Third Party Use Not Close Enough to Goods of Registrant to Sufficiently Weaken Rights

David Copeland-Smith filed a trademark application on BEAST MODE SOCCER for T-shirts, which the USPTO refused based on two registered marks for BEAST MODE owned by retired NFL football player Marshawn Lynch. The registered marks covered the goods of “Men’s, women’s and children’s clothing, namely, shirts, sweatshirts; [and] headwear, namely hats, caps.”

Copeland-Smith argued the BEAST MODE mark was weak due to third party trademark registrations, applications, and uses of Beast Mode. The appeals court disagreed.

The seven third party registrations did not identify articles of closing, but rather pertained to ““computer software, dietary and nutritional supplements, beer, advertising and marketing consultancy, and entertainment in the nature of competitions in the field of fitness…” In other words, the goods/services of the third party registrations were not close enough to clothing to narrow Lynch’s rights in BEAST MODE.

Regarding uses, the Foreign websites identified by Copeland-Smith where of no probative value in determining likelihood of confusion in the US.

Further, many of the US websites with uses of Beast Mode were directed to goods and services other than clothing. The appeals court noted its prior decision where it said “T]he present analysis only involves goods like those being offered by the parties to the ‘relevant public,’ while third-party use outside of that relevant market is meaningless.”

Therefore, third party use of marks should be in connection with goods/services like those offered by the parties to have a good chance a narrowing trademark rights.

Case: In Re: Copeland-Smith, No. 2018-1968 (Fed. Cir. 2019)

Design Patent on Open Ended Wrench, Functional or Ornamental?

The USPTO recently issued US Design Patent D859,108 covering a wrench, which is shown below.

Every part of this wrench is shown in broken lines except the U-shaped mouth working portion that is for engaging with another part, such as a nut, bold head, or the like. Therefore, the U-shaped part, shown in solid lines, is the only claimed part of the wrench.

I wonder whether the curvy design of the U-shaped part is functional. Design patents are to be directed to ornamental designs. So, if a design patent is directed to a design that is primarily functional, the patent can be invalid.

However, the standard for invalidating a design patent as directed to primarily functional matter is stringent. See Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 1328 (Fed. Cir. 2015). The Federal Circuit Court of Appeals has said that “[w]hen there are several ways to achieve the function of an article of manufacture, the design of the article is more likely to serve a primarily ornamental purpose.” It also said, “[I]f other designs could produce the same or similar functional capabilities, the design of the article in question is likely ornamental, not functional.”

Here, I don’t know whether the curvy design of the U-shaped part imparts a functional benefit, or, if so, whether other designs could also achieve that function. However, it is interesting that the only claimed portion of this wrench is the working mouth portion that is for engaging with another part, such as a nut, bolt head, or the like.

How Limiting is a Specific Date and Time in a User Interface claimed in a Design Patent?

Apple recently was granted US Design Patent D861,014 for an electronic device with graphical user interface. The patent is directed to the user interface for a smart watch. Below is figure 1.

Apple kept the time and date in solid lines claiming them rather than making the time and date in broken lines. Providing the date and time in broken lines would have made those elements unclaimed and would not have limited the claimed design.

However, including the date and time might not be much of a limitation in terms of the actual date and time displayed. First, any competitor device with the same vertical stripe pattern and time in the upper right location would show 10:09 twice a day. The old adage applies that a broken clock is correct twice a day. Further, it is likely that Wednesday will fall on the 23rd of the month every now and then.

Presenting the date and time in solid lines does limit the claimed design here. But maybe not greatly in terms of the actual time of 10:09 or the date of Wednesday the 23rd. Instead, the limitation probably is more in terms of the location and presentation of the date and time.

The original application that resulted in the above patent contained drawings showing the date and time in broken lines as well as solid lines. But, Apple amended the application to focus on the non-broken line version. There is a continuation patent application filed where Apple might be pursing the broken line version, which is shown below. If Apple obtains a patent on the broken line version below, it will have hedged its risk that the solid line version is too limiting.

Sports Fuel is Descriptive of Food Products for Athletes?

SportFuel sued Pepico and The Gatorade Company asserting that Gatorade’s use of Sports Fuel infringed its SportFuel trademark. The Seventh Circuit found Gatorade’s use of Sports Fuel was not infringing because Gatorade’s use was a descriptive use.

It appears that Gatorade used Sports Fuel in “GATORADE THE SPORTS FUEL COMPANY.” The court’s opinion provided this image of Gatorade’s use of Sports Fuel.

In finding Gatorade’s use of Sports Fuel descriptive, the court said “It requires no imaginative leap to understand that a company selling ‘Sports Fuel’ is selling a variety of food products designed for athletes.”

Is “fuel” so directly and immediately descriptive of food? I’m not so sure. Without considering market use, I think that fuel could be suggestive rather that descriptive of food or drinks. Other factors such as the alleged third party use and the manner of use in the slogan probably played a larger roll in the court’s conclusion that the use was descriptive.

Cite: SportFuel, Inc. v. PepsiCo, Inc., No. 18-3010 (7th Cir. Aug. 2, 2019).

Are Suggestive Logos More Effective?

Previously, I discussed whether a company or product name was predictive of future success. Now suggestive/descriptive nature of a logo may (or may not) also be a factor.

A recent study, reported in HBR, found that in certain circumstances, what the authors call “descriptive logos” positively influence brand evaluations, purchase intentions, and brand performance.

The study defines a descriptive logo as one that includes textual or visual design elements that communicate the type of product or service offered under the logo. For example, Burger King’s logo shown below is “descriptive” in that it contains burger bun where as the McDonald’s “M” logo is not.

The study found that as compared to non-descriptive logos, “descriptive” logos: (1) make brands appear more authentic in consumers’ eyes, (2) more favorably impact consumers’ evaluations of brands, and (3) more strongly increase consumers’ willingness to buy from brands.

What the authors call “descriptive logos,” I think could be better labeled as suggestive logos because admitting that your (word) mark is descriptive is generally not good. Further, on the spectrum of trademark strength, it may be more appropriate to call these logos suggestive than descriptive, at least in some cases.

Descriptive/suggestive logos may not be appropriate when a company sells goods or services in unrelated fields, such that a descriptive/suggestive logo for one line of products would not be appropriate or make sense for the companies’ other unrelated lines.

Companies with an Inventor CEO Produced Higher Quality Innovation, Study Finds

A recent study, reported by HBR, found that companies with a CEO who was named as an inventor on at least one patent, were awarded more patents and those patents were more commercially valuable and scientifically influential than patents granted to companies led by non-inventors. Further the study found that the patents of inventor CEO led companies were more likely to be radical and breakthrough in nature.

The study found evidence that the CEO Inventor connection to quality innovation could be causal:

“We found that, relative to the control group of transitions, the output and impact of patents significantly declined after the departure of an Inventor CEO. This decline in innovation activity occurred mainly in the technology classes where the outgoing Inventor CEOs had their experience, again pointing to the direct influence of an Inventor CEO on their firm’s innovation success.”

The authors of the study suggest that the better innovation results of Inventor CEO led companies “can be explained by an Inventor CEO’s superior ability to evaluate, select, and execute innovative investment projects related to their own hands-on experience.”

Troubles Not Foreseen at the Beginning

During the Revolutionary War, Washington’s army was positioned outside of Boston, which was occupied by the British. As explained in David McCullough’s book 1776, George Washington was facing troubles in terms of money, gun powder, guns, and troop readiness and numbers. Winter was coming, and some of the soldiers’ enlistments were ending, leaving the need to convince soldiers to reenlist or to be replaced by new recruits.

Washington, lamenting that he did not attack Boston earlier, at one point, recounted that if he had known what he was getting into he would not have accepted the command. He said:

“I have often thought how much happier I should have been if, instead of accepting of a command under such circumstances, I had taken my musket upon my shoulders and entered the ranks, or, if I could have justified the measure to posterity, and my own conscience, had retired to the back country, and lived in a wigwam.”

Ultimately, Washington secured Dorchester Heights which gave him a superior position over Boston and the British. This resulted in the British withdrawing from Boston.

Many undertakings do not rise to the level that war entails. However, doubts are common when facing issues not for seen at the beginning, no matter the endeavor.

Nonfunctional Trade Dress

Trade dress can include the shape or configuration a product or packaging. Trade dress is protectable if, among other things, it serves to identify a source of goods or services, as a trademark does, and it is nonfunctional. The question of what is nonfunctional was addressed in a recent case involving a french press coffee maker.

Bodum USA sued A Top New Casting alleging infringement of Bodum’s trade dress in the product configuration of its Chambord french press coffee maker. Below is a comparison of the products at issue with the Bodum’s product on the left and A Top’ s product on the right (from the court opinion):

Bodum claimed trade dress protection in the overall appearance of its product, with the following elements identified as contributing to that appearance: “the metal band surrounding the carafe that forms support feet and the handle attachment, the domed lid, the rounded knob atop the plunger, and the C‐shaped handle.”

A Top argued that Bodum failed to establish that these claimed features where not essential to the product’s use and therefore nonfunctional. Yet the court distinguished the common meaning of functional from the meaning used in trade dress law.

The court said that “to establish it has a valid trade dress, Bodum did not have to prove that something like a handle does not serve any function.” The court continued, “It merely needed to prove that preventing competitors from copying the Chambord’s particular design would not significantly disadvantage them from producing a competitive and cost‐efficient French press coffeemaker.”

According to the court, Bodum was not claiming that any French press coffeemaker with a handle, a domed top, or metal around the carafe infringes on its trade dress. Instead it was objecting to the overall appearance of A Top’s product, which included “the same shaped handle, the same domed lid, the same shaped feet, the same rounded knob, and the same shaped metal frame as the Chambord.”

The court found that Bodum presented sufficient evidence for a jury to conclude that the claimed trade dress was nonfunctional under trade dress law, even though the claimed trade dress included elements that had a function.

Citation: Bodum USA, Inc. v. A Top New Casting Inc., No. 18-3020 (7th Cir. 2019).

Domain Name Registration Alone Does Not Establish Trademark Rights

You’re ready to launch a new business, product, service, or project. You have a name. The domain name for the name you chose is available. So you register it. But you haven’t lunched a website at the domain name you registered. Nor have you done anything more, other than prepare internally to launch. Have you established trademark rights in the name? Probably not.

In the case of Brookfield Communs., Inc. v. West Coast Entm’t Corp. 174 F.3d 1036, 1052 (9th Cir. 1999), Brookfeild sued West Coast alleging that West Coast’s planned use of Moviebuff.com infringed Brookfield’s trademark rights in MovieBuff.

West Coast argued that it had trademark priority (first use) by registering the domain name MovieBuff.com in February 1996 before Brookfield’s first use of MovieBuff in August 1997 in connection with its online database. However, West Coast had not yet launched a website at Moviebuff.com .

The court noted that the mere registration of a domain name with an intent to use the domain name as a trademark commercially does not establish trademark rights. Therefore, Brookfield’s first use of MovieBuff in August 1997 predated any valid trademark use of MovieBuff by West Coast in connection with its website. Therefore Brookfield had priority in the MOVIEBUFF mark. And West Coast’s “I was first” defense failed.

The court ordered that West Coast be enjoined (prohibited) from using MOVIEBUFF as a trademark and from using MOVIEBUFF.com.

The registration of a domain name is an important step in launching a project. If you can’t get the domain name, you might have to go with a different name for the project. However, registration of the domain name alone is not sufficient to establish trademark rights. To establish trademark rights, you’ll need something more, such as filing a federal trademark application (often preferred), or launching a website at the domain name providing goods and/or services under the trademark so that the name is in actual use as a trademark.

P.S. Also, forming a corporation or LLC with the name alone does not create federal trademark rights.

Do Nothing and Wait

When there is a problem or a potential problem, the first desire is often to fix it and fix it now. However, sometimes the best approach is to do nothing and see if the problem solves itself.

Suspended Over Intent-to-Use Trademark Application

For example, consider the case where a trademark application is suspended based on a prior filed intent-to-use trademark application that is pending. If the owner of the prior filed intent-to-use trademark application has not filed a statement of use, it is possible that the owner will not file a statement of use. If a statement of use is not filed within the applicable time limit, then the application will be abandoned and no longer an obstacle to the later filed trademark application proceeding to registration.

It is not unusual for an owner of an intent-to-use application to abandon the application if their plans for using the mark fail to materialize. However, an owner of an intent-to-use application can extend the deadline to file a statement of use up to 3 years from the notice of allowance date. Therefore, this strategy of doing nothing, can involve a long wait time and a long period of uncertainty for the later filed trademark application owner.

Yet, if the later filed trademark application owner reaches out to the prior filed application owner the prior filed application owner might realize that their mark is more important (because someone else is interested in it) than he/she/it previously recognized. Therefore, contacting the trademark application owner might result in the filing a statement of use and perfecting the application, when he/she/it otherwise might not have otherwise done so. Therefore, doing something can be risker than doing nothing and waiting.

Refused Over Registration Nearing Renewal Deadline

As another example, consider the scenario where a trademark application is refused based a prior trademark registration, but the deadline for renewing the prior trademark registration is approaching. If the owner of the trademark registration does not file the renewal documents and pay the renewal fees, the trademark registration will be canceled, and no longer an obstacle to registration. Therefore, it may be best to wait to see if the renewal occurs, if time is available before an office action response top the refusal is due or otherwise.

Like in the prior example, contacting the trademark registration owner may lead the owner to renew the trademark registration–realizing it has value–when he/she/it otherwise would not have renewed.

Waiting can be uncomfortable because it allows tension and uncertainty. However, sometimes it is the best option.