Posted On: May 31, 2011

Trademark Attorney’s Refusal to Register Spoons Yogurt Design Mark Affirmed

trademark-attorney-likelihood-of-confusion-frozen-yogurt.jpgThe USPTO Trademark Attorney refused Davide Mebane’s intent-to-use trademark application to register the Spoons Yogurt design mark on the Principal Register for “frozen yogurt” based on the likelihood of confusion with the previously registered Big Spoon Yogurt design trademark for “retail frozen dessert store services featuring frozen yogurt” under 15 U.S.C. §1052(d). In any likelihood of confusion analysis, the Board considers the du Pont factors of (1) the similarity/dissimilarity of the trademarks, and (2) the similarities of the goods to be key. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Unfortunately for Applicant, he only discussed the similarity of the marks in his brief.

In considering the similarity of Applicant’s mark and the registered mark, the Board noted that it “has been consistently held that similarity in any one of the elements of sound, appearance or meaning is sufficient to support a finding of likelihood of confusion.” Thus, although the Board agreed with the Applicant that “Big Spoon” dominates in the registered trademark and the word portion – as opposed to the design – will leave more of an impression in the consumers mind, it disagreed that the term “spoon” is weak because of widespread use.

The board examined twenty-two live registrations that included the term “spoon” cited by the Applicant and deemed many to be part of a phrase without any evidence of actual use. As a result, the “third-party registrations have little probative value because they are not evidence that the marks are in use on a commercial scale or that the public has become familiar with them.” The Board also gave a cold shoulder to the webpages Applicant submitted to show third-party use of “spoon” for similar services because they were too few in number and had a different commercial impression than that of registrant’s mark. Further, due to the shared term “spoon” in both design marks that consumers will not simultaneously encounter, the Board found that “while the marks differ in appearance, the marks are similar in sound, connotation and commercial impression; these similarities outweigh the dissimilarity in appearance.”

As to the second factor, the Board quickly dispensed a finding that the nature of the goods and services are related partly based on Applicant’s own admission. And the Board thus affirmed the Section 2(d) refusal to register the mark.

In re David W. Mebane, Serial No. 77765008 (May 18, 2011)[not precedential].

Posted On: May 22, 2011

Furniture Copyright Infringement Lawsuit May Be Subject To Useful Article Defense

furniture-copyright-useful-article-attorney-marge-carson.jpgLos Angeles, CA – Marge Carson, Inc.’s furniture copyright infringement case, originally filed in North Carolina, has been transferred to the Central District of California via stipulation of the parties after a jurisdictional spat. Now that the procedural issues have been addressed, the focus can turn the substance of Marge’s purported copyrights in the furniture. Marge claims that as early as 2003, it has “offered furniture under one or more of its Bordeaux™, Les Marches™, Pacifica™, Palladian™, Perugia™, Segovia™, Umbria™ and Vouvray™ collections (the “Furniture Collections”).”

Defendant Philippe Langdon Furniture, Inc. is accused of selling “furniture collections that include items bearing designs substantially similar to the copyrighted designs existing upon Plaintiff’s Furniture Collections, which are the subject of currently pending federal copyright applications.” Unfortunately for Plaintiff, it waited until 2010 and after Defendant’s alleged infringement commenced to file copyright applications.

Despite its delay, Plaintiff seeks attorneys’ fees and costs that are only available – per 17 U.S.C. § 412 – if the copyright application was filed before the infringement began or within three months of first publication. As a further hurdle, which timely copyright registration would have avoided, Plaintiff is not entitled to prima facie evidence of copyright validity because its application was not filed within five years of first publication per 17 U.S.C. § 410(c). But even before getting to those hurdles, Plaintiff is going to have to establish that it is entitled to copyright protection because copyright protection does not extend to “useful articles”, such as furniture designs. Design patents, however, do protect furniture designs, but must be filed within one year from the date of public disclosure.

The case is Marge Carson, Inc. v. Philippe Langdon Furniture, Inc., CV11-04202 PSG (C.D. Cal. 2011).

Posted On: May 17, 2011

DC Shoes Sues Over OG Kush Trademark, Parody Defense Likely

trademark-parody-defense-dc-shoes-dg-kush-marijuana-lawyer.jpgSanta Ana, CA – Apparel and footwear manufacturer DC Shoes, Inc. owns several USPTO registered trademarks for DC Shoes logos and DCSHOECOUSA. DC Shoes contends that through its widespread use and advertisements of its products, the marks have become famous. Owning trademarks, however, doesn’t mean you should always sue purported infringers that have a valid parody defense that can possibly invite public backlash.

DC Shoes accuses IQ 185 of operating an online store – – that sells marijuana-related apparel and accessories, including T-shirts and hats bearing allegedly infringing trademarks. The accused logos, pictured here, “include the interlocking letters ‘O’ and ‘G’ and a [marijuana] leaf, and ‘OGKUSHUSA’.” (Definition of kush, here.) Plaintiff claims that it sent a cease and desist letter to Defendant regarding the allegedly infringing products, but Defendant ignored DC Shoes’ demand. So DC thought it would be a good idea to file a lawsuit for trademark infringement, dilution, and unfair competition to attract more attention to Defendant’s sale of products that are protected by the First Amendment and the parody defense.

Two recent cases illustrate that a parody defense can be successfully used and sometimes provide the defendants with more positive publicity than the plaintiff imagined. In Louis Vuitton v. Haute Diggity Dog the appellate court sided with a parody pet product maker that used clever names such as Chewy Vuiton, Bark Jacobs, Sniffany & Co., and Dog Perignon. In another David v. Goliath battle, The North Face unwisely sued a high school kid for selling garments under the witty South Butt trademark. Not content with harassing a kid with a trademark lawsuit, The North Face wanted further bad publicity by overzealously attacking him and his father during depositions. In the end, however, the South Butt case settled and the kid was allowed to continue selling his T-shirts, butt but not without providing an amusing response to the complaint.

At the heart of every trademark case is consumer confusion, i.e. no confusion = no infringement. Does DC Shoes seriously believe that consumers purchasing weed parody T-shirts from defendant's website are likely to be confused that they're purchasing DC Shoes products? The case is DC Shoes, Inc. v. IQ 185 Apparel, SACV11-00721 AG (C.D. Cal. 2011).

Posted On: May 15, 2011

Trademark Attorney’s Descriptiveness Refusal Affirmed

trademark-attorney-refusal-register-jewelry-supply-mark.pngThe Trademark Examining Attorney refused Jewelry Supply, Inc.’s trademark application to register on the Principal Register as merely descriptive for the following services:

online retail store services featuring jewelry boxes, jewelry findings, jewelry displays, jewelry repair kits, tools for making jewelry, beads, magnifiers, craft kits, crystals, and educational material, specifically books and various media, including instructional videos on the subject of jewelry (in International Class 35). In re Jewelry Supply, Inc., Serial No. 77475181 (May 4, 2011) [not precedential].

Applicant amended its application during prosecution to seek registration under Section 2(f) of the Trademark Act based on acquired descriptiveness. The Examining attorney, however, maintained the refusal because the evidence of acquired distinctiveness was insufficient. The sole issue on appeal was whether Applicant met its burden of establishing, by a preponderance of the evidence, that its trademark had acquired distinctiveness under Section 2(f).

First, the TTAB determined the degree of descriptiveness of mark in relation to the recited services. Based on dictionary definitions and third party registrations, the Board found that Jewelry Supply was highly descriptive of Applicant’s online retail store services featuring jewelry and jewelry-related products.

The Board then turned to Applicant’s evidence in support of its Section 2(f) claim of acquired distinctiveness. When a mark is highly descriptive, more evidence is required to show acquired distinctiveness. “Evidence of acquired distinctiveness can include the length of use of the mark, advertising expenditures, sales, survey evidence, and affidavits asserting source-indicating recognition.”

The Board rejected Applicant’s attempt to tack the use of its registered design mark to its use of the present mark for purposes of transferring distinctiveness to the new mark because the marks were not legal equivalents, i.e. they were not the same mark. The Board also found that Applicant’s sales and advertising figures were provided without any context for the industry norms or market share and were insufficient to support a finding of acquired distinctiveness. Further, the web traffic to Applicant’s did not provide specifics for new visitors vs. returning traffic to allow the Board to determine the mark’s exposure to new customers.

Thus, the Board affirmed the Trademark Examining Attorney’s refusal to register under Trademark Act Section 2(e)(1) without acquired distinctiveness under Section 2(f).

Posted On: May 11, 2011

DC Comics Sues Replica Batmobile Seller – Holy Copyright and Trademark Infringement, Batman!

copyright-trademark-infringement-batmobile-replica-car-kit-dc-comics-towle.jpgLos Angeles, CA – DC Comics is the owner of the Batman franchise and has numerous copyright registrations for works ranging from comic books, action figures, toy Batmobiles, to movies and TV shows. It also owns numerous USPTO registered trademarks including the word marks Batmobile, Gotham City, and Batman; in addition to numerous design marks, including the Bat Emblem. Since Batman’s first introduction in a 1939 issue of “Detective Comics”, he was instantly popular and has become of one of DC Comics’ “most successful and world-famous comic book super heroes.”

Indeed, the Batman movie franchise has resulted in “domestic gross box office receipts in over a billion dollars, not to mention additional revenues from syndication rights and home video distribution.” Further, the “Batman motion pictures have proven to be among the most successful licensing and merchandising ventures of all time, with gross retail sales of associated licensed merchandise exceeding $1,000,000,000.” That sure is a large number of zeros, Batman!

With that much cash, Brue Wayne obviously needs to have the most advanced Batmobiles to cruise in. There have been several design iterations of the Batmobile vehicles over the years and DC Comics contends that they are all distinctive and original designs that are copyrightable subject matter. DC Comics also contends that all the designs and trademarks are either inherently distinctive or have acquired secondary meaning in the minds of consumers throughout the U.S. and the world. DC Comics’ copyrights and trademarks are the subject of numerous licensing agreements for use on Batman merchandise.

Defendant Mark Towle is accused of intentionally copying the various Batmobile designs and selling unauthorized, full-scale replica cars or making car-kits that include DC Comics’ intellectual property. Towle sells the cars and kits on his website, which domain name isn’t probably the best choice for selling the subject products. The above picture is of the accused infringing 1966 Batmobile taken from Defendant's website. It also appears that Towle was previously sued for breaching a contract to deliver a 1966 Batmobile after being paid $85,000.

The case is DC Comics v. Mark Towle et al., CV11-03934 RSWL (C.D. Cal 2011).

Posted On: May 9, 2011

Copyright Infringement Lawsuit Over 3D Shape Of Smoking Hookah Water Pipe

copyright-sculptural-3d-smoking-device-bong-tobacco-inhale-starbuzz.jpgLos Angeles, CA – Inhale, Inc. filed a copyright infringement suit against Starbuzz Tobacco for allegedly copying Inhale’s hookah water pipe’s three-dimensional design. Smoking device designs are apparently a hotbed of intellectual property where, “as a result of its endeavors, Inhale has created and owns valuable intellectual property in the form of patents, trademarks, copyrights, and trade secrets. Inhale has grown to be known as a leading innovator of hookah designs.”

Inhale developed a three-dimensional design for a hookah water pipe and obtained a copyright registration for the sculptural work. Prior to the alleged infringing activity, Defendants were purchasing the subject design from Inhale for approximately one year. When the parties’ business relationship apparently went up in smoke in 2010, Defendants allegedly contracted a Chinese supplier to copy Inhale’s copyrighted design.

Luckily for Defendants, Inhale did not timely register its copyrights in order to recover statutory damages, attorneys’ fees, and costs, which requires that the copyright in the work to have been registered before the commencement of the infringement or within three months from the date of publication. 17 U.S.C. § 412. In this matter, however, it appears that the works were published many years before the copyright registration applications were filed in April of 2011, thereby preventing recovery of statutory damages and attorneys’ fees.

In another recent copyright case involving smoking devices, bongs specifically, a court in the Central District found that drawings of the smoking devices were copyrightable in denying defendants' motion for summary judgment. The Court, in rejecting defendant’s “useful article” invalidity argument, editorialized that “even assuming that a bong is a ‘useful article’ (which likely depends on who one asks), Plaintiff’s illustrations are nothing but drawn portrayals of that ‘useful article,’ lacking ‘intrinsic utilitarian function[s]’ of their own.”

The case is Inhale, Inc. v. Starbuzz Tobacco, Inc. et al., CV11-03838 ODW (C.D. Cal. 2011).

Posted On: May 4, 2011

Montz Wins Ghost Hunters Idea Submission Case At Ninth Circuit (en banc)

montz-ghost-hunters-idea-submission-en-banc-ninth-circuit-implied-in-fact-contract.jpgThe Ninth Circuit reversed the district court’s ruling and found that Montz’s idea submission/breach of implied-in-fact contract claim was not preempted by the Copyright Act. Montz v. Pilgrim Films & Television, Inc., __ F.3d __ (9th Cir. 2011) (en banc). In 1981, Larry Montz, a parapsychologist, came up with an idea for a TV show that would follow paranormal investigators to different locations to investigate paranormal activity. From 1996 to 2003, Montz pitched the idea to TV studios and producers, including NBC and the Sci-Fi channel. NBC and Sci-Fi had several meetings with Montz, wherein screenplays, videos, and other materials were presented. NBC and Sci-Fi indicated that they were not interested. But several years later, Sci-Fi debuted “Ghost Hunters” that was eerily similar to Montz’s idea.

In November 2006, Montz filed a complaint alleging copyright infringement, breach of implied contract, breach of confidence, and several other causes of action. The district court granted defendants’ motion to dismiss the complaint because it did not allege facts sufficient to state a copyright claim and determined the state-law claims were preempted. The parties dismissed the copyright claim and appealed the dismissal of the state-law claims, which ruling the three-judge panel affirmed. Montz v. Pilgrim Films & Television, Inc., 606 F.3d 1153 (9th Cir. 2010) (non-citable). The 9th Circuit, sua sponte, ordered an en banc rehearing of the case.

An idea for a TV show cannot be copyrighted; however, the concept can still be stolen if there’s a violation of

Continue reading " Montz Wins Ghost Hunters Idea Submission Case At Ninth Circuit (en banc) " »

Posted On: May 2, 2011

Copyright Infringement Claim Against Gillette and EA Sports Should Be an Idea Submission Claim

idea-submission-attorney-implied-in-fact-contract-copyright-ea-sports-gillette-voss-knotts.jpgSan Diego, CA – Ron Voss is suing Gillette and EA Sports for copyright infringement and unfair competition, but judging from the facts of the case, he should have asserted an idea submission or an implied in fact contract claim. People mistakenly believe that a copyright registration protects the “idea” contained therein, instead of the particular expression. In fact, §102 of the Copyright Act specifically states that copyright protection does not extend to any “idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.”

Voss alleges that he wrote and copyrighted a treatment entitled “Cyber Sports Championship Challenge,” which concept involves televising video game tournaments that pit gamers against celebrities and famous sports stars as contestants. Voss contends that co-defendant Jerry Knotts “misappropriated [the copyrighted work] and delivered it to EA. Afterward, EA and other defendants infringed Mr. Voss’ copyright by creating and distributing on commercial television (via the Spike Channel) and the World Wide Web “Gillette®-EA Sports™ Present Champions of Gaming powered by Xbox 360 LIVE” (the “program”).” The complaint, however, fails to specify how the expression of the copyrighted work was copied, separate and apart from the alleged “misappropriation” of the general idea. Plaintiff’s §17200 unfair competition claim is based on the copyright infringement facts and is preempted. Fractional Villas, Inc. v. Tahoe Clubhouse, 2009 U.S. Dist. Lexis 39522 (S.D. Cal. 2009)(dismissing § 17200 claim because it was preempted by the Copyright Act).

The 9th Circuit has yet to rule after the en banc rehearing of the “Ghost Hunters” case, Montz v. Pilgrim Films & Television, Inc. The three-judge panel affirmed the district court’s order that Montz’s implied in fact contract claim was preempted by the Copyright Act. Montz v. Pilgrim Films & Television, Inc., 606 F.3d 1153 (9th Cir. 2010) (non-citable). The Court sua sponte ordered an en banc rehearing of the case and withdrew the three-judge panel’s published opinion. Based on the en banc panel’s questioning, I – as a non-clairvoyant – predict a reversal of the district court’s ruling and a finding that Montz’s idea submission claim is not preempted by the Copyright Act, in line with Grosso v. Miramax Film Corp., 383 F.3d 965 (9th Cir.2004) and Desny v. Wilder, 46 Cal.2d 715, 299 P.2d 257 (1956). Watch the video of the Ninth Circuit's en banc rehearing:

The case is Ron G. Voss v. Jerry E. Knotts, et al., CV11-0842 H WMc (S.D. Cal. 2011).