Michael E. Hall Ups The Ante In The Trademark Blawgosphere

Those of us in the small world of trademark blogs already know Michael E. Hall for his comments and insights on trademark law which he often posts on other trademark blogs.

Well Michael has finally decided to take the plunge into the legal blogosphere by starting his own trademark law blog – Registration Ruminations (admittedly a better blog name than Las Vegas Trademark Attorney).

Michael, who is now hanging his own shingle, brings his experience as an examining attorney at the U.S. Patent and Trademark Office as well as a lawyer in private practice at the intellectual property law firm Knobbe Martens Olson & Bear.

I would like to welcome Michael to the party and look forward to reading his regular ruminations on the world of trademark prosecution before the U.S. Patent and Trademark Office. (Check out his recent post explaining the details on how PTO Examining Attorneys are evaluated for purposes of bonuses – a valuable insight for all trademark practitioners). Anybody else out there who regularly follows trademark blogs should certainly add his blog to your blogroll. Good luck Michael.

Chicago Cubs Sue Another Wrigley Field Rooftop Club

I previously wrote (link here) about the trademark infringement lawsuit filed in February 2008 by the Chicago National League Ball Club, L.L.C., the owner of the Chicago Cubs Major League Baseball team (the “Cubs”), against the owners of two baseball clubs in the business of selling rooftop seats which allow patrons to watch Cubs games played at Wrigley Field because of the close proximity of Wrigley Field to the building rooftops where the clubs operate.

Aerial Photo of Wrigley Field showing building rooftops in the distance.
(Photo Credit: Aerial Views)

While that particular lawsuit was settled by the parties in May 2008, the Cubs are at it again. On March 10, 2009, Chicago National League Ball Club, L.L.C., brought a similar lawsuit against T. Lamb, Inc. (doing business as the “Lakeview Baseball Club”) in the U.S. District Court for the Northern District of Illinois. See Chicago National League Ball Club, L.L.C. v. T. Lamb, Inc., Case No. 09-cv-01523 (N.D. Ill.). A copy of the complaint can be downloaded here.

The complaint notes that the Cubs, through years of investing substantial sums of money both in advertising and promotion as well as the baseball team itself, have built up substantial consumer recognition and goodwill with respect to its numerous trademarks relating to the “Cubs” and “Wrigley Field” including:

• CHICAGO CUBS;
• the circle CUBS logo;
• The name WRIGLEY FIELD (Note: this particular application for federal registration was abandoned -- apparently facing a likelihood of confusion rejection over the many WRIGLEY related trademarks held by the William Wrigley Jr. Company);
• Wrigley Field Home of Chicago Cubs; and
• the Wrigley Field marquee logo.

The Lakeview Baseball Club is located at 3633 North Sheffield, Chicago, Illinois 60613 –across the street from Wrigley Field and with an excellent view of the field from its rooftop. The complaint alleges that T. Lamb has been charging patrons fees to view the Cubs’ home games from this rooftop and supposedly made over $2 million in 2008 alone.

Lakeview Baseball Club

This lawsuit, however, is slightly different than the one that the Cubs previously filed. In this case, the Cubs had filed lawsuits against T. Lamb (along with other rooftop owners) in 2003 resulting in a settlement agreement whereby T. Lamb was permitted to charge admission on the day of any Cubs home games in return for paying a fee to the Cubs. T. Lamb paid the fees due to the Cubs under the settlement agreement for the 2004 through 2007 seasons. Then, in early 2009, T. Lamb apparently notified the Cubs that it would not pay the fee for the 2008 season. Based on this breach, the Cubs terminated the settlement agreement.

In addition to this breach of contract, the complaint alleges that T. Lamb is still improperly using the Cubs’ trademarks in promoting its rooftop club despite a cease and desist notification from the Cubs. [Ed – click here to view the club’s own brochure and decide for yourself if T. Lamb is using the Cubs’ trademarks in any sense that is other than fair.] The complaint specifically focuses on the fact that when an individual visits the Lakeview Baseball Club website, the title of the website’s home page reads “Lakeview Baseball Club (Chicago Cubs© Wrigley Field© Rooftop).” [Ed – do you think they meant to use the © copyright symbol instead of the ® symbol for a registered tradmark?] The Cubs’ trademarks also appear in other parts of T. Lamb’s website [ed. – although arguably in fair use sense: e.g., “Whether you just want to catch a Chicago Cubs game at Wrigley Field” “rooftop entertaining, including employee and client parties overlooking Wrigley Field©.” In the past we've hosted Cubs© themed wedding receptions]. The complaint also alleges that the website claims that the club is “endorsed by the Chicago Clubs” (although I was unable to find such language on the website in conducting my own quick search).

The Cubs’ causes of action are for breach of contract for T. Lamb’s breach of the settlement agreement as well as the same single count (citing 15 U.S.C. §§ 1114, 1116(d) and 1125) cited in the Cubs previous rooftop lawsuit which argues that T. Lamb’s marketing efforts are willful and wanton actions designed to trade off of the Cubs trademarks and goodwill and which are likely to cause confusion as to the affiliation, association or connection between T. Lamb’s club and the Cubs and as to the sponsorship or approval of T. Lamb’s business activities by the Cubs and adversely affect Cubs’ ticket sales as well as the ticket sales of the Cubs’ rooftop licensees.

The Cubs are asking for injunctive relief to stop T. Lamb from using the Cubs’ trademarks and engaging in any marketing which is likely to cause consumer confusion regarding affiliation with or sponsorship or approval by the Cubs of T. Lamb’s business. The Cubs also seek compensatory damages, T. Lamb’s profits, treble damages, statutory damages under 15 U.S.C. § 1117(c) (for alleged counterfeiting), interest, costs and attorneys’ fees.

It is not yet apparent whether the Cubs, as they did in the prior lawsuit, will threaten to obstruct this particular rooftop view of Wrigley Field enjoyed by T. Lamb’s club.

Rosetta Stone Announces Settlement of Search Engine Keyword Trademark Infringement Lawsuit

A blogging two-for-Tuesday . . .

I previously wrote (link here) about the trademark infringement lawsuit filed last year by Rosetta Stone Ltd. (“Rosetta Stone”), the publisher of the Rosetta Stone line of interactive computer software for learning foreign languages, against two New Zealand companies, Rocket Languages Ltd. and Libros Media Ltd. (together “Rocket”) along with two specifically named individuals (Ishmael Lopez and Matthew Weidner) who each operated various “language review” websites (through which they supposedly were paid a 75% commission by Rocket for every Rocket Languages product sold through their websites) and who made the unfortunate mistake of promoting their websites by purchasing “Rosetta Stone” as advertising keywords in Google's AdWords program and Yahoo's Marketing Solutions program.

Rosetta Stone issued a press release today proclaiming victory in this particular lawsuit by announcing that it had “successfully settled” its trademark infringement lawsuit against Ishmael Lopez and Matthew Weidner.

Under the terms of settlement, Lopez and Weidner will “each cease using Rosetta Stone trademarks in online paid search advertising campaigns and on their online websites and operations.” The press release also notes that Lopez and Weidner “will provide Rosetta Stone with monetary compensation.” In other words, Lopez and Weidner will stop purchasing the Rosetta Stone name as a keyword and Rosetta Stone was able to get some money out of them to pay its attorneys fees.

Not surprisingly, Rosetta Stone is painting this as a large victory against “the illegal use of Rosetta Stone’s trademarks and confusingly similar variations as keywords in search engine advertising programs and in the header and text of the resulting sponsored links.”

Or perhaps it’s just another case where it simply did not make economic sense for these two guys to fight a legal battle against a large company like Rosetta Stone in order to continue using Rosetta Stone’s trademarks as keywords.

Incorp Services Sues Legalzoom Over False Statements

This lawsuit is a little stale in the blogging world (filed about a month ago), but since it doesn’t seem to have gotten much press anywhere and it involves three of my favorite things (Nevada, business formation, and trademark law), I could not help but give it a passing mention.

On February 10, 2009, Incorp Services, Inc., (“Incorp”) a company that helps parties form corporations and other business entities throughout the United States and which also offers registered agent services for business entities nationwide, filed a lawsuit against Legalzoom.com, Inc. (“Legalzoom”), the “document preparation” company that also helps interested parties form corporations and other business entities, in the U.S. District Court for the District of Nevada. See Incorp Services, Inc., v. Legalzoom.com, Inc., Case No. 09-cv-00273 (D. Nev.). A copy of the complaint can be downloaded here.

Incorp alleges that since at least 2008, customers who have formed business entities through Legalzoom and who wanted to use Incorp as their registered agent have been told by LegalZoom’s telephone representatives that Incorp “is not in good standing” with several states, that Incorp “cannot be used” as a registered agent; that InCorp is “not licensed to do business in” certain states: that Incorp “cannot legally do business in” certain states; that InCorp is “not legal” in certain states; and other similar statements – all of which Incorp asserts are false given its good standing status in all fifty states and the District of Columbia.

Incorp’s causes of action are for “trade libel” under 15 U.S.C. 1125(a)(1)(B) (i.e., misrepresenting the qualities of Incorp’s services and commercial activities), defamation, and deceptive trade practices under Nevada law (N.R.S. § 598.0915). Incorp seeks injunctive relief along with a retraction from Legalzoom as well as compensatory and punitive damages, costs, and attorneys fees.

Query: I don’t suppose Legalzoom’s “document preparation” services covers preparing an Answer to this complaint.

Nothing says Sweet & Sour like a Cupcake and Crossbones

Yesterday's post was about cookies . . . today's is about cupcakes (sort of).

John M. Earle is the owner of the federally registered Cupcake and Crossbones trademark (pictured above) for ornamental pins, duffle bags, wallets, shirts, polo shirts, sweatshirts, hats, shorts, pants, scarves, and jackets.

Johnny Cupcakes, Inc. (“Johnny Cupcakes”) is the company which sells merchandise emblazoned with Earle’s Cupcake and Crossbones mark. Johnny Cupcakes has two stores in Massachusetts (Boston and Hull) and one store in Los Angeles, California, along with its online store found at the website http://www.johnnycupcakes.com/.

On March 3, 2009, Johnny Cupcakes and Earle filed a trademark infringement lawsuit against two Ontario, California residents, Clark Perez and Jo-Ann Perez, for supposedly selling “counterfeit” acrylic necklaces on eBay that display the Cupcake and Crossbones mark (the authentic necklace is pictured above) and which are apparently being mailed from a particular U-Store-It Trust location in California (and thus the reason the U-Store-It self-storage chain is named as a party). See Johnny Cupcakes, Inc. et al. v. U-Store-It Trust et al., Case No. __________ (D. Mass.). A copy of the complaint can be viewed here.

The causes of action are counterfeiting under 15 U.S.C. § 1114, federal trademark infringement and unfair competition under 15 U.S.C. § 1125(a), federal trademark dilution under 15 U.S.C. § 1125(c) [ed - famous?. . . really?], and common law trademark infringement and unfair competition.

A quick search of eBay did not reveal any current listings of any Cupcake and Crossbones necklaces (counterfeit or otherwise).

“Smiley” Cookie Owner Brings More Frowns With Another Trademark Infringement Lawsuit

I previously blogged (link here) about the trademark infringement lawsuit brought by Eat N' Park Hospitality Group (“Eat 'N Park”) against The Clever Cookie Corp. over the latter company’s sale of cookies that Eat 'N Park claimed were “confusingly similar” to its federally registered smiley face design for cookies (pictured above). This lawsuit – filed in 2007 and technically dismissed for want of prosecution only to be refiled by Eat 'N Park again on June 26, 2008 (see Eat ‘N Park Hospitality Group, Inc. et al. v The Clever Cookie Corp., Case No.08-cv-00886 (W.D. Penn)) – remains pending.

Well, Eat 'N Park is at it again. On February 26, 2009, the company filed a similar trademark infringement lawsuit against a New Jersey-based online company named Forget-Me-Knot Gifts (“FMK”) over its sale of “Smiley Face” cookies. See Eat ‘N Park Hospitality Group, Inc. et al. v Forget-Me-Knot Gifts, Case No. 09-cv-00255 (W.D. Penn.). A copy of the complaint can be found here.

Based on what could be found on their website, FMK appears to sell smiley face cookies as part of their business of selling gift baskets and cookie bouquets.

Forget-Me-Knot Gifts'

Get Well Basket and Cookie Bouquet

FMK may have already decided that it does not want to fight the lawsuit – the links where its smiley face cookies appear all indicate that “SORRY, THIS GIFT IS CURRENTLY NOT AVAILABLE. We are redesigning this gift...please check back for new version.”

And while it’s sad that a company like Eat ‘N Park can stop a small business like FMK from using a universally recognized design like the smiley face on a cookie (and the company isn’t even Franklin Loufrani of SmileyWorld fame), who can blame them for not wanting to spend hundreds of thousands of dollars just to defend its right to use the design – with very little chance of recovering any attorney’s fees even if FMK were to prevail.

But let’s see Eat ‘N Park go up against the victor of Loufrani v. Wal-Mart Stores, Inc., Opposition No. 91152145 (TTAB Filed July 23, 2002). [Interesting Sidenote: When I typed “SmileyWorld” into the GOOGLE brand search engine, Eat ‘N Park’s website came up as a sponsored link. Looks like Eat ‘N Park has purchased Mr. Loufrani’s mark as a Google adword. I guess Eat ‘N Park has no problem trading off the goodwill that has been built up by the self-proclaimed king of all Smileys.]

Fourth Circuit Affirms Lower Court Decision That OBX Creator Has No Trademark Rights To The Term

Pamela Chestek over at her blog Property, intangible discusses the Fourth Circuit’s recent decision in OBX-Stock, Inc. v. Bicast, Inc., No. 06-1769 (4th Cir. Feb. 27. 2009). The decision serves as a good reminder about the importance of using a trademark as a trademark.

Too many people not familiar with trademark law fail to appreciate that just because you come up with a unique word or slogan and affix that word or slogan to various goods (most often T-shirts or other souvenir items) does not mean that you are using the word or slogan as a trademark, especially in the case where the term is acknowledged to signify a specific geographic location. Trademarks are supposed to serve as source identifiers for a company’s goods and services – not as an identifier of something else for which you then use on goods and services.

As the court eloquentlystated in this case:

Trademark law, at a general level, protects the goodwill represented by particular marks, enabling consumers readily to recognize products and their source and to prevent consumer confusion between products and between sources of products. The marks enable consumers to make informed, independent decisions about quality and other product characteristics. But the law also protects the "linguistic commons" by denying mark holders an exclusive interest in words that do not identify goodwill attached to products or product sources but rather are used for their common meaning or meanings not indicative of products and product sources. See America Online, Inc. v. AT & T Corp., 243 F.3d 812, 821 (4th Cir. 2001); see generally 1 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 1:27 (4th ed. 2008).

In this case, the plaintiff (“OBX-Stock”) had coined the term “OBX” as a reference to the Outer Banks of North Carolina and made money selling products with OBX affixed thereon. The evidence showed that the public came to embrace OBX as a reference to the Outer Banks (thanks in part to OBX-Stock's sale of merchandise emblazoned with the OBX mark).

A company can obtain trademark rights over geographically descriptive marks with evidence of acquired distinctiveness. Of course, you must first use the mark as a source identifier – and not in its geographically descriptive sense. In this case, the court found that OBX-Stock affixed the letters OBX to stickers, souvenirs, and other sundries not to label an OBX brand product produced by OBX-Stock, but to indicate an association with the Outer Banks (i.e., OBX-Stock’s use of OBX on its souvenirs was always meant to be a reference the Outer Banks, and not to communicate that the souvenirs were produced by OBX-Stock).

In this case, the court found that the evidence indicated overwhelmingly that "OBX" is [ed. - OBX-Stock used OBX as] a geographically descriptive or generic term for the Outer Banks. Moreover, OBX-Stock had failed to show any evidence that any consumer associates OBX with its products or with OBX-Stock itself.

The court found that OBX-Stock had failed to show ownership of a valid trademark and therefore dismissed its trademark infringement lawsuit. [Interestingly, the entire lawsuit was brought because of the Defendant’s use of the mark “OB Xtreme” on some stickers. Given the outcome, one wonders if this particular suit against Bicast was the smartest decision.]

Curiously, even though the Court of Appeals affirmed the district court’s decision that "OBX" was either generic or a descriptive mark without secondary meaning, the court did not overrule the district court’s decision not to order cancellation of OBX-Stock’s trademark registrations. For OBX-Stock’s trademark registrations on the Principal Register based on Section 2(f), the court’s decision would appear to nullify the 2(f) basis for maintaining the registration.

The court noted that the district court had concluded that Bicast’s evidence did not conclusively establish that every one of OBX-Stock’s trademark registrations should be cancelled. The court also seems to fault Bicast for not having filed counterclaims seeking cancellation (and only arguing the point on summary judgment). The court justifies its decision by stating that “Bicast has received an adequate remedy through the district court’s summary judgment in its favor, and the court’s final adverse decision on trademark validity will preclude OBX-Stock’s marks from becoming incontestable.”

Of course, while this is good for Bicast, what about future parties who may be afraid of using the OBX mark (even in a geographically descriptive fashion) for fear of being sued by OBX-Stock.

Last year, the Third Circuit reversed a district court’s decision not to order the USPTO to enter a disclaimer of the term “Cocoa Butter Formula” (which was found to be generic) on the principal registration of the mark “Palmer's Cocoa Butter Formula.” See E.T. Browne Drug Co. v. Cococare Prods., Inc., Nos. 06-4543 & 06-4658, 2008 U.S. App. LEXIS 16585 (3rd Cir. August 5, 2008). While the lower court had declined to order relief under 35 U.S.C. § 1119 believing that it would not benefit the party requesting such relief, the Court of Appeals reversed stating “even if Cococare will not benefit from that disclaimer, we should not allow the absence of a disclaimer on the principal register to confuse a future business into believing that it may not use the term ‘Cocoa Butter Formula.’”

Similarly, in this case, future businesses should not be confused by OBX-Stock’s trademark registrations for the OBX mark into believing that they may not use the term OBX (particularly as a reference to the Outer Banks). In my opinion, the Third Circuit should have remanded the case back to the district court to order OBX-Stock’s trademark registrations (at least those on the Principal Register based on Section 2(f)) to be cancelled.