This month we discuss the Trademark Modernization Act, descriptive trademarks, the breach of trademark co-existence agreements, and much more…

Trademark Modernization Act and the CASE Act

The 5,600 page Consolidated Appropriations Act, 2021 – commonly referred to as the Coronavirus Relief Stimulus Bill that was enacted in late December 2020 – includes three major changes to U.S. intellectual property laws: the Trademark Modernization Act (TM Act), the Copyright Alternative Small-Claims Enforcement Act of 2019 (CASE Act), and the Protecting Lawful Streaming Act (PLSA).  The TM Act, CASE Act, and PLS Act contain significant modifications to existing trademark and copyright practices.   More information here.

T-Mobile Opposes AT&T’s “Push-To-Talk” Trademark

In a recent ruling, the Trademark Trial and Appeals Board ruled that AT&T may not register “Enhanced Push-To-Talk” as a trademark because it is descriptive.  T-Mobile opposed the registration arguing that it would create an unfair monopoly over the use of descriptive terms to describe telecommunication services.  AT&T tried to argue that the phrase had acquired secondary meaning, but the Board did not agree that it had acquired sufficient distinctiveness to overcome an earlier finding of descriptiveness. The Board’s ruling, however, did provide an alternative option to AT&T:  to register “AT&T Enhanced Push-To-Talk” while disclaiming “Enhanced Push-To-Talk.”

The case is Sprint Communications Company L.P. v. AT&T Intellectual Property II, L.P., case numbers 91241178 and 91241179, at the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board.

PNC Sues Plaid Inc. Over Incorrect Use of PNC’s Name and Logo

The financial services group of PNC Bank sued fintech company Plaid Inc. last month over claims that Plaid used the bank’s name and logo in its mobile app.  Plaid’s app is apparently designed to connect bank customers with money transfer apps like Venmo, Cash App and Coinbase.

In its pleading, PNC alleges that Plaid created a user interface that replicates PNC’s login page in order to mislead consumers into believing that Plaid’s mobile app was associated with or sponsored by the bank, and that they were thus entering sensitive financial information into PNC’s trusted and secure mobile banking platform.  PNC further alleges that the interface not only made use of PNC’s name and logo, but the bank’s orange and blue color scheme.  Plaid denies misleading consumers through its app, and a spokesperson for the company stated that Plaid only used PNC’s name and logo “as references to make sure that users pick and link the right bank account.”

PNC’s claims range from trademark infringement, trademark counterfeiting, false advertising, false designation of origin, and unfair competition under the Lanham Act and Pennsylvania statutory and common law.  It seeks $2 million in statutory damages per each type of service sold, offered for sale or distributed under the registered PNC trademarks, as well as treble damages, punitive damages and legal fees.  PNC has also asked the court to order Plaid to run ads disassociating its services with those of PNC.

Winemaker Sued Anheuser-Busch For Breach of TM Co-Existence Agreement

On January 8, 2021, San Antonio Winery, Inc. brought an action against Anheuser-Busch InBev S.A. for breach of a co-existence agreement between the parties, and for a declaration that its “Stella Rosa” brand of low alcohol wine does not infringe on InBev’s trademark “Stella Artois” for beer.  San Antonio Winery alleges that back in 2013 it had entered into a co-existence agreement with InBev that prohibited the winery from marketing beer under its Stella Rosa brand, but was silent as to any other use. After the winery filed various trademark applications for a nonalcoholic version of its Stella Rosa wine, InBev contacted the winery claiming that those applications violated the parties’ co-existence agreement.  In the complaint, the winery alleges that there is no actual confusion, that “Stella” is a common word for alcohol in the U.S., and that, “[w]ine is wine regardless of the level of alcohol.”  The case is pending in the Superior Court of the State of California, County of Los Angeles.

Sixth Circuit Affirms Dismissal of Kentucky Bakery’s “Derby Pie” TM Infringement Case Against Newspaper

On January 11, 2021, the U.S. Court of Appeals for the Sixth Circuit affirmed a decision from U.S. District Court for the Western District of Kentucky in which the Court dismissed a bakery’s trademark infringement claims against Louisville’s main newspaper because the newspaper was not using “Derby Pie” in a “trademark infringing way.”  The bakery—that says it had been using “Derby Pie” since 1954, and has had a registered trademark for the name since 2009—claimed that the newspaper infringed its rights when it published a headline, “Bourbon makes this Derby pie a state original”; and again when it used the word “Derby Pie” in a caption on one of its photos of a food item from another restaurant.  The Court ruled that the newspaper did not infringe on the rights of the bakery, and that it would not result in consumer confusion.  The Court also declined to deal with First Amendment issues raised by the newspaper because it was “unnecessary to the resolution of the case.”  The Court held, “As used in the article, ‘Derby pie’ simply informs the reader of the type of pie — a chocolate-walnut pie — that the reader can make from the recipe provided”…“Nor can it be said that an association between [the bakery] and the ‘Derby pie’ recipe was suggested.”

Jimi Hendrix’s brother and niece violated Court’s permanent injunction to stop using Jimi Hendrix-related marks

On January 11, 2021, Leon and Tina Hendrix — Jimi Hendrix’s brother and niece — were found in contempt of court by the SDNY for violating the court’s 2019 permanent injunction to stop infringing the iconic guitarist’s protected trademarks.

When Jimi Hendrix died in 1970, his father created Experience Hendrix LLC and Authentic Hendrix LLC and chose several family members to help him manage the rock star’s estate but expressly excluded Leon Hendrix and his family.

In 2017, Experience Hendrix LLC – the sole owner of the late rocker’s IP — and Authentic Hendrix LLC – it licensing arm — filed an action against Leon Hendrix for, among other things, trademark infringement, deceptive acts, and false advertising.  Plaintiff alleged that Leon Hendrix created the illusion of an authentic Jimi Hendrix empire and used, without authorization, Jimi Hendrix-related marks for goods such as cannabis, edibles, food, wine, alcohol and medicine.  On October 25, 2019, the court entered a permanent injunction against Leon Hendrix and its corporate entities to stop using the name “Jimi Hendrix” or “Jimi” or “Hendrix” or any other marks that could cause confusion with the mark owed by Experience Hendrix LLC.

However, despite this injunction, Leon and Tina Hendrix not only continued using confusing marks, but also hosted and sponsored a “Jimi Hendrix 50th Anniversary Memorial Peace & Love March for Equity” in September 2020 and advertised the event featuring Jimi Hendrix’s name, photograph, signature, and merchandise.

As a result, Experience Hendrix LLC and Authentic Hendrix LLC moved the SNDY for civil contempt against Leon and Tina Hendrix for violating the court’s injunction.  The SDNY granted plaintiffs’ motion requesting Leon and Tina Hendrix to comply with the previous injunction and to pay the plaintiff’s attorneys’ fees.

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