Utah Cupcake Maker Sues Competitor for Trade Dress Infringement

I have a certain affinity for trademark infringement lawsuits relating to cookies and cupcakes (see here and here). So I couldn’t pass up posting about this cupcake dispute – albeit a little dated in the world of blogging.

On May 14, 2010, Mini’s Cupcakes, Inc. (“Mini’s”) filed suit against Defendants LuAnn’s Cupcakes, Inc. (“LuAnn’s”) and Associated Food Stores, Inc. (“AFS”) in the U.S. District Court for the District of Utah. See Mini's Cupcakes v. LuAnn's Cupcakes et al, Case No. 10-cv-00457 (D. Utah). A copy of the complaint is available here (via Courthouse News). Local press coverage of the dispute here and here.

Mini’s claims trade dress rights to the cupcake design pictured above – what the complaint describes as a “distinctive design that features vanilla cake, blue cream cheese frosting, and silver and white gems.” Mini’s refers to this particular cupcake as its "Breakfast at Tiffany's" cupcake.

Mini’s claims that LuAnn's and AFS has copied Mini’s cupcake design with its so-called "Tiffany Jewels" cupcakes (pictured below) and has even approached one of Mini’s retailers in an attempt to sell its cupcakes – specifically stating that it looks like the Breakfast at Tiffany’s cupcake.

The complaint also argues that consumers have been confused between the two cupcakes – citing a blog post on Utah Loves Cupcakes which happened to note “how freakishly alike they [LuAnn’s cupcakes] look to our beloved Mini’s Cupcakes flavor, Breakfast at Tiffany’s?” The same posts includes two comments – one from Leslie Fiet, the owner of Mini’s, stating “When cupcakes are copied it is the highest form of flattery. I only wish they did not look exactly like mine because I have an outlet in Park City, Sugarbuzz, that sells my cupcakes and many people have been confused that those are my cupcakes and they do not taste the same. But oh well…” The owner of LuAnn's then followed up with her own comment stating “I apologize. It was not my intent to make anyone think they were someone else’s cupcakes.”

A cease and desist letter was sent to LuAnn’s on April 20, 2010, to which LuAnn's apparently did not respond. The complaint alleges that LuAnn’s has continued to sell the infringing cupcakes – although I could not find evidence of such cupcakes currently being promoted on the link of LuAnn's website noted in the complaint.

With no federal registration to back up any claim of distinctiveness for her cupcake design, the key issue is whether consumers would recognize Mini’s particular design as distinctive trade dress or whether they would simply see it as ornamental (requiring Mini’s to show that the design has acquired a distinctiveness such that consumers would associate the particular cupcake design with Mini’s). Of course, given the proximity in which these two small cupcake owners compete, it may be easier for Mini’s to show that, in the small world of Park City, Utah, Mini’s cupcake design has acquired a bit of consumer awareness such that consumers do associate that particular design specifically with Mini’s and thus, Mini’s should be allowed to exclude competitors from taking advantage of the goodwill it has been able to acquire with respect to the cupcake design. What do you think?

Not-so-wise trademark application for WISE LATINA

It never ceases to amaze me how events in the news will drive enterprising individuals to file for trademark protection on some phrase that has captured the public's attention with visions of grandeur of having an exclusive monopoly on said phrase (typically in connection with using the phrase on a t-shirt).

In this case, the phrase is WISE LATINA – made famous by the too often repeated (and taken out of context) quote that so many Republican Senators focused upon in order to try and come up with some kind of criticism against now Supreme Court Justice Sonia Sotomayor from a lecture she gave at the University of California (Berkeley) School of Law in 2001: “I would hope that a wise Latina woman with the richness of her experiences would more often than not reach a better conclusion than a white male who hasn't lived that life.”

A Wise Latina Indeed!

On July 24, 2009, Cultural Communications LLC filed a trademark registraiton application with the U.S. Patent and Trademark Office (“PTO”) to register the mark WISE LATINA for the following goods: “Full line of clothing, footwear, and headgear, namely, aprons, bandanas, bathing suits, bathrobes, beachwear, belts, body shapers, bottoms, caps, coats, dresses, ear muffs, earbands, footwear, gloves, hats, head wear, infant wear, jackets, jeans, lingerie, neckwear, nightwear, pajamas, pants, rainwear, robes, shirts, shoes, shorts, skirts, sleepwear, slippers, socks, stockings, suits, suspenders, sweaters, swimwear, tops, undergarments, underwear, and vests.” The basis of the application was use-in-commerce with first use date in commerce of July 24, 2009.

Of course, what I find most interesting about this application is the specimen submitted to the PTO (see picture below) in order to show use of the mark WISE LATINA as a trademark identifying the clothing goods.

If you look closely, the shirt's tag reads “American Apparel.” So is this a “Wise Latina” brand t-shirt or is this just an “American Apparel” brand t-shirt that someone emblazoned with the ornamentation “Wise Latina”?

In addition, this is just a picture of t-shirt. While the PTO does not require an applicant to submit specimens showing use of the mark in connection with all of the goods listed in the application, in order for the application to not be deemed fraudulent, the applicant must still be using the mark in connection with all of the goods listed . . .or else the ultimate trademark registration (if it issues with goods on which the mark was not being used at the time of filing) is tainted by fraud. Do you think that Cultural Communications was really using the mark WISE LATINA as a mark (and not just ornamental use) in connection with all of the clothing items listed in the application?

And finally, does the trademark applicant in these circumstances really believe that a trademark registration for the mark WISE LATINA in connection with clothing is really going to be able to stop other people from printing t-shirts emblazoned with the words WISE LATINA (with most consumers associating that phrase more with Justice Sotomayor’s now famous quote than with a particular seller of goods)?

Justice Sotomayor practiced in the area of trademark law before moving to the judiciary. What do you think her thoughts would be regarding this application?

In the trademark world, it's all about timing.

As noted by Marty Schwimmer's Trademark Blog, it didn't take long for some enterprising individual to turn John McCain's questionable choice of words in reference to Barack Obama at last night's second Presidential debate into what could turn into a nice little business (for a few news cycles anyway). Nor did it take long for some creative individuals to put up a webpage and Facebook page in honor of "That One."

And it will probably comes as no surprise to discover in about two weeks that someone filed an application to register the mark "THAT ONE" for clothing within hours of the debate. Of course, I won't even get into the inevitable ornamental/decorative refusal such an application is likely to encounter.

Prof. Randazza explains Ornamental Use vs. Trademark Use as only he can

I’ve written previously about trademark applicants who seemingly confuse ornamental use with trademark use. (See prior posts on GIRLICIOUS, the "Smiley Cookie," and ALASKA GROWN.)

But I particularly enjoyed reading Prof. Marc Randazza’s own take on this common misunderstanding by trademark applicants in his blog post yesterday (link here) on The Legal Satyricon with respect to the pending intent-to-use trademark application for the mark COCKAHOLIC as well as the pending opposition filed by a woman who claims prior user rights for having already used the same mark on T-shirts. See Benee Hudson v. Sports-Aholic, Inc., Opposition No. 91181581 (T.T.A.B. Filed December 22, 2007).

I also share Marc’s surprise that the PTO, being so uptight these days with respect to marks comprising "immoral or scandalous matter," even allowed the mark to be published in the first place (the PTO did not even issue a single office action).

Also worth reading are Marc’s opinions about "immoral or scandalous" rejections under Section 2(a). Check out his postings on two decisions last year by the Trademark Trial and Appeal Board -- first to uphold a Section 2(a) rejection of the mark YOU CUM LIKE A GIRL and then three weeks later overturning a similar Section 2(a) rejection and approving for registration the mark CUMBRELLA.

NFL remains aggressive over SUPER BOWL while Patriots go for 19-0 THE PERFECT SEASON

Every year as the date of the Super Bowl draws near, it has become a perennial favorite topic in the trademark law arena to discuss the National Football League’s (“NFL’s”) notoriously aggressively enforcement of its SUPER BOWL trademark.

Numerous stories in the past (see, e.g., USA Today story from 2004) have reported on the Las Vegas hotels cancelling their Super Bowl parties after receiving cease-and desist letters from the NFL. Then there are the stories about the Super Bowl parties organized by churches (see yesterday’s Washington Post article) that are facing the same cease and desist threats by the NFL

The NFL’s policy is to ban any public exhibitions of its football games on large movie screens or TVs with a screen size larger than 55 inches (although sports bars are apparently exempt from the prohibition). The NFL’s rationale is understandable given that a large group of viewers watching the game outside of their home affects TV ratings, which in turns affects advertising revenue (although no one apparently has told that to the many advertisers who are still lining up to pay a record $2.7 million for a 30 second spot this year – see story here).

And then there is the use of the SUPER BOWL mark itself. Most businesses, after either receiving notice directly from the NFL or otherwise hearing stories of other businesses receiving such notices from the NFL, began referring to the Super Bowl football game event as “The Big Game.” This allowed businesses to capitalize on the event that has become a holiday of its own without coming under the wrath of the NFL for trademark infringement. In addition, use of “The Big Game” served to reinforce the NFL’s exclusive ownership of the Super Bowl name and worked to prevent false association and “genericide.” As more businesses became more aware of the NFL’s trademark rights (and its aggressiveness in enforcing such rights), more and more adopted the substitute phrase.

And that’s why the NFL looked really bad when it applied to register THE BIG GAME mark as its own trademark. It looked pretty unfair for the NFL, after aggressively forcing merchants to adopt another phrase that would not infringe its SUPER BOWL mark, to then seek to claim proprietary rights to such mark after such wide-scale adoption. The NFL ultimately (and wisely so) abandoned the application. An article today in Forbes magazine (link here) recounts the effort by one law firm to oppose the NFL’s application. And there is fellow blogger Ron Coleman who (rightly so) gives himself a pat on the back for saying the same thing (link here) months earlier – and who also deserve credit as the originator of the Super Bowl® Watch and Contest I.

But the same old Super Bowl trademark enforcement story was not the only trademark news today. There was another Super Bowl-themed trademark story this year to go along with the usual fun.

Photo by Patrick Whittemore (Boston Herald)

Now comes news (courtesy of the Boston Herald) that the Patriots are so confident in their victory on Sunday that they have already filed trademark applications to register the marks 19-0 and 19-0 THE PERFECT SEASON. Kraft Group, LLC (“Kraft”), the owner of the New England Patriots NFL franchise, filed the Section 1(b) intent-to-use applications on January 17, 2008, listing the same five classes of goods in each application, including DVDs and video games; calendars, posters, and bumper stickers; clothing; toys; and providing sports and entertainment information and online computer games.

For those who think that the Patriots don’t have a chance in getting either mark registered, there was a Section 1(b) intent-to-use application filed back in 1998 by Bill and John Harpole for THE PERFECT SEASON 19-0, which received a notice of allowance, although a statement of use was never filed and the application went abandoned. There was another Seciton 1(b) intent-to-use application for the mark 19-0 filed in 1998 (for two classes of goods), but it was abandoned for failure to respond to the USPTO's non-final action.

Much depends on how the Patriots will actually use the mark on the aforementioned goods and services. As so often happens with trademark applications seeking to register a slogan or phrase to put on various items such as clothes and video games, the USPTO may refuse registration on the grounds that the mark is merely ornamentation that consumers are likely to perceive as conveying a message rather than indicating the source of the goods or to distinguish the goods from those of others. See In re Owens-Corning Fiberglass Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985); Damn I’m Good Inc. v. Sakowitz, Inc., 514 F. Supp. 1357, 212 USPQ 684 (S.D.N.Y. 1981). In order to overcome such an ornamental rejection, an applicant typically must -- a) argue and submit evidence showing that the mark has become distinctive of applicant’s goods (Section 2(f) acquired distinctiveness argument); b) submit evidence that the mark would be recognized by the public as a trademark through applicant’s use of the mark with goods or services other than those identified in the application (the mark is an indicator of secondary source or sponsorship); c) amend the application to seek registration on the Supplemental Register; or d) submit a new specimen showing non-ornamental use. In this case, Kraft may be able to argue effectively either indicator of secondary source or sponsorship (namely, the New England Patriots) or acquired distinctiveness. Otherwise, it may be left with registration on the Supplemental Register.

While some have decried Kraft’s applications as smug and snooty, Kraft representatives assert that the filing is merely defensive mechanism to prevent people from profiting from the Patriot’s historic season. And based on another application that was pending at the time of Kraft’s filing, they may have a point.

On November 8, 2007, William Harpole again filed an application to register the mark THE PERFECT SEASON 19-0 (for hats, jackets, sport shirts, sports jackets, sports shirts [sic], t-shirts in Class 25) on the Supplemental Register. Because Harpole is seeking registration on the Supplemental Register, the aforementioned ornamental rejection will not be an issue. However, Harpole has a different issue he must face – namely, registration on the Supplemental Register can only be sought when the mark is being used in commerce. If Harpole’s application was supposed to be a §1(b) application requesting registration on the Supplemental Register, the application will be rejected under §23 of the Lanham Act – a refusal that can only be satisfied by filing an acceptable allegation of use. See TMEP 815.02. However, the effective filing date of Harpole’s application will be the date on which Harpole files his allegation of use – not the filing date. Kraft’s applications, on the other hand, will have a constructive date as of the filing date of the applications. Depending on if and when Harpole was actually using the mark in commerce, this could set up an interesting priority contest between the two parties.

Assuming the Patriots win (I can’t imagine they would want to use the marks if they lose) and desire to follow through with using the mark in commerce, Kraft’s trademark applications are likely to be suspended pending the outcome of the prosecution of Harpole’s applications – at least with respect to the Class 25 goods (which Kraft could divide out should it so desire). Nonetheless, if Harpole is somehow able to get his mark registered on the Supplemental Register, it could still prevent the registration of any confusingly similar mark by Kraft (I suspect that Kraft’s 19-0 mark would be confusingly similar to Harpole’s THE PERFECT SEASON 19-0).

Of course, the New York Post (ever defensive of its hometown team, the New York Giants) responded to the news of Kraft’s trademark applications (see article here) with what has to be one of the best arch-rival responses ever – in the form of a trademark application to register the mark 18-1 (Serial No. 77385477 – not yet available on TARR). While I doubt the New York Post has any honest “intent-to-use,” it sure does make for a good laugh – and it only cost $325 ($275 if they were smart enough to use TEAS Plus).

Vegas™Esq Prediction:
Being in Vegas, it’s not about who wins or loses – it’s about who covers the spread. With the Giants getting 12 points, I think Patriots will win, but they won’t cover (although I am tempted to put a small Moneyline bet on the Giants – Super Bowl’s tend to be wacky games and you never know – the Giants may just pull it off).

An "ALASKA GROWN" trademark dispute

An Alaska Superior Court judge has ruled against an Alaskan farm organization in a dispute between the State of Alaska and the organization over the right to print the ALASKA GROWN logo (the “Logo”) on T-shirts and other clothing items. See State of Alaska, Dept. Of Natural Resources, Div. of Agriculture vs. Mat-Su Chapter-Alaska Farm Bureau Inc., Case 3AN-06-05292CI (Alak. Sup. Ct.). Most news outlets reported the AP story (link here) which seemed to gloss over some of the interesting (from a lawyer’s perspective) details in the case.

The lawsuit was brought by State of Alaska, Dept. Of Natural Resources, Div. of Agriculture (the “Division”) to stop Mat-Su Chapter-Alaska Farm Bureau, Inc. (“Mat-Su”) from continuing to print the logo on T-shirts and to squash Mat-Su’s pending trademark application for the mark ALASKA GROWN.

The story goes back to the mid-1980s, when the State of Alaska, Dept. Of Natural Resources, Div. of Agriculture first developed the Logo as part of its ALASKA GROWN program established in 1985 with the purpose of promoting locally-grown Alaska farm products.

According to Mat-Su, its predecessor organization – the Alaska Farmers and Stockgrowers Association (“AFSA”) – helped push for the adoption of a logo to help promote Alaska’s agriculture. AFSA had been using a circular logo around a silhouette of the State of Alaska with the slogan “Alaska Farmers and Stockgrowers Feeding Alaskans” since the early 1980s. According to Mat-Su, the idea of an ALASKA GROWN label was first proposed in a funding request from AFSA to the state – a proposal that was ultimately non funded.

AFSA later asked the Division for help in classifying their products so that consumers could easily identify them. The Division rose to the challenge, and eventually adopted the current ALASKA GROWN logo (the “Logo”) after a vote was taken by 385 farmers and agriculturalists among six proposed drawings.

The Logo was first used on December 20, 1985, but formally unveiled to the public in on January 16, 1986. Around this same time, the Division filed three Alaska state trademark registrations for the Logo – one on January 14, 1986 (for foods and ingredients in foods), one on April 18, 1986 (for merchandise not otherwise classified), one on May 22, 1986 (for thread and yarn). All of the registrations have been continuously maintained.

According to the Division, as part of the program, the Division grants non-exclusive, no-fee licenses to authorized Alaska growers to use the Logo as a certification mark on locally-grown farm products meeting the Division’s standards. The Division has around 283 authorized users of the Logo for certification of Alaska grown products.

The Division also promoted the program with various promotional items, including clothing items such as T-shirts and sweatshirts. The Division granted non-exclusive, no-fee licenses to authorized non-profit entities affiliated with Alaska’s agricultural industry to use the Logo on promotional clothing. One such licensee was Mat-Su, which had been authorized since 1986 to make and sell clothing with the Logo. Mat-Su, in its filings related to the lawsuit and opposition, contested the Division’s position about granting non-exclusive no-fee licenses to users of the Logo.

On April 24, 2004, Mat-Su sent a letter to the Division requesting that it be made the sole distributor and exclusive licensee for the manufacture and sale of clothing items with the Logo on it. According to its letter, Mat-Su felt that there were some retailers who were placing the Logo on inferior products, and so Mat-Su set forth its position why it was the best company to be the sole authorized manufacturer and seller of clothing using the Logo. As the Division points out, however, this same letter also has Mat-Su acknowledging the Division’s rights over the Logo.

The Division never responded to the letter. On March 1, 2005, Mat-Su sent a second letter to the Division once again making its case (this time in much greater detail) for why it should be the sole distributor and exclusive licensee for the manufacture and sale of clothing items with the Logo on it. From Mat-Su’s perspective, AFSA entered into an “informal” agreement with the Division soon after the Logo was introduced to use the Logo on clothing items to promote the Division’s agriculture promotion efforts. The AFSA promised that all proceeds would go into Alaska agriculture promotion. Mat-Su also stated that AFSA discontinued using its own logo on clothing in favor the “new, cooperatively generated, label.”

Mat-Su apparently felt that it deserved to the be the exclusive maker of clothes sporting the Logo because of the great deal of time and money it had invested to help promote the ALASKA GROWN logo through its sale of promotional clothing. “It is extremely unfair that our carefully nurtured clothing promotion is threatened with extinction or dilution now that Alaska Grown shirts are finally popular.” Mat-Su also believed that its longtime use of the Logo on clothing with the Division’s approval constituted a “legal claim.” Mat-Su was the first to do so and the only one for ten years. The remainder of its March 1st letter addresses the importance of the ALASKA GROWN logo and the need to ensure its integrity.

What this March 1st letter did not divulge, however, is that on January 3, 2005, Mat-Su filed a Section 1(a) use-in-commerce application with the United States Patent & Trademark Office to register the mark ALASKA GROWN (and Design) for “Clothing, namely, hooded sweatshirts, adult short-sleeved T-shirts, adult long-sleeved T-shirts, youth T-shirts, infant T-shirts, aprons, baseball-style caps, women's tank tops, men's tank tops, work shirts and shorts.” The drawing of the mark submitted with the application was identical to the Logo. The date of first use claimed was February 15, 1986 and the date of first use in commerce was August 15, 1986. Mat-Su is an Alaska non-profit corporation that was formed in 2002, although as previously stated, Mat-Su claims to be the predecessor organization of AFSA.

Mat-Su filed a second application on October 19, 2005 to register the mark ALASKA GROWN (and Design) for “fresh vegetables”; however, this application was later expressly abandoned on March 22, 2006, for reasons unclear.

Meanwhile, in mid-November 2005, Mat-Su supposedly announced its attention to form a new corporation to take over ownership of the ALASKA GROWN program and Logo. On December 21, 2005, Mat-Su followed through by incorporating Alaska Farmers and Stockgrowers, Inc.

Whether in response to Mat-Su’s trademark applications or public threats to take over the ALASKA GROWN program and Logo, the Division, on November 18, 2005, wrote a letter notifying Mat-Su that its actions amounted to trademark infringement, that its license to use the Logo was being terminated, and that Mat-Su was to cease and desist from any further use of the Logo. In early December 2005, a representative of Mat-Su supposedly contacted the Division to indicate that Mat-Su would comply with the Division’s letter and would not sell any more clothing with the Logo on it until the trademark dispute was resolved.

According to the Division, however, Mat-Su continued to sell clothing with the Logo. The Division filed a lawsuit seeking injunctive relief on February 16, 2006. A first amended complaint was later filed on July 21, 2006, setting forth some additional alleged sales in 2006 by Mat-Su of clothing using the Logo. The counts of the complaint include state and common law trademark infringement, unfair trade practices, breach of implied covenant of good faith and fair dealing, and declaratory relief regarding the trademark rights to the Logo given Mat-Su’s pending application.

Mat-Su’s first trademark application was published for opposition on December 7, 2005. After several extensions of time, the Division, on June 23, 2006, filed its opposition to Mat-Su’s application. See State of Alaska, Dept. Of Natural Resources, Div. of Agriculture vs. Mat-Su Chapter-Alaska Farm Bureau Inc., Opposition No. 91172432 (TTAB). The opposition resembled the complaint that the Division had already filed in Alaska Superior Court. The Division argued that Mat-Su’s application be denied on the grounds of the Division’s prior use, licensee estoppel, that Mat-Su is not a valid owner of the mark, that the application was not signed by a proper signatory, and fraud (i.e. knowingly false statements including that Mat-Su is the owner of the mark, the dates of first use given that Mat-Su was formed in 2002, that Mat-Su has exclusive right to use the mark).

As reported by the AP, Anchorage Superior Court Judge Jack Smith ruled last week that the Division owns the Logo and the licensing rights to the Logo. It’s not clear the extent to which the injunction also enjoined Mat-Su from using the Logo in any way, but one can probably assume that if the Divison was found to own the rights to the Logo, the court also enjoined Mat-Su from any infringing activity.

The judge also ordered an injunction against Mat-Su enjoining them from "threatening, intimidating, harassing, coercing, or otherwise interfering with the sale of Alaska Grown apparel." This is apparently in response to accusations that Mat-Su had made against Alaska Future Farmers of America of stealing sales from Mat-Su by selling its own line of clothing with the Logo. Mat-Su apparently feels that such other organizations do not adequate support Alaska’s agricultural industry. The Division maintains that Mat-Su was interfering with an authorized licensor’s sale of "Alaska Grown" clothing.

A hearing has been set for May to determine damages the Division may be entitled to based on Mat-Su’s infringing use.

Vegas™Esq. Comments:
What I found most surprising about this whole case was that Mat-Su was able to get its application published in the first place. In particular, I am surprised that Mat-Su was able to get around an “ornamental” refusal for its mark. Apparently, the Examiner may have thought that the speciments and other evidence submitted (namely an explanatory card handed out with each shirt describing the spirit of the Alaska Grown program) showed that the mark would be recognized by the public as a trademark through applicant’s use of the mark with goods or services other than those identified in the application (i.e., the mark is an indicator of secondary source or sponsorship). However, Mat-Su admitted in its correspondence that it only produces the clothing and not the farm products itself. With Mat-Su admitting that it is not using the mark on any other goods or services other than what it identifies in the application, how was it able to get around an ornamental refusal?

Also, I find it somewhat surprising that the Examiner did not raise any Section 2(e)(2) “primarily geographically descriptive” rejection. The mark names a geographic location, purchasers are likely to believe the goods originate in Alaska, and the goods do originate in Alaska.

It’s not clear whether Mat-Su was really concerned about the goodwill behind the Logo or whether its concern was about its own financial bottom-line in the face of competition from other clothing manufacturers producing clothes using the Logo. Regardless, Mat-Su felt entitled to be the exclusive producer of clothing bearing the Logo based on its good intentions and long-time involvement with the ALASKA GROWN program.

Mat-Su either misunderstood its trademark rights or may have been misled by someone into believe that it had legitimate rights to the Logo simply by its long-time involvement. Notably, the trademark applications were filed by officers of Mat-Su, and not a trademark attorney, who undoubtedly (after doing even a modicum of due diligence) would have informed Mat-Su of its tenuous legal position.

Finally, Mat-Su seems to feel that the Division is not properly running the program, which serves to harm the goodwill behind the Logo. However, to the extent Mat-Su believes that the Division is doing harm to the Logo by allowing cheaper clothing to be produced bearing the Logo, then Mat-Su should create and invest time and money into creating its own certification mark. A few off the top of my head suggestions: “ALASKA FOOD …From Alaska For Alaska.” “Alaska Preferred,” and “A Taste of Alaska” (which worked for Iowa). Before doing so, however, Mat-Su should also keep in mind that one issue which typically arises with respect to geographic region certification marks is the authority of the owner to control the use of the mark. The USPTO will normally look for the applicant to be a government agency or quasi-governmental organization with power and authority in the named geographic region because such governmental bodies are perceived as being in the best position to fulfill the duties of ensuring the right of all persons in the region to use the term and preventing improper uses of the mark by those not entitled to do so.

Former Arizona Cardinals coach seeks to register “They are who we thought they were”

The Wall Street Journal’s Law Blog had a post today (link here) regarding a trademark application filed by former Arizona Cardinals coach Dennis Green. During a post-game press conference on Oct. 16, 2006, following a 20 point lead loss over the Chicago Bears in under 20 minutes, Green apparently had a meltdown (which you can view for yourself courtesy of YouTube) where he kept saying over and over about the Bears –“They are who we thought they were.” The phrase, reminiscent of any one of the many great Yogiisms, has apparently become somewhat of a joke among sports commentators and even made its way into a Coors Light commercial.

But Green is now taking lemons and turning them into lemonade by doing what so many others have done when they come to be associated with a phrase that captures the public’s attention – seeking to register the mark with the United State Patent and Trademark Office (“USPTO”).

On November 28, 2007, Green filed a Section 1(b) intent-to-use application for the mark THEY ARE WHO WE THOUGHT THEY WERE for the following goods and services: 1) Hats, caps, baseball caps, knitted caps, golf caps, sports jerseys, t-shirts, polo shirts, sport shirts, sweatshirts, golf shirts, sweat bands, sweat pants, jogging pants; and 2) Educational and motivational public speaking services.

Because the basis of the application is intent-to-use, the application will likely get to the publication phase. However, ultimate registration will depend on the specimens of use submitted and whether the mark is truly being used as a source identifier.

As so often happens with trademark applications seeking to register a slogan or phrase to put on clothing items, the USPTO may refuse registration on the grounds that the mark is merely ornamentation that consumers are likely to perceive as conveying a message rather than indicating the source of the goods or to distinguish the goods from those of others. See In re Owens-Corning Fiberglass Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985); Damn I’m Good Inc. v. Sakowitz, Inc., 514 F. Supp. 1357, 212 USPQ 684 (S.D.N.Y. 1981).

I previously wrote about the trademark application for the phrase COWGIRLICIOUS (link here) where registration was refused because the mark was used in the submitted specimen was merely ornamental. In that case, the applicant submitted a picture of T-shirt with the word “COWGIRLICIOUS” in the middle of the shirt. Such use was found to be more of a slogan and by its size and location in the middle of the shirt would not be perceived as a source identifier or as a trademark which identifies applicant’s goods and distinguishes such goods from those of others. The larger the display of the mark relative to the size of the goods, the more likely that consumers will not view it as a mark. In addition, the location of where the mark is fixed on the goods is a consideration of how it will be viewed by the public. Where consumers are used to seeing a trademark in certain locations on clothing (i.e. collar label for shirts, above or on the rear pocket for jeans), consumers are less likely to perceive the mark as a source indicator when such mark is placed in a location that is less often associated with a brand name (i.e. the breast area of a shirt).

In order to overcome such an ornamental rejection, an applicant must --a) argue and submit evidence showing that the mark has become distinctive of applicant’s goods (Section 2(f) acquired distinctiveness argument);b) submit evidence that the mark would be recognized by the public as a trademark through applicant’s use of the mark with goods or services other than those identified in the application (the mark is an indicator of secondary source or sponsorship);c) amend the application to seek registration on the Supplemental Register; ord) submit a new specimen showing non-ornamental use.

For clothing, the PTO usually accepts use of the mark on clothing tags. Such use was accepted for Paris Hilton’s THAT’S HOT and for Dorothy Tovar’s WHAT HAPPENS IN VEGAS STAYS IN VEGAS (before it was cancelled).

As for Green’s use of the phrase as a service mark, the PTO will still require the mark to be used in a manner that would be perceived by purchasers as identifying and distinguishing the source of the services recited in the application. The PTO may register such a service mark only to the extent that Green uses the phrase to advertise his public speaking services in a way that makes a commercial impression separate from that of the other elements of advertising material upon which it was used, such that the designation would be recognized by prospective customers as a source identifier.

Nonetheless, if the PTO will not allow registration on the Principal Register, Green may wish to opt for registration on the Supplemental Register (see previous blog entry here regarding the benefits of registration on the Supplemental Register). Such registration will at least prevent anyone else from registering a similar mark with the USPTO.

But my favorite “phrase-du-jour” trademark application filed this year is probably “DON’T TAZE ME BRO!” I don’t know if the applicant, Franchise Institute, Inc., has any connection to Andrew Meyer, the student who became famous when he exclaimed those words during a John Kerry speech at the University of Florida, or to Bob McCarty, who already has a thriving online business selling shirts with the slogan, but I would suspect the application to face a similar ornamental challenge.

A Cookie Controversy Sure to Make You Smile

In a day when the hot story in the trademark universe was the first day of the trial of the Tiffany-eBay spat over counterfeit Tiffany merchandise sold on eBay (see stories by AP and Wall Street Journal), here is a trademark infringement lawsuit story about which one can actually smile.

On November 12, 2007, Eat ‘N Park Hospitality Group, Inc. and EPR Investments, Inc. (“Eat 'n Park”) filed a lawsuit in the U.S. District Court for the Western District of Pennsylvania against The Clever Cookie Corp. (“Clever Cookie”) for trademark infringement and trademark dilution. See Eat ‘N Park Hospitality Group, Inc. v The Clever Cookie Corp., Case No. 2:2007cv01534 (W.D. Penn.).

The Smiley® Cookie

Eat ‘N Park, a franchise restaurant chain with nearly 100 locations in Pennsylvania, Ohio, and West Virginia, holds a registered trademark for a smiley face design for cookies (see above). Eat ‘N Park filed for the design mark on August 18, 1992, but claimed first use in commerce going back to November 1985. Eat ‘N Park had to argue acquired distinctiveness under §2(f) in order to overcome the PTO’s rejection that the mark was merely ornamental on such goods (cookies) and not an indicator of source. In addition to arguing that the smiley cookie had been used as a mark continuously for the five years preceding the application, Eat ‘N Park submitted evidence showing its advertising expenditures for the smiley cookie in connection with the Eat ‘N Park restaurant chain. The mark was registered on the Principal Register under §2(f) on December 7, 1993. Eat ‘N Park filed a §15 Declaration of Incontestability on April 19, 1999.

Clever Cookie is a Plainview, New York cookie company specializing in selling certified kosher cookies for unique events, holidays, birthdays and other special occasions (e.g. logo cookies, press release cookies, etc.) online and through catalog sales.

Eat ‘N Park claims in its lawsuit that Clever Cookie is selling a cookie that is “confusingly similar” to Eat 'n Park’s smiley face cookie. Click here to see the likely “infringing article” (pictured below) -- Clever Cookie’s “Smiley Face Planter” with “five delicious, smiley face cookies."

Eat ‘N Park’s case does seem compelling at first. The only difference between Clever Cookie’s smiley cookies and Eat ‘N Park’s smiley cookies is the additional dot of frosting in the middle of the cookie to make the smiley’s nose (not a significant difference).

However, if you look at Clever Cookie’s smiley cookie, it actually seems more to resemble the famed “Have a happy day" Smiley (pictured below) than Eat ‘N Park’s smiley. In addition, bakeries across the United States bake and sell similar “smiley face” cookies – is Eat ‘N Park’s going to start sending cease and desist letters to them all? Perhaps the fact that Clever Cookie is selling these online and through catalogs may have something to do with Eat ‘N Park’s enforcement efforts.

Have a Happy Day!

Still you have to wonder whether most consumers who see Clever Cookie’s smiley cookies will be confused into thinking that they are Eat ‘N Park’s smiley cookies – or will they simply bring to mind the “Have a happy day" Smiley.

Analyzing the likelihood of confusion factors, most of the factors tend to favor Eat ‘N Park – related goods, similar marketing channels, similar marks, consumers not likely to exercise a high degree of care with respect to cookies. It was probably not Clever Cookie’s intent to pass off its cookies as Eat ‘N Park’s smiley cookies, but rather to sell cookies invoking the Have a happy day" Smiley. So it all comes down to the strength of Eat ‘N Park’s smiley mark, which I think is drawn in to question given the fame of the other smiley logo.

While the uncertainty surrounding likelihood of confusion may be why Eat ‘N Park is also pursuing trademark dilution as well, such claim has its own uncertainties. Under the current Trademark Dilution Revision Act (“TDRA”), Eat ‘N Park’s mark would not be deemed “famous” because it is not “widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner.” Although the district court is in the Third Circuit, the court is likely to follow the Second Circuit's lead, which applied the TDRA to a claim for injunctive relief by Eat ‘N Park. See Starbucks Corp. v. Wolfe's Borough Coffee, Inc., 477 F.3d 765 (2nd Cir. 2007). However, to the extent that Eat ‘N Park seeks damages for cookies first sold by Clever Cookie before October 6, 2006 (the effective date of the TDRA), the court is likely to apply the standards of the Federal Trademark Dilution Act (FTDA), which requires Eat ‘N Park to prove actual dilution, but also may allow Eat ‘N Park to get away with showing that its smiley mark is famous within its “niche market” (which it probably is pretty certain given Eat ‘N Park’s regional notoriety in the Ohio, Pennsylvania, and West Virginia area). So Eat ‘N Park finds itself in an unusual situation. The Company will not likely be able to get an injunction on dilution grounds under the TDRA, but may be able to get damages under the FTDA (if actual dilution is shown).

I must add that all this talk about the “smiley face” logo reminded me of Franklin Loufrani, owner of SmileyWorld (based in London), and owner of the rights to the yellow-smiley logo in over 80 countries. But not in the United States, where he has been embroiled in controversy over the logo since June 3, 1997, when he filed two Section 1(b) applications for “Smiley” (here and here) for a wide range of good and services, although interestingly enough, not cookies.

One of his applications is currently part of an opposition ongoing since 2003. See America Online, Inc. v. Loufrani, Opposition No. 91156646. In addition, Loufrani himself has filed several oppositions against other applicants seeking to register either the word SMILEY or a logo similar to smiley (see list of pending TTAB cases here). Most notably is Loufrani’s opposition to an application by Wal-Mart’s to register its smiley face logo for retail department services, which was widely publicizing in many newspapers and blogs (see articles in NYTimes and Forbes). See Loufrani v. Wal-Mart Stores, Inc., Opposition No. 91152145 (Filed July 23, 2002). Both oppositions are ongoing and any TTAB decision will certainly be appealed to the Federal Circuit.

What's left to say ? Have a Happy Day !!

[Note: This post was subsequently edited to clarify comments in the trademark dilution paragraph.]

Is Pussycat Dolls Founder in for a catfight over GIRLICIOUS?

In browsing through some recent trademark filings, I noticed an application for the mark GIRLICIOUS. What I found interesting about this mark is that a quick search revealed the same mark for the same type of goods from three different applicants – all filed within 3 months of each other. What’s even more interesting, however, is the story that is unveiled when you start to look more closely at the applications themselves as well as the registrants filing them.

On June 28, 2007, Robin Lee Antin filed a Section 1(b) intent-to-use application for the mark GIRLICIOUS (for 13 different classes of goods, including clothing under Class 25). On September 20, 2007, Pussycat Dolls, LLC (the company apparently established to own and manage the intellectual property of the famed Pussycat Dolls music group) filed twelve separate Section 1(b) intent-to-use applications for the mark GIRLICIOUS, one of which was for various articles of clothing under Class 25. One thing to note – Robin Antin is the founder of the Pussycat Dolls group and is the co-producer/creator of the reality TV show Pussycat Dolls Present: The Search For The Next Doll. According to Wikipedia, there is going to be a season 2 of the show which will search for three women to make up a new all-female group named . . .surprise surprise . . . Girlicious. Click here to see Ms. Antin herself talk about the new season.

Finally, on September 24, 2007, a company named Girlicious, Inc. submitted a Section 1(a) use-in-commerce application for the mark GIRLICIOUS (for clothing) claiming a first use in commerce of July 16, 2005.

Ms. Antin’s application already received a non-final office action on September 21, 2007 (coincidentally, one day after the Pussycat Dolls’ filings). The examining attorney cited two pending applications with earlier filing dates that if registered may create a likelihood of confusion – the first is for the mark COWGIRLICIOUS and the second is for the mark LADYLICIOUS.

With respect to the LADYLICIOUS mark, this is an §66A (Madrid Protocol) application filed by a Swiss limited liability company named kreis3production on October 31, 2006 (the application’s international registration date) for three classes of goods, one of which is clothing under Class 25. The application’s base registration date in Switzerland is May 18, 2005.

However, on March 16, 2007, the PTO issued a non-final action refusing to register the LADYLICIOUS specifically for the Class 25 goods. The examining attorney found a likelihood of confusion with the registered mark LADY LUSCIOUS for women’s clothing – the marks are similar in appearance and in sound, the goods are similar (clothing), the goods will go through the same trade channels (department stores, boutiques, etc.) and are likely to be encountered by the same consumers who are likely to believe the goods derive from one common source. The fact that no response to the office action was filed by the September 16, 2007 deadline seems to indicate that the company is not interesting in pursuing the application further (although they could come back later within two months of abandonment to revive the application).

Regarding the COWGIRLICIOUS mark, the application was originally filed under Section 1(b) on June 14, 2006. The mark was published and received a notice of allowance. The applicant submitted her statement of use on May 31, 2007 – claiming first use in commerce on July 11, 2006. However, the examining attorney notified the applicant on August 21, 2007, that it was refusing to register the mark because the mark, as used on her submitted specimens, was merely a decorative or ornamental feature of the goods and did not serve as a indication of the source of the goods or to distinguish the goods from those of others. See In re Owens-Corning Fiberglass Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985).

The applicant submitted a picture of T-shirt with the word “COWGIRLICIOUS” in the middle of the shirt. The examining attorney found such use to be more of a slogan and by its size and location in the middle of the shirt would not be perceived as a source identifier or as a trademark which identifies applicant’s goods and distinguishes such goods from those of others. The larger the display of the mark relative to the size of the goods, the more likely that consumers will not view it as a mark. In addition, the location of where the mark is fixed on the goods is a consideration of how it will be viewed by the public. Where consumers are used to seeing a trademark in certain locations on clothing (i.e. collar label for shirts, above or on the rear pocket for jeans), consumers are less likely to perceive the mark as a source indicator when such mark is placed in a location that is less often associated with a brand name (i.e. the breast area of a shirt).

In order to overcome the ornamental rejection, the applicant must --
a) argue and submit evidence showing that the marks has become distinctive of applicant’s goods (Section 2(f) acquired distinctiveness argument);
b) submit evidence that the mark would be recognized by the public as a trademark through applicant’s use of the mark with goods or services other than those identified in the application (the mark is an indicator of secondary source or sponsorship);
c) amend the application to seek registration on the Supplemental Register; or
d) submit a new specimen showing non-ornamental use.

I doubt that the COWGIRLICIOUS applicant can provide evidence to obtain the mark under 2(f), show that the public identifies the mark with applicant’s other services, or has any other specimens showing non-ornamental use of the mark COWGIRLICIOUS. Her only option is likely to be registration on the Supplemental Register (see previous blog entry here regarding the benefits of registration on the Supplemental Register). The only question is – will she recognize the benefit of having this registration as opposed to no registration at all? She does not have an attorney representing her in the case, and is likely to just forgo registration altogether. Which, as discussed below, is what Ms. Antin needs to hope for to the extent she wants to get a registration for GIRLICIOUS for clothing.

The final hurdle for Ms. Antin would appear to be the application submitted by Girlicious, Inc. While the filing date is after her application (and even after those by Pussycat Dolls, LLC), the application is a Section 1(a) use-in-commerce application claiming use in commerce beginning July 16, 2005, which certainly predates that of Ms. Antin.

But this Pussycat Doll need not roll over and play dead just yet. A review of the specimen submitted by Girlicious, Inc. shows a T-shirt with the word “Girlicious” on the chest. Sound familiar? This application will likely end up suffering the same ornamental rejection as COWGIRLICIOUS. In this case, however, Girlicious, Inc. may have a stronger argument that the mark is an indicator of secondary source (see the company’s official website here).

Should COWGIRLICIOUS be registered (even if on the Supplemental Register), the examining attorney will likely cite the registration against Girlicious, Inc.’s GIRLICIOUS application as grounds for a likelihood of confusion refusal. In such case, Girlicious, Inc. may have to pursue a petition to cancel the COWGIRLICIOUS registration given Girlicious, Inc.’s earlier use in commerce.

But Girlicious, Inc. has other issues to deal with -- a review of its website shows that the company is using the ® symbol next to the mark GIRLICIOUS. However, I was unable to find a federal registration for this mark (either word or design). Misuse of the ® symbol can be grounds for claims of false advertising and can be used as a grounds for the PTO to refuse registration of the mark. See my previous blog entry here regarding misuse of the ® symbol. It could also impact Girlicious, Inc.’s ability to cancel the COWGIRLICIOUS mark should it desire to do so. In addition, according to the Illinois Secretary of State, Girlicious, Inc. was dissolved on November 1, 2005, which not only raises the issue of a dissolved corporation filing a trademark application, but also raises the issue of whether the corporation is capable of suing and being sued in a court of law (which it must be in order to be a “juristic person” that can file a petition for cancellation).

So what’s the bottom line with all of this? While she still has some hurdles to overcome, I suspect that Ms. Antin will ultimately come out the winner in this catfight.

Unless the COWGIRLICIOUS applicant opts for Supplemental Registration, that application will go abandoned and will not be a problem. The LADYLICIOUS mark will not likely be registered (at least not for clothing goods). Finally, Girlicious, Inc., which was probably in the best position to argue that it was the first to use such mark on clothing, may have harmed its case by misusing the ® symbol and not keeping up its annual corporate filings.

Furthermore, given Ms. Antin’s efforts to make the public associate the mark GIRLICIOUS with her and the Pussycat Dolls, she will have some good evidence for a 2(f) acquired distinctiveness argument or that the mark is recognized by the public as a trademark through use of the mark in connection with this new girl group that will undoubtedly be highly publicized.

The GIRLICIOUS applications filed by Pussycat Dolls, LLC likely will be suspended pending resolution of Ms. Antin’s GIRLICIOUS application (where there are conflicting goods and services). But given her intimate involvement with the Pussycat Dolls, I would presume that the two parties will work it out any claims of priority amongst themselves (she may even be the sole member of Pussycat Dolls, LLC, but this I could not confirm).

All this fuss over a mark ending in “licious” would not be complete without some mention of three pending Section 1(b) applications for FEGALICIOUS filed September 25, 2006 for musical programs, clothing, and, surprisingly, ice cream and candies. Just imagine Fergie dancing around in a commercial for FERGALICIOUS ice cream.