In spite of a few recent hiccups, Chipotle has done pretty well in the Mexican food market. Now, the Denver based company wants to expand its business to include a burger chain. The name and logo the group chose may be problematic though, as a Boston based burger chain says that the branding infringes on its trademark.
Whole Foods has marketed itself as a healthy and organic grocer and claims that it is “America’s Healthiest Grocery Store”. This branding effort has paid off as consumers tend to view the brand as a fresh alternative to big box grocery stores. But the Trademark Office recently put a damper on the grocery chain’s health hype when it rejected the company’s attempt to trademark “World’s Healthiest Grocery Store” because the mark is “self-laudatory” or a “puffing mark.”
After several hundred protestors turned out in Park City, Utah to fight Vail Resorts attempt to register the trademark “Park City”, the business group has decided to abandon its trademark application. This is a change of course for the Colorado based ski resort ownership, which had been pursuing trademark protection on its recently acquired Utah asset, Park City Mountain Resort. Local residents are now relieved to know that the name of the town will not be trademarked and local businesses will have less concern over branding conflicts.
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M&M’s may be loved the world over, but if Swedish people want them, they may need a new name. This news comes after the Swedish Court of Appeals ruled that the M&M’s mark causes confusion among Swedish consumers due to a traditional Swedish chocolate candy that also comes marked with the letter “M”. Mars, the manufacturer of M&M’s, will now need to change the name of the candies in Sweden, appeal the decision, or face penalties laid out by the Court of Appeals if it continues selling there.
Converse’s Chuck Taylor shoes are one of the oldest and most recognizable athletic shoes around. Designed specifically for basketball players, the shoes were introduced in 1917. Converse says that it has sold more than a billion pairs of the shoes worldwide since then. However, even though the shoes have a long history and a distinctive look, they don’t have exclusivity on every design element incorporated into the shoe. That’s the ruling from the US International Trade Commission after Converse filed a trademark complaint with the ITC in 2014.
Coca-Cola is a giant in the beverage industry. If you said everyone in the world knows what Coke is, it may actually be true and not just an exaggeration. With such recognition and substantial marketing resources behind its zero calorie drinks like “Coke Zero”, “Sprite Zero” and “Powerade Zero”. Coke has finally convinced the United States Patent and Trademark Office (USPTO) to allow its trademark registration on the term “zero” in conjunction with its beverages. This grant comes in spite of Dr. Pepper’s protests that the term is a generic reference to zero-calorie drinks. The decision is limited however, and leaves the door open for Dr. Pepper to also register its “zero” products and pushes any future disputes into federal court.
The Navajo Nation is one of the largest indigenous tribes of Native Americans. Its language has been featured in major motion pictures and its culture has been portrayed in books and on TV. Yet, as far as trademarks go, all this recognition may not be enough for “Navajo” as a trademark to qualify as famous. That’s what a judge recently declared as he threw out a trademark dilution claim from the Navajo Nation’s trademark infringement suit against the clothing store Urban Outfitters.
An appeal to the United States Supreme Court is the latest move in an ongoing battle between the Asian-American band “The Slants” and the USPTO over whether the band’s name is disparaging and should be granted trademark registration or not. After a panel of Federal Appeals Court judges reversed the Trademark Office’s decision rejecting the mark, the Office has now appealed to the highest court in the land in an effort to allow it to retain discretion over whether some marks are too offensive for registration. Time will now tell whether the Supreme Court will accept the case and continue its increasingly active role in intellectual property law.
Donuts have never suffered from a popularity issue. With high demand, supply typically rises to match. And as the competition intensifies, bakeries look for ways to innovate and separate themselves from the pack.
One way that a Terra Haute, Indiana bakery has done so is by going against the norm and producing a square shaped donut. While the square shape may have been original, the name it chose to call these donuts was not. The bakery called itself and the donuts it produced, “Square Donuts.” This lack of originality has led to a trademark dispute with another unimaginative bakery in Valparaiso, Indiana, that is also attempting to call its cornered donuts “square donuts.”
Square Donuts Bakery has been producing the 4 sided donuts since 1968. The bakery has proven successful and expanded to 9 additional bakeries in other areas of Indiana. As Square Donuts expanded, a bakery in Valparaiso called Family Express, also expanded into the cornered donuts market, beginning production of the distinctively shaped pastries. It called them, generically enough, square donuts.
This mimicry led Square Donuts to send a cease-and-desist letter to Family Express over the use of the name in 2006. Family Express responded saying it didn’t believe that it was infringing on any trademark rights to the name. The bakeries carried on with their respective square shaped donuts for several years, until the name conflict flared up again.
Square Donuts filed for a trademark application with the USPTO in 2012 and received a trademark registration in 2013. Family Express filed its own trademark application in 2015, but was rejected based on a likelihood of confusion with the Square Donuts registration. Now, Family Express has filed for declaratory judgment to resolve the issue of who has rights to the square donuts name once and for all.
One might argue that SQUARE DONUTS really just describes the actual product. If you asked someone what they saw when they looked at the cornered donuts, they would likely say a square donut. Descriptive names usually aren’t granted trademark protection because giving exclusive rights to a descriptive name preempts competitors from accurately describing their products. This is why Family Express believes that it is not infringing on any valid trademark rights owned by Square Donuts. It sees the name as merely descriptive and Square Donut’s trademark rights should be canceled.
On the other hand, an argument can be made that it is not a descriptive mark or at least has SQUARE DONUT has acquired distinctiveness. While the donuts may be square, there is a good argument that the square shape of the donuts themselves has acquired distinctiveness as a three dimensional or configuration mark. Thus, arguably you could have both a configuration mark and a word mark representing the square donut configuration mark. Configuration and descriptive marks are more easily protected if steps are taken early on to secure trademark rights. Seeking registration is one of these steps.
These two bakeries will hash it out over branding rights, but the moral of the story is that if you really want a protectable brand name, you should spend some time early on getting sound legal advice so you can take steps to secure your trademark rights before major issues arise challenging those rights.
If you were around in the 1970s when Jaws was first released, you probably thought twice about going into the ocean after seeing the thriller. Even younger generations recognize the iconic shark and have a little fear in the back of their minds. Despite or maybe because of the fear Jaws incited, the movie was a box office hit, becoming the first movie to surpass $100 million in domestic theater ticket sales. With wide viewership and an impact on beach-going behavior, Jaws left its mark on American culture. But that was 40 years ago. Is that culture legacy still relevant? According to the Trademark Trial and Appeals Board, the answer is yes.
This became a debate in 2013, when Mr. Recipe, LLC, which operates a streaming internet channel that provides cooking related content, applied for a trademark on “Jaws” and “Jaws Devour Your Hunger” in the class “entertainment, namely, streaming of audiovisual material via an Internet channel providing programming related to cooking”. The Trademark Office rejected this application based on a likelihood of confusion with the original trademark registration for the movie Jaws, which registered in the class “video recordings in all formats all featuring motion pictures.” The trademark examiner argued that consumers would make some association between the cooking channel and the Jaws movies thus requiring a rejection of Mr. Recipe’s application.
In response to this rejection, the trademark attorney for Mr. Recipe downplayed the modern recognition of the Jaws movies claiming they only obtained a “niche” level of fame. He also pointed out the differences in trademark classes between a streaming internet channel and motion pictures. The examiner didn’t buy these arguments however. The attorney then appealed the decision to the Trademark Trial and Appeals Board.
The TTAB reaffirmed the trademark examiner’s decision, stating that the Jaws movies have permeated general culture and are still parodied to this day. It also took into account the fame of the Jaws mark, instructing that famous marks are given a wider scope of protection. With its options effectively exhausted, the cooking channel will need to take another bite at naming itself.
Jaws is just too famous and culturally relevant to share trademark space with others, at least others providing some type of video or media content. If you have questions about what is or isn’t eligible for trademark protection, please contact the attorneys at Trademark Access. Let our experience protect your valuable brand.