This month we discuss Baby Shark(s), increasing fees, why you shouldn’t lie to the USPTO and more…

Amazon Sues Influencers for the Sale of Counterfeits on Its Platform

Amazon recently filed a complaint in the U.S. District Court for the Western District of Washington claiming that several influencers, along with 11 Amazon marketplace sellers violated Amazon’s policies, and federal and state law, by advertising and promoting the sale of counterfeit luxury products on Amazon.com.  According to the complaint, these influencers were promoting the sale of counterfeit products through various social media platforms (Instagram, Facebook and TikTok) and providing links to Amazon pages that would not reveal the counterfeit nature of the goods sold.  Buyers, however, based on the instructions given by these influencers, would purchase the purportedly unbranded products, but in reality would knowingly be purchasing counterfeit products – as encouraged by defendants on their social media pages.  Great article discussing the complaint in Julie Zerbo’s The Fashion Law.

It Sucks but .Sucks Is Not a Trademark

Back in 2011, Vox Populi Registry Ltd., a registry operator for the gTLD “.sucks” applied to register .SUCKS as a service mark for operating a domain name registry related to that gTLD and for registering domain names for others relating to that top-level domain.  The Examining Attorney refused registration, arguing that the applied for mark failed to function as a trademark.  Applicant appealed, but the TTAB affirmed.  According to the TTAB, consumers would view the top-level domain as part of the domain name, and not promoting a service – in other words, as part of Applicant’s product, rather than its brand.  Opinion is available here.

With Apologies for Putting This in Your Head All Day… Judge Has Awarded ‘Baby Shark’ Creator $8.45m Total in Multiple Counterfeit Suits

Smart Study Co. Ltd. created the famous/infamous “SHARK” YouTube video.  It commenced multiple lawsuits against alleging multiple trademark and copyright violation claims from the sale of counterfeit Baby Shark products.  Plaintiffs specifically alleged trademark infringement, trademark counterfeiting, false designation of origin, passing off and unfair competition.  Via default judgements in three lawsuits, a United States District Judge in New York granted plaintiff relief on all claims.  He ordered the more than 160 named defendants to pay $50,000.00 each as statutory damages for Lanham Act violations, noting the Act’s “compensatory and punitive purposes … on willful infringement….”  He also granted a permanent injunction barring the defendants from producing, selling, importing, exporting and advertising infringing items.  The broad orders also mandate maintenance of records by defendants, their financial institutions and defined parties such as third-party service providers and extend a freeze on defendants’ assets.  The plaintiff alleged that the infringing goods were sold via Amazon, Alibaba and Wish.com, none of which were named as defendants.  The three court orders can be found here, here and here.

EU Court Finds Smart Phones and Computer Programs to Be Similar – Denying LG Electronics Trademark Bid

LG Electronics lost a bid to trademark “K7” smartphone when the EU’s General Court cited an earlier registration of K7 for software programs.  LG sought registration for the mark in International Class 9 for “[s]mart phones; mobile phones; wearable smart phones.”  The application was opposed by an intervener based on prior registration of the identical mark in International Classes 9.41 and 42 for goods including: “Programs for computers; monitors [computer programs]… interactive multimedia computer programs; games software; programs (computer -) [downloadable software]; education software; computer programmes for image processing;… computer programmes for data processing; downloadable music files ….”  The European Union Intellectual Property Office (EUIPO) refused the registration and LG appealed.

LG had argued that consumers would not be confused between a cell phone and computer programs.  The court, however, found that smart phones and computers are both electronic devices which function based on operating systems and run applications.  The court also noted the similar purposes of computers and smartphones, such as internet access and running multimedia content.  Finally, the Court cited the likelihood of similar distribution channels for both smartphones and computers.

The case can be found here.

USPTO Announces Application Fee Increase for 2021

On November 17, 2020, the United States Patent and Trademark Office (the “USPTO”) issued a Final Rule increasing and adjusting the trademark registration fees.  It is the first such increase in nearly three years.

Starting January 2, 2021, trademark applications fees will increase as follows:

  • for TEAS standard, increase from $275 to $350 per class; and
  • for TEAS Plus, increase from $225 to $250 per class.

The agency’s Final Rule also creates some new fees, such as:

  • a $250 per class fee for deleting goods, services, and/or classes from an application after submission of a Section 8 or Section 71 declaration, but prior to acceptance;
  • a $50 letter of protest fee; and
  • a $500 fee for an oral hearing request.

The USPTO has cited as justification for the new fees and increases the state of the U.S. economy, the operational needs of the agency and lower than expected fee collections in 2020 due to lower than expected post-registration and Madrid filings.  The Final Rule is accessible here.

New York Times and Time Magazine in a Trademark Infringement Battle

On November 20, 2020, the New York Times Co. (“NYT”) filed a trademark infringement action against Time Magazine (“Time”) in the Federal court in New York.

The NYT accuses Time of infringing its Times Talks trademark by using the mark “TIME100 TALKS” for the magazine’s own competing online series.  The Times Talks mark has been used since 1999 in connection with conversations between NYT’s journalists and diverse newsmakers.  Time has used the TIME100 TALKS mark since April 2020, for similar conversations and with some of the same persons who have previously appeared on Times Talks panels.

On August 27, 2020 the USPTO rejected Time’s TIME100 TALKS trademark application, based on likelihood of confusion with NYT’s Times Talk mark.  Despite a cease-and-desist demand from NYT, NYT alleges that Time has refused, in writing, to stop using the TIME100 TALK mark.

NYT wants the court to enjoin Time from using the TIME100 TALKS mark, from continuing efforts to register the name, and to pay unspecified damages, including profits from the alleged infringement.

Jury Awards Millions to Beachwear Company After Competitor Made False Claims of TM Ownership in a Registration Application

On November 16, 2020, a jury awarded beachwear chain, Beach Mart Inc. (“Beach Mart”), a multimillion dollar verdict against competitor chain, L&L Wings Inc. (“L&L”).  The jury found that L&L fraudulently claimed that it owned the mark “WINGS,” causing Beach Mart to cease calling its retail stores “Wings.” The jury agreed with Beach Mart’s claims that L&L lied to the USPTO in two trademark applications when it failed to disclose that it was only licensing the marks from the trademark owner, and that it did not actually own the marks.  The jury also agreed that L&L fraudulently induced Beach Mart to enter into an agreement in 2005 wherein Beach Mart agreed to call its stores “Big Wings” and “Super Wings”— not simply “Wings,” as it had been doing.  The jury further agreed that the trademarks that L&L applied for in 2006 and 2011, were obtained by fraudulent means, and should be cancelled.  The case began in 2011, after Beach Mart sued under the 2005 contract.  This matter has also been heard in the United States Court of Appeals for the Fourth Circuit where the court overturned an award for summary judgment on behalf of L&L, and affirmed an award of sanctions against L&L for litigation misconduct.

Estate of Late Rapper Nipsey Hussle Files Trademark Suit Against Crips Gang

The estate of the late rapper and activist Ermias J. Asghedom, known professionally as “Nipsey Hussle,” has sued the company behind the Crips gang, Crips LLC, for allegedly infringing the rapper’s slogan “The Marathon Continues.”

According to the complaint, which was filed before the Trademark Trial and Appeal Board in April 2020, Asghedom was known to use the phrase “The Marathon Continues” in his music.  He trademarked the phrase THE MARATHON (CLOTHING) in connection with his clothing line in 2011.  The complaint alleges that Crips LLC and its owner Tia Hollis (a managing member and majority member of the gang’s organization) filed an application to register the slogan less than two months after the famous rapper was murdered in a March 2019 shooting in front of his clothing store, “The Marathon.”

While the Crips LLC’s application to register The Marathon Continues cites to several charitable uses for the mark, including “gang prevention” and “gang intervention,” the lawsuit asserts that none of those uses had occurred at the time the Crips LLC’s application was filed, suggesting that Crips LLC committed fraud on the United States Patent & Trademark Office (“USPTO”).  The lawsuit also notes that the gang received widespread public criticism as a result of the application, leading it to issue an apology and falsely state that it would abandon the application.

Among other things, the Asghedoms’s estate seeks damages for trademark infringement, false advertising and unfair competition in connection with the gang’s unauthorized commercial use of the mark, noting, “The fame and reputation of Ermias J. Asghedom is such that, when the mark THE MARATHON CONTINUES is used for any of the services covered in this Application, a connection with Ermias J. Asghedom would be presumed.”

It is not the first time Crips LLC has been sued for trademark infringement.  In January, the Coca-Cola Company sued the gang’s legal entity in connection with the latter’s application to register the mark “Crip A Cola” on clothing.  That application was abandoned after the Board issued a default judgment in Coca-Cola’s favor.

New Balance Hit with $2M Trademark Lawsuit Over Shoe Collaboration

New Balance Athletics, Inc. (“New Balance”) has been named a defendant in a $2 million lawsuit filed by ABG Collective, LLC (“ABG”), which accuses the brand of developing a “counterfeit” line of sneakers that infringes on the Vision Streetwear brand it acquired in 2014.  ABG is a division of the Authentic Brands Group, a well-known licensor and brand development business.

ABG alleges that New Balance’s “Vision Racer” shoe—a collaboration with celebrity tastemaker Jaden Smith—goes beyond simply infringing its Vision Streetwear marks and meets the higher standard of counterfeiting because the shoe line makes use of “spurious marks that are counterfeits of, identical to and substantially indistinguishable from” ABG’s VISION trademarks on the same types of goods for which ABG maintains federal trademark registrations, namely sneakers.  In addition to its substantial damages claim, ABG seeks injunctive relief due to the fact that ABG’s goods and the New Balance goods travel in the same channels of trade.

The case, filed in the U.S. District Court for the Southern District of New York, is ABG Collective, LLC v. New Balance Athletics, Inc., 1:20-cv-08931 (SDNY).

Netflix Chooses Settlement to End Trademark Lawsuit Over ‘Black Mirror’

Chooseco LLC’s trademark lawsuit over the 2018 Netflix film Black Mirror: Bandersnatch has finally come to an end, with the parties entering into a non-public settlement agreement.  The lawsuit, which was filed in January 2019, alleged that Netflix failed to obtain a license to reference Chooseco’s Choose Your Own Adventure trademark in its film, creating a false association with the plaintiff, a children’s book publisher.

Netflix had originally sought to dismiss Chooseco’s complaint on First Amendment grounds.  However, the Vermont district judge overseeing the case denied the motion, finding that similarities between the film and Chooseco’s Choose Your Own Adventure books mandated that plaintiff be allowed to present evidence of consumer confusion.  Among other similarities, the court noted that the plot of Netflix’s film progresses in much the same way as a Choose Your Own Adventure book, allowing viewers to interact with the film’s content by selecting the direction of the plot.  At one point, the film’s protagonist also announces that the fictional videogame he has created is based on a fictional Choose Your Own Adventure book called Bandersnatch.  Netflix’s attempts to proffer a fair use defense and even cancel Chooseco’s trademark also failed.

While the parties’ settlement remains shrouded in mystery, it did require the district court to vacate its decision denying Netflix’s motion to dismiss the lawsuit.  Chooseco will maintain its ownership of the Choose Your Own Adventure trademark following the suit.

The case is Chooseco LLC vs. Netflix, Inc., 2:19-cv-00008 (D. Vermont 2019), and the Complaint in the case can be found here.

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