USPTO Appeals to the Supreme Court Over “Slants”.

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.

This protracted battle between the band and the Trademark Office goes back multiple years now. The Slants began using the name in 2006 and have been fighting with the Trademark Office since 2010 when they first filed a trademark application. The Trademark Office initially rejected the band’s application on disparaging grounds arguing that the name was offensive to those of Asian ancestry. The Slants responded claiming they chose the name to take on stereotypes and claim they have received strong support from the Asian community. The Trademark Office said this didn’t matter and even on appeal to the Trademark Trial and Appeals Board, the band’s application was rejected.

After the USPTO refused to budge on its stance, the Slants appealed the decision to the Federal Appeals Court. The 12 judge panel reversed long standing USPTO policy and trademark law, saying that denying the band its trademark registration was unconstitutional and an infringement on its right to free speech under the First Amendment. In response, the USPTO now hopes that the Supreme Court will hear the case and listen to its argument that rejecting its trademark application is not a restriction on the band’s freedom of speech. The USPTO argues the band can call itself whatever it wants, but that the government should not have to grant it “extra” rights that come along with trademark registration if the mark is offensive, scandalous, or disparaging.

If the Supreme Court hears this case, it has potential implications for another high profile trademark case. The Washington Redskins would love for the USPTO to be stripped of its power to determine what is and is not disparaging after its trademark registration was canceled in a recent ruling. Another victory for The Slants at the Supreme Court level would pave the way for the Redskins to re-obtain their trademark registration rights.

Trademark law can be complex and not everything is eligible for trademark registration. 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.

Indiana Bakeries Square off Over Square Donuts

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.

Jaws Still Too Famous To Share Trademark Space With a Cooking Show

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 “House of Cards” Faces Trademark Infringement Lawsuit

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.

Free Trademark Application Program

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 Airlines

Delta Airlines Files Lawsuit Against Vacation Scammers

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.

Milano Cookie

Milano Cookie Trademark: Pepperidge Farms versus Trader Joe’s

While a traditional cookie is round, they can come in all kinds of delicious shapes and sizes. A cookie that ventures outside the cookie shape norm is Pepperidge Farms’ Milano cookie. The Milano is a distinctive oval shaped cookie sandwich with chocolate in the middle. It has been a big hit for Pepperidge Farms and they intend to keep it that way. That’s why they recently filed a lawsuit for trademark infringement against Trader Joe’s alleging Trader Joe’s Crispy Cookies infringe the look and package design of Pepperidge Farm’s iconic Milano cookies. Continue reading “Milano Cookie Trademark: Pepperidge Farms versus Trader Joe’s”

Pine Tree Trademark Lawsuit

Air Freshener Trade Dress Fight: Pine Vs Palm

Everyone has seen the tree shaped air freshener dangling from a rear view mirror used to cover up the scent of stale French fries and gym clothes. Air fresheners turn out to be big business. That’s why Car-Freshener Corp of New York is suing Exotica Fresheners of Ohio for trademark infringement, claiming Exotica is knocking off its trademark look right down to the packaging and style of the writing it uses. Car-Freshener wants Exotica to stop imitating its branding and pay Car-Freshener damages for misleading consumers. Continue reading “Air Freshener Trade Dress Fight: Pine Vs Palm”

Cancellation Proceeding: Nautigirl Defeats Nautica

In David versus Goliath fashion, Christine Palmerton, owner of a small business and the brand Nautigirl, overcame a challenge to her trademark registration by mega brand Nautica. Palmerton had a U.S. trademark registration for her Nautigirl logo, which included the word Nautigirl and an image of a sassy looking sailor woman. Nautica claimed that Palmero’s brand was too similar to its brand and sought cancellation of her mark. After nearly three years of litigation and the support of a law school pro bono clinic, the U.S. Patent and Trademark Office sided with Palmerton. Continue reading “Cancellation Proceeding: Nautigirl Defeats Nautica”

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

Other Related Articles

Trump Trademarks “Make America Great Again”
First Amendment Rights Trump Trademark Infringement
Twitter Forces TwitPic Shutdown