq ended in 2000, the parties again agreed that AEI would continue to own and use the domain name “Terraserver.com,” which AEI, and later Terraserver, continued to do.

Terraserver argues that through extensive marketing of its website worldwide, the domain name terrserver.com has acquired a secondary meaning and is recognized as a source identifier for Terraserver’s web-based satellite imagery database.

Terraserver also holds two registrations for the marks TERRASERVER and TERRASERVER-USA. The TERRASERVER mark was applied for as a use-in-commerce application on July 21, 2003 (March 1, 1998 was claimed as the first date of use in commerce) for “a computer database available through an internet website that provides photographic images and geographic imagery obtained from satellites.” The mark registered December 21, 2004. The TERRASERVER-USA mark was applied for as an intent-to-use application on December 16, 2003 for “displaying the satellite and aerial images of others on a computer server.” The mark registered on June 13, 2006.

According to Terraserver, Microsoft began operating its “Terraserver-usa.com” website in the summer of 2003 (Note: the Internet Archive suggests a date of around June 7, 2003 – about a month and a half before Terraserver submitted its TERRASERVER application). Terraserver asserts that Microsoft has continued to operate its website despite Terraserver’s demands “on numerous occasions” that Microsoft stop using its registered trademarks.

Terraserver cites two examples of “actual confusion” to support its case. The first is the Wikipedia entry for Terraserver which describes user confusion between the two. [Comment: We all know how reliable Wikipedia evidence is, especially for demonstrating likelihood of confusion.] The second example is a USPTO office action which initially refused to register TERRASERVER-USA on the basis of likelihood of confusion with the TERRA SERVER mark (with the space) [Comment: How exactly does that show actual confusion between Microsoft’s site and Terraserver’s site?].

Terraserver’s causes of action are for registered trademark infringement under Section 32 of the Lanham Act (15 U.S.C. §1114), false designation of origin/unfair competition under Section 43(a) of the Lanham Act (15 U.S.C. §1125(a)), trademark dilution under Section 43(c) of the Lanham Act (15 U.S.C. §1125(c)), and unfair and deceptive trade practices under Chapter 75 of the North Carolina General Statutes. Terraserver seeks injunctive relief, actual damages, treble damages, costs and attorneys’ fees

Vegas™Esq Comments:
One interesting nuance with respect to Terraserver’s TERRASERVER-USA application is that the filing date of this “intent-to-use” application was several months after Terraserver acknowledges Microsoft already had its own website up and running at the domain name http://www.terraserver-usa.com./ While the dates of first use for this mark are claimed as May 1, 2003 (which coincidentally is several days before the terraserver-usa.com domain name was registered by Microsoft), this date of first use is based on a Statement of Use filed by Terraserver on March 23, 2006. What is even more interesting is that when you plug the web page included in one of the Specimens of Use (http://www.terraserver.com/providers/Terraserver-USA.asp) into the Internet Archive, the web page seems to have made its first appearance around February 8, 2006 – just before the page was submitted as a specimen of use and several months after Terraserver’s initial specimens of use (submitted September 20, 2005) had been rejected as inadequate (Terraserver submitted a picture of a hat displaying the TERRASERVER-USA mark and an address label). Furthermore, if Terraserver had really been using the TERRASERVER-USA mark since May 1, 2003, wouldn’t one think that the company, already a high profile internet site, would have been saavy enough to acquire the same domain name address? Unless, of course, Terraserver was not actually using the make at the time. Ever heard of Occum’s Razor?

Terraserver may have an uphill battle to fight to the extent it is relying upon its TERRASERVER-USA registration. Given the suspiciousness surrounding its claimed use of the mark, Terraserver had better be prepared to show more concrete evidence that it was legitimately using in commerce the TERRASERVER-USA as declared in its Statement of Use.

Indeed, by including TERRASERVER-USA as a basis for infringement, Terraserver may have muddied up what otherwise would have been a much cleaner case of infringement against TERRASERVER-USA based on the TERRASERVER mark alone and opened itself up to an “unclean hands” defense by Microsoft.

Another interesting nuance with respect to Terraserver’s TERRASERVER application is that the specimen of use provided by Terraserver was a copy of the website showing “terraserver®.com.” The PTO apparently had no objection to the presence of the ® symbol on the specimen, and presumably, the ® was based on the “Terra Server” registration in existence at that time. Nonetheless, such use (or misuse) of the ® symbol also makes the TERRASERVER registration vulnerable to claims of “unclean hands” (see prior blog post here) although not to the same degree as TERRASERVER-USA given the reasonable explanation for using the ® symbol under the circumstances.

Finally, the big question is why Terraserver waited so long to pursue this action when it appears as if it could have been brought back in 2003 . . .unless there is something else going on here that is not apparent from the complaint (something in the “agreement” between Terraserver, Microsoft, and Compaq). By waiting so long, Terraserver may be vulnerable to a laches defense by Microsoft – the length of delay appears to be almost five years, there does not appear to be any excuse for such delay, and Terraserver had the opportunity to act sooner. Because North Carolina has a three year statute of limitations for tort actions (see N.C.Gen.Stat. Sec. 1-52), the burden will be on Terraserver to prove that application of the defense would be inequitable (as opposed to Microsoft having the burden of showing that laches should apply).

Barkstrong bites back at Lance Armstrong Foundation over yellow pet collars

2008-05-03T13:05:00.000-07:00

Remember BARKSTRONG? The company, through its website http://www.barkstrong.net/, raises money for animal charities by selling yellow pet collars bearing the words BARKSTRONG and PURRSTRONG.

In September 2007, the Lance Armstrong Foundation filed a lawsuit in the U.S. District Court for the Western District of Texas against Chris Ohman and the Animal Charity Collar Group (d/b/a Barkstrong.net) alleging that Barkstrong’s collars infringed the Foundation’s famed LIVESTRONG yellow bracelets that sell for $1.00 each and have raised over $70 million for cancer research. See Lance Armstrong Foundation v. Ohman et al, Case No. 07-cv-00769 (W. D. Texas). [See previous blog post here].

Well, the man behind Barkstrong is biting back with his own infringement lawsuit. On April 30, 2008, Chris Ohman, filing pro se, filed his own lawsuit in the U.S. District Court for the Northern District of Oklahoma against the Lance Armstrong Foundation, Lance Armstrong Endowment Fund, Yellow Dog Designs Inc.. and Mortimer H Nase for patent infringement over a design patent (D556,386 entitled “Pet collar with an embossed slogan for encouraging charitable contributions” issued November 27, 2007) for his Barkstrong pet collars. See Ohman v. Lance Armstrong Foundation et al, Case. No. 08-cv-00251 (N.D. Okla.) A copy of the complaint, which includes a copy of the design patent, can be downloaded here (courtesy of TMZ.com).

While the complaint does not directly identify what infringing products Livestrong is selling (other than stating that Livestrong is selling collars with inspirational messages to encourage charitable contributions), it would appear that the Foundation is now selling on its website yellow pet collars with the Foundation's LIVESTRONG trademark:

Ohman cited his pending design patent application (it had not yet issued as a patent at the time) as part of his counterclaims against the Foundation in the original lawsuit. The Foundation’s response was to deny any infringement and to assert patent misuse as an affirmative defense. Ohman’s motion to dismiss has been fully briefed by the parties, but the court has yet to rule. Written settlement offers are due to be made by the parties in June pursuant to the court’s January scheduling order.

The dogfight continues.

Owner of ISOFITNESS® exercise system files trademark infringement lawsuit in pro per

2008-05-01T21:01:00.000-07:00

I previously wrote (link here) about a pro se plaintiff who filed a trademark infringement lawsuit against MySpace. On April 28, 2008, another trademark owner, Greg Kelly, filed in pro per a trademark infringement lawsuit in the U.S. District Court for the District of Nevada against Tom Morris, Marsha Morris and TM Wellness Inc. (the “Defendants”). See Kelly v. Morris et al, Case No. 08-cv-00537 (D. Nev. April 28, 2008). A copy of the complaint can be downloaded here. Unlike the MySpace lawsuit, this particular lawsuit was drafted by someone who had at least done some initial research into how to draft a trademark infringement complaint (although, with respect to certain aspects of the suit, noticeably still pro se).

[Note: The facts set forth in the complaint are a little disorganized. The following details were pieced together from the complaint as well as the correspondence attached thereto.]

Kelly is the developer of a unique high intensity exercise method that he has marketed under the name ISOFITNESS since 2003. He obtained two federal registrations for the mark ISOFITNESS (one for physical exercise and strength training on July 12, 2005 and another for providing fitness and exercise facilities on May 2, 2006).

In the fall of 2004, Kelly was pitched the idea of licensing his ISOFITNESS mark and exercise method outside of Las Vegas by a man named Bob Alexander. As Kelly describes it, the two entered into an “at will” agreement to allow Alexander to market Kelly’s ISOFITNESS system in other markets. Alexander formed a company named Isofitness Systems International, Inc. (“ISI”) for this purpose. In November 2004, ISI lined up its first licensee, a man named Al Coppola who opened an ISOFITNESS location in Conroe, Texas.

Sometime in early 2005, Alexander sold the Defendants on the ISOFITNESS business venture. According to Kelly, he had reservations about the Defendants becoming an ISOFITNESS licensee when Alexander first presented the Defendants to Kelly. Nonetheless, the Defendants formed Isofitness of Texas, Inc. in March 2005 and a license agreement was entered into between the Defendants and ISI in April 2005. While it is not clear if Kelly’s signature was on that license agreement, Kelly maintains that that any signature of his on such an agreement is a forgery. In addition, while Kelly asserts that he had no knowledge of the Defendants involvement in the ISOFITNESS business, he was cc’d on an May 9, 2005 e-mail from Alexander to one of the Defendants regarding the Defendants’ involvement in the ISOFITNESS business

Sometime in May 2005, Kelly and Alexander had a falling out. According to Kelly, Alexander indicated that he wanted to work with Coppola and the Defendants on his own, to which Kelly consented so long as Coppola stopped using the ISOFITNESS name and exercise system and Alexander (or ISI) did not try to sell the ISOFITNESS name or exercise system to anyone else. Kelly removed all references to ISOFITNESS locations in Texas from his website soon after (a fact that Kelly maintains should have been evidence to the Defendants that they were not authorized to use the ISOFITNESS name and system).

Kelly maintains that he did not discover that the Defendants were in business until December 2005 when he came across the website http://www.isofitnessoftexas.com/ owned by Coppola and the Defendants and which resembled Kelly’s own website. At that time, Kelly sent an e-mail to Coppola outlining his complaints about ISI’s actions and demanding that Coppola and the Defendants change their names and stop using any references to the ISOFITNESS mark or training protocol. Kelly asserted that Coppola and the Defendants had been the victims of fraud by ISI and Alexander (ISI as a corporation went into default in November 2005 and its charter was revoked a year later by the Nevada Secretary of State).

Kelly and Coppola (acting for himself and supposedly on behalf of the Defendants) began taking steps to negotiate a resolution to allow all of the parties to use the ISOFITNESS mark and exercise system. The negotiations apparently dragged on for two years during which time Coppola and the Defendants continued to operate their ISOFITNESS locations. During this time, the Defendants’ website (isofitnessoftexas.com), by using a search engine optimization company named Magnetiks, displaced Kelly’s own website as the number one hit for a search for ISOFITNESS -- much to the displeasure of Kelly.

On or about October 2007, the parties reached an interim agreement for use of the ISOFITNESS name at a rate of $400 per month (per party) while Coppola and the Defendants worked to change the name of their businesses, which they had done by December 2007 to the name One 30 Fitness (and the Defendants change their corporate name to TM Wellness, Inc.). The agreement, however, did not address any past infringement before October 2007.

On January 31, 2008, Coppola and Kelly reached an agreement settling any past and future claims arising from Coppola’s use of Kelly’s ISOFITNESS marks and intellectual property. The parties also worked out specific differences between the fitness techniques that Coppola would promote compared to Kelly’s ISOFITNESS techniques.

On or about early March 2008 (the dates on Kelly’s letter and the Defendants’ response are a little inconsistent), Kelly wrote a letter to the Defendants (his first ever contact with the Defendants directly) outlining his position on their trademark infringement and terms for resolving the dispute. The Defendants wrote back stating that, after seeking legal counsel, they did not believe they were under any obligation to Kelly. Kelly’s final e-mail to the Defendants on April 14, 2008 expressed his intent to move forward with a lawsuit against the Defendants.

Kelly’s causes of action are for federal trademark infringement, federal trademark dilution, state dilution and unfair competition, common law trademark infringement, cybersquatting, false advertising, and common law trademark infringement.

Vegas™Esq. Comments:
A good illustration of the importance of choosing your business partners wisely and of taking both preemptive and proactive steps to protect your trademarks and other intellectual property.

I find it a little strange that Kelly allowed Alexander to promote ISOFITNESS through an entity over which he admittedly had no control without a clearer delineation of each party’s rights. At a minimum, there should have been some kind of license agreement between Kelly and ISI, which then could have allowed ISI to sublicense ISOFITNESS with Kelly’s express consent. Such arrangement would have more clearly outlined to any potential licensees (like the Defendants) who owned the rights to the ISOFITNESS mark and exercise system. Instead, by allowing Alexander to hold himself out as someone with apparent authority to license the ISOFITNESS system to interested parties, Alexander (through ISI) was able to accomplish the fraud that Kelly maintains Alexander perpetrated on Coppola and the Defendants.

Another curious part of this case is the delay from December 2005, when Kelly first took steps to stop Coppola and the Defendants from using ISOFITNESS, to August 2007, when Coppola first presented Kelly with some kind of proposal to be the exclusive worldwide licensee of ISOFITNESS – a proposal that Kelly ultimately rejected. The complaint lacks any examples of the good faith negotiations that took place during those 20 months – during which time Kelly never contacted the Defendants directly or otherwise put them on notice (even though Kelly acknowledges having the Defendants’ home address back in December 2005). Kelly seems to rely on his discussions with Coppola as putting the Defendants on constructive notice because Coppola served as some kind of trainer and sponsor for Defendants’ ISOFITNESS business.

As for the complaint itself, while not bad for a non-lawyer plaintiff representing himself, it does suffer from some obvious errors although nothing so erroneous as to make the complaint entirely frivolous. The heart of the dilution cause of action is the aforementioned “dilution” caused by the Defendants’ website and their use of Magnetiks to throw off Kelly’s first place listing among search engine listings. There is no discussion of the all-important “fame” of his mark. In addition, Kelly’s cause of actions for dilution and unfair competition under Nevada law cite to Nevada’s law making the use of a Nevada registered mark a misdemeanor, not to N.R.S. §600.435 (for Nevada’s dilution law) or N.R.S. § 598.0915 (Nevada’s Deceptive Trade Practice law).

If Kelly desires to continue to fight this lawsuit himself, he may want to start researching how to oppose a Motion to Dismiss under Rule 12(b)(2) of the Federal Rules of Civil Procedure.

Juicy Couture sues Victoria’s Secret for trademark and trade dress infringement

2008-04-29T20:20:00.000-07:00

I previously wrote (link here) about the efforts by Juicy Couture Inc. (“Juicy Couture”), the owner of the mark JUICY (most often seen on the back side of skintight terrycloth sweatpant-wearing females) to stop the owner of the Juicy Campus website from selling clothing emblazoned with the name “Juicy Campus.” The news today (here, here, and here) was about another lawsuit filed by Juicy Couture, but this time against a much more formidable foe – Victoria’s Secret (“VS”). See Juicy Couture Inc. v. Victoria's Secret Stores Brand Management Inc. et al., Case No. 08-cv-3985 (S.D.N.Y April 28, 2008).

According to published media reports (I have not reviewed a copy of the filed complaint), Juicy Couture is apparently upset over VS’s Pink line of clothing products alleging that they are confusingly similar to Juicy Couture’s own popular clothing lines (“Pink has applied slogans across the seat of pants which famously originated with Juicy Couture and identifies its brand.”).

Juicy and Pink

[ed.- anyone else detect a common theme here?]

Juicy Couture also objects to certain candy-shaped product packaging introduced by VS last October (click here for one account of these new products). Juicy Couture apparently is objecting to VS’s “Panty Pops” (ladies underwear packaged like lollipops), “Panty Candy” (a line of thongs packaged like bon-bons) and “Camy and Panty Cone” (a holiday gift set with tank top and matching underwear wrapped in an ice-cream box).

“Panty Pops"

“Panty Candy”

“Camy and Panty Cone”

Juicy Couture argues that VS’s candy-shaped packaging is confusingly similar to Juicy Couture's own Sweet Shoppe line of packaging resembling lollipops, bon-bons and ice cream cones and thus constitutes trade dress infringement ("In copying Juicy Couture's distinctive and unique trade dress, defendants crossed the line from design imitation to trade dress infringement. Because of the source-identifying function of Juicy Couture's packaging and the striking similarities, the defendant's packaging is likely to deceive consumers as to the origin of the products contained within.") I was unable to any pictures of Juicy Couture's “distinctive and unique” Sweet Shoppe packaging online – all I could find with respect to Sweet Shoppe was a charm bracelet.

Juicy Couture's Sweet Shoppe Charm Bracelet

Juicy Couture appears to be trying to corner the market on terrycloth shorts and sweatpants with slogans across the seat of the pants. As for Juicy Couture’s trade dress claims, while I could not find any pictures of Juicy Couture’s product packaging online (which does make you wonder how unique, distinctive, and recognizable it could be), I doubt that Juicy Couture’s product packaging is so distinctive that it has come to be recognized as a unique source identifier for Juicy Couture – instead of merely novelty product packaging appealing to a female audience.

What are the differences between a trademark, service mark, certification mark, collective mark, trade dress, and trade name?

2008-04-28T06:00:00.000-07:00

I am asked the questions often enough that their answers are worthy of a blog post.

Trademark
A “trademark” is any word, name, symbol, or device, or any combination thereof, used by a party to identify and distinguish its goods from those manufactured or sold by others and to indicate the source of the goods (even if that source is unknown). See §45 of the Lanham Act (15 U.S.C. §1127).

Service Mark
A “service mark” is the same as a “trademark” except that it is used by a party to identify and distinguish the services of that party from the services of others and to indicate the source of the services (even if that source is unknown). See §45 of the Lanham Act (15 U.S.C. §1127). The law specifically states that titles, character names, and other distinctive features of radio or television programs may be registered as service marks notwithstanding that they, or the programs, may advertise the goods of the sponsor.

In short, the two basic functions of a trademark or service mark is 1) identifying the source and origin of particular goods or services and 2) distinguishing for the consuming public the goods or services of one party from the goods or services of others.

Certification Mark
A “certification mark” is any word, name, symbol, or device, or any combination thereof, used by a person other than the mark owner which certifies:

Regional or other geographic origin of such person’s goods or services (e.g., CERTIFIED MAINE LOBSTER and JERSEY FRESH FROM THE GARDEN STATE);

Material, mode of manufacture, quality, accuracy or other characteristics of such person’s goods or services (e.g., the UL logo certifying that certain electrical equipment meets the safety standards of Underwriters Laboratories Inc.; NSF certifying that certain food equipment meets the public health standards established by NSF International); or

That the work or labor on such person’s goods or services was performed by members of a union or other organization or by a person who meets certain standards and tests of competency set by the owner (e.g., UFCW UNION MADE certifying that the goods were produced by members of the United Food & Commercial Workers International Union and AFL-CIO).

See §45 of the Lanham Act (15 U.S.C. §1127); see also prior blog post here on certification marks.

Collective Mark
A “collective mark” is a mark used by members of a cooperative, an association, or other collective group or organization. See §45 of the Lanham Act (15 U.S.C. §1127). There are two basic types of collective marks:

A collective trademark or service mark, which is a mark adopted by a collective group for use by its members who use the mark to identify their goods or services and to distinguish such members’ good or services from the goods or services of nonmembers (e.g., THE FTD BELOVED BOUQUET and AII AMERICAN INSTITUTE OF INSPECTORS); and

A collective membership mark, which only serves to indicate membership in the collective group (e.g., the logo used by members of the Sheet Metal Workers International Association).

While collective trademarks and service marks are classified in the international class as the underlying good or services which the collective mark identifies, a collective membership mark has its own international class (IC 200) (see 37 C.F.R. §6.4).

One important distinction with respect to a “collective mark” compared to a trademark/service mark is that it only serves to indicate membership in the collective group – the collective group itself does not actually use the collective trademark or service mark to identify or distinguish any goods or services although it can advertise and promote the goods sold or services rendered by its members using the collective mark.

Trade Dress
“Trade dress” refers to the design or packaging of a product or service which serves to identify the source or origin of the product or service – the arrangement of identifying characteristics or decorations connected with a product or service (through its packaging, design, or otherwise) that make the source of the product or service distinguishable from others making the same products or offering the same services and which promotes the sale of such product or service. Trade dress involves the total image or overall appearance of a product or service, and includes, but is not limited to, such features as size, shape, color or color combinations, texture, graphics, and even particular sales techniques. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992); Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205 (2000); Traffix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001); Int'l Jensen, Inc. v. Metrosound U.S.A., Inc., 4 F.3d 819 (9th Cir. 1993).

In order for trade dress to be protected as a trademark or service mark, it must be a) nonfunctional and b) distinctive enough in the marketplace to serve as a source identifier (i.e. either because it is inherently distinctive, which is often the case for “product packaging,” or because the trade dress has acquired a secondary meaning, which is often necessary to show for “product designs”).

A product feature is considered functional, and thus cannot serve as a trademark, if the product feature is essential to the use or purpose of the product or if the product feature affects the cost or quality of the product (i.e., exclusive use of the feature would put competitors at a significant, non-reputation-related disadvantage). See TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 33 (2001); Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 165 (1995); Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 850, n.10 (1982).

The basis behind the functionality doctrine was explained by the U.S. Supreme Court in Qualitex as follows:

The functionality doctrine prevents trademark law, which seeks to promote competition by protecting a firm’s reputation, from instead inhibiting legitimate competition by allowing a producer to control a useful product feature. It is the province of patent law, not trademark law, to encourage invention by granting inventors a monopoly over new product designs or functions for a limited time, 35 U.S.C. §§154, 173, after which competitors are free to use the innovation. If a product’s functional features could be used as trademarks, however, a monopoly over such features could be obtained without regard to whether they qualify as patents and could be extended forever (because trademarks may be renewed in perpetuity).

Qualitex Co., 514 U.S. at 164-65.

Some of the factors used by courts to determine functionality are: (1) whether there exists a utility patent directed to the design, (2) whether the owner touts the utilitarian advantages of the design in advertisements, (3) whether there are alternative and competitive designs, and (4) whether the design is cheaper and simpler to manufacture than alternative and competitive designs. See In re Morton-Norwich Products, Inc., 671 F.2d 1332, 213 USPQ 9 (CCPA 1982). If trade dress is found to be functional, it will not be protected as a trademark or service mark regardless of the extent to which the public may attribute such trade dress to a single source and regardless of any public confusion over competing parties’ goods or services.

You will sometimes hear the labels de facto functional and de jure functional. De facto functionality refers to a product design that may be functional but which is not necessary for its function (e.g., the design of the Coca-Cola bottle is functional, in that it serves as a container for Coca-Cola soda beverages; however, the particular design is not necessary for the bottle to serve as a container). This is the type of functional design that can be protected as a trade dress. De jure functionality, on the other hand, refers to a product design that, because of the particular design, provides the owner with a competitive advantage. This type of functional design cannot be protected as a trademark because such protection would allow a owner to control in perpetuity a “useful” product feature thereby inhibiting competition.

Trade Name
Unlike a trademark or a service mark, which serves to identify and distinguish the source and origin of goods and services, a trade name is any word, name, symbol, or other designation, or any combination thereof, which serves to identify a particular business, vocation, or enterprise and which distinguishes such business, vocation, or enterprise from the business, vocation, or enterprise of another. See §45 of the Lanham Act (15 U.S.C. §1127); see also Restatement (Third) of Unfair Competition, §12 (1995). While trade names will typically include such entity designations such as “Inc.,” “Corp.,” “Company,” or “LLC,” a trade name can include the name under which the company is “doing business as” (d/b/a). In addition, a trade name does not function as a trademark or a service mark, and will not be protected as such, unless it somehow attaches to goods or services in such a way that purchasers and prospective customers would recognize the business identified by the trade name as the source and origin of such goods or services.

House Mark
A “house mark” is a mark that is used by a business in conjunction with a line of products to identify the business as the source of such products. A house mark is closely related to a trade name because often times a trade name will serve as a company’s house mark in conjunction with a trademark or service mark used to identify a specific product or service. For example, Toyota Corp. uses the Toyota trade name as a house mark in identifying its line of automobiles including TOYOTA SIENNA, TOYOTA COROLLA, TOYOTA CAMRY, and TOYOTA PRIUS. While house marks are often the same as the business’ trade name, a house mark can also be a separate trademark or service mark, such as the name CRAFTSMAN, which Sears uses in conjunction with a line of hardware tools.

Family of Marks
Finally, you will occasionally hear about a company that has a family of marks. A family of marks is a group of trademarks or service marks that have some kind of common element which allows consumers to recognize the source and origin of the goods or services identified as such. The classic example of a family of marks is McDonald Corp.’s use of the “Mc” prefix attached to some other word to identify one of its products or services including MCRIB, MCMUFFIN, MCFLURRY, etc. (For a recent blog post on McDonalds’ efforts to protect its family of marks, check out this post (here) on Michael Atkins’ Seattle Trademark Lawyer blog).

Finding expert witnesses for trademark cases

2008-04-25T19:44:00.000-07:00

Michael Atkins offers some excellent advice on his Seattle Trademark Lawyer blog about finding expert witnesses for trademark cases.

One popular online source is the online expert witness directory JurisPro. Other expert witness websites listing the credentials of various trademark experts include ALMExperts.com, expertwitnesses.com, and Intota.com.

Of course, one of the more interesting "trademark experts" out there touts his credentials via YouTube (link here). Of course, before you hire him, you may want to check out this wikipedia writeup or the string of posts about this expert on The TTABlog®.

Federal court judge supports Domino’s Pizza’s right to sell Brooklyn Style Pizza

2008-04-24T20:20:00.000-07:00

On April 21, 2008, a U.S. Magistrate Judge for the Eastern District of Texas issued his report and recommendations recommending that the district court grant a motion for summary judgment filed by Domino’s Pizza (“Domino's”) in a trademark infringement lawsuit brought by The Great American Restaurant Company (“Pizzeria”) over Domino’s use of the name “Brooklyn Style Pizza.” See The Great American Restaurant Company v. Domino's Pizza LLC et al, Case No. 07-cv-00052, 2008 U.S. Dist. LEXIS 32495 (E.D. Texas April 21, 2008).

Pizzeria’s complaint alleged, inter alia, trademark infringement by Domino’s of Pizzeria’s registered trademarks for A TASTE OF THE OLD NEIGHBORHOOD and BROOKLYN'S OLD NEIGHBORHOOD STYLE PIZZERIA. After the lawsuit was filed, Domino’s stopped running advertisements using the slogan “taste of the old neighborhood,” but continued to market its Brooklyn Style Pizza. Pizzeria maintained that Domino’s use of the Brooklyn Style Pizza mark will cause consumers to associates Pizzeria's “high quality, hand-made pizza” with Domino's “inferior quality, machine-produced pizzas” even though Pizzeria acknowledges that it does not sell “Brooklyn style pizza.”

Noting that a trademark cannot be infringed by a generic term for the product it designates, the court analyzed Pizzeria’s claim of infringement by turning its focus to the classification of Domino’s “Brooklyn Style Pizza” mark (i.e., whether it is generic or, if descriptive, whether it has acquired a secondary meaning identifying the source of a product, and not just to identify the product itself).

In order to demonstrate that the public perceives the Brooklyn Style Pizza mark as generic, Domino's submitted survey evidence, various newspaper advertisements mentioning “Brooklyn style pizza,” and 28 media articles referring to the term generically. Domino’s also noted that over a hundred restaurants around the country use the Brooklyn Style Pizza name and even the USPTO has recognized “Brooklyn style pizza” as a generic term not entitled to protection.

Pizzeria attempted to argue that there is no such thing as “Brooklyn style pizza” by having a food expert testify as such and arguing that this at least created a factual issue as to the whether the “Brooklyn Style Pizza” mark was generic. The court stated the following regarding Pizzeria’s expert:

Schwartz [Pizzeria’s expert] then devotes four pages of his affidavit directing the Court to where the best pizza can be found and how it is made -- a must read for any pizza maven. Where is the best pizza? According to Schwartz, it is not Domino's, but probably at Di Fara's, which has recently been reopened after having been closed down by the health department. Equally interesting is that Di Fara uses sheep's milk cheese.

2008 U.S. Dist. LEXIS 32495 at *10.

Pizzeria also argued that Domino’s own arguments and evidence demonstrated that the “Brooklyn Style Pizza” mark was at least descriptive. However, the court rejected Pizzeria’s position because, even assuming the mark to be descriptive, Pizzeria had not submitted any evidence showing the “Brooklyn Style Pizza” mark to have acquired a secondary meaning whereby its primary significance to the consuming public was to identify the source of a product, rather than the product itself. Pizzeria’s own survey, which the court actually excluded because it “too flawed to be reliable,” found that ¾ of the participants surveyed had no idea that Domino’s sold a “Brooklyn style pizza.”

The court concluded that, whether viewed as generic or as descriptive, Domino’s use of the name “Brooklyn Style Pizza” could not serve as a basis for Pizzeria to claim for trademark infringement

The court added that, even if Domino’s use of “Brooklyn Style Pizza” could be a basis for Pizzeria’s trademark infringement claim, there was no likelihood of confusion between Domino’s “Brooklyn Style Pizza” mark and Pizzeria’s “Brooklyn’s Old Neighborhood Style Pizzeria.”

Although the court did not do a factor-by-factor analysis of the eight likelihood of confusion factors used by the Fifth Circuit (see American Rice, Inc. v. Producers Rice Mill, Inc., 518 F.3d 321, 329 (5th Cir. 2008)), the court noted that Domino’s survey report was the only probative survey which even addressed the issue of likelihood of confusion, and concluded that there was none. The court noted that the two establishments, while selling the same product (pizza), are different in that Pizzeria is primarily a dine-in restaurant where the pizza is delivered to the customer’s table whereas Domino’s is primarily delivery where the pizza is delivered in a car. [Ed.- this is what the court wrote]. The court further noted that Pizzeria submitted no evidence that Domino’s selected its name with the intent to compete with Pizzeria – rejecting the evidence by Pizzeria of a few customers who presented Domino’s coupons (such evidence “fails to suggest real confusion since it is not unusual according to the testimony for individuals to present inappropriate coupons. See also Pizzazz Pizza & Rest. v. Taco Bell Corp., 642 F. Supp. 88 (N.D. Ohio 1986).” 2008 U.S. Dist. LEXIS 32495 at *12-13). Finally, the court found that Pizzeria had presented no evidence to raise a genuine issue of material fact with respect to a likelihood of confusion with respect to its other phrase “a taste of the old neighborhood”

The court summarized its decision as follows:

If nothing else, this whole exercise has been a learning experience in defining what a Brooklyn style pizza is. One of Domino's exhibits states that its allure is so powerful that Carmine Giovianzzo (CSI: NY) still walks the streets of Southern California in search of a Brooklyn style pizza (evidently he didn't find it at Domino's). So, in the end analysis, if you are from Brooklyn, you may know what it is or what it is not, but, in any event, the mere mention of [“Brooklyn Style Pizza”] doesn't conjure up the image of a $ 9.99 pizza delivered in a cardboard box with a red domino on it.

Id. at *13-14.

The court recommended summary judgment be granted in favor of Domino’s with respect to Pizzeria’s trademark infringement and unfair competition claims arising from Domino’s use of the phrase “Brooklyn Style Pizza.”

The court went on to dismiss Pizzeria’s other claims for unfair competitions under both the Lanham Act and Texas law noting that Pizzeria simply did not address whether Domino’s use of the mark “a taste of the old neighborhood” for the limited time it did caused or was likely to cause any confusion. The court further noted that the parties “exercised 99% of their resources addressing [“Brooklyn Style Pizza”] and nothing more.” Id. at *14. The court recommend summary judgment be granted in favor of Domino’s with respect to Pizzeria’s trademark infringement and unfair competition claims arising from Domino’s use of the phrase “a taste of the old neighborhood.”

Finally, Pizzeria had also sought injunctive relief under the Texas Anti-Dilution Act (see TEX. BUS. & COM. CODE § 16.29). Because the statute allows for recovery without a showing of likelihood of confusion, the court did not grant summary judgment with respect to this claim; however, because this state law claim was the only remaining claim, the court declined to exercise supplemental jurisdiction over the claim (see 28 U.S.C. § 1367 (c)(3)) and recommended it be dismissed without prejudice.

Vegas™Esq Comments:
Around the time Domino’s introduced its Brooklyn Style Pizza, The New York Times ran an article (link here) about the authenticity of Domino’s Brooklyn style pizza – and addresses the issue of what exactly constitutes a "Brooklyn style pizza."

Any reader thoughts about the issue of Brooklyn style pizza?

Caribbean Crème files trademark infringement lawsuit against Krispy Kreme over “Caribbean Kreme”

2008-04-22T19:50:00.000-07:00

Caribbean Creme's smoothie machine

On April 21, 2008, Caribbean Crème, Inc. (“CCI”), a St. Louis, Missouri-based company that produces and sells equipment to make a fruit smoothie by the name “Caribbean Crème,” filed a trademark infringement lawsuit against Krispy Kreme Doughnuts, Inc. and other affiliates companies (“Krispy Kreme”) in the U.S. District Court for the Eastern District of Missouri to stop the famed doughnut maker from selling a frozen beverage drink it calls “Caribbean Kreme.” See Caribbean Creme, Inc. vs. Krispy Kreme Doughnuts, Inc., et al., Case No. 08-cv-00541 (E.D. Mo. April 18, 2008). A copy of the complaint (courtesy of TMZ.com) can be downloaded here.

CCI holds a trademark registration for the design mark CARRIBEAN CRÈME (and Design) (pictured above on the left) for non-dairy, flavored frozen confections and ice cream drinks. According to the complaint, CCI has been selling its flavored semi-frozen drink under the name “Caribbean Crème” flavored since 1994.

Krispy Kreme, in addition to its popular line of doughnuts, has been selling a line of flavored frozen smoothies called Chillers. Sometime before April 8, 2008, Krispy Kreme introduced a new “limited time” (until June 2nd) Chiller flavor called Caribbean Kreme Chiller coinciding with Krispy Kreme limited-time specialty Caribbean Kreme Doughnut.

CCI argues that Krispy Kreme’s use of the name Caribbean Kreme for its competing semi-frozen beverage is likely to cause confusion with its own semi-frozen beverage. CCI claims federal trademark infringement under Section 32 of the Lanham Act (15 U.S.C. §1114), unfair competition under Section 43(a) of the Lanham Act (15 U.S.C. §1125(a)(1)(A)), common law trademark infringement, trademark infringement under Missouri law (Mo. Rev. Stat §417.066(1), and trademark dilution under Missouri law (Mo. Rev. Stat §417.061(1))

In addition to seeking an injunction against Krispy Kreme and an order destroying anything bearing the infringing mark, CCI also seeks Krispy Kreme’s profits, treble damages (under the premise that Krispy Kreme’s infringement was willful), costs, and attorney’s fees (under the premise that this case is “exceptional” under 15 U.S.C. §1117(a))

Vegas™Esq. Comments:
One wonders why CCI did not seek (at least not yet) any kind of preliminary injunction. After all, by the time this case gets anywhere, Krispy Kreme will no longer even be selling the Caribbean Kreme. If CCI was really serious about this infringement and wanted to stop it, why would it not seek an immediate preliminary injunction -- unless perhaps CCI realized its tenuous case for likelihood of success on the merits (weak mark, dissimilar marks when viewed in their entirety, no competitive proximity, Krispy Kreme's intent). The only factors seemingly favoring CCI are identical goods and low degree of care by purchasers (a factor that some Eighth Circuit decisions have recognized in deciding likelihood of confusion). Should CCI decide to push the case, the parties will likely reach some kind of settlement.

One wonders if CCI would have still had an issue if Krispy Kreme had chosen the name “Karibbean Kreme” – a much more fanciful mark more in line with the company’s famous KRISPY KREME mark and which is one additional "K" removed from CCI's mark.

Energy Drink Maker Wins Preliminary Injunction Against Rival Based on Trade Dress Infringement

2008-04-21T06:00:00.000-07:00

On April 14, 2008, a Michigan federal district court judge granted the motion for preliminary injunction brought by Innovation Ventures, LLC d/b/a Living Essentials (“Living”) against rival energy drink maker N2G Distributing, Inc. and Alpha Performance Labs (together “N2G”) based on trade dress infringement by N2G of Living’s distinctive product packaging while rejecting Living’s claims for trademark infringement. See Innovation Ventures, LLC (d/b/a Living Essentials) v. N2G Distributing, Inc. et al., Case No. 08-CV-10983 (S.D. Mich. April 14, 2008).

Living is the maker of a 2 fl. oz. bottled energy drink called “5 Hour Energy” (pictured above). On June 14, 2004, Living filed an intent-to-use application with the U.S. Patent and Trademark Office (“PTO”) to register the mark 5 HOUR ENERGY (for homeopathic supplements, pharmaceutical preparations, nutritional supplements and dietary supplements that relieve or prevent fatigue) on the Principal Register. The PTO rejected registration of Living’s mark on the grounds that it was merely descriptive under Trademark Act §2(e)(1) (15 U.S.C. §1052(e)(1)) (the mark describes a specific characteristic of the goods, namely, providing the user with energy for up to 5 hours). Rather than attempt to argue acquired distinctiveness, Living apparently amended its application to register the mark on the Supplemental Register, rather than the Principal Register (this after it had already filed an Amendment to Allege Use that it began using the mark as early as June 2005).

N2G makes and distributes a line of energy drinks called “Nitro2Go” (normally sold in 8.4 or 16 fl. oz. cans). In August 2007, N2G introduced a product called “Nitro2Go Instant Energy” in 2 fl. oz. bottles (announcement here).

Living discovered N2G’s product at a trade show in early March 2008 after some trade show attendees apparently expressed belief to Living's representatives that Living was also the maker of the “Instant Energy” product. On March 7, 2008, Living filed its lawsuit against N2G alleging federal trademark infringement and counterfeiting, false designation of origin and trade dress infringement, and common law trademark infringement. On March 13, 2008, Living filed a Motion for a Temporary Restraining Order and a Preliminary Injunction against N2G.

The court granted Living’s motion for preliminary injunction, but it did so based on trade dress infringement, not trademark infringement.

The court, in analyzing Living’s likelihood of success on the merits (the first of the four factors the court must balance in deciding to grant a preliminary injunction), focused first on Living’s trademark infringement claim. Living argued a likelihood of confusion between its “5 Hour Energy” mark and N2G’s “6 Hour Energy Shot.” The court noted, however, that registration on the Supplemental Register does not provide the same benefits as registration on the Principal Register, and that essentially the registration provides no additional rights beyond what Living has under the common law. As such, the court first had to determine whether Living’s mark was distinctive or had acquired a secondary meaning.

Living tried to argue that its sales and advertising figures as well as its 90% share of the two-ounce energy drink market (27 times greater than the next closest competitor) supported its argument that its “5 Hour Energy” mark had acquired a secondary meaning. However, the court found that Living had not carried its “heavy burden” at this point in demonstrating that the primary significance of Living’s highly descriptive mark to the public would be as a source identifier of the product rather than an identifier of the product itself. N2G also provided evidence of other two-ounce energy drink products from different manufacturers with such phrases as “7 Hour Energy Boost,” “6 Hour Energy!,” “Extreme Energy Six Hour Shot,” and “6 Hour Power,” which goes against Living’s argument that its “5 Hour Energy” has a strong secondary meaning that particularly identifies the source of the product. As such, the court found that Living had not demonstrated a “strong likelihood of success” on its trademark infringement claim to support its motion for preliminary injunction.

With respect to Living’s trade dress infringement claim, the court first noted the U.S. Supreme Court’s distinction between trade dress cases involving product packaging (which can be inherently distinctive and thus no secondary meaning analysis is necessary) and product designs (which cannot be inherently distinctive). See Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 214-15, 120 S. Ct. 1339, 146 L. Ed. 2d 182 (2000). In addition, the court noted that to the extent that a product's overall trade dress is arbitrary, fanciful, or suggestive, it is still considered inherently distinctive despite its incorporation of generic or descriptive elements. See Paddington Corp. v. Attiki Imps. & Distribs., 996 F.2d 577, 584 (2d Cir. 1993).

Living asserted that the following elements made up its distinctive trade dress packing for its “5 Hour Energy” drink: (1) a terrain climber at sunrise design; (2) color scheme (red, orange, yellow, and shades of blue); (3) the size, color, and font of the product name; and (4) the shape of the bottle (a short neck and a main container with broad shoulders).

While N2G tried to argue that each of the individual elements of Living’s trade dress were either descriptive or generic, the court concluded that, although Living’s “5 Hour Energy” drink product packaging may have some generic and descriptive elements, the “overall product packaging image - the color scheme, fonts, and most significantly the graphical depiction of the landscape and figure –” constitutes an arbitrary, fanciful, or suggestive trade dress thatis inherently distincitve and thus can be protected from infringement without a showing of secondary meaning.

Finding that Living’s “5 Hour Energy” drink product packaging constituted protectable trade dress, the court proceeded to determine whether the N2G’s trade dress is confusingly similar.

While the court recited the likelihood of confusion factors used by the Sixth Circuit (citing Abercrombie & Fitch Stores, Inc. v. American Eagle Outfitters, Inc., 280 F.3d 619, 646 (6th Cir. 2002), the court decided to forgo doing a factor-by-factor analysis and instead focused on the fact that the Sixth Circuit recognizes a presumption of likelihood of confusion in cases where evidence points to “intentional copying” (where the intent of the copier is to piggy-back on the reputation of the product copied). See Ferrari S.P.A. Esercizio Fabriche Automobili E Corse v. Roberts, 944 F.2d 1235, 1242-43 (6th Cir. 1991).

N2G attempted to focus on several different aspects of its product packaging as evidence that it did not copy Living’s trade dress; however, the court found Living’s evidence of intentional copying compelling enough – at least at this preliminary stage – to support a determination that the trade dresses of the two products are confusingly similar. The court specifically noted that N2G’s packaging contains the exact same color scheme, the same black-type italicized font for the logo, the depiction of a silhouetted athletic figure ascending a silhouetted mountain, and even copied Living’s “caution” warnings word-for-word.

As for the other three factors the court must balance in deciding whether the grant a preliminary injunction, the court found irreparable harm based on the general presumption that irreparable harm arises when there is a likelihood of confusion (N2G apparently made no arguments against application of the presumption). The court accepted Living’s argument that the harm to its reputation and goodwill outweighed the harm to N2G in having to recall its product and redesign its packaging. Finally, the court held that the public interest in preventing confusion and deception in the marketplace and protecting Living’s interest in its trade dress weighed in favor of Living.

With that, the court granted Living’s motion for a preliminary injunction.

Vegas™Esq. Comments:
The court’s opinion is a little confusing with respect to N2G’s infringing trade dress. The opinion specifically points out in the beginning that N2G began distributing a product called “Nitro2Go Instant Energy” in two-ounce bottles in August 2007 (pictured above) suggesting that this is the infringing product (and one can see the similarities). However, throughout the remainder of the opinion, the infringing product is referred to as N2G’s “6 Hour Energy Shot,” including specific references to a hiker image and “6 Hour Energy Shot” logo on N2G’s bottle – neither of which appear in the above picture (I only see a surfer and bicyclist).

So it’s not clear if the court’s decision is based on the bottle pictured above or if N2G had some other kind of product packaging that more closely resembled Living’s product packaging. If the former, then I’m not so sure I would agree with the court’s decision with respect to intentional copying and likelihood of confusion; however, if the latter, then the court’s determination as such may be justified.

Cost Plus World Market and World Market Center settle trademark dispute over WORLD MARKET

2008-04-18T17:15:00.000-07:00

I previously wrote (link here) about the trademark infringement lawsuit filed by Cost Plus World Market against the Las Vegas-based World Market Center over the mark WORLD MARKET CENTER. See Cost Plus Management Services, Inc. et al v. World Market Center Venture, LLC, Case No. 07-cv-00156 (D. Nev.). (Links to other news stories on the lawsuit can be found here, here, and here).

World Market Center in Las Vegas

The parties announced yesterday (link to press release here) that they have reached an agreement that will allow both businesses to continue to use their respective logos and names and which will dismiss the pending lawsuit.

Bob Maricich, president and chief executive officer of World Market Center, was quoted as saying:

I am very pleased that we were able to come to a fair and equitable resolution to these trademark and brand-related issues. We believe this agreement preserves the integrity of both brands and allows each of us to move forward with our unique and compelling business models.

Naturally, the terms of the agreement were not disclosed.

Planet Hollywood sues to stop local Las Vegas music band from using the name SUNSET STRIP

2008-04-17T19:46:00.000-07:00

On April 16, 2008, OpBiz, LLC (“OpBiz”), the owner and operator of the Planet Hollywood Resort & Casino (“Planet Hollywood”) in Las Vegas, filed a trademark infringement lawsuit in the U.S. District Court for the District of Nevada against The Production Group, LLC (“TPG”) and its managing member, Glenn Medas, and Shay/Chambers, LLC d/b/a M/C Productions (“MC Productions”) and its managing member David Michael Chambers. See OpBiz, LLC v. Production Group, LLC et al, Case No. 08-cv-00482 (D. Nev. April 16, 2008). A copy of the complaint can be downloaded here.

The mark at issue is the name SUNSET STRIP for use by a live musical band.

OpBiz purchased the formerly bankrupt Aladdin Hotel and Casino in 2004 and began rebranding the entire hotel using the Planet Hollywood name. As part of this effort, OpBiz began developing ideas for the type of entertainment that would be offered in connection with the hotel under its new Planet Hollywood identity.

Sometime in early 2005, a decision was made for the hotel to have its own house band that would “symbolize the PLANET HOLLYWOOD brand – a high-energy, live music and entertainment group performing within the Planet Hollywood property.” OpBiz, supposedly in consultation with Defendants Medas and Chambers and after a clearance search was performed, chose to name this house band “The Sunset Strip Band.”

According to the complaint, OpBiz planned to use THE SUNSET STRIP BAND as a mark designating Planet Hollywood’s ubiquitous house band – and not meant as the name of a specific band. In correspondence between OpBiz and the Defendants, however, the Defendants claim that name was always meant to be for this specific band.

OpBiz hired the Defendants (TPG and MC Productions are in the business of staffing entertainers for various venues) to assemble a music band and dance group for THE SUNSET STRIP BAND, which had its first performance at Planet Hollywood on August 22, 2005.

The complaint notes the Defendants provided the performers and was in charge of what songs, music, and dance would be performed, but that OpBiz “controlled the overall production, including lighting, sound, and final approval on overall style and content.”

On September 28, 2005, OpBiz filed a Nevada state trademark application for the mark THE SUNSET STRIP BAND for “entertainment services rendered by a musical group.” On October 8, 2005, OpBiz filed a federal trademark application for the mark THE SUNSET STRIP BAND (“band” disclaimed) for “entertainment, namely live performances by a musical band.” The mark was registered on January 1, 2007.

The complaint asserts that OpBiz has spent “several hundred thousand dollars” promoting its entertainment services offered under its mark THE SUNSET STRIP BAND in print and broadcast media as well as online through its websites and that consumers have come to recognize Planet Hollywood as the source of the entertainment services offered under the name THE SUNSET STRIP BAND.

From August 2005 to June 2006, Defendants' performers performed regularly at the Planet Hollywood until supposedly they were notified that OpBiz was “temporarily discontinuing performances” while the venue where the band performed was being renovated. OpBiz acknowledges that it is not currently performing any entertainment services under the mark THE SUNSET STRIP BAND, but that it does have a “bona fide intent” to resume use after the renovations are completed.

According to the complaint, sometime in July 2006, Medas asked OpBiz for permission to use the name THE SUNSET STRIP BAND outside of Planet Hollywood for a period of six months so that Medas could help his performers finding another “gig.” Supposedly, OpBiz verbally agreed to such use and sent a written memo confirming such (although a copy of such memo cannot currently be found).

OpBiz maintains that the Defendants continued to use the mark in connection with a musical band and dance group long after the six months had expired. The Defendants registered the domain name http://www.sunsetstriplasvegas.com/ in April 2006, but subsequently linked the domain to a website with information about Defendants' music and dance group. The Defendants continue to promote their group on TPG’s website and MC Productions’ website and have offered their services under the mark to other Las Vegas hotels.

On June 15, 2007, TPG filed its own Nevada service mark application for the mark SUNSET STRIP for “entertainment services, namely performers[sic] by singers, dancers, & musicians & related miscellaneous product[sic] and merchandise" and claiming first use date of August 15, 2005 (7 days prior to OpBiz's claimed first use date).

OpBiz contacted the Defendants on several occasions to demand that the Defendants stop using the SUNSET STRIP name and to cancel its Nevada state service mark. OpBiz contacted Medas by phone on June 22, 2007 and by letter three times (July 18, 2007, September 25, 2008, and October 16, 2007). Medas supposedly ignored the first three contacts, but responded to the October letter asking for OpBiz’s “authority” for its demands – and also mentioning that the name of the group was always SUNSET STRIP and always intended as the name of the group.

When OpBiz provided copies of its federal and state registrations, Medas, on April 3, 2008, responded by denying any infringement and maintained that there was no likelihood of confusion between OpBiz’s THE SUNSET STRIP BAND and its mark SUNSET STRIP.

The Defendants, under the name SUNSET STRIP (pictured below), are currently performing at the Las Vegas Hilton hotel and casino (link here), having secured a long-term contract to provide its musical entertainment services. See also here and here.

OpBiz’s causes of actions are for federal trademark infringement, false advertising, unfair competition/false designation of origin, cybersquatting, trademark infringement and deceptive trade practices under Nevada law, common law trademark infringement, and intentional interference with prospective economic advantage.

OpBiz seeks a preliminary and permanent injunction against the Defendants to stop them from performing under the name SUNSET STRIP and from registering any more domain names with the mark SUNSET STRIP (and ordering the transfer to OpBiz of sunsetstriplasvegas.com domain name). OpBiz also seeks cancellation of TPG’s Nevada State service mark registration, a disgorgement of profits earned by the Defendants for any performances using the SUNSET STRIP mark, the usual damages (compensatory, consequential, statutory, and punitive damages) as well as interest, costs, and attorneys' fees.

The "Sunset Strip" performers

Vegas™Esq Comments:
Noticeably missing from the exhibits attached to the complaint is any type of agreement between OpBiz and both TPG and MC Productions memorializing the understandings of the parties back when the Defendants were first hired by OpBiz to help develop the show. Such agreement might also show what kind of understanding there was with respect to OpBiz’s promotion of the show.

One must always remember that a trademark registration, unless incontestable, is just “prima facie” evidence of the registrant’s ownership of the mark and registrant’s exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the certificate (see §7(b) of the Lanham Act, 15 U.S.C. §1057(b)). As such, a defendant faced with allegations of trademark infringement, but armed with some contradictory evidence to suggest that the registrant might not be the owner of the mark nor have the exclusive right to use the mark, has a fighting chance against such allegations.

One can imagine Medas and Chambers coming back with a different story that they were hired to come up with a band and worked with OpBiz executives to come up with a name for the ban that OpBiz felt was consistent with the Planet Hollywood brand and which also would not infringe any other trademark (thus the clearance search by OpBiz) – but with an understanding among the parties that the name was for Defendants' specific band, and not a Planet Hollywood house band as the complaint alleges.

Also curious is that OpBiz waited several weeks until after the first use of the name to apply to register the mark. If OpBiz was serious about using that name as a mark for a Planet Hollywood house band, why did it not file a Section 1(b) intent-to-use application right away? Perhaps because OpBiz did not think to even claim any ownership rights to the name at that time – and only after recognizing the popularity of the band that had been created by the Defendants did it seek to claim the exclusive right to that name.

Of course, to the extent that Medas claims that the name was always meant to be for Defendants’ band, evidence that Medas asked for permission to use the name following June 2006 could be quite detriment to the Defendants’ position. However, as the complaint acknowledges, there is no evidence of such “verbal agreement” yet (and the OpBiz executive who supposedly gave the consent to use the name is not even identified in the complaint). And if that purported memorandum is never found, then it will be a case of who do you believe between Medas and whomever Medas supposedly received permission from at OpBiz.