California Trademark Attorney® Blog

September 2012 Archives

National Pork Board Lashes Out At "Other White Meat" Trademark Lawsuit

September 27, 2012,

pig.jpgCalifornia - The National Pork Board on Monday called the Humane Society of the United States' new lawsuit over the board's purchase of the trademark "The Other White Meat" an unwarranted challenge to a legitimate business transaction.

The Humane Society filed a complaint against the U.S. Department of Agriculture on Monday in District of Columbia federal over the department's "unlawful authorizations" for the board's purchase of the trademark from a pork industry political lobbying group.
The ongoing payments of $3 million dollars per year under the terms of the trademark purchase agreement violate the Pork Promotion, Research, and Consumer Information Act of 1985 as well as USDA guidelines, according to the Humane Society.

The trademark purchase allows the board and the lobbying group to evade federal restrictions against the use of pork fee dollars for purposes of influencing legislation and government policy, the Humane Society says.

The National Pork Board is a quasi-governmental entity created as a result of Congress' passage of the Pork Act. Under the Pork Act and its implementing regulations, the Board collects a mandatory checkoff assessment, which is a per-capita fee on all hogs sold or imported in the United States.

The board purchased the trademark in 2006 from the National Pork Producers Council, a political lobbying group, which created the trademark prior to the formation of the National Pork Board in 1986. The board subsequently assumed all marketing responsibilities for pork, it said.

"I find it unusual that HSUS is filing suit now over a decision that was made and approved more than six years ago," board CEO Chris Novak said.

The sale price, agreed to by both boards and approved by the secretary of agriculture, was $35 million. NPPC agreed to finance the payments over 20 years, making the payment from the National Pork Board $3 million annually for a total price of $60 million.
"'The Other White Meat' is an incredibly valuable asset, which is why the board in 2006 took steps to assure it would always be owned by pork producers," Novak said. "In 2000, Northwestern University conducted a study that determined that The Other White Meat was one of the five most recognizable taglines in contemporary advertising. So it was important to producers that it be protected."

Even though the board has moved on to using another tagline in its advertising, it continues to use the trademark The Other White Meat. The phrase will be featured by the National Pork Board at meetings of the American Dietetic Association and with the National Pork Board's Advisory Panel of Retail Dietitians, the board said.
The NPPC also criticized the lawsuit itself on Monday.

"NPPC is reviewing the HSUS complaint, but it appears there is no legal merit to this claim, and it is another desperate attempt by the radical activist group to severely curtail animal agriculture and take away consumer food choices," NPPC CEO Neil Dierks said.

AMPAS Wants Answers From Google In GoDaddy Trademark Cybersquatting Fight

September 25, 2012,

movie-film-cannister.jpgCalifornia - The Academy of Motion Picture Arts and Sciences took a shot at Google Inc. last week for refusing to pony up documents and depositions for AMPAS's trademark infringement lawsuit against GoDaddy.com Inc. over Oscar-related domain name cybersquatting, saying Google's arguments in opposition to being dragged into the conflict are unavailing.

AMPAS sued GoDaddy in May 2010 in the Central District of California alleging it was registering, monetizing and trafficking in web domain names that are confusingly similar to the Academy's protected trademarks.

GoDaddy and the domain name registrants achieve monetary gain by using the trademarks to knowingly divert internet traffic away from legitimate Oscar-related websites to infringing domains that are merely "parked pages," according to the Academy's most recent amended complaint, filed last October. Parked domains serve no real business purpose or substantive content, existing solely for the display of revenue-generating ads.

Both AMPAS and GoDaddy are now asking a judge in the Northern District of California to compel Google to provide evidence about the role of its "AdSense for Domains" advertising program in the alleged trademark infringement.

Google is wrong to argue that AMPAS's motion is untimely, especially because a closer look at the timeline reveals that AMPAS spent the 12 months from April 2011 to April 2012 trying in good faith to avoid having to depose Google, AMPAS said in its Sept. 17 reply to Google's opposition.

Google is also incorrect in claiming that the deposition topics are not relevant to the Anti-Cybersquatting Protection Act based on the premise that a court can determine whether a domain name violates the ACPA without referring to the content on the associated website, AMPAS said.

Under the "bad faith intent to profit" prong of the ACPA, courts consistently look to the content of the websites associated with the accused domain name, according to AMPAS. For example, if the website in question were merely used to critique the trademark holder's goods or services, then no ACPA violation would follow, regardless of what the domain name was.

"Google's position simply misstates the law," the Academy said. "Burying its head in the sand, Google tries to simply wish away the "bad faith intent to profit" prong of the ACPA."
Google argued that AMPAS's deposition topics are unduly burdensome upon it, but the company also only previously identified 4 witnesses related to the GoDaddy programs at issue, according to the Academy.

"Recognizing this, Google sets up a "straw man" -- unfairly and obviously broadening AMPAS's deposition topics -- while ignoring AMPAS's narrowing of the topics during the parties' meeting and conferring process," AMPAS said.

Apple Can't Trademark Mobile App Music Icon: TTAB

September 21, 2012,

iPad.jpgCalifornia - Apple Inc. on Wednesday failed in its efforts to persuade the U.S. Patent and Trademark Office to allow it to trademark the square, orange music player app icon familiar to iPhone and iPad users.

The Trademark Trial and Appeal board ruled that Apple's proposed trademark for the icon is too similar to a trademark already registered to the now-shuttered MP3 download service iLike, which also features a double musical note inside an orange square.
Apple sought to register its icon in relation to computer software used to play recorded audio content, sold as a feature of mobile devices like the iPad and iPhone.

The trademark examining attorney refused registration to Apple on the grounds that the proposed trademark is likely to cause confusion with iLike's registered trademark. iLike's trademark is registered in relation to providing temporary use of software for adding music and video profiles on the internet, listening to MP3s and sharing MP3s and music playlists with others.

The appropriate test is not whether the trademarks can be distinguished when subjected to a side-by-side comparison, but whether they are sufficiently similar in terms of their overall commercial impression so that confusion as to the source of the goods and services offered under the respective trademarks is likely to result, the TTAB said.
Though the trademarks are not identical, they both comprise a double musical note in an four-sided orange box, the TTAB noted.

"The basic similarities in the marks outweigh any specific differences that might be apparent upon a side-by-side comparison," the board said. "The differences in the details of the respective depictions of the double musical notes and their background designs do not suffice to distinguish the marks in terms of their overall commercial impressions."

Apple's software and iLike's services, meanwhile, perform similar functions in relation to controlling digital music, according to the board.
Apple argued that consumers looking for MP3 software are careful to distinguish between competing services since, among other reasons, many such services require the entry of personal information.

"One need only look around at any public gathering, or even just walking down the street, and you will notice many people with their handheld devices," the TTAB said. "While this group of people may include discriminating consumers, it also includes those who are not very careful."

Google Accused Of Ripping Off Slogan For Nexus 7 Tablet Ads

September 20, 2012,

nexus7.jpgCalifornia - Market Street Press Inc. slapped Google Inc. with a trademark infringement suit last week alleging Google's ad campaign for its new Nexus 7 tablet infringes Market Street's trademark for the phrase "The Playground Is Open."

Market Street has been using the trademark for over four years, whereas Google has only recently picked it up for the new ad campaign, the complaint in the Middle District of North Carolina, filed Sept. 12, says.

"Notwithstanding Market Street's prior trademark rights, and in violation of Market Street's rights, Google embarked upon a massive advertising campaign utilizing, and otherwise adopted, the identical mark The Playground Is Open for its newly introduced Nexus 7 tablet, resulting in unfair competition, likely confusion, and likely reverse confusion," Market Street says.

Market Street designs, prints and sells a wide variety of promotional, marketing, office and creative products. Its offerings range from business products like marketing banners, pens, deskpads and paper cubes, to ping pong balls and puzzle cubes, to computer peripherals and accessories like USB flash drives, USB key chains, mouse pads and kiosks for tablets, computer screens and other display screens.

The company says it adopted "The Playground Is Open" as a trademark and indicator of source for all of its services and products at least as early as January 2008. Market Street filed a federal application to officially register the trademark on Aug. 20, which remains pending.

Google recently selected, adopted and began using the trademark in connection with its new Nexus 7 tablet, and subsequently launched a multimillion dollar nationwide promotional campaign advertising the tablet with the trademark, Market Street says. Infringing uses occurred during the widely watched television coverage of the 2012 Summer Olympics, for example, the company says.

Due to that ad campaign, the media and general public have quickly come to associate the trademark phrase with Google rather than Market Street, the complaint alleges. Google's use of the trademark will make Market Street's use of the same trademark look like it is in some way connected with Google, or even infringing Google's trademark rights in an effort to capitalize on Google's reputation, Market Street says.

Because of Google's disproportionately larger size, advertising budget, resources, promotion campaign and dominance on the internet, its use of the trademark will continue to "overwhelm and swamp" Market Street's use of the phrase, the complaint says.

Eleventh Circuit Sends Back Rival Orders Of Malta Trademark Infringement Case

September 19, 2012,

Order_of_Malta.jpgCalifornia - The Eleventh Circuit last week issued a mixed ruling remanding a trademark infringement between two religious charitable organizations over the name "Order of Malta" back to a district court for further consideration.

The Sovereign Military Hospitaller Order of Saint John of Jerusalem of Rhodes and of Malta, the plaintiff in the case, is a religious order of the Roman Catholic Church that undertakes charitable work internationally.

The Florida Priory of the Knights Hospitallers of the Sovereign Order of Saint John of Jerusalem, Knights of Malta, The Ecumenical Order, meanwhile, the defendant order, is also a charitable organization with an expressly ecumenical, rather than Catholic, association. It incorporated in Florida in 2005, and is associated with a parent organization which was first incorporated in the United States in 1911.

The plaintiff order sued the Florida Priory in July 2009 accusing it of trademark infringement and false advertising under the Lanham Act, as well as state law claims for unfair competition and trade practices. The district court ruled in favor of the Florida Priory on all counts.

The district court clearly erred, though, in evaluating the Florida Priory's counterclaim that the plaintiff order committed fraud on the U.S. Patent and Trademark Office, the Eleventh Circuit ruled on Sept. 11. The appeals court reversed the cancellation of the four word marks, Registration Numbers 2,783,933, 2,783,934, 2,915,824 and 3,056,803.
"Because we were not presented with sufficient findings to review the Lanham Act infringement claims, we vacate the district court's ruling on that issue and remand for it to consider, under the correct legal standard, confusion with respect to all of plaintiff order's marks--including the four word marks," the circuit court said.

It also vacated the district court's ruling on the state law claims, but affirmed the district court's finding on the Lanham Act false advertising claim in favor of The Florida Priory.
The plaintiff order claims to have been founded in Jerusalem in the eleventh century. It relocated to the city of Acre and later to the island of Rhodes, where it was known as the Knights of Rhodes. After spending about two hundred years on the island of Rhodes, the group relocated to Malta, becoming the Order of Malta.

Hot Dog Purveyor Loses Out In Sinatra Estate's Trademark Challenge

September 13, 2012,

franks-anatra.jpgCalifornia -- The estate of Frank Sinatra on Wednesday shut down a hot dog truck owner's attempt to trademark the phrase "Franks Anatra" with the U.S. Patent and Trademark Office, as the PTO's Trademark Trial and Appeal Board sustained the estate's challenge and rejected the trademark application.

Frank Sinatra Enterprises LLC alleged Bill Loizon's application for the Franks Anatra trademark would create a likelihood of confusion with its own previously registered trademarks for Frank Sinatra's name, falsely suggest a connection with Sinatra and dilute the estate's trademarks.

The estate owns registered trademarks for Sinatra's name in connection with entertainment services including musical performances rendered by a singer, as well as in connection with prepared sauces.

Federal Circuit law dictates that when a trademark attains dictionary recognition as part of the language, it can be taken to be reasonably famous, the TTAB said. Sinatra has his own entries in reference works including the Random House Dictionary of the English Language and the Encyclopedia Britannica, it noted.

Loizon's desired trademark is a close approximation of the name Frank Sinatra, and is also phonetically equivalent, which reinforces the visual similarity, the board ruled.
Loizon argued that Franks Anatra was not a close enough approximation because the "Franks" portion refers to frankfurters, hot dogs and other similar food items, and "Anatra" means "duck" or "drake" in Italian.

The TTAB disagreed, saying there is nothing inherent in the trademark or Loizon's marketing to lead consumers to translate the word Anatra to duck.
"Furthermore, we do not understand how applicant's mark engenders the commercial impression relating to anything other than a play on the Frank Sinatra name," the board said.

Loizon testified, "The name of my business is Franks Anatra. Franks as in frankfurter, Anatra as in People's Republic of Anatra," "an independent island nation" that is "all about the hot dogs," according to the board. Loizon told the board he has placed the badge of his country on the door of his truck.

"They see our badge of our country, our symbol on the door that says People's Republic of Anatra," Loizon testified. "And it's a colorful logo that I created, and it's on the hood with some Latin underneath it. It looks very official, and it sells a lot of people. They believe it. They walk away saying, 'Wow, Anatra, I've never heard of the place.'"
Loizon also admitted, though, that his island nation imagery is not self-evident and that he has to explain it to customers, the TTAB said.

"Suffice it to say, we find applicant's explanation for choosing the mark Franks Anatra to be obscure and find it unlikely that consumers will understand it," the board said.

2nd Circuit Affirms Validity Of Louboutin's Trademark Red Soles

September 5, 2012,

shoes-redsoles.jpgCalifornia - The Second Circuit on Wednesday ruled that French high fashion shoemaker Christian Louboutin is entitled to trademark protection for the iconic red soles on its shoes, dealing a blow to competing fashion house Yves Saint Laurent in its bid to outfox Louboutin's infringement claims.

Louboutin had asked the appeals court to review a New York district judge's August 2011 denial of its motion for a preliminary injunction against YSL's alleged trademark infringement. The district court found that Louboutin's trademark was likely not enforceable and declined to enter a preliminary injunction against YSL's use of the trademark.

But the district court's holding that a single color can never serve as a trademark in the fashion industry is inconsistent with the Supreme Court's decision in Qualitex Co. v. Jacobson Products Co., and so the lower court erred by resting its denial of Louboutin's preliminary injunction motion on that ground, the Second Circuit said.

The appeals court concluded that Louboutin's trademark, consisting of a red, lacquered outsole on a high fashion woman's shoe, has acquired limited "secondary meaning" as a distinctive symbol that identifies the Louboutin brand.

The Second Circuit limited the trademark to uses in which the red outsole contrasts with the color of the remainder of the shoe, ruling that only the modified trademark is entitled to trademark protection.

Because Louboutin tried to enjoin YSL from using a red sole as part of a monochrome red shoe, the appeals court partially affirmed the district court's order insofar as it declined to enjoin the use of red lacquered outsoles in all situations. It partially reversed the district court's ruling insofar as it purported to deny trademark protection to Louboutin's use of contrasting red lacquered outsoles.

Louboutin, a designer of high-fashion women's footwear and accessories, has since 1992 painted the "outsoles" of his women's high-heeled shoes with a high-gloss red lacquer. He registered the red lacquered outsole as a trademark with the United States Patent and Trademark Office in 2008.

In 2011 YSL prepared to market a line of monochrome shoes in purple, green, yellow, and red. Louboutin learned that YSL was marketing and selling a monochrome red shoe with a red sole, requested the removal of the allegedly infringing shoes from the market, and briefly entered into negotiations with YSL in order to avert litigation. Louboutin filed his trademark infringement complaint against YSL in April 2011, after those negotiations failed.