Category Archives: Trademarks

“Johnny Football”

By: Joe Carnicella, intellectual property attorney with Picadio Sneath Miller & Norton, P.C. ()

On March 20, 2014, the USPTO rejected an application for the “Johnny Football” trademark on the grounds that the applied-for-mark consists of a name, portrait or signature identifying a particular living individual whose written consent to register the mark is not of record.  On November 1, 2012, Kenneth R. Reynolds Family Investments, an investment firm based in College Station, Texas, filed for the trademark “Johnny Football” as Johnny Manziel began his ascent to fame as Texas A&M’s quarterback.  Johnny Manziel, through his organization JMAN2 Enterprises, filed for the same trademark three months later.   The investment firm now has six months to request that the USPTO reconsider its decision or to file an appeal.  The application filed by Manziel’s organization has been stayed pending the outcome of the investment firm’s application.

What Is a Trademark?

By: Joe Carnicella, intellectual property attorney with Picadio Sneath Miller & Norton, P.C. ()

As part of our “What is . . . ?” series, it’s time to find out just what is a trademark / service mark.

PSMN What Is...? SeriesA trademark / service mark is a word, phrase, symbol or design, or a combination thereof, that identifies and distinguishes the goods or services from those manufactured or sold by others and to indicate the source of goods or services, even if that source is unknown.  There are five categories of marks: fanciful, arbitrary, suggestive, descriptive and generic.  A fanciful mark comprises a term that has been invented for the sole purpose of functioning as a trademark or service mark.  These words are either unknown in the language or are completely out of common usage.  Examples of fanciful marks include PEPSI and KODAK.  An arbitrary mark comprises words that are common in language but, when used to identify particular goods or services, do not suggest or describe a significant ingredient, quality or characteristic of the goods or services.  An example of an arbitrary mark is APPLE for computers.  A suggestive mark comprises words that, when applied to the goods or services at issue, require imagination, thought or perception to reach a conclusion as to the nature of those goods or services.  A descriptive mark comprises words that merely describe an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services.  Finally, a generic mark comprises words that the relevant purchasing public understands primarily as the common or class name for the goods or services.

Now that you have an understanding of what is a trademark / service mark, the next step is to determine whether you can and should obtain a mark.  An important issue to determine is whether a mark is registrable.  One of the most common grounds for refusal of a registration is that the potential mark causes a likelihood of confusion with an existing mark.  In particular, a likelihood of confusion exists when the marks are similar and the goods or services relate in a way that such consumers would mistakenly believe they come from the same source.  Other grounds for refusal exist as well.  The other important issue to determine is whether the mark is enforceable based on the strength of the mark.  The strongest mark, and thus, the easiest to enforce, is a fanciful mark, and next in line would be an arbitrary mark followed by a suggestive mark.

If you are interested in obtaining a trademark / service mark, you should consult a trademark attorney to advise and to assist you with the federal registration process.       Continue reading

Western District Analyzes Trademark Issues: Use in Commerce; Abandonment; and Doctrine of Foreign Equivalents

By: Joe Carnicella, an intellectual property attorney with Picadio Sneath Miller & Norton, P.C.

On September 13, 2013, Judge Cercone of the Western District of Pennsylvania issued an opinion in Taza Systems, LLC v. Taza 21 Co., LLC, et al., No. 2:11-cv-073, 2013 U.S. Dist. LEXIS 130974 (W.D. Pa. September 13, 2013), covering various fundamental trademark topics.

Relevant Facts

Taza Systems is the owner of three service mark registrations on the Principal Register of the USPTO: (1) the word mark TAZA; (2) the word mark TAZA A LEBANESE GRILL; and (3) the design mark TAZA A LEBANESE GRILL.  These marks cover restaurant and bar services in International Class 43.  Taza Systems operates two restaurants in Woodmere, Ohio and Cleveland, Ohio.  In July 2008, Taza 21 opened a restaurant in Pittsburgh, Pennsylvania, under the names TAZA21, TAZA21 FRESH, and TAZA21 FRESH SHAWARMA CAFE.

Use in Commerce

Taza 21 asserted that Taza Systems’ registered marks were invalid and subject to cancellation because Taza Systems did not provide services in interstate commerce as required to justify registration under the Lanham Act.

According to the Lanham Act, 15 U.S.C. § 1051 et seq., a mark is used “in commerce” on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce.  Commerce is defined to mean “all commerce which may lawfully be regulated by Congress.”  Because Congress’ authority under the Commerce Clause extends even to purely intrastate activity if that activity substantially affects interstate commerce, the Lanham Act’s authority includes the same.  The court discussed the term “in commerce” as it applies to restaurants located in a single state.  Some factors that have been deemed to satisfy the interstate commerce requirement include location near interstate highways, servicing customers from other states, advertisements in out-of-state publications and purchasing ingredients from out-of-state vendors.

The court determined that Taza 21 would have the burden of proving at trial that Taza Systems did not use the registered service marks “in commerce”, and in doing so, Taza 21 would have to produce evidence to contradict and overcome the rebuttable presumption of validity and ownership of the marks afforded to Taza Systems because it holds registration certificates for all three service marks.  The court concluded that Taza 21 failed to adduce sufficient evidence that could establish at trial that the service marks are not used in commerce.

Abandonment

Taza 21 asserted that Taza Systems’ marks were invalid and subject to cancellation because Taza Systems failed to police third-party uses of confusingly similar marks.

Under 15 U.S.C. § 1127, if a trademark or service mark becomes generic, or otherwise loses its significance as an indicator of source due to the conduct of the owner, it can be deemed legally abandoned.  A mark can also be deemed legally abandoned if the owner discontinues use, with an intent not to resume it.  However, a party arguing for abandonment has a high burden of proof because abandonment, being in the nature of a forfeiture, must be strictly proved.  A “failure to police” a mark is one type of owner conduct that is commonly assumed to result in abandonment.  However, in order to prove this type of abandonment, the challenger must establish that the presence of third-party users in the marketplace resulted in what is described as a “loss of trade significance,” which is another way of saying that a mark is no longer distinctive because it fails to identify and distinguish the services of one person from the services of others and to indicate the source of the services.  As a reminder, the distinctiveness of a mark is evaluated by four categories: (1) arbitrary or fanciful; (2) suggestive; (3) descriptive; and (4) generic.  The first two categories are inherently distinctive and are afforded protection under the Lanham Act automatically; the third type of mark must acquire distinctiveness as an identifier of the source of goods or services before it can be eligible for protection; the fourth category of marks is never protected as a mark.

The court analyzed Taza 21’s evidence, which consisted of only a list compiled by counsel of 51 businesses that included TAZA in their name and an excerpt from a Thomson CompuMark Trademark Research Report issued to Taza Systems’ attorney seven years prior, and determined that such evidence did nothing to establish that Taza Systems’ marks lost their significance as an indicator of the source of its restaurant and bar services.  According to the court, the evidence did nothing more than establish that, at one point in time, various businesses across the United States may have used the word TAZA in their names and that those businesses ranged from coffee shops and restaurants to blown glass manufacturers and residential building contractors.  Moreover, the court applied the Dawn Donut Rule (see Dawn Donut Comp. v. Hart’s Food Stores, Inc., 267 F.2d 358 (2d Cir. 1959)) and concluded that, because these third parties use their marks in geographically “separate trading areas” and there was no evidence that Taza Systems had imminent plans to expand into the third-party user’s territory, no public confusion was likely.  The court ruled that Taza 21 failed to submit evidence sufficient to establish that the moniker TAZA had become generically descriptive of restaurant services as a result of Taza Systems’ failure to police the market.

Descriptiveness – Doctrine of Foreign Equivalents

Taza 21 asserted that Taza Systems’ marks were invalid and subject to cancellation because the marks were merely descriptive upon application of the doctrine of foreign equivalents.

Registration of a mark on the Principal Register constitutes prima facie evidence of the validity of a trademark and of the owner’s exclusive right to use it in commerce.  However, if a challenger comes forward with evidence to establish that the mark was erroneously registered, the registration can be cancelled or otherwise invalidated.  Under the doctrine of foreign equivalents, foreign words from common languages are translated into English to determine whether they are generic or descriptive.  However, this doctrine applies only if the ordinary American purchaser would stop and translate the mark into English.  When it it unlikely that an American buyer would translate the foreign mark, either because of unfamiliarity with the foreign word or association of the word with its foreign language through decor, the doctrine does not apply.

During prosecution of its marks, Taza Systems disclosed that the word “taza” translates from the Lebanese dialect of Arabic to English as “fresh,” and each of the registration certificates explicitly reflects this translation.  Taza 21 submitted as evidence printouts from various on-line dictionaries reflecting that “taza” translated from Hindi to English as “fresh” and “green,” that “taze” translated from Turkish to English as “fresh” and “youthful,” and “taza” translated from Persian to English as “fresh, young, new.”

The court analyzed this limited evidence and determined that Taza 21 failed to adduce any evidence that would allow a reasonable juror to overcome the presumption of validity afforded to Taza Systems by its federal registrations and to conclude that the ordinary American purchaser would deem the mark TAZA to be descriptive of “restaurant and bar services.”  The court opined that, because the mark TAZA appeared in the context of a restaurant that serves Lebanese food, plays Lebanese music and is decorated with Lebanese decor, a reasonable juror could find that the ordinary American purchaser would not be prompted to translate the mark TAZA, thereby making the doctrine of foreign equivalents inapplicable.  Moreover, even assuming that the doctrine of foreign equivalents might apply, the court determined that Taza 21 failed to produce evidence that the doctrine would invalidate the marks.  In making this decision, the court considered certain statistics, which demonstrated that only a very low percentage of the U.S. population speaks Arabic, and concluded that the ordinary American purchaser would not stop and translate the term TAZA into English.  The court also considered the pages from the various dictionaries submitted by Taza 21 and determined that such evidence would not invoke the doctrine because there are multiple translations and varying foreign spellings and pronunciations.  Finally, assuming arguendo that Taza 21 could establish that the ordinary American purchase would stop and translate “taza,” the court held that no reasonable juror could conclude that “fresh” is a word used to describe restaurant and bar services.  Although “fresh” could be suggestive of the type of products or ingredients used at a particular restaurant, as opposed to another, suggestive marks are inherently distinctive and entitled to trademark protection.  The court held that the Taza Systems’ registrations for “fresh” do not remove an inevitably descriptive or generic word for restaurant or bar services in a foreign language from public use in the United States.

Chilling Effect? Wendy’s Sues to Protect Frosty Trademark

By: Joe Carnicella, intellectual property attorney at Picadio Sneath Miller & Norton, P.C.

On June 21, 2013, Wendy’s filed a lawsuit against United Dairy Farmers, Inc. alleging infringement of Wendy’s well-known Frosty trademark along with infringement of its red and yellow trade dress used on its Frosty cups.  Wendy’s asserts that the Frosty trademark is famous and that sales of products identified by the Frosty trademark have exceeded tens of millions of dollars.  Also, Wendy’s asserts that its yellow and red trade dress is famous and that there is widespread consumer recognition of the trade dress as designating the source of its desserts.  Wendy’s alleges that United Dairy Farmers’ marketing of its products as “Frosties” and “Frosty Malts” is a complete knock-off of Wendy’s signature Frosty dessert.  According to a Wendy’s spokesman, Wendy’s filed this suit to protect its iconic brand and to avoid consumer confusion.

The lawsuit has been filed in the United States District Court for the Southern District of Ohio Eastern Division, No. 2:13-cv-596.  Wendy’s is seeking compensatory and punitive damages and is seeking an injunction barring United Dairy Farmers from selling its products and requiring it to destroy its packaging.

Under Armour Seeking to “Protect Its House”

By: Joseph R. Carnicella, intellectual property attorney with Picadio Sneath Miller & Norton, P.C.

Under Armour has filed suit against Nike alleging that Nike has infringed certain Under Armour trademarks as a result of Nike’s use of the phrase “I Will” in advertisements.  Under Armour alleges that Nike’s use of “I Will” infringes its trademark rights, dilutes a famous mark, e.g. the slogan “I will protect this house,” and constitutes unfair competition.  Under Armour alleges that Nike launched an advertising campaign on its Facebook page and YouTube video page that repeatedly use the “I Will” trademark/tagline, and as a result, consumers have already associated Nike’s use of “I Will” with Under Armour.

Under Armour filed the lawsuit on February 21, 2013, in the United States District Court for the District of Maryland, Baltimore Division (1:13-cv-00571).  Nike has not yet filed a response to the complaint.  We will continue to monitor this action.

Starbucks® v. Starbarks

by: Kelly A. Williams, a shareholder at Picadio Sneath Miller & Norton, P.C.

Near the top of the list of my favorite things in life (besides my family and working at PSMN of course) are dogs and Starbucks® coffee.  In fact, let me take a brief moment to give a shout out to my black lab, Sadie, who may be reading this blog over her morning crunchies (really—she’s that smart).  Anyway, because of my love of dogs, Starbucks® and intellectual property infringement law, this definitely caught my eye:  “Starbucks Objects to Dog Day Care Starbarks’ Logo,” which I found on the ABCNews website.

So what do you think?  Would people looking for a dog daycare likely be confused by a logo that looks like the Starbucks® logo but says Starbarks Daycare?  Maybe.  Maybe not.  I don’t want to take a position because I like both companies.  I think I’ll just sit back, have a cup of coffee and pet my dog (when I get home from work).  See you in a little bit, Sadie.

Popular Reality Television Show Deals With Trademark “Situation”

By: Robert M. Palumbi, attorney at Picadio Sneath Miller & Norton, P.C.

When we think of the typical reality television show today, we are generally focused more upon the outrageous conduct of the characters rather than the implications of the onerous terms of the contracts between the cast and company. However, intellectual property rights are currently directly in dispute between Michael “The Situation” Sorrentino and MTV owner Viacom over trademarks to the phrases he uses on the show “Jersey Shore.”

A trademark generally refers to a distinctive sign or indicator used by an individual or company in order to identify their products and services to the public, usually through a logo or brand. Using a trademark without the permission of the owner in certain products which may be similar or dissimilar would constitute trademark infringement, allowing the owner of a registered trademark to institute legal proceedings against the infringer.

Sorrentino has claimed in the past that many of the catch-phrases he uses on the show were developed prior to filming, with the intention of using such phrases in the show and later asserting trademark rights. On August 22, 2011, Sorrentino, through his company, MPS Entertainment, filed a registration with the Trademark Board for the term “twinning”, with the intent to use the phrase on t-shirts. On August 15, 2012, MTV owner Viacom filed papers at the Trademark Trial and Appeals Board stating that it owned any and all catch-phrases that Sorrentino develops on the show.

So what is Viacom’s basis for such a position? It can all be traced back to the oppressive Participant Agreement Sorrentino signed with the studio that produced the original “Jersey Shore.” In that Participant Agreement, Sorrentino waived the rights to “all ideas, gags, suggestions, themes, plots, stories, characters, characterizations, dialogue, text, designs, graphics, titles, drawings, artwork, digital works, songs, music, photography, video, film, and other material whether or not fixed or reduced to drawing or writing, at any time heretofore or hereafter created or contributed by me which in any way related to Jersey Shore.”

Nonetheless, this was just the original contract between the parties. After the show became popular, Sorrentino and Viacom signed an amended contract which reasserted the above rights, adding “The above language shall not be construed to grant to Artist or otherwise allow Artist the right to issue t-shirts featuring Artist’s quotes from the series.” Viacom followed this up with an additional provision that states “The above language shall not in any way limit any previous grant of rights to the Producer.”

Based upon this Participation Agreement, Viacom stated in papers filed with the Trademark Trial and Appeals Board that “Under the terms of the Participant Agreement Form, all rights in any intellectual property relating to Jersey Shore belong to 495 Productions Inc., the production company which creates the programs in the Series, which in turn assigned those rights by separate contract to Remote Productions Inc., a wholly owned subsidiary of Viacom. Therefore, Viacom is the rightful owner of all rights in and to the “twinning” mark and slogan.”

These developments highlight the carelessness of individuals who are explicitly willing to sign away their personal rights just for a chance at becoming a celebrity. Production companies are well aware of this phenomenon, and seemingly are in a position of power when proposing terms. However, this doesn’t mean that Sorrentino was permanently placed in such a position; remember, he did sign an amended contract. Perhaps a smarter way to deal with such a situation would be the path Karen J. Connelly took in her 2005 case against ValueVision Media. (Connelly and S.Y.K., LLC v. ValueVision Media, Inc. d/b/a ShopNBC, 393 F. Supp. 2d 767 (D. Minn. 2005).

Connelly worked as a television program host of the corporation, and her initial contract was similarly as oppressive as Sorrentino’s, forcing her to sign away all “inventions, innovations, or improvements in the method of conducting Employer’s business or otherwise related to Employer’s business, including new contributions, improvements, ideas, and discoveries, whether patentable or not or otherwise protectable by copyright, trademark, common law or trade secret law.” However, as Connelly grew in popularity, she also had an opportunity to sign an amended contract, which did in fact in retain some trademark rights. Perhaps if Sorrentino would have taken advantage of his opportunity to sign an amended contract he wouldn’t be in the situation he finds himself in.

USPTO Update—New TTAB Manual and Trademark Dashboard Released

by: Robert Wagner, intellectual property attorney at Picadio Sneath Miller & Norton, P.C.

Last month, the USPTO issued new rules and provided information that will be useful to trademark practitioners. In May 2011, the USPTO published the third edition of the TTAB Manual of Procedure (TBMP), which is the first update since 2004. The latest edition “incorporates all case law, statutory changes,  and changes to the Trademark Rules of Practice and Federal Rules where applicable as of November 15, 2010.” The complete version can be downloaded here. Trademark practitioners before the Trademark Trial and Appeal Board (TTAB) will need to review the changes and become familiar with these new rules.

In addition, building on its successful patent dashboard, the USPTO launched a trademarks dashboard. This dashboard, in the USPTO’s Data Visualization Center, provides up-to-date information about trademark filings at the USPTO, such as the average time to the first action, average total pendency of an application, number of applications, and other relevant statistics. This information will allow trademark attorneys to better inform their clients of the delays they may face in filing for a trademark. The USPTO now has three dashboards (patent, trademark, and policy and external affairs) that provide current statistics for the public, which builds on Director Kappos’ goal of providing more transparency about USPTO procedures.

The Cost of IP Justice – Can Small Businesses Afford it?

Posted By: Henry M. Sneath, principal shareholder and IP Group Chair at Pittsburgh Litigation and Patent Prosecution boutique Picadio, Sneath Miller & Norton, P.C. (hsneath@psmn.com or 412-288-4013)

The Patent Reform Act of 2011 portends yet another problem for small business folks trying to develop technology, and more importantly trying to enforce it. We have written about the pending legislation in prior posts. If it passes the US Congress, and if the “first to file” patent rule is therefore adopted by the USPTO as the law, patents will go to those with superior resources, in-house legal departments and the wherewithal to file patents on a moment’s notice. Gone will be the rule that “invention” is the starting point. It will be the result of a race to the PTO.

This is only part of the current IP problem for small businesses however, and the bigger problem is litigation cost. Small businesses simply cannot afford to bring or defend intellectual property lawsuits. If they are the plaintiff, it is likely that they have been given advice by counsel on the anticipated expense of patent or trademark enforcement litigation. Legal fee costs, expert witness costs, deposition costs, demonstrative evidence for trial costs and lost opportunity time for employees can add up quickly and it is important for the client and counsel to set a budget and to discuss each phase of the litigation with a projection of costs. Sadly this cost discussion is often ignored and we have received calls from potential clients who have exhausted their litigation budgets and who are nowhere near a settlement or trial. Frustrated they seek new counsel, but often new counsel is hampered by the inability to properly fund the ongoing litigation.

More difficult perhaps is the plight of the small business (or individual) defendant in an IP suit. These litigants are often ill-prepared for the costs and rigor of defending litigation in Federal Court. Having never been sued before, but having read about the high cost of lawsuits, they frequently seek legal counsel with the plea: “Can we end this quickly as I can’t afford to be in a lawsuit?” When Plaintiff is seeking to shut down production and sale of the new defendant’s chief product line, the answer to this question may not be easy. I tell them sure – we can end it early – all you need to do is stop making  the product that is your main source of revenue, agree never to make it again, pay the plaintiff money for their alleged damages and pay all of their legal fees. These legal fees are generally not insignificant and may have been generated by one or more large law firms at enormous billing rates.

The client, who may even have solid defenses, is then faced with a difficult choice between: 1) Ignore the defenses and cave in quickly with all of the resultant cost and loss of income; 2) Engage in some litigation to try to establish some leverage for a favorable settlement or 3) Take the chance that expensive litigation will, over time, allow a favorable result and perhaps even an award of attorney’s fees to repay the defendant for the litigation cost. It is option 2 which poses the problem of delicate balancing by lawyer and client. How much litigation and cost is enough to create favorable settlement leverage? The client needs to balance the revenue/profit of the allegedly offending product or mark, against the phased cost of litigation.  We can project that phase one (investigation, pleadings, Federal Rule initial disclosures, status conference before the court etc) might cost “x” dollars. The client can decide whether that cost is appropriate against the revenue stream attributable to the product or mark, and determine when to make the settlement move. There is never, of course, any guarantee that the settlement option will work and therein lies the balancing act problem. The client may get stuck in long litigation and need to simply fight its way out. Good communication between lawyer and client is critical to making these decisions.

Judge Unclogs Issue on Redirection of Internet Traffic Between Competing Companies

by:  Joseph R. Carnicella, intellectual property associate with Picadio Sneath Miller & Norton, P.C.

On February 15, 2011, Judge Schwab of the Western District of Pennsylvania ruled in favor of Fagnelli Plumbing Company, Inc. on its motion for summary judgment and found that there were no genuine issues of fact relating to the claims against Gillece Plumbing and Heating, Inc., et al., for a cybersquatting violation of the Anticybersquatting Consumer Protection Act (ACPA), a violation of the Lanham Act, 15 U.S.C. § 1125(a)(1)(A), and common law trademark infringement and unfair competition.  

According to the Judge’s Memorandum Opinion, Fagnelli Plumbing has been the registrant of the domain name “fagnelliplumbing.com” since 2000, and Gillece Plumbing purchased and registered the domain name “fagnelli.com” with GoDaddy in March 2007.  After learning that internet traffic was being redirected to Gillece Plumbing’s website and requesting in a letter that Gillece Plumbing cease and desist from redirecting internet traffic, Fagnelli Plumbing commenced the lawsuit on May 18, 2010. 

With respect to Fagnelli Plumbing’s cybersquatting claim, the Court analyzed the ACPA and concluded that the name “Fagnelli” was a distinctive mark entitled to protection, the registration of “fagnelli.com” was identical or confusingly similar to the name “Fagnelli” and Gillece Plumbing acted in bad faith with the intent to profit.  In regard to the alleged Lanham Act violation, the Court noted that generally the Lanham Act does not protect surnames unless they are distinctive or famous, yet held that “Fagnelli” acquired a distinct and secondary meaning with Western Pennsylvania at the time when Gillece Plumbing began to use the mark.  The Court also determined that Gillece Plumbing’s use of “Fagnelli” created a likelihood of confusion in the marketplace.  Moreover, the Court granted summary judgment on Fagnelli Plumbing’s claims for common law trademark infringement and unfair competition because the Court found these claims to be identical to the violation of the Lanham Act claim.  In addition to granting Fagnelli Plumbing’s motion for summary judgment, the Court also granted a permanent injunction prohibiting Gillece Plumbing from redirecting internet traffic from fagnelli.com or any other domain name using the word “Fagnelli” and owning the domain name fagnelli.com or any similar domain name.  The Court noted that a subsequent proceeding will be held to determine damages against the Defendants.