Fashion Law Scotus Case: Trademarks and Continuing Infringements

Dunnington trademark team members Olivera Medenica, Raymond J. Dowd and Sixtine Bousquet-Lambert recently authored a Supreme Court brief on a trademark issue pertinent to the fashion industry. On June 20, the U.S. Supreme Court will decide whether to grant a petition for certiorari filed by Lucky Brand Dungarees in Lucky Brand Dungarees, Inc., et al., v. Marcel Fashions Group, Inc. Dunnington represents respondent Marcel Fashions Group, Inc. who is opposing the petition. At issue in the case is whether, in an action to enforce a trademark infringement judgment, a defendant who continues with the exact same infringements can collaterally attack a prior judgment with a defense that it raised in that prior action but deliberately chose not to prosecute.

You can read more about the case here.

Case-Ending Discovery Fraud in Trademark Infringement Dispute Outlined by Magistrate

On May 2, U.S. Magistrate Judge Lois Bloom reported that H&H Wholesale Services Inc., a wholesale seller of glucose test strips, along with its president and his wife deserve “the harshest sanction” for engaging in calculated fraud on the court by actively withholding internal emails and other documents sought by healthcare giant Abbott Laboratories, in a trademark infringement case. Judge Bloom recommended that Abbott’s motion for sanctions be granted and that the court enter a default judgment against H&H. The misconduct included H&H using search terms it knew would not yield results, omitting incriminating documents, and generally engaging in a “calculated pattern of pervasive misconduct that started early on and continued even after defendants were caught red handed.” Judge Bloom wrote that “H&H only complied with the court’s orders and their discovery obligations when their backs were against the wall.” She added that “[H&H’s] email server had been seized. There was no longer an escape from responsibility for their bad faith conduct … But for being caught in a web of irrefutable evidence, H&H would have profited from their misconduct.” Although H&H attempted to blame its attorney for the discovery issues, Judge Bloom was not convinced, and said that H&H was responsible. This case is currently pending in the U.S. District Court for the Eastern District of New York.

Estate of Prince Rogers Nelson Ramps Up Its Efforts to Register Color Purple As a Trademark

The estate of Prince Rogers Nelson and his former business entity, Paisley Park Enterprises (“Applicants”), have stepped up their efforts to register a particular shade of purple they argue is closely associated with the late musician as a trademark.

The color, called “Love Symbol #2,” was created by the well-known color specification company Pantone in August 2017 to honor Prince, whose association with the color purple began with the release of his 1984 film and soundtrack “Purple Rain.” Applicants seek to register the color in connection with “musical sound [and] musical video recordings,” “motion picture films featuring music and musical entertainment” and “operating a museum,” among other things. The USPTO initially refused to register the proposed color mark, pointing out that, while color may serve as a trademark, “the applied-for color mark . . . is not [necessarily] distinctive of [Paisley Park’s] goods and services.” In particular, the USPTO argued that consumers would not perceive the color purple as a source-identifier but, rather, “are accustomed to encountering . . . goods or packaging for [music related products] offered in a variety of colors, including purple” and provided examples of several other artists who have used purple on their album covers.

Earlier this month, Applicants submitted over 400 pages of evidence to the PTO that the color purple is, in fact, closely associated with Prince and therefore distinctive of Applicants’ services—including articles, social media posts, and other posthumous tributes to the late singer. The application, identified by U.S. serial number 88155481, remains under examination and can be found here.

Speaking of purple…

Cadbury’s Purple Trademark Battle Over for Now

Across the pond, the company behind Cadbury chocolates, Mondelēz International, has given up its long-running legal battle to protect its registration of its distinctive shade of purple called Pantone 2685C. The shade, which has long been associated with brand, has been a registered trademark in the UK since 1995.

However, in April 2019, the UK Intellectual Property Office officially invalidated the two trademark applications that Cadbury had filed in 1995 and 2004 for the colormark. The setback concludes a 24 year struggle for Cadbury to obtain sole rights to the distinct shade of purple after the initial application that the company filed contained issues concerning the broad description of the color mark in connection with “chocolate in bar or tablet form.”

In an attempt to supplement its prior application, Cadbury applied in 2004 for a new registration of the color mark in connection with a wider range of products, including chocolates, cakes, and drinking chocolates. Even so, Société Des Produits Nestlé (“Nestlé”) was able to successfully oppose the application in 2013 by claiming that the range of goods associated with the colormark was still too broad and the description of the shade of purple not distinctive enough. The UK Court of Appeals not only agreed with Nestlé, but ultimately found that both applications contained insufficient descriptions, and thus invalidated both applications.

While Cadbury has chosen not to appeal the UK court’s decision, it can still defend its unregistered rights in Pantone 2685C against third-party rivals by asserting passing off claims.

 Click here for the related article from The Drum.

Deckers gets awarded $450,000 in Ugg Boot Trademark Infringement trial

Following a jury trial in the Northern District of Illinois, jurors found that a small Australian bootmaker, Australian Leather Ltd. (“Australian Leather”) infringed upon Deckers Outdoor Corp. (“Deckers”)’s popular UGG boots and awarded plaintiff $450,000 in damages.

Deckers first sued Australian Leather in March 2016 for trademark and patent infringements of its UGG popular mark. Deckers accused the Australian company of selling in the U.S. sheepskin-lined boots also referred to as “UGG” via its e-commerce website.

Australian Leather argued that in Australia the term “UGG” has become generic to describe sheepskin-line boots. Australian Leather further argued that Deckers should not be permitted to use the mark “UGG Australia” since its boots are manufactured in China.

In September 2018, the district court rejected Australian Leather’s defense of genericism and held that consumer recognition was not important enough to show that the mark “UGG” has become generic for sheepskin-lined boots.

The case is Deckers Outdoor Corp., v. Australian Leather Pty Ltd., case number 1:16-cv-03676 in the U.S. District Court for the Northern District of Illinois. Click here to be redirected to the related docket.

HBO applies for over 100 trademark registrations relating to its “Game of Thrones” series

As the eighth and final season of “Game of Thrones” comes to an end, HBO has applied for more than 100 trademark registrations.

HBO registered the trademark “GAME OF THRONE” back in 2009, two years after acquiring the rights on George R.R. Martin’s bestselling fantasy series “A Song of Ice and Fire.”

Over the years, HBO filed numerous applications with the USPTO covering many elements of the show’s fictional world such as the well-known phrase “Winter is Coming.” These filings were made in reaction to the viral success of the series. In May 2016, two days after the broadcast of an episode explaining the origins of the character named “Hodor”, HBO applied to register the mark “Hodor.”

In addition, HBO has taken many steps to cancel applications filed by third parties of marks related to the series, namely many applications containing the term “THRONE” or more specific terms. Moreover, HBO issued a press statement in reaction to President’s Trump “Sanctions are Coming” tweet referring to the series’ famous phrase “Winter is Coming.” HBO declared that it was “not aware of this messaging and would prefer [its] trademark not be misappropriated for political purposes.”

Click here to be redirected to the related article on Law 360.

USPTO Issues CBD Trademark Guidelines

The United States Patent and Trademark Office issued guidelines to clarify the procedure for examining the registration of trademarks for CBD-related goods and services. In its guidelines, the USPTO expressed that, for registration, the use of a mark in commerce must be lawful under federal law. This requires compliance with the Controlled Substances Act (“CSA”), the Federal Food Drug and Cosmetic Act (“FDCA”), the Agriculture Improvement Act of 2018 (“2018 Farm Bill”), and other regulations.

The USPTO guidelines explain that the CSA provides a definition of marijuana, and prohibits, among other things, manufacturing, distributing, dispensing, or possessing marijuana. The new 2018 Farm Bill removed CBD products derived from “hemp” from the CSA definition of marijuana, and thus potentially removed the CSA as a ground for refusal of trademark registration. However, cannabis and CBD derived from marijuana (i.e. cannabis with more than 0.3% THC on a dry-weight basis) still violate federal law, and trademark applications regarding such goods or related services will still be refused registration.

The USPTO guidelines further explain that all applications filed before December 20, 2018 (date in which the 2018 Farm Bill was signed) will be refused because such applications did not have a valid basis to support registration at the time of filing. Nonetheless, “hemp” CBD products and related services are now potentially lawful so the USPTO gives applicants the option of amending the filing date and filing basis of the application to overcome a CSA based refusal.

To amend their application, applicants who filed before December 20, 2018 must change the filing date to December 20, 2018, state that such amendments are being authorized, and establish valid filing bases. If the filing basis of an application was use of the mark in commerce (15 U.S.C. §1051(a)), it must be changed to intent to use the mark in commerce ( 15 U.S.C. §1051(b)). Applicants will also be required to specify that the products contain less than 0.3% THC. Additionally, the examining attorneys will conduct new searches for conflicting marks based on the new application filing dates.

Applicants may also elect to abandon the original applications and file new ones, or may respond to a refusal of the original application by stating arguments against such refusal. Finally, the USPTO expressed that hemp-derived products can still be in violation of the FDCA even if they comply with the 2018 Farm Bill.

CASES TO WATCH:

Can One Be Prevented From Registering One’s Own Name

Linda Romane, widow of one of the former band members from the band the “Ramones” has attempted to register the mark “Ramones.” While the application is currently pending with the USPTO, the question remains, can one be prevented from registering one’s own name?

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

Monster Energy v. MonsterVerse

The highly anticipated movie Godzilla: King of the Monsters is currently airing in theatres and as many head to the theatres to witness the battle between Godzilla and King Ghidorah, the studio company behind the movie is engaged in a battle of their own. Last year, movie studio company Legendary Entertainment LLC (“Legendary”) filed an application with the USPTO to register the mark “MonsterVerse” for a wide range of merchandise including various foods and beverages. However, on May 7, Monster Energy Co. filed an opposition with the TTAB board aimed at blocking Legendary’s registration of the mark.

As the opposition is currently pending, ultimately the USPTO will be the one to decide the true king of the Monsters. Click here to be redirected to Legendary Entertainment LLC’s application on the USPTO website.

Guns N’ Roses Files a Trademark Infringement Lawsuit Against “Guns ‘N’ Rosé” Ale

On May 9th, Guns N’ Roses, the iconic ’80s metal band fronted by Axl Rose, filed a trademark infringement lawsuit against the Colorado based brewery, Canarchy Craft Brewing Collective’s Oskar Blues Brewery (“Oskar Blues Brewery”) for the brewery’s “Guns ‘N’ Rosé” ale. Guns N’ Roses is seeking an injunction against the brewery to prevent the sale of the “Guns ‘N’ Rosé” ale, along with full damages and the destruction of any promotional material and products related to the ale.

The case, Guns N’ Roses v Canarchy Craft Brewery Collective LLC, is currently brewing in U.S. District Court, Central District of California, case no. 19-04052. Click here for a copy of the complaint.

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