First Amendment Defense to Trademark Infringement Claim: MTV Floribama Shore Does Not Infringe FLORA-BAMA Trademark

The First Amendment can be a defense to a trademark infringement claim when the accused work is an artistic work. There, in many cases, trademark rights must yield to the public interest in free expression protected by the First Amendment.

This is demonstrated in the case of MGFB Properties Inc. V. 495 Productions Holdings LLC, No. 21-13458 (11th Cir. 2022). In that case MGFB and its related entities sued 495 Productions and Viacom alleging that the title of the MTV Floribama Shore reality TV show infringed its FLORI-BAMA trademark.

The Plaintiffs operate the Flora-bama Lounge, Package and Oyster Bar on the Florida-Alabama boarder, and have done so since 1964. MGFB owns federal trademark registration no. 4,272,440 , for FLORA-BAMA for bar and restaurant services as well as several entertainment services including hosting social entertainment events, live musical performances, and competitions for fish throwing.

The defendants produced and aired a reality TV show titled MTV Floribama Shore. It was modeled on its prior reality show, Jersey Shore. With the MTV Floribama Shore show, the defendants wanted to highlight “young [S]outhern folks” who go to “shore houses” or “spend summers” on the Gulf of Mexico, extending from the Florida panhandle into Alabama and Mississippi.

1. The First Amendment Roger’s Test Applied

The Second Circuit’s Rogers test balances the trademark owner’s rights against the rights under the First Amendment in connection with artistic works. Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). It provides that the title of an artistic work does not violate the trademark act, “[(1)] unless the title has no artistic relevance to the underlying work whatsoever, or, [(2)] if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work.”

In the MGFB case, the court applied the Roger’s test finding that MTV’s use of Floribama was artistically relevant to the show. The court said:

“‘Floribama’ describes the subculture profiled in the series and the geographic area exemplified by the subculture. To break it down even further, the former part of ‘Floribama,’ i.e., ‘Flori,’ refers to Florida and the beach culture the series sought to capture, while the latter part, i.e., ‘bama,’ refers to Alabama and the Southern culture the series sought to capture. … ‘Floribama’ gave viewers ‘a very distinct sense of what part of the country and subculture the series was about.”

On this second part to the Roger’s test, the court found that title of MTV’s show was not explicitly misleading. The court said that the relevant question under this part is “whether (1) the secondary user overtly ‘marketed’ the protected work as ‘endorsed’ or ‘sponsored’ by the primary user or (2) ‘otherwise explicitly stated’ that the protected work was ‘affiliated’ with the primary user. ” And the court found no evidence of this. On the contrary, Viacom “chose a title that includes its own house mark (MTV) and the name of one of its iconic franchises (Shore).”

Therefore, Defendants’ use of Floribama in its television series title—MTV Floribama Shore—did not infringe the FLORA-BAMA trademark .

2. Some Confusion Is Allowed When First Amendment Applies

The court found MTV’s show title did not infringe even though MGFB presented some evidence that the title of the show caused confusion. MGFB conducted a survey that found that 34% of those surveyed had heard of the term “Flora-bama,” and half of that 34% identifying it as the Lounge. However, this was irrelevant because the evidence must relate to the nature of the defendant’s behavior under part 2 of the Rogers test, not the impact of the defendant’s use. Further, MGFB “submitted emails, letters, and declarations from their bartenders and regular musical acts stating that there have been multiple instances of confusion between the series and the Lounge.” Yet, this did not lead to a different result.

Injunction Limiting Use of Trademarks On Webpage Did Not Apply to Use in HTML Source Code

CDMPUsually, if you are ordered not to use a mark more than a certain number of times on a webpage, you’d be conservative and count uses of the mark that are visible on the webpage and the uses that are not visible but are in the HTML source code. Do you want to argue whether use of the mark in the HTML source code is not a use of the mark on the webpage because it’s not visible?

Seems better to avoid testing this distinction and prompting your opponent to move for sanctions. It is arguable that use of a mark in a HTML source keyword meta tag should not be infringement, since search engines probably ignore it and customers can’t normally see it, but sometimes a court says it is.

Enterprise Warehousing Solutions, Inc. (EWS), a test prep company, proceeded to test this distinction, whether intentionally or not.

Data Management Association International (“DAMA-I”), an exam and certification provider, sued EWS for trademark infringement. One of the certifications DAMA-I provides is the Certified Data Management Professional (“CDMP”) certification. To obtain the certification, a person must pass the Data Management Fundamentals Exam.

DAMA-I alleged that EWS was inappropriately using DAMA-I’s trademarks on EWS’s website and social media accounts when promoting its test prep course. The court entered a preliminary injunction against EWS. However, the court recognized the need, under nominative fair use, for EWS to use certain DAMA-I marks in a limited matter to describe EWS’s exam preparation course. Therefore the injunction allowed EWS to use certain of DAMA-I’s mark up to five times on any web page.

DAMA-I found that EWS was using DAMA-I marks in EWS’s website source code, which was not visible on the rendered web pages. By counting the use of the marks in the source code, DAMA-I assert EWS exceeded the prohibition on using DAMA-I’s marks more than five time on any web page.

But earlier in briefing on the preliminary injunction motion the parties did not address use of marks in HTML source code or metatags. Instead they focused on the content on EWS’s web pages. The court found that “Nowhere in the preliminary injunction order did the Court mention marks invisible to the consumer.” So the court found that the use of marks in HTML source code (which was not visible when the webpage was normally displayed) fell outside of the scope of the preliminary injunction.

This could have gone the other way. So, check for any source code use of third marks that are not visible on the rendered webpage. And the conservative route is to remove those uses.

Cite: Data Mgmt. Ass’n Int’l v. Enter. Warehousing Sols., Inc, No. 20 C 04711, 2022 U.S. Dist. LEXIS 204942 (N.D. Ill. Nov. 10, 2022).

Overcoming Trademark Registration Refusal: The Refusal Lacks Supporting Evidence

EPIGENEWhen a trademark application is refused registration based on a likelihood of confusion with a prior registration, the examining attorney of the USPTO must support that refusal with evidence. If it is not, the refusal can be reversed by the Trademark Trial and Appeals Board (Board) as demonstrated in the following case.

Genebook LLC applied to register EPIGENE for the goods of “electronic database in the field of genes recorded on computer media.” The application was refused based on two prior registrations for the same mark EPIGENE. The goods listed in the prior registrations for EPIGENE where (1) Diagnostic preparations for medical purposes, and (2) Apparatus for medical diagnostic testing in the fields of cancer or other tissue-based diagnostic testing, cytology and cell-based testing.

The examining attorney needed to support the refusal with evidence that the goods in the registrations and the goods in Genebook’s application were related in some manner and/or that the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that they emanate from the same source. But the Board found the evidence was lacking and reversed the refusal.

1. Similarity of the Goods

The examining attorney cited website evidence from numerous DNA testing companies to try to show that the goods where related. However, the Board said there was “no evidence in the record that any of these companies offer an ‘electronic database in the field of genes recorded on computer media’ with search and retrieval capability to their customers.” The DNA testing companies offered printed reports . Yet, the Board said, “While these printed reports ‘may’ be created via access to an electronic database, we have no basis for finding that these reports are themselves ‘databases’ as that term is defined and understood in this field.” Further, the sellers of genetic testing equipment did not offer gene databases or information from gene databases in connection with their products.

Therefore, there was a gap in evidence between the goods of the prior registrations and the applicant’s goods.

Further, the examining attorney can show the goods are related by showing they “have complementary uses, that they are often used together or that they are otherwise bought by the same purchasers for the same or related purposes, such that confusion would be likely if the goods were marketed under the same mark.” Yet, the Board found that there was little evidence of this.

2. Channels of Trade

The Board acknowledged the principle that “In the absence of meaningful limitations in either the application or the cited registrations, [we] properly presume[] that the [respective] goods travel through all usual channels of trade and are offered to all normal potential purchasers.” However the Board found that this presumption is “not a substitute for proof, which is absent here.”

As a result of the lack of evidence showing similarity of the goods or overlapping channels of trade, the Board reversed the refusal and allowed the application to proceed toward registration.

Identifying a lack of evidence supporting a trademark registration refusal is one possible path to overcoming a refusal and achieving registration.

Case: In re Genebook LLC, Serial No. 90269018 (TTAB Oct. 26, 2022).

Google’s Trademark Survives Genericide Attack Despite Use as a Verb

Google’s trademark was attacked by two individuals who claimed that the GOOGLE trademark was generic for the act of internet searching in the case of Elliott v. Google, Inc., No 15-15809 (9th Cir. 2017). The owner of a valid trademark can become the “victim of genericide,” which occurs when the public appropriates a trademark and uses it as a generic name for a type of goods or services regardless of the source. If this happens, as it did for ASPIRIN and THERMOS, the trademark owner can loose its rights in the mark.

Here, the plaintiffs claimed that the public’s use of google as a verb, e.g. “I googled it,” showed that the trademark was generic. The plaintiff’s claimed that a word can only be used in a trademark sense when it is used as an adjective, e.g. “the Google search engine.” However, the Ninth Circuit held that verb use alone does not automatically constitute a generic use. Trademark lawyers often counsel their clients to use a trademark as an adjective and not as a noun or verb to avoid the possibility that the mark could be come generic.

Here, though, the court says that more beyond verb use is needed to know whether a mark is generic for a type of good or service. Instead, to know if the public uses the mark as a generic name of a type of good or service, we need some information about what the consumer is thinking when they use the mark as a verb. Did the consumer mean the google search engine or any internet search engine when using google as a verb? The court found that there was insufficient evidence of what the customer/public was thinking when they used the term google as a verb.

The court also found that a claim that a mark is generic must be made in relation to a good or service, not an act. Therefore the proper question was whether Google was generic for internet search engines. The question was not whether google was generic for the act of internet searching, as the plaintiffs asserted.

While this case shows that use of a trademark as a verb is not conclusive evidence that a mark is generic, it is best to use and encourage others to use, as Google does, a trademark as an adjective, and not as a verb or a noun.

 

Lapse of Trademark Registration is Not Abandonment of All Trademark Rights

CrashDummiesYou search the trademark database at the USPTO and find that your competitor’s trademark registration was canceled because the competitor did not file renewal documents and fees. You jump at the chance to grab their trademark by filing your own trademark application on their mark. Did you succeed in grabbing up rights in their trademark? Not necessarily.

Common law trademark rights can be obtained by use of the trademark in business/commerce alone without a federal registration. Therefore lapse of a trademark registration does not automatically result in a loss of all trademark rights.

This principle is demonstrated in the case of Crash Dummy Movie, LLC v. Mattel, Inc., 601 F.3d 1387 (Fed. Cir. 2010).

Crash Dummies Fight

Mattel owned a trademark registration on CRASH DUMMIES for toys. Mattel acquired rights in the CRASH DUMMIES trademark when it acquired Tyco in 1997. In December of 2000, the USPTO cancelled Mattel’s registration on CRASH DUMMIES because Mattel did not file the required trademark renewal documents and fees.

On March 31, 2003, The Crash Dummy Movie, LLC (“CDM”) filed an intent-to-use trademark application on CRASH DUMMIES for games and playthings.

Mattel filed an opposition against the CDM’s trademark application based on Mattel’s common law rights in the mark CRASH DUMMIES. CDM claimed that Mattel abandoned its trademark rights in the mark.

Registration Lapse is not Abandonment

The Court stated, “Although Mattel later allowed its trademark registrations to lapse, cancellation of a trademark registration does not necessarily translate into abandonment of common law trademark rights.”

As explained in prior abandonment posts here and here, a trademark is abandoned if (1) its use in commerce has been discontinued (2) with no intent to resume use. The Lanham Act provides “[n]onuse for 3 consecutive years shall be prima facie evidence of abandonment….” 15 U.S.C. § 1127. This means that after three years of nonuse there is a presumption that the mark has been abandoned.  But, the trademark owner can rebut that presumption by presenting evidence that during the three years the owner formulated an intent to resume use of the trademark in commerce.

Presumption of Abandonment and Rebuttal Evidence

Abandonment depends on trademark use and owner intent and not on registration alone. In the Crash Dummy Movie case, the presumption of abandonment attached because Mattel did not use the CRASH DUMMIES mark for more than three years beginning in December 1995 and ending in December 2003 (8 years) when Mattel made a shipment of CRASH DUMMIES toys.

But Mattel was able to rebut the presumption of abandonment and maintain its ownership of the mark by presenting evidence that Mattel intended to resume use of the mark during the first three years of non-use. That evidence included: (1) Mattel’s discussion with KB Toys in 1998 about them being the exclusive retailer of CRASH DUMMIES toys, (2) Mattel recorded trademark assignment in 1998 transferring ownership of the CRASH DUMMIES mark from Tyco to Mattel, and (3) research and development activities by Mattel from 2000 to 2003 regarding CRASH DUMMIES toys.

Looking at the Trademark Database is Not Enough

The Crash Dummy Movie case demonstrates that the failure to renew a trademark registration does not automatically result in abandonment of all the owner’s trademark rights. The trademark owner may still have common law trademark rights based on their ongoing use or intent to resume use of the mark.

Therefore, simply looking at the status of a registration in the USPTO trademark database will not tell you conclusively whether a trademark owner has abandoned all rights in the trademark. You will need to perform due diligence to gain reasonable assurance that the trademark owner has (1) stopped using the mark in business/commerce and (2) does not intend to resume use.

Determining the trademark owner’s intent is often not easy. So grabbing up an apparently dead trademark of another will likely carry some risk that the trademark owner has not abandoned all of its trademark rights.

8 Years of Non-Use Not Too Long

The risk that the owner has not abandoned all rights may reduce as the period of non-use grows over time. However, Mattel did not use its CRASH DUMMIES mark for 8 years from 1995 to 2003 and still retained its trademark rights based on its activities showing intent to resume use as explained above.

Risks If Trademark Rights Not Abandoned

If the original trademark owner has not abandoned all of its trademark rights, the owner might be able to sue you for trademark infringement based on your use of the mark and/or may oppose your registration of the mark as Mattel successfully did in the Crash Dummy Movie case.

Reviving Dead Brands of Others: Trademark Windfalls

DURAFLAMEKingsford-Clorox owned the trademark Duraflame for artificial firelogs. Kingsford-Clorox decided to get out of the firelog business and wanted to write off the goodwill associated with the Duraflame mark for accounting purposes. So it published a notice in the Wall Street Journal announcing the abandonment of the Duraflame trademark effective on the date of publication.

Two companies scrabbled to grab the Duraflame trademark, which resulted in the case of California Cedar Products Co. v. Pine Mountain Corp., 724 F.2d 827 (9th Cir.  1984). California Cedar won rights in the Duraflame mark because it was the first to use the Duraflame trademark after the mark was abandoned.

WindFall of Goodwill in Picking Up an Abandoned Trademark

When one company abandons a trademark, any other person or entity can grab the abandoned trademark through use or by filing an intent to use trademark application. The new person or entity picking up the trademark will receive a windfall of goodwill associated with that trademark.

Assuming the trademark is associated with a favorable reputation, the new trademark owner will gain that goodwill for essentially no cost, other than the cost of using the mark to make a sale or render service.

California Cedar acquired a windfall of goodwill associated with the Duraflame brand simply by being the first to use the mark after it was abandoned.

Problems in Reviving Abandoned Marks: You Don’t Know Its Abandoned

Why not go around grabbing up abandoned brands? You can, but the difficulty is knowing for certain that trademark is abandoned.

A trademark is abandoned if (1) its use in commerce has been discontinued (2) with no intent to resume use. The Lanham act provides “[n]onuse for 3 consecutive years shall be prima facie evidence of abandonment….” 15 U.S.C. § 1127. This means that after three years of nonuse there is a presumption that the mark has been abandoned.  But, the trademark owner can rebut that presumption by presenting evidence that during the three years the owner formulated an intent to resume use of the trademark in commerce.

Determining whether the the trademark owner has an intent to resume using the mark is difficult. This is why it is possible, but often risky, to attempt to resurrect a trademark mark that appears to no longer be in use.

California Cedar Products Co. represents the easy case is where the trademark owner publicly announces the abandonment of the mark. However, this rarely happens.

It is more common for a company or entity to stop taking action publicly, e.g. stop selling in retail, stop updating a website, stop attending tradeshows, etc. These things may indicate that the company has stopped using the mark. But you can’t be sure. These things do not tell you (1) whether the company has in fact stopped selling, maybe the company is still using the mark to serve at least one customer, or (2) whether the the owner has an intent to resume using the mark if the owner has actually stopped using the mark.

Out of Business

Even when a company goes out of business or looks like it is out of business this is no guarantee that its trademarks are abandoned.

If the trademark owner goes out of business, it is possible that the trademark owner could transfer its assets, including the trademark, to another company. That receiving company would then have rights in the mark as long as the gap in trademark use is not too long.

Abandonment uncertainty is illustrated by the case of Specht v. Google, 758 F.Supp.2d 570 (N.D. Ill. 2010), aff’d, 747 F.3d 929 (7th Cir. 2014). As discussed in my prior post, Specht and his companies ADC and ADI abandoned the trademark rights in ANDRIOD DATA after ADI/ADC stopped using the Android Data mark in 2002 when ADI lost all of its customers and essentially went out of business. Google then picked up rights in ANDRIOD when it launched its mobile operating system in 2007.

Google’s rollout of ANDROID in 2007 was somewhat risky because at the time ADI owned a federal registration over the mark ANDROID DATA, and ADI/ADC maintained a website at androiddata.com. The website did not offer any price information about the Android Data software and was mostly purposeless. These uses were not enough to keep ADC/ADI’s trademark rights alive.

While Google was ultimately successful, Google did not know for sure that Specht and his companies had abandoned the ANDRIOD DATA trademark until Google obtained internal documents and information from Specht during the lawsuit.

Bankruptcy

If the trademark owner goes into bankruptcy, the trademark and associated goodwill can be sold off to satisfy debts of the owner. The entity receiving the trademark as a result of bankruptcy will then have rights in the mark as long as the gap in use of the mark was not too long.

Conclusion

You can gain a windfall of trademark goodwill by adopting an abandoned trademark. The problem is that it is usually difficult to determine whether the trademark is actually abandoned. A long passage of time may give an increased assurance of abandonment.

However, to be sure the mark is abandoned, it is best to have an express statement of abandonment, as happened with the Duraflame trademark. Yet, this rarely happens.

If an express statement of abandonment is not provided, then extensive due diligence is necessary to gain reasonable assurance of abandonment. As the abandonment standard considers the trademark owner’s intent to resume use of a trademark, reviving another’s trademark will likely carry some risk that abandonment has not occurred unless an express statement of abandonment is available.

While picking up an abandoned mark can provide a windfall to the new trademark owner, the uncertainty of abandonment is a risk that may offset some of the windfall benefit.

Trademarks Have Different Meanings: Responding to a Trademark Cease and Desist

“‘PLAYERS’ for shoes implies a fit, style, color and durability adapted to outdoor activities. ‘PLAYERS’ for men’s underwear implies something else, primarily indoors in nature.” – Trademark Trial and Appeals Board.

PlayersTrademarkBritish Bulldog Ltd. applied to register the trademark PLAYERS on the goods of men’s underwear. The trademark examiner  refused to register the mark claiming that it conflicted with a previously registered mark PLAYERS for the goods of shoes.

But the appeals board overturned the refusal and found that there was no likelihood of confusion between the marks in the case of In re British Bulldog, Ltd., 224 U.S.P.Q. 854 (TTAB 1980).

How could identical marks not be in conflict when used on items that a person wears, e.g. underwear and shoes?

Was it because the goods of underwear are so different from shoes that consumers would not expect a source of underwear to also be a source of shoes?

No. The Trademark Trial and Appeals Board noted several previous cases where a conflict was found when the same or similar marks were used by different parties in connection with shoes and with items of clothing.

The one of the  reasons the Board found no conflict was that the marks had different meanings in the context of the respective goods. On that point the Board said:

“PLAYERS” for shoes implies a fit, style, color and durability adapted to outdoor activities.

“PLAYERS” for men’s underwear implies something else, primarily indoors in nature.

Nicely put.

The Board described this a “close case.” Yet, the differing meanings played an important roll in the result.

But, in other cases a conflict was found where there was a lack of meaning-contextual difference. For example, a conflict was found between two users of INGENUE, one for shoes and the other for women’s undergarments. General Shoe Corp. v. Hollywood-Maxwell Co., 47 C.C.P.A. 933 (CCPA 1960).

Responding to a Trademark Cease and Desist

Therefore, when considering the similarities of the marks in response to a trademark cease and desist letter, you should consider whether the marks have distinctly different meanings in relation to the goods/services that they are used on.

Different meanings will not always save you from a conflict as noted by the fact that the Board called the Players case a close case,  but it is one area worth investigating that could be successful.

See other posts in this How to Respond to a Trademark Cease and Desist series:

Trademarks Sound Similar: Responding to a Trademark Cease and Desist

TrademarkSimilar_CapitalCityBank_CitibankCapital City Bank filed a trademark application on its name “Capital City Bank” for banking services without a logo or special form claim. Citigroup filed an opposition based on its Citibank trademarks. Citibank presented evidence that the Citibank brand was one of the most valuable brands in the world. But, Citigroup lost.

When there was a clear over lap of “City Bank” and “CitiBank” between the marks, how could one of the most valuable brands loose?

The problem was that the court concluded that the marks were not similar for trademark infringement purposes.

Not similar? Not similar enough in Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344 (Fed. Cir. 2011).

Sometimes Slight Spelling Differences Matter, Many Times They Don’t

Many times slight spelling differences between marks do not avoid a conflict. However, here many third parties used “city” and “bank” for financial services. In another case, a court noted evidence of 20 other banks that used City and Bank. So, the Citigroup’s right to stop the use of phonically equivalent words was cut off by preexisting third party uses.

Also, Citigroup admitted in a Ohio trademark filing that “because `City’ is a commonly used prefix for financial services corporations, Citigroup and its many subdivisions that bear the famous CITI prefix have coexisted with many`City’ entities for years in virtually every jurisdiction.”

Not a good admission for Citigroup. You can’t, on one hand, say that the use of “city bank” in “Capital City Bank” is confusing while at the same time saying that you have long coexisted with other using “city” for financial services business.

Therefore in this case the “i” vs. the “y” spelling made a difference. Yet many times it will not. Like in the case where the refusal to register XCEED was upheld based on the phonically equivalent preexisting registered mark X-SEED used on the same goods. In re Viterra Inc., 671 F.3d 1358 (Fed. Cir. 2012).

Back to the Citigroup case, the phrase “Capital Bank” was found to be the dominate part of Capital City Bank’s mark given the weak nature of Citigroup’s mark.

Defending Against A Trademark Cease and Desist Letter

What can we learn from the Citigroup case? We learn that sometimes marks that at first glance appear to be similar, are not similar for trademark infringement purposes. If many third parties had not been using “city bank” for financial services, Citigroup might have prevailed.

When the overlapping terms between the marks are commonly used in the industry, the marks might not be found to be similar for trademark infringement purposes. When marks are considered dissimilar, you have a better chance of defending against a trademark infringement claim.

See other posts in this How to Respond to a Trademark Cease and Desist series:

The Trademark is Descriptive: How to Respond to a Trademark Cease and Desist

Descriptive_Weak_TrademarkFrederic Towers began using the term “The Professional Portfolio System” in November 1982 for a computer-based portfolio valuation system.

Advent Software obtained a registration for the term “The Professional Portfolio” for computer programs used in the field of financial management. Advent first used the term in December 1983, more than one year after Towers’ first use.

Towers petitioned to cancel Advent’s trademark based on the similarities of the marks and the similarities of the goods, but lost.

Usually rights to use a mark go to the person or entity that first started using the mark in commerce. Here, Towers was first.

So why did he lose?

Because Towers’ mark was descriptive and therefore weak. This is the result in the case of Towers v. Advent Software, Inc., 913 F.2d 942 (Fed. Cir. 1990).

Descriptive Marks are Not Strong Initially

Not all trademarks are created with equal strength.

Descriptive marks are weak, at least initially. A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the corresponding goods or services.

The court found that Tower’s mark was essentially the generic term “portfolio valuation system” with the addition of the word “professional.” The term “portfolio system” described what the Tower’s software was used for, e.g. to manage a portfolio. The absence of the term “valuation” from the mark did not prevent Tower’s mark from being descriptive.

And the word “professional” conveyed information immediately to the purchaser that the product possesses professional capabilities. Therefore, the mark described directly characteristics and features of the product.

The court found that Tower’s did not have superior rights in the mark even though Towers’ used his mark first.

Over time a trademark owner might be able to generate trademark rights in a descriptive mark, if the mark gains recognition (i.e. acquired distinctiveness or secondary meaning) with the purchasing public. But Towers did not show this.

Responding to a Cease and Desist: Your Mark Is Descriptive

Therefore, if a plaintiff demands you stop using your mark, and that plaintiff started using the mark before you, you might be able to defend by asserting that the plaintiff’s mark is descriptive and therefore weak.

Evaluating whether the mark is descriptive involves understanding the goods or services that the mark is used on, and comparing the elements of the mark to those goods or services to see if the elements of the mark describe an ingredient, quality, characteristic, function, feature, purpose or use of the corresponding goods or services.

It also involves determining how long the plaintiff has used its mark and whether the mark has gained recognition with the purchasing public as a source of the plaintiff’s goods/services.

See other posts in this How to Respond to a Trademark Cease and Desist series:

Photo credit to Elliott Brown under this creative commons license. The photo was modified from the original to crop in on “weak bridge.”

 

The Trademark is Weak: How to Respond to Trademark Cease and Desist

Domino_v_DominosPizzaDomino is a trademark for and a brand of sugar. Sugar is a type of food. Domino’s Pizza is a trademark for a pizza restaurant chain. Pizza is a food.

Amstar, which owned the Domino sugar brand at the time, sued Domino’s Pizza alleging trademark infringement over the use of the term Dominos. But Amstar lost.

Why? Similarity of the marks and similarity of the goods is usually a good start to making a strong case of trademark infringement. Here, there was a similarity between the marks, e.g. “Domino.” And, there was an arguably similarity between the goods, e.g. food.

Yet, Amster lost because, in part, the Domino mark was weak in relation to food generally.

Many Third-Party Uses for Similar Goods: Weak Trademark Rights 

Why was the “Domino” mark weak? It was weak because many other companies used Domino on other types of food.

I previously discuss factors to consider for selecting a strong trademark. Another factor in trademark strength is whether many others are using the same or similar mark in the marketplace for the same or similar goods or services. When many third parties are using the mark on similar goods, that mark will be considered a weak mark. Weak marks are provided a narrow scope of protection.

In the case of Amstar Corp. v. Domino’s Pizza, Inc., 615 F.2d 252, 259 (5th Cir. 1980), Domino’s Pizza showed that there were 72 other trademark registrations of the term “Domino” at the U.S. Patent and Trademark Office. Some of those registration involved foods, such as canned fruits, cheese, wheat flour, canned sardines, and candy. Domino’s Pizza also introduced evidence of 15 uses of marks that included “Dominos” in the marketplace by other companies, including uses related to food and grocery stores.

The court noted that “The greater the number of identical or more or less similar trade-marks already in use on different kinds of goods, the less is the likelihood of confusion….” The court also stated, “The third-party uses and registrations discussed above merely limit the protection to be accorded plaintiff’s mark outside the uses [sugar] to which plaintiff has already put its mark.”

Therefore Amstar’s trademark rights to Domino did not extend to any food but was confined to sugars. The court concluded limited strength and protection outside of its sugar goods was an important factor in determining that Domino’s Pizza’s use of the term “Domino” did not constitute trademark infringement.

Responding to Trademark Cease and Desist: Search for Third Party Uses 

Therefore, when you are on the receiving side of a trademark cease and desist letter, you should be searching to see if there are other similar registered marks used for similar goods. You can do that by searching the USPTO trademark database. You should also search for third party uses in the marketplace of the same or similar marks for the same or similar goods. You can do that by any method of searching the market, e.g. search the internet.

The more third party uses the better. But, you don’t need to find 72 registrations, even a handful can be effective depending on the circumstance.

Finding that multiple third parties have registrations or uses in the marketplace for the same or similar mark with the same or similar goods, may be a basis to assert that the plaintiff’s trademark rights are weak. If the trademark rights are weak, it may be that the differences in the goods/services are sufficient to conclude there is no trademark infringement, as was the case for Domino’s Pizza.

See the prior posts in this series: