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.
Netflix’s House of Cards series has enjoyed a highly successful run on the streaming site and just released its fourth season. With so much success, it has built up a nice name for itself. Even many of those that haven’t watched the series probably have at least heard of it. That could all be in jeopardy though, as the series distributor, MRC II Distribution Company, faces a trademark challenge from the registered owner of the trademark on “House of Cards”.
D2 Holdings is the registered owner of the trademark on “House of Cards”. The group applied for the mark in 2008 and received a registration in 2009. The registration is in the trademark class covering entertainment in the nature of visual and audio performance. As part of the registration, the D2 mark mentions games of chance and poker in its registration.
MRC II has applied for its own trademark registration on House of Cards, but it has been rejected by the Trademark Office on a likelihood of confusion rejection with the Trademark Office citing the D2 Holdings as a similar mark.
One wonders whether a proper trademark clearing search was performed (no pun intended) before the title of the Netflix series was selected. If so and the producers of “House of Cards” were aware of D2 Holdings’ trademark registration before naming their series, one also wonders who made this decision and why they thought the benefits of doing so outweighed the risks. Potentially, there could be grounds for asserting willful infringement.
In any event, this is another example of where sound legal advice from a trademark attorney could be valuable and would have been useful early on.
Trademark Access and Trademark Attorney Perry Clegg would like to announce a new community friendly program. The free trademark application program. Every month Trademark Access will be performing several free trademark applications. Applicants will still be responsible for the standard filing fees required by the USPTO, but the Attorneys work will be at no charge.
The program is designed to help smaller start-ups, businesses in remote locations, charities and veterans. However, all applicants will be considered. To be considered for a free filing, fill out an application. Be sure to include as much information and tell us why we should consider you.
Once your application is submitted we will review it and notify you by email, within 5 business days. If you are selected to receive a free trademark application our attorney will file your application with the USPTO and respond to any non-substantive office actions.
When your certificate is issued our staff will send it to you. We will notify you when the time comes to renew your registration.
Delta is one of the largest airlines in the world. That’s what makes it an attractive target for trademark infringement. If you want your business to look legitimate, it helps to be associated with Delta. But if you aren’t legitimate and don’t have Delta’s permission to use its brand, you run the risk of getting sued, which is exactly where a group in Florida finds itself.
Delta recently filed a sealed trademark infringement lawsuit against a group of Florida based “trademark pirates” that Delta claims have been using materials with Delta logos and branding to scam people into buying bogus vacation packages. The lawsuit is sealed, which means that the defendant is not immediately named. Delta hopes by not naming the group it will be able to prevent them from destroying incriminating evidence. Delta is pursuing a federal raid to obtain the counterfeit materials. If the defendants are notified too early, the infringers have the chance to destroy marketing materials using unauthorized Delta branding, making it more difficult for Delta to prove infringement.
The lawsuit claims that the company advertises a special relationship with Delta and offers up to 60% off on travel. The company targets consumers both domestically and internationally via fax and other forms of communications. These advertisements mislead consumers into believing there is a real association with Delta. Delta says that this illegal use of its intellectual property harms the company’s brand and is seeking punitive damages. This is an interesting infringement case because it involves direct copying and use of an actual brand. More often, trademark infringement cases involve at least some difference between the infringing brand and the actual brand. Typically a mark is not copied exactly but is similar enough that it confuses consumers into believing there is some connection between the two products or companies.
This, however, appears to be a classic case of counterfeiting. A claim for trademark counterfeiting can be pursued under federal law using the Lanham Act. A “counterfeit” trademark is defined under federal law as a “spurious mark which is identical with, or substantially indistinguishable from, a registered trademark.” Classic trademark counterfeiting commonly involves an unauthorized third party providing a product or service that is made to imitate a product or service of the victim, including the victim’s trademark, so that consumers are deceived into purchasing what they believe is the victim’s product or service.
Regardless of the type of infringement, it is important to protect your brand. Any type of infringement can damage your company’s reputation even if by merely diluting the strength of your brand identity. If you have questions about the trademark process or are ready to file a trademark application, please contact the trademark attorneys at Trademark Access. Let our experience protect your valuable brand.