Trademarkology: The Law of the Brand

Trademarkology: The Law of the Brand

Is a Design Mark Worth a Thousand Words?

Posted in Brands, Copyright, Registrations, Trademarks

Someone said a picture is worth a thousand words. If true, that would make it really difficult to compare a design mark and a word mark for likelihood of confusion purposes. Fortunately, a recent case from the Trademark Trial and Appeal Board (the “TTAB”) provides clearer guidance.

Aquitaine Wine USA, LLC sought to register the mark below in connection with certain French wines protected by an appellation of origin:

It was refused registration on the grounds of likelihood of confusion with the registration for the mark CHATEAU LAROQUE for use with wines having a different controlled appellation. Aquitaine appealed.

In this case, the TTAB had to analyze whether there was a likelihood of confusion between a mark comprised of both literal and graphic elements against a standard character mark. The TTAB began its analysis emphasizing the factors involving similarity of the marks and relatedness of the goods. The TTAB observed that when comparing a mark with a design element, the words are normally accorded greater weight because they make the greater impression on consumers and consumers use them to request the goods.

Applying this logic to the marks before it, the TTAB concluded that LAROQUE is the dominant element in Aquitane’s mark because of the size, placement and font of the word in the mark. Similarly, it concluded the term LAROQUE is the dominant element of the registrant’s mark because “chateau” was disclaimed as descriptive. Furthermore, the word ‘chateau,’ which refers to a large French country house or castle, and appears in registrant’s mark, corresponds with the image displayed as part of Applicant’s mark.

The TTAB emphasized its obligation to confine its analysis to the manner in which the marks appear in the drawings of the registration and application respectively (rather than the way the marks might be used in commerce). For what it’s worth, below is a copy of the specimen the registrant submitted when renewing its registration last year alongside an image of the specimen submitted by Aquitane in its application:

    

 

 

 

 

 

 

 

 

This may explain why the examining attorney focused on the ‘possibility’ that the registered mark could appear alongside the image of a chateau.

The TTAB spent some time reviewing the way it must analyze the similarity of the marks when one of the marks is a standard character mark. Registrations for standard character marks afford protection for the words (or letters or numbers) for use in any font, style, or color. Thus, when considering the similarity of the marks factor of the likelihood of confusion analysis, the TTAB considers that the words in the standard character mark could appear in various fonts, styles, or colors.

The parties disagreed about the scope of variations this would allow the TTAB to consider. Aquitaine argued that it would be impossible for the registered mark to appear in the same manner of display as its own because that would necessarily lead to copyright infringement of its artwork. The examining attorney argued that the registered mark could easily be displayed alongside an image of a house and vineyard in a way that would underscore the similarities between it and Aquitaine’s mark. The TTAB noted that both parties seemed to be arguing over the correct interpretation of a reasonable manners test. But this test was rejected by earlier precedent, which did not identify a replacement.

The TTAB took this opportunity to articulate such a test. The TTAB held that when comparing a standard character mark to a word + design mark, it would consider variations of the depicted standard character mark “only with regard to ‘font, style, size, or color’ of the ‘words, letters, numbers, or any combination thereof.’” At the same time, when the word + design mark includes a graphic representation of a word in the standard character mark, that fact will be considered in the analysis to determine the overall connotation and impression of the marks.

The TTAB found that the similarity of the marks in this case weighed in favor of a finding of likelihood of confusion. After considering the other likelihood of confusion factors at issue, the TTAB ultimately affirmed the examining attorney’s refusal to register the mark on likelihood of confusion grounds. The concurring opinion criticized the holding to the extent it seemed to limit the possibility or depiction of designs from its analysis of standard character marks.

So is a picture really worth a thousand words? Perhaps before the TTAB, a standard character mark is worth a thousand font, color, and style variations.

March — What a Month! (Part 2)

Posted in Brands, Registrations, Trademarks

No, even though we are down to the Final Four, I’m still not going to write about MARCH MADNESS®.

Rather, I’m going to continue to write about Quinn, Riley, Skylar, and Toby – the four Nor’Easter storms which dumped record snowfall this March. Now being born and raised in Montana, I know a thing or two about snow. However, four Nor’Easter storms in a single month dumping more than four feet of snow in some areas is something to write about!

For those of you who have not been watching the news recently, according to the Weather Channel, a Nor’Easter is a storm that:

(a) typically features winds from the Northeast (thus its name) off the Atlantic ocean;

(b) the storms dump lots of snow in the winter months, but snow is not a requirement for a Nor’Easter; and

(c) the storms are most frequent from September to April, but can happen anytime of the year.

And guess what? According to the good folks over at The Weather Channel, there was almost a fifth Nor’Easter this month. Fortunately for our friends on the East Coast, this low pressure system was too far out into the ocean to qualify as a Nor’Easter and caused only minor coastal flooding and beach erosion.

If Nor’Easters can be so destructive, cause so much damage, and be so widely reviled on the East Coast, then why do so many companies use NOR’EASTER as all or part of their trademarks?

My research revealed the first company to seek registration of NOR’EASTER as a mark was the Gillette Company in 1968 for use in connection with hand lotion. That application matured into U.S. Reg. No. 0871912 – but later went abandoned when it was not renewed.

One can understand the attraction of the word for the University of New England – the UNE Nor’Easters. There, the word Nor’Easters may strike fear in the hearts of their fellow Division III opponents.

Although its mascot, Stormin’ Norman, (voted #1 college mascot in all of Maine) does little to make one shake in their snow boots.

One can also see the connection with Nor’Easter Enterprises, U.S. Reg. No. 2,208,604, for NOR’EASTER for hand tools, namely, shovels (and presumably snow shovels). And, perhaps, one can see a connection with Charles River Apparel’s registration of NOR’EASTER for use in connection with jackets and pants as everyone needs such clothing to survive the elements.

But what about the other companies that use Nor’Easter as all or part of their marks?

In those instances, it is much more difficult to see the attraction of being associated with the dreaded storms. NOR’EASTER is currently registered as all or part of marks for use in connection with the following goods and services (in alphabetical order): beer, boats, coffee, hunting game calls, retail and wholesale distributorship services featuring seafood, vaping products, and windows (non-metal).

In conclusion, even a word associated the loathed snow storms can serve as a mark and be registered with the United States Patent & Trademark Office.

March! What a month! (Part 1)

Posted in Brands, Copyright, Registrations, Trademarks

No, I’m not going to write about MARCH MADNESS® – that annual ritual of college basketball and the NCAA® basketball tournament.

Rather, I’m writing about the crazy winter weather which battered the East Coast with four Nor’Easter storms dumping record snowfall this March. After last week’s Storm Skylar and this week’s Storm Toby, some parts of the East Coast received over four feet of snow. It’s a regular blizzard.

Speaking of blizzards, have you seen the complaint that Dairy Queen filed in federal district court in Minnesota alleging infringement of its BLIZZARD® mark? According to Dairy Queen’s complaint, “One of the most popular and well-known menu items at DAIRY QUEEN® restaurants is the BLIZZARD® treat, consisting of soft-serve ice cream blended with fruit, nuts, candy pieces, and other flavorings. The BLIZZARD® treat is a required core menu item at all DAIRY QUEEN® locations. For those of you not in the know, it looks like this:

Dairy Queen Blizzard

Dairy Queen has five incontestable registrations for BLIZZARD claiming a first use date back to 1946:

Blizzard Registration chart

It is fair to say Dairy Queen is very protective of its BLIZZARD mark. Which is why it did not take too kindly to W.B. Mason selling bottled spring water under its own BLIZZARD mark:

Blizzard Water

In the fall of 2016, W.B. Mason filed trademark applications with the USPTO containing “blizzard” as part of its mark for use in connection with spring water. Check out application serial nos. 87/210,712 and 876/210,633 both filed October 20, 2016 and claiming a first use date of September 15, 2015.

According to the complaint, upon learning of W.B. Mason’s applications, trademark counsel for Dairy Queen contacted the Applicant and requested the applications be withdrawn. W.B. Mason declined and the applications were passed for publication. Dairy Queen promptly opposed, alleging a likelihood of confusion between W.B. Mason’s use and Dairy Queen’s use of “blizzard.” See TTAB Opposition No. 91235851.

When W.B. Mason continued using its mark, Dairy Queen filed the trademark infringement action in its home court in Minnesota. Like I said, March! What a month.

We will continue to monitor this case and give you updates on how both the TTAB and the District of Minnesota address the likelihood of confusion issue presented by this dispute.

In the meantime, stayed tuned for next week where we will explore more of this crazy March weather and the four Nor’Easters.

Specimen Pilot Program

Posted in Brands, Copyright, Trademarks

The United States Patent and Trademark Office (the “PTO”) has launched a new pilot program designed to ensure that specimens of use submitted to the PTO reflect actual use of the mark in commerce.

A mark is “used in commerce” within the meaning of the federal trademark statute (the Lanham Act) when the mark is affixed to goods (or containers or displays) and the goods are sold or transported in commerce and/or the mark is used in advertising or promotional materials that describe the services and the services are rendered in commerce. In both cases, the use must occur in the ordinary course of trade. A U.S. applicant must prove use of the mark in commerce before the application may proceed to registration. All registrants must prove use of the mark (or excusable non-use) in order to maintain the registration. Thus, specimens may be submitted as part of initial applications and/or allegations, statements, and declarations of use.

Under the PTO’s pilot program, third parties are invited to notify the PTO through a designated email address of any improper specimens submitted by an applicant. An improper specimen is one that is not actually in use, but may have been created specifically for the purpose of appearing to satisfy the PTO’s filing requirements.

To notify the PTO of an improper specimen, one must send it objective evidence showing third party use of the same image without the mark or cite to the prior application or registration numbers in which the same images (bearing different marks) have been submitted to the PTO. The PTO must receive the correspondence no later than the deadline for opposing registration of the pertinent application, but the PTO expresses a desire to receive such correspondence prior to publication whenever possible.

If someone is interested in knowing the outcome of the PTO’s investigation into an allegedly improper specimen, they must monitor the TSDR status page of the reported application. The PTO will not respond to the person who notified it of the improper specimen other than by automated reply acknowledging receipt of the report. This PTO program is subject to change and may terminate at any time.

Like letters of protest, this program offers people a low-cost opportunity to identify problems with pending applications and ask the PTO to address them, thereby potentially avoiding the expense and burden associated with addressing them directly through a notice of opposition. Unlike notices of opposition, the person notifying the PTO of an improper specimen does not need to be someone who believes they would be damaged by registration of the mark that is the subject of the pending application. Because the PTO accepts notices of improper specimens only prior to the deadline for opposition, this pilot program will not address improper specimens submitted after the publication period expires.

Although not stated expressly in the PTO’s materials, this pilot program seems to have a purpose similar to some of the PTO’s other programs, like the proposed streamlined cancellation process described here and the audit program originally described here (and which went into effect in November, 2017). All seem generally designed to promote the accuracy and integrity of the federal trademark register.

This PTO program seems to be seeking assistance in identifying a particular type of improper specimen, namely, mock ups or fabricated specimens. Current technology makes it all too easy to create an image that could appear to be a genuine specimen even though the applicant has not made use of the mark in commerce. On the flip side, there are some specimens that are accepted as genuine even if it doesn’t look like much effort went into creating them.

In In re Kohr Brothers, Inc., 121 U.S.P.Q.2d 1793 (TTAB 2017), a precedential TTAB decision, the TTAB affirmed a refusal to register the mark CONEY ISLAND BOARDWALK CUSTARD for use with frozen desserts when the specimen consisted of the following:

 

The examining attorney had refused registration of the mark, observing in part “The specimen is a piece of paper taped to a wall with the mark and a stylized image of a cone dessert printed on it. The location on the wall appears to be above the top of a garbage can.”

On appeal in Kohr, the issue was whether the specimen satisfied the requirements for a point-of-purchase display for goods. The TTAB decided that it did not, but refrained from judging the nature of the specimen itself. When the applicant filed a new application seeking registration of the mark in connection with retail services featuring frozen desserts, the PTO accepted the same specimen displayed in a slightly different location:

The PTO’s mission to preserve the integrity of the federal trademark database is laudable. This program is one tool designed to help achieve that goal, but will necessarily be underinclusive. If you spot an improper specimen, consider taking the time to notify the PTO. If you are an applicant seeking to register a mark, be extra conscientious about working with your attorney to confirm that the mark is being used in commerce and that the specimen accurately reflects this.

Things Are Getting Crowded in the World of Beer Trademarks

Posted in Brands, Copyright, Trademarks

There has been a lot of talk lately about the idea that the supply of trademarks is running short. A recent article in the Harvard Law Review supported that idea: after some “big data” analysis, the authors concluded that (1) there is a finite number of good word trademarks, (2) the supply of those good marks that are not already claimed is dwindling (what the authors call “depletion”), and (3) marks that are already claimed are often claimed by a number of different owners (what the authors call “congestion”). The authors found particular evidence of depletion in the area of trademarks for beverages.

Which brings us to beer. Through most of the post-Prohibition years of the 20th Century, there was a relatively modest number of beer trademarks in use in the U.S. There were regional brews in addition to the mega-brews, but even those were mostly large-scale operations. With Americans growing increasingly used to what might charitably be called “light, easy-drinking” brews, there was a lot of consolidation. According to the Brewers Association, by the end of the 1970s there were only 44 brewing companies in the U.S.

Then began the rise of the craft brew. Inspired partly by the dismal state of the brewing industry, beer enthusiasts took to homebrewing, and some of those homebrewers started businesses. Microbreweries and brewpubs began to sprout in the 1980s. Their numbers – along with the volume of their output – increased dramatically in the 1990s and beyond. By 1994 there were over 500 craft breweries in the U.S., and that number stands at over 6,000 in 2018.

Six thousand breweries, the great majority of them putting out multiple types of beer, means a whole lot of potential beer trademarks. It also means a whole lot of potential conflicts between trademarks, particularly given craft brewers’ penchant for giving their brews playful names. As one brewer put it after a little beer trademark dust-up: “There is a finite number of lame hop puns to be used.”

Predictably, a fair number of beer name trademarks have wound up before the Trademark Trial and Appeal Board. The TTAB hears applicants’ appeals when the Trademark Office refuses applications to register trademarks, and it also hears challenges to registrations by other parties. The key issue in many of those proceedings is whether the mark shown in an application is confusingly similar to a mark that has already been registered.

Here is a sampling of some of the recent TTAB proceedings involving beer marks, with images of the marks where they were available. In all of the applications below, the examining attorney at the Trademark Office refused registration of the applicant’s mark (the first of each pair of marks shown below) based on a likelihood of confusion with the previously-registered mark.

8-BIT ALEWORKS versus 8 BIT BREWING COMPANY (refusal to register affirmed by the TTAB)

 

 

 

 

TIME TRAVELER BLONDE versus TIME TRAVELER (refusal to register affirmed despite the parties’ agreement to coexist)

   

 

 

 

 

 

BLACK FOREST versus BLACK FOREST BREWERY (refusal to register affirmed)

    

 

 

 

 

 

 

 


THE SAISON D’HERETIQUE versus HERETIC BREWING COMPANY (refusal to register affirmed for beer, but allow registration for root beer and other non-alcoholic beverages allowed)

   

MUTT versus LAZY MUTT (refusal to register affirmed)

 

 

 

 

 

 


WOODY WHEAT versus WOODY STOUT and WOODY BROWN ALE (refusal to register affirmed)

 

 

 

 

 


PRINCESS YUM YUM RASPBERRY ALE versus YUMYUM (registration allowed)

  

 

 

 

 

Some of the applicants in those appeals argued that small differences between the marks were enough to avoid confusion because craft brew drinkers are a sophisticated lot and could be expected to distinguish between the marks despite their similarities. The TTAB routinely rejected that argument. As a general matter, the TTAB will presume that consumers will not make careful distinctions between similar marks on similar goods when the goods are inexpensive. It can’t help the applicants’ case that, with beer marks, the goods are often ordered in noisy bars without the opportunity to examine the labels, and sometimes when the consumer’s ability to distinguish is compromised by having partaken of the goods.

The crowding of beer marks will only get worse, particularly if brewers try to protect the names of multiple beers in their product line. One option for brewers is to focus on choosing a protectable mark for the brewery, register that where appropriate, and not worry so much about the name of each different beer that the brewery sells. With the popularity of IPAs and other styles, it’s not uncommon for one brewer to offer multiple different versions of the same style of beer, so it may be necessary to name each beer – with or without “lame hop puns” – meaning lots of marks. The reporting indicates that craft brewers have a history of a “live and let live” attitude unless there is a clear problem, and that attitude is probably a good approach in the case of most beer trademarks. As the Godfather of homebrewing, the great Charlie Papazian, would say: “Relax. Don’t worry. Have a homebrew.”

Information for this post came in part from the Brewers Association website.

Olympic Marks

Posted in Brands, Copyright, Copyright, Trademarks

The opening ceremonies for the 2018 Olympic winter games take place Friday, February 9, but competition has already begun. In addition to competitions on the ice and slopes, there are competitions among brand owners. Official sponsors of the Olympic games pour lots of dollars into exclusivity, promotions, and advertisements related to the Olympics. And sometimes the competitors of those sponsors engage in ambush marketing.

But what about marks related to the Olympics themselves?

The marks surrounding the Olympics receive extra special protection. As regular readers of this blog know, in the United States, one obtains some common law rights in trademarks through use. Obtaining federal registration greatly strengthens those rights. And once a mark is deemed famous within the meaning of the Lanham Act, it may be protected against dilution. But there is yet another form of protection, afforded to only a very select few marks. These marks have statutes that specifically protect them.

Congress has given the United States Olympic Committee (the “USOC”) the exclusive right to make commercial use of certain marks, including OLYMPIC, OLYMPIAD, CITIUS ALTIUS FORTIUS, and other marks related to the Olympics. The USOC protects its statutory right zealously, and has a WEBSITE that identifies logos, words, and phrases it owns or has the exclusive right to control. Part of the website is dedicated to informing the public about permitted and unauthorized uses of the USOC’s intellectual property. As explained on the website, the USOC’s funding comes from sponsorships, so it has an interest in controlling use of the marks to maintain and obtain future sponsors. The USOC may seek civil remedies available to trademark owners under the Lanham Act against unauthorized uses of words and symbols related to the Olympics. The USOC has authority to permit contributors and suppliers to use the marks.

The USOC may even consent to third party registration of marks that include one or more of the terms restricted by the statute. The USOC has done this on some occasions. For example, it permitted the French soccer club, Olympique Lyonnais, to register the mark OLYMPIQUE LYONNAIS (& design) and use it in connection with the soccer club and related merchandise that had been used in the past. However, on most occasions when the USOC is consenting to third party registration of a mark containing a term protected by the statute, the consent relates to an application filed by the International Olympic Committee (the “IOC”). The IOC has filed applications in the United States based on foreign registrations owned by the IOC and then has assigned (most of) the US applications to the USOC.

If you were to file a trademark application that includes a term related to the Olympics, like OLYMPIAD or CITIUS ALTIUS FORTIUS, you would receive an office action citing to the statute above and presenting it as a complete bar to registration. Without consent from USOC, you would likely be out of luck.

But there are some exceptions to the statute. Notably, anyone who used the restricted words or symbols for lawful purposes prior to 1950 is not restricted from continuing to use them. Also, the term “Olympic” is not prohibited when it is not used with other insignia protected by the statute, it refers to naturally occurring geography that received its name prior to 1998, the and use is primarily limited to the western part of Washington state.

So enjoy the Olympic games, but maybe look elsewhere for the inspiration for your next branding campaign.

A PR Headache for the CROCK-POT Trademark

Posted in Brands, Trademarks

Fans of the tear-jerking NBC drama This Is Us will be aware of a certain incident with a kitchen appliance that had a big effect on the show’s Pearson family. (Fans who don’t know what I’m talking about and don’t like spoilers should read no further.)

Fans already knew that one of the main characters died prematurely, but the cause was not revealed until a January episode showing what happened. Turns out that a slow cooker with a temperamental switch caused a spark, which ignited a towel, which ignited the draperies, and things went from bad to worse.

Fans freaked out, taking to social media with tales (and gifs) of throwing away their Crock-Pots. The Crock-Pot Brand people leapt into action, quickly creating a Twitter account (@CrockPotCares) to deal with the public relations problem that had been dropped in their lap like a delicious and family-pleasing but nevertheless painful batch of hot soup.

By all accounts, the Crock-Pot folks did a pretty good job of dealing with the public relations fallout. They tweeted out messages of empathy and information about their product’s enviable safety record:

  

They also released a statement – too lengthy for Twitter – saying in part: “For nearly 50 years, with over 100 million Crock-Pots sold, we have never received any consumer complaints similar to the fictional events portrayed in last night’s episode. In fact, the safety and design of our product renders this type of event nearly impossible.” That statement even invited NBC’s help in correcting the misunderstanding, and the show’s creator obliged with his own tweet:

Something they did not do, which is a little surprising, is point out that the device in the show was not branded as a Crock-Pot. As shown below, the slow cooker in the Pearson home lacks the prominent RIVAL CROCK-POT branding from Crock-Pot slow cookers of the era . . . although other parts of the Pearson device, such as the switch and the handles, do suggest that the This Is Us props department may have de-branded a Crock-Pot brand cooker. Perhaps they did that at the same time they were rigging it to emit the deadly sparks – a thing which, from what I’m told, a genuine Crock-Pot brand slow cooker has never done and simply would not do.

 
Screenshots of the Pearson slow cooker

  
Close-ups of old Crock-Pot® slow cookers

So the Crock-Pot people seem to have passed up an opportunity to say “that’s not us” to fans of This Is Us. This despite the fact that the owner of the mark, Sunbeam Products, in 2014 obtained a registration for the mark IF IT DOESN’T SAY CROCK-POT THEN IT’S NOT THE ORIGINAL.

And there’s a related trademark issue here. Every so often we have discussed on this blog the possibility of “genericide,” which is the death of trademark that occurs when the trademark becomes the generic name for the product. Genericide is relatively rare, but when it happens, it is often because the company that first commercialized the product enjoyed such success that it dominated the market and, in the mind of the consuming public, the trademark became not only the name of the product but also the name of the type of product. Companies whose brands have achieved such prominent status that they threaten to become generic often take steps to ensure that the public is aware of the difference between the trademark and the generic term. If the public considers it a generic term, it can no longer be protected as a trademark and it becomes available for use by competitors. No brand owner wants that.

The CROCK-POT trademark seems like one that is so closely associated with the type of product that there could be a concern about genericide. That’s presumably the reason for the IF IT DOESN’T SAY CROCK-POT THEN IT’S NOT THE ORIGINAL mark.

Given all that, this might have been a good opportunity for Sunbeam’s people to point out that a malfunctioning slow cooker is not the same as a malfunctioning Crock-Pot® brand slow cooker. They might have pointed out that the guilty slow cooker couldn’t have been a Crock-Pot® brand cooker, because it didn’t say Crock-Pot, and, as a wise person once said, “if it doesn’t say Crock-Pot then it’s not the original.” They could have kindly requested that people not refer to the Pearson’s cooker as a “crockpot” when they freak out on social media. And they could have playfully lectured Mr. Fogelman, who didn’t help them out on the genericide point when he seemed to use “crockpot” as a generic term in his tweet about “those lovely hardworking crockpots.” But if Sunbeam has made any effort to do that, I haven’t found it. I would guess that they were so busy with the public relations rapid-response team that the trademark team couldn’t get a word in.

A final note: the Pearson Family Crock Pot even has its own Twitter account (@ThisIsUsCrckPt), but I’m not absolutely sure it’s genuine. The picture looks pretty different. But you know these Hollywood stars – maybe it’s just had some work done.

    
Twitter account                             Screenshot of fictional
profile picture                                Pearson family device

 

The Fight Over the “Golden Knights”

Posted in Brands, Trademarks

Since becoming a Nashvillian a little over a year ago, I’ve fallen in love with a new sport: hockey. Hockey fever is infectious and its contraction was almost unavoidable as the Nashville Predators made it all the way to the Stanley Cup Final for the 2016-2017 season.

This year, there is a new team that has attracted attention both on and off the ice: the Las Vegas Golden Knights. Despite being an expansion team, the Vegas Golden Knights have had a record-setting inaugural season, are currently first in their division, and have even positioned themselves for a run at the 2017-2018 Stanley Cup. In fact, if you check the odds, Vegas is betting on Vegas.

Off the ice, however, the Vegas Golden Knights have found themselves in a bit of hot water as they continue to encounter opposition regarding four of their federal trademark applications. Trademarkology readers might recall that these trademark troubles began back in 2016. For a primer on this subject, check out our prior post: NHL Team Trademark Gets Iced.

Shortly after the Las Vegas NHL hockey franchise announced that it would be known as the Golden Knights in November 2016, office actions were issued by the USPTO which refused the marks “VEGAS GOLDEN KNIGHTS” and “LAS VEGAS GOLDEN KNIGHTS,” associated with clothing items, on the basis of potential likelihood of confusion with a prior-registered mark for “GOLDEN KNIGHTS THE COLLEGE OF SAINT ROSE” owned by the College of Saint Rose in Albany, NY. The Vegas Golden Knights responded to the office actions in June 2017; however, final disposition has been stalled as the Vegas Golden Knights’ applications have been suspended pending disposition of earlier filed applications.

More recently, two other applications for “VEGAS GOLDEN KNIGHTS” and “LAS VEGAS GOLDEN KNIGHTS,” for use in connection with entertainment services, namely, professional ice hockey exhibitions, have also been attacked – but this time by none other than the United States Department of Army (yes – THE ARMY)! These two applications for entertainment services were published for opposition in August 2017. The College of Saint Rose responded by requesting an extension of time to oppose. The Army responded by filing its formal Notice of Opposition with the Trademark Trial and Appeal Board (“TTAB”) on January 10, 2018, requesting that the Vegas Golden Knights’ applications be refused registration. The Army believes that allowing registration of the “VEGAS GOLDEN KNIGHTS” or “LAS VEGAS GOLDEN KNIGHTS” would cause likelihood of confusion, dilution of their brand, and perhaps even cause people to think that the Vegas NHL team is connected or affiliated with the Army.

The renowned U.S. Army Parachute Team has been nicknamed the “Golden Knights” since 1962 and also uses a “yellow/gold, black, and white” color scheme.

Interestingly, the owner of the Vegas Golden Knights NHL team, Bill Foley, was a 1967 graduate of West Point and the Army believes his selection of the “Golden Knights” name and color scheme was intentional. The Army even cited a Tweet from the Vegas Golden Knights’ team manager, George McPhee in its Notice of Opposition.

Pursuant to trademark law, the Vegas Golden Knights initially had 40 days to answer the Army’s Notice of Opposition (which would have been Feb. 19, 2018). However, recent filings with the TTAB reflect that the parties are actively engaged in settlement negotiations and have agreed to suspend all deadlines for 90 days.

So what does this mean? Will the Vegas Golden Knights have to change their name?

TTAB proceedings only relate to whether the Vegas Golden Knights can obtain federal trademark registrations. (To obtain injunctive relief and/or damages against the Vegas Golden Knights, it would be necessary to file a lawsuit in court.) TTAB proceedings often lead to settlement agreements, which I’m sure all of the parties involved would prefer over expensive and protracted litigation.

We will be monitoring the TTAB proceedings and the status of this fight over the “Golden Knights” so stay tuned and subscribe for future updates!

Good Intentions

Posted in Brands, Trademarks

We are two weeks into 2018. Have you kept your new year’s resolutions so far? If you are like me, you have good intentions, but that may be all you have.

If one of your intentions this year is to use a new mark with a good or service (or to begin using an existing mark with new goods or services), consider filing an intent-to-use application to register it.

Although in the United States trademark rights are generally acquired through use, there are some exceptions. If you file an intent to use application seeking federal registration of the mark, and your application proceeds to registration, your protection in the mark dates back to your application filing date, even though you were not actually using the mark at that time. This can provide you with valuable time to prepare and launch the new brand knowing that you do not have to worry about intervening filers at the United States Patent and Trademark Office (the “PTO”). If you are not sure which mark you will use for your new product line, you can file applications for more than one and defer that decision until later. But not too much later, because you will have to prove use of the mark in U.S. commerce before you can get a registration (and you may request only a limited number of extensions of time to do so).

There are some things to think about when filing an intent-to-use application. One thing to consider is that once your application is on file, it becomes publicly accessible. So your intent to use a new mark becomes public knowledge.

Most people do not spend their days combing through the PTO database (those who do become trademark attorneys). But sometimes industry publications make a practice of doing this periodically to see what new applications by major market competitors are on file and to speculate about the implications.

Recently, an online magazine speculated about what H-D U.S.A., LLC’s (Harley-Davidson’s) newly-filed intent-to-use application for the mark 48X could mean: for example, whether it would be a new product or a celebration of the anniversary of an existing one. Another publication targeting the motor vehicle market noticed that Volkswagen Aktiengesellschaft had recently filed a new intent-to-use application for the mark AMAROK. Currently, Volkswagen sells a truck under that mark outside of the U.S. and Canada, so the publication speculated that this signals a plan to begin selling the truck here as well. A little more investigation would have revealed that this is the second time Volkswagen has filed a US application for this mark. The second application was filed just as the first one was expiring because Volkswagen had exhausted all extensions of time to prove use without proving use.

Perhaps Harley-Davidson and Volkswagen enjoy this unsolicited media attention. Maybe articles like the ones cited above help generate buzz among consumers and help build interest until it is time for launch. For brand owners that are more secretive, or who wish to exert more control over the publicity surrounding their new brand, there are strategies for taking advantage of the intent-to-use application and prolonging the secrecy of a potent new mark. What are those, you ask?

We intend to resolve that mystery in a subsequent post. Stay tuned!