Month: October 2015

Amazon Wins in Federal Court

Federal Appeals Court Sides With Amazon in Trademark Case

A panel of three federal appeals judges had second thoughts recently, changing its mind on whether Amazon would have to face trial over a trademark dispute with a watchmaker. The change in course was most likely spurred by a desire to avoid re-opening the debate over the internet “initial interest confusion” doctrine. While this decision provides relief to Amazon, watchmaker Multi Time Machine (Multi Time) probably feels a little gypped.

This flip-flopping by the panel relates to the issue of “initial interest confusion” which arises from the trademark claim brought against Amazon. Multi Time claims go something like this: Amazon returns suggestions for competitors’ watches when a customer searches for a particular model of watch made by Multi Time that Amazon does not carry. By suggesting competitors’ watches, it may lead to consumers falsely assuming these other products are from or associated with Multi Time. In doing so, Amazon allegedly uses Multi Time’s own brand equity to steer customers away from Multi Time and toward competitors, thus capitalizing on the good will of Multi Time.

Initial Interest Confusion type of trademark infringement does not require a likelihood of confusion at the time goods are purchase, only that consumers are initially confused in order to get their attention leading to a sale. There is a well-known analogy to explain Initial Interest Confusion that was proffered in Brookfield v West Coast Entertainment. In that case, the court proposed a hypothetical regarding competing video stores. Blockbuster Video puts a billboard on the highway advertising a West Coast Video (its competitor) at an exit. However, there is no West Coast Video at this exit, but there is a Blockbuster Video. A consumer exits the freeway in hopes of finding a West Coast Video store, but instead finds the Blockbuster Video store. The consumer obviously sees that there is no West Coast Video store and that there is only a Blockbuster Video. The consumer decides to purchase from Blockbuster Video as a suitable replacement. Even though the there is no confusion at the time of purchase, Blockbuster is still capitalizing on West Coast Video’s trademark and misappropriating West Coast Video’s goodwill.

Multi Time challenges Amazon’s redirect of customers to competitors based off of a search for genuine Multi Time watches. Multi Time believes that Amazon should return a search indicating there are no matches instead of suggesting competitors’ products. In response, Amazon contends that there is no likelihood of consumer confusion, the keystone of trademark law, because its search results are labeled with the name and manufacturer of each item and include a picture. Allegedly, reasonable consumers who are familiar with online shopping would realize that there is no connection between the other suggested products and Multi Time’s MTM watches.

It’s interesting that the panel was so quick to reverse itself. With this flip-flopping of decisions, it’s easy to see that there is still some confusion about the correct trademark outcome here. The internet has created some new and unique trademark issues and sometimes it is a struggle to identify exactly how they should be handled. Ultimately, utilizing the likelihood of confusion standard gives good guidance to whether there really is a trademark issue or not. Would a reasonably prudent consumer be confused as to the source of the goods offered? If not, there is no likelihood of consumer confusion. That is what the panel of judges decided in this case the second time around.

Amazon isn’t the only company who has faced this type of challenge. Google and Yahoo were victorious in similar suits. With the explosion of internet keyword searches, initial interest confusion has become a hotly contested issue.

Article written by DA Johnson. Connect with DA on

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Donald Trump may be an outsider when it comes to politics, but he is certainly not an outsider when it comes to business. Unquestionably he understands the importance of creating a brand and protecting it. Obviously, that’s why he filed a trademark application in anticipation of a presidential run on the phrase “Make America Great Again”. The USPTO granted Trump a trademark registration for this mark for political action committees service and political fundraising. With this registration in hand, Trump is looking to expand his trademark protection into other classes as well. Indeed, Trump has filed three additional trademark registration applications with the U.S. Patent and Trademark Office.

Continue reading “Trump Trademark Registration: “Make America Great Again” Campaign Slogan”

Dirty Fight Over Trademarks in Utah

Soda shops where you can order a “dirty” Diet Coke have become quite the rage in Utah as of late. Drinking a “dirty” soda may sound unappealing to the uninformed, but all “dirty” means in the soda context is the addition of flavored syrup shots (typically coconut and sometime also lime). As custom soda shops grow in popularity, one shop claims it coined the term “dirty” and with a federal trademark registration in hand, wants the other shops to stop using it.

The Utah soda flavor craze allegedly traces its roots back to St. George, Utah, where a soda shop called Swig began selling flavor shot enhanced sodas. When Swig opened for business in 2010, it quickly became a hit. Its “dirty” flavors, brightly colored straws and pebbled ice resonated with customers. In 2013, Swig looked to protect its signature brand by filing a trademark application on “dirty” in the class of “concentrates and syrups for making soft drinks.” The trademark registered in 2014.

As the business took off, others took notice. Similar soda shops began springing up in northern Utah. One in particular, Sodalicious, had (allegedly) a very familiar feel and used “dirty” to describe flavor enhancements for its drinks. It also allegedly used brightly colored straws and menu boards very reminiscent of Swig’s. This (alleged) imitation was quickly detected by Swig.

Swig’s CEO said that he tried for several months to get Sodalicious to stop using the term “dirty” to describe its drinks, stating that if Sodalicious stopped using the term, Swig would not take any further action. Apparently, Sodalicious wasn’t interested in making any changes and continued to use the term. This forced Swig to further escalate the matter.

Swig filed a lawsuit against Sodalicious alleging that Sodalicious infringed its trademark registration on “dirty” and also infringed on its trade dress, claiming that the look of Sodalcious’ shop is nearly identical to Swig’s shops, even down to the brightly colored straws and cups with bubbles on them. The look and feel of a product can be protected through trade dress, so long as the look is not a functional element of a product. If there is a likelihood of consumer confusion between the aesthetic elements of two products or services, trade dress infringement can be found. Swig believes that Sodalicous is in violation of both its trade dress and trademark protection.

This case of success breeding imitation is all too common. Copycat companies abound in most industries, particularly those with a low cost for entering the market. While it is not illegal to copy a successful business model, elements of a brand, like logos, signature names, and product design can be protected via trademark and trade dress. The lawsuit is in its early stages and could potentially settle before ever going to trial. But if you are a fan of the “dirty” soda, you will want to keep abreast of this fight.

Article written by DA Johnson. Connect with DA on

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