Trademark Bulletin September/October 2019

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USPTO Releases Revised Examination Guide Following Backlash

On September 6, 2019, the USPTO released a revised examination guide to clarify the controversial amendment to Rule 2.11, which requires all foreign domiciled trademark applicants, registrants, or parties of a trademark proceeding to obtain representation from a U.S. licensed attorney in order to complete the trademark application process. The release of the revised examination guide, which provides practical information related to the rule, comes after the USPTO received many requests to elaborate on certain provisions in the unprecedented amendment. A brief summary of the new requirement can be found in our client alert here.

Public Domicile Requirement

The new amendment to Rule 2.11, which took effect on August 3rd, 2019, requires all trademark applicants to include their place of residence in their trademark application. Much of the backlash that the USPTO has received since the requirement took effect stems from privacy concerns as the names and addresses included in the filing will be public record.

The revised guide has now been expanded to include a new section explaining how applicants can file a petition to waive the public domicile requirement. According to the USPTO, individual applicants or registrants can seek a waiver by entering “Petition” in the street address portion of the TEAS form, and can then separately file a petition to waive the requirement. If the USPTO grants the petition, the applicant or registrant will need to provide an address for mailing purposes. Even so, the examination guide suggests that waivers may only be obtained in an “extraordinary situation.” Although the USPTO does not clarify what situations would warrant a waiver, according to World Trademark Review (WTR), “it is understood that it mostly includes safety situations, such as celebrities and domestic abuse victims.”

Additionally, the USPTO further maintained that a post office box address will not be considered a domicile as Mary Boney Denison, the USPTO commissioner for trademarks, explained to WTR that it is because “you can’t live in a PO box.”

Immigration Status

Another point of contention with the new requirement stemmed from the provision regarding an applicant’s immigration status. The guide initially stated in Section 3 that “Foreign citizens must comply with US visa immigration laws to claim the US as their permanent legal residence. When the applicant or registrant is a foreign citizen/entity with a US street address, it is necessary to determine whether the US street address is the applicant’s or registrant’s domicile.”

In the revised edition, there is no mention of the word “visa” or “immigration,” however, it does state that “when necessary, the USPTO will require an applicant or registrant to confirm its domicile address.” The USPTO then goes on to list examples of documents that can help to confirm a U.S. street address. These documents include: (a) For an individual, documentation showing the name and listed address of the individual, such as a current, valid signed rental, lease, or mortgage agreement, homeowner’s, renter’s, or motor vehicle insurance policy, or a computer-generated bill issued by a utility company dated within 60 days of the application or post-registration document filing date; and (b) For a business entity, documentation showing that the address is the applicant’s or registrant’s business headquarters, such as the most recent final annual or quarterly report or a current certificate of good standing issued by a federal or state government agency.

While many believe that the new amendment may cause unintended consequences, the USPTO is working to assuage much of these concerns by implementing mandatory electronic filings and instituting a MyUSPTO account for individuals to login.

Click here for the USPTO’s revised examination guide. Click here for the related article on the World Trademark Review.

Famous Street Artist Banksy may be applying anonymously for Trademark

An application to register the wordmark BANKSY is currently pending approval with the USPTO. The controversial popular culture icon, Banksy, is known for his contemporary and highly political street art. Though his work is highly publicized, with some of his work auctioned for upwards of $1 million dollars, the artist is infamously known for his anonymity. The trademark application for BANKSY was filed on November 16, 2018 in five (5) international classes in connection with a range of goods from sunglasses to tinsel for decorating Christmas trees, and services from education to multimedia publishing services. Even though the name of the applicant is Pest Control Office Limited, a limited company based in the United Kingdom, Banksy has been known to trade under the cover of the company in the U.K. The company had previously secured registration for BANKSY in 20 classes of goods and services back in 2008. Now many believe that the application has once again been filed anonymously by the world renowned street artist, who has been known to claim “copyright is for losers.”

Click here to be redirected to the application on the USPTO’s website.

Adidas Loses Infringement Action Against a Japanese Company’s Two Stripes Trademark

A few months after failing to extend to the European Union its three-stipe trademark, Adidas lost a trademark infringement battle in Japan.

Adidas filed an action for trademark infringement before the Japanese Patent Office (JPO) against Marubeni Footwear (“Marubeni”), a Japanese footwear company, for registering a diagonal two-stipe trademark. Adidas argued that Marubeni two-stripe trademark was almost identical to Adidas’ famous three-stipe mark, and that this mark was likely to cause confusion to the consumers. Adidas further stated that if Marubeni decides to color the space between the two stipes in another color, the sign would be perceived to have not two but three stipes, rendering the mark even more similar to Adidas’ three-stripe mark.

On August 30, 2019, the JPO ruled in favor of Marubeni. Specifically, the JPO concluded that the space between the stipes was irrelevant in determining whether Marubeni’s mark was confusingly similar to Adidas’ mark and that the consumers will likely distinguish between Marubeni’s two stipes and Adidas’ three stripes.

Ohio State University trademark application for the mark “THE” denied by the USPTO

In August 2019, Ohio State University filed an application with the USPTO for the mark “THE” to be used in connection with t-shirts, baseball caps and hats.

On September 11, 2019, the USPTO issued a Non-final Office Action denying the University’s application. The examining attorney held that, according to the specimen provided by the University, “the applied for mark appears to be used in a merely decorative manner that would be perceived by consumers as having little or no particular source-identifying significance.” The examining attorney further held that the mark does not function as a trademark because it merely constitutes a decorative or ornamental feature of the University’s clothing.

Even so, the USPTO gave to the University a chance to remedy the situation by, among other things, submitting evidence within six month to show that the trademark has become distinctive of the University’s goods. In other words, to see its trademark registered, the University must prove that its extensive use and promotion allows the consumers to directly associate the mark with the University as the source of the goods.

U.S. Supreme Court to Hear Circuit-Splitting Issue on Willfulness Requirement for TM Awards

On September 13, addressing a circuit-splitting issue, Romag Fasteners Inc., a watch parts maker, told the U.S. Supreme Court that the Lanham Act does not require proof of willful infringement to recover a trademark infringer’s profits. Romag argued that Congress intended for trademark owners to recover a share of the infringer’s profits without a showing of willfulness because the federal trademark law includes provisions that require proof of willfulness, but this section does not. In 2014, Romag won a trademark infringement verdict against Fossil, but it was unable to recover $6.8 million in Fossil’s profits because it was unable to prove that the infringement was willful. In June, the U.S. Supreme Court granted a writ of certiorari in the case to potentially resolve the circuit spilt between the First, Second, Eighth, Ninth, Tenth and D.C. circuits, which require proof of willfulness, and the Third, Fourth, Fifth, Sixth, Seventh and Eleventh circuits, which consider willfulness only as a factor in the analysis.

This case is pending before the U.S. Supreme Court.

LeBron James’ Taco Tuesday Trademark Refused by the USPTO

In addition to his formidable athletic ability, NBA superstar LeBron James has become well-known for his uproarious “Taco Tuesday” social media posts on Instagram. So much so, apparently, that James (through his company LBJ Trademarks, LLC) recently attempted to register the phrase “Taco Tuesday” with the United States Patent and Trademark Office (“PTO”) in connection with a variety of communications, social media and online entertainment services, including a podcast, blog, and website. James’ application was met with a refusal from the PTO on September 11, which rejected the proposed mark on the grounds that “Taco Tuesday” is “a commonplace term, message, or expression used by a variety of sources that merely conveys an ordinary, familiar, well-recognized concept or sentiment” — in other words, the term fails to function as a trademark. The PTO also cited a likelihood of confusion between Taco Tuesday and another, registered mark “Techno Taco Tuesday” for advertising services.

A spokesman for James stated that the refusal was still a victory for the superstar, who interpreted it to mean that no one else can register the term and therefore, LeBron can’t be sued for using it. While the PTO has offered James an opportunity to overcome the refusal, it is unclear whether James plans to pursue the registration any further.

Ariana Grande Files $10 Million Trademark Lawsuit Against Forever 21

On September 2nd, pop sensation Ariana Grande filed a $10 million lawsuit in California federal court, alleging that fashion retailer Forever 21 misappropriated her name and likeness after the parties failed to reach an endorsement deal. Grande’s complaint alleges that representatives of Forever 21 contacted her to collaborate on a social media campaign in anticipation of her latest album, “thank u, next,” but the parties could not work out a deal because, in Grande’s view, “the amounts that Forever 21 offered to pay for the right to use Ms. Grande’s name and likeness were insufficient for an artist of her stature.” The complaint alleges that Forever 21 subsequently launched a “misleading” social media campaign using a lookalike model, which “capitalized on the success of Ms. Grande’s album Thank U, Next by publishing at least 30 unauthorized images and videos misappropriating Ms. Grande’s name, image, likeness, and music in order to create the false perception of her endorsement.”

Grande’s lawsuit bears some similarities to a lawsuit filed in 2011 by reality television star Kim Kardashian against The Gap for misappropriating her likeness in an Old Navy television ad. That case, which also involved a lookalike model, settled for an undisclosed amount in August 2012.

A copy of Grande’s complaint can be found here.

11th Circuit Court of Appeals Issues Decision Sparing Kardashians and Providing a Cautionary Tale for Licensees

Kroma Makeup EU, LLC (“Kroma EU”) is a former European distributor of KROMA branded cosmetics. The mark KROMA is registered in the United States to owner By Lee Tillett, Inc. (“Tillett”). Tillett granted a license to Kroma EU for exclusive rights to import to and market and sell in Europe, KROMA branded cosmetics. What that license did not do, as found by the United States Court of Appeals for the 11th Circuit, is grant Kroma EU the right to enforce the KROMA mark it licensed.

Defendant- Appellees Kim, Kourtney and Khloe Kardashian were celebrity endorses of a cosmetic line formerly known as “Krohma Beauty.” The manufacturer of the Kardashian endorsed cosmetic line sued Tillett in Federal court seeking declaratory judgment that it did not infringe the KROMA mark. Tillett counter claimed for infringement and impleaded the Kardashian sisters. That case resulted in a grant of preliminary injunction to Tillett, a rebranding of the Khroma Beauty line to “Kardashian Beauty” and a settlement of an undisclosed amount.  Fast forward to federal district court in Florida where Kroma EU commenced action against Tillett and also against the aforesaid Kardashian sisters for infringement of the KROMA mark in the European union (i.e. in Kroma EU’s licensed territory). (Apparently, Tillett did not share a portion of settlement proceeds with its licensee KROMA EU). That court found that Kroma EU lacked standing to proceed. Kroma EU appealed. In handing a defeat to the European licensee, the appellate court looked to the written license agreement between licensor Tillett and licensee Kroma EU. The court noted that the license agreement did not grant Kroma EU the right to enforce the trademark it licensed. Rather, the licensor retained for itself the right to enforce its mark and licensee Kroma EU’s sole affirmative obligation in the circumstance of an infringement was to inform licensor. Although Kroma EU pointed to U.S. Lanham Act provisions granting a cause of action to “any person who believes he or she is likely to be damaged,” the Court held that the written license agreement did not grant Kroma EU sufficient rights to allow it to sue under the US federal trademark statute.   The Court noted that Kroma EU might have a cause of action for breach of contract against licensor. Kroma EU apparently thought so too because it commenced that suit.

SPJ Claims to File a Trademark Application For ‘Fake News’ and is Planning to Send Trump a Cease and Desist Letter

According to the NY Post, the Florida Pro Chapter of the Society of Professional Journalists (SPJ) filed a trademark application for the phrase “FAKE NEWS.” SPJ claims this application was filed to prevent celebrities and politicians – particularly President Trump- from using it abusively and inappropriately.

To explain its mission to the public, SPJ launched a video and a website. SPJ explains that the use of “fake news” should be limited to partisan publications mimicking real news stories. It further provides that President Trump or other politician use this term as an attempt to discredit the facts or information included in news articles. SPJ further plans to send cease and desist letters every time someone uses the term incorrectly.

SPJ is not the only entity trying to claim ownership to this term. Namely, a Russian company filed a similar application with the USPTO on June 2, 2019 to be used in connection with news services.

Click here to be redirected to the related article on the NY Post.

Beyoncé’s Trademark Dispute on the term “Blue Ivy”

Beyoncé has been engaged in a trademark battle for years against a weeding planning company over the name “Blue Ivy.”

Beyoncé has attempted to register the trademark “Blue Ivy Carter,” and has filed several applications with the USPTO covering a number of different goods. While Blue Ivy is the name of the star’s first child, wedding business owner’s, Veronica Morales, has received a trademark application for the mark “Blue Ivy” in 2012 in connection with event planning services.

In May 2017, Morales filed an opposition with the TTAB challenging Beyoncé’s “Blue Ivy Carter” application. Morales claimed that the mark infringes her “Blue Ivy” trademark and that Beyoncé had no intention of using the trademark in commerce.

In 2018, Morales filed a new application for “Blue Ivy” in class 3 covering goods and services that encompass the goods and services covered by Beyoncé’s application as an attempt to give weight to Morales’ argument in the trademark dispute. The USPTO refused Morales’ application based on Beyoncé’s application and other Blue Ivy registrations.

The TTAB has not rendered a decision yet, and Beyoncé’s application is still pending.

Is Banksy Flower Thrower a Proper Trademark?

In March 2019, greeting card producer Full Colour Black (“FCB”) started an action before the EUIPO to cancel Banksy’s EU trademark registration of his iconic mural “Flower Thrower.”

The mural, originally painted in Bethlehem, has been registered with the EUIPO in August 2014 by Pest Control, the company acting on behalf of Banksy. The trademark has been used on merchandise sold at Banksy’s recently-opened store in London called Gross Domestic Product.

FCB argues that the Flower Thrower trademark is just merely ornamental artwork that cannot be used as a trademark because it does not serve as a source identifier. FCB further argues that as the reproductions of the artwork has been encouraged in the past by the Artist himself who declared that “copyright is for losers,” the public will not be able to tell whether Banksy’s product has been manufactured by Banksy or by a third party.

Cinnabon Sues Maker of E-Liquid for Trademark Infringement

Last month, the owners of well-known bakery franchise Cinnabon sued the producer of “LiquidChronic” brand e-liquids (“LiquidChronic”) over the latter’s use of the term Cinnabon to market and sell various vaping products. The lawsuit, which was filed in the district court of Nevada, seeks damages and injunctive relief for trademark infringement, trademark dilution and unfair competition under federal and common law. Plaintiff’s Complaint includes photos of e-liquids bearing the Cinnabon mark from LiquidChronic’s website, alongside captions which refer to the “good taste of a cinnamon roll fresh out of the oven.”

The lawsuit, Cinnabon Franchisor SPV LLC v. LiquidChronic.com LLC, 2:19-cv-1855 (D. Nev. 2019), further alleges that Cinnabon made several attempts to contact LiquidChronic regarding the alleged infringement, including by sending three cease and desist letters to the company, but did not receive a response. According to the Complaint, the Cinnabon mark has become “famous by virtue of Plaintiff’s long-standing and widespread use” of the mark on various goods, including “dry mixes for bakery goods, popped popcorn, alcohol, air fresheners, breakfast cereals and microwaveable baked goods.” In addition to 17 registrations for variations of the Cinnabon mark, Plaintiff claims to have longstanding common law rights in the mark dating back to 1985. A copy of Cinnabon’s complaint can be accessed here.

U.S. Patent and Trademark Office Requires New Log-in Authentication in Efforts to Step Up Security

On October 21, 2019, USPTO’s Commissioner of Trademarks, Mary Denison, announced a three-stage plan to enhance the security of electronic trademark filings, following complaints of security concerns posed by an uptick in unauthorized filings. The measure applies to individuals seeking to file or view documents on the PTO’s Trademark Electronic Application System or “TEAS,” and requires users to establish an account authenticated by a two-step log in process. Access to TEAS would automatically time out after 30 minutes. A similar authentication process is already required to access the online patent application system. The second step, scheduled to be implemented this coming spring, will require users to “prove” their identities using a computer system or notary public. The third step will establish “role based access to the system, in order to further distinguish access between attorneys and paralegals.

These changes follow closely on the heels of the new amendment to Rule 2.11 which require foreign trademark applicants to use domestic counsel for their trademark filings. The new plan signifies the Office’s increased interest in regulating and oversight of the trademark filing process.

Under Armour Settles With Milkcrate Athletics In Logo Dispute

On October 16,2019, major athletic wear company Under Armour agreed to settle in the case brought by Milkcrate Athletics, a streetwear company based in New York, that accused Under Armour of infringing upon its trademarked logo. In a complaint filed in August 2019, Milkcrate alleged that Under Armour sold T-shirts with a logo that was confusingly similar to the trademarked Milkcrate logo. Milkcrate claimed that prior to the alleged infringement, its executives had discussed possibly collaborating with the athletic wear company.

The case is Milkcrate Athletics Inc. v. Under Armour Inc., case number 1:19-cv-07758 and is filed in the U.S. District Court for the Southern District of New York. Click here for a copy of the complaint.

TTAB Says Vitamin Shoppe Is Just A Shop Full Of Vitamins

On October 4, 2019, The USPTO’s Trademark Trial and Appeal Board (TTAB) refused to grant The Vitamin Shoppe’s registration for four trademarks that included its name, claiming that the phrase “THE VITAMIN SHOPPE” is generic and could apply to any stores that sell vitamins. Vitamin Shoppe had already been granted five other trademark registrations that included its name and has used its name for more than 40 years. Even so, the Vitamin Shoppe failed to prove to the board that the phrase is now distinctive enough for consumers to associate the name solely with the company. The Vitamin Shoppe also argued that its ending, “Shoppe,” was distinctive, however TTAB responded by stating that the spelling of the word was “deliberately archaic.”

The case is In re Vitamin Shoppe Procurement Services, Inc., serial numbers 86905555, 86905614, 86905620, 86905628, before the Trademark Trial and Appeal Board. Click here to be redirected to the related article on Law 360. Click here to be redirected to the related decision.

Dunnington Bartholow & Miller Trademark Bulletin Committee: Olivera Medenica, Donna Frosco (Partners); Sixtine Bousquet, Betsy Dale, Kamanta Kettle (Associates); & Valerie Oyakhilome (Paralegal).

When a Foreign National Dies with Assets in New York, What Happens?

By | All, Estates, Trusts and Private Clients, Featured, International, Publications

Update on What Wealth Advisors, Legal Advisors, and Globetrotters Need to Know

Susan Rothwell, Partner

September 26, 2019

If you’re a foreign national with ties to New York, you may own an apartment or a house, or have bank and investment accounts located here.  Whether you are an individual who bought an apartment for a child in college or an art aficionado getting an appraisal from Christie’s or Sotheby’s, it is worth considering what happens to these assets on death.  How do the next of kin or beneficiaries get access to the property?  What are the tax consequences? Read More

PRESS RELEASE: Dunnington Announces Launch of Guide To Doing Business in the United States

By | All, Corporate, Estates, Trusts and Private Clients, Featured, Firm News, Immigration, Intellectual Property, Advertising, Art and Fashion Law, Litigation, Arbitration and Mediation, Real Estate

WHEN:                  September 17, 2019 6:00 PM
WHERE:                230 Park Avenue, 21st Floor

NEW YORK–Dunnington Bartholow & Miller LLP, a full-service New York City-based law firm serving the international community announced today the publication of Doing Business in the United States, a guide to assist business leaders, startups and individuals in navigating the most important business law issues facing foreign investors and entrepreneurs in the coming years.  The launch will be celebrated with an event for journalist members of the Foreign Press Association.

Read More

Client Alert: What You Should Know About the USPTO’s Foreign Applicant U.S. Counsel Requirement

By | All, Client Alerts, Featured, Intellectual Property, Advertising, Art and Fashion Law

Valerie Oyakhilome, Paralegal

August 30, 2019

On August 3rd, 2019, the United States Patent and Trademark Office (USPTO) took unprecedented action by implementing a new rule that directly impacts the meaning of compliance in the application process for both current and prospective trademark owners. Read More

Trademark Bulletin August 2019

By | All, Featured, Intellectual Property, Advertising, Art and Fashion Law, Trademark Bulletins

Federal Court Affirms Luxury Eyewear Manufacturer’s $1.9M Win Over Flea Market

On August 7, the U.S. Court of Appeals for the Eleventh Circuit upheld the ruling of a Georgia jury awarding $1.9 million to Luxottica finding the landlord of an indoor flea market in Georgia liable for contributory trademark infringement when the landlord had “constructive” knowledge of the subtenants’ sale of counterfeit eyewear, including knockoffs of Ray-Ban and Oakley brands. Read More