Saturday, September 29, 2007

Owner of KILLER BROWNIE wants brownie competitor to stop using domain name containing its trademark

The Columbia Dispatch ran an article today (link here) about the two trademark infringement lawsuits filed in the U.S. District Court for the Southern District of Ohio on Thursday, September 27, 2007, by Killer Brownie Ltd. against Hal Harris (Case No. 3:2007cv00362) and the Killer Baking Co. (Case No. 3:2007cv00363).

Killer Brownie Ltd. owns the trademark for KILLER BROWNIE. There are several types of Killer Brownies sold by the Dorothy Lane Market, the original registrant of the mark (Dorothy Lane Market, Inc.). The company is upset about the website used by the Killer Baking Co. to sell its brownies -- The company is asking for the domain name to be transferred and to stop using the mark KILLER BROWNIE in any way.

Interesting to note that the Killer Baking Co. filed its own trademark registration application on February 12, 2007, for the mark BROWNIES TO DIE FOR. The PTO issued a non-final office action on May 30, 2007, rejecting the mark under §2(d) as likely to be confused with two trademark registrations for the mark DESSERTS TO DIE FOR (for restaurant services and bakery goods), in particular the registration for bakery goods which would encompass brownies. The examining attorney also cited the potentially conflicting application for 2 DI 4, but such application has since gone abandoned. Killer Baking Co. has until November 30th to respond.

Thursday, September 27, 2007

Chicken Restaurant Franchisor Says “Cluck-U” to Chicken Product Distributor

On September 25, 2007, Cluck-U, Corp. filed a lawsuit in the U.S. District Court for the Eastern District of New York against Chicken Holiday, Inc., Maximum Quality Foods, Inc., and Gary Roccaro (the “Defendants”) alleging trademark infringement, false designation of origin, dilution, unfair competition, deceptive trade practices, and intentional interference with contractual relations. A copy of the complaint (courtesy of me) can be found here.

Cluck-U operates and franchises the Cluck-U Chicken fast-food restaurant chain, which has 30 locations in the U.S., mostly in Maryland, New Jersey, and the District of Columbia. Click here to see the Wikipedia entry on the company.

Until recently, Cluck-U held two registered service marks with two other related applications pending, including CLUCK-U-CHICKEN, CLUCK U, CLUCK-U CHICKEN (design) and CLUCK U (design) (the “Cluck Marks”). I qualify the statement with “until recently” because what the complaint fails to mention (and which the Defendants surely will) is that ten days earlier on September 15, 2007, the CLUCK-U-CHICKEN mark (the oldest registered mark) went abandoned for failure to file a Section 8 Declaration of Use in Commerce and Section 9 Application for Renewal of Registration of Mark, which were due to be filed sometime between 12/9/05 and 12/9/06 (which could’ve been extended for an extra $100 to 6/9/07). Having failed to file, the registration was canceled (or allowed to expire depending on your perspective) – and there is no recourse for Cluck-U other than to file a new application.

Defendant Chicken Holiday, Inc. owns the registered trademark CLUCK U 'RE WINGS for chicken and dipping sauces. The trademark was registered on January 1, 2004, with date of first used alleged to be March 11, 2003.

While Cluck-U may have lost its oldest registered mark, it still has the CLUCK U registered service mark, which was registered on May 15, 2007, but claims use in commerce going back to January 1986.

The first part of Cluck-U’s complaint relates to Defendant’s registration and use of the CLUCK U 'RE WINGS trademark, which Cluck-U maintains is likely to be confused with the Cluck Marks. Cluck-U sets forth counts for a) §32 trademark infringement (for infringement of its registered service marks, even though Cluck-U now has one less trademark than it used to); b) §43(a) trademark infringement, false designation of origin, false representation, and unfair competition (for infringement of all of the Cluck Marks); and c) deceptive trade practices under New York Gen. Bus. Law §349 and dilution under New York Gen. Bus. Law §360-1.

Cluck-U also asks that the CLUCK U 'RE WINGS trademark registration be cancelled. Cluck-U did initiate a cancellation proceeding with the TTAB on February 23, 2007 (Cancellation No. 92047110), but it was suspended on August 29, 2007 pending settlement negotiations, and set to resume November 29, 2007 (unless resumed earlier by either party). Because the CLUCK U word mark was not registered at the time the cancellation complaint was filed, the entire complaint was based on the now-cancelled CLUCK-U-CHICKEN mark, which just raises the question further as to how the §8/§9 filings could have been overlooked. And is Defendant now going to fight back with allegations of “unclean hands”? After all, Cluck-U’s website still reflects the CLUCK-U-CHICKEN as a registered trademark (with the ® symbol) (see related blog posting here). One must also ask why it took Cluck-U nearly three years to file this cancellation and why someone didn’t catch the CLUCK U 'RE WINGS mark when it was published for opposition?

Getting back to the lawsuit, the second part of Cluck-U’s complaint involves Defendant’s distribution activities and an alleged unauthorized use of the Cluck Marks. Apparently, Cluck-U’s rights to the Cluck Marks were acquired through an Assignment Agreement dated May 22, 2000, from Cluck-U Chicken, Inc. and Robert Ilvento (together, “Cluck NJ”). However, Cluck NJ retained some rights to use the Cluck Marks in connection with certain preexisting Cluck-U restaurant franchises and to procure distribution of food products branded with the Cluck Marks for use in connection with the preexisting Cluck-U restaurant franchises. Cluck NJ entered into a distribution and sublicense agreement with the Defendants whereby Defendants were granted the limited right to produce or acquire, package, and brand with, on in connection with the Cluck Marks, frozen chicken wing products, blue cheese products, and sauces and dips and to sell and distribute such products to the preexisting Cluck-U restaurant franchises.

According to Cluck-U, the Defendants have been selling additional unauthorized products, such as fresh chicken and paper products (probably napkins) using the Cluck Marks. Cluck-U also alleges that the Defendants have falsely represented themselves to Cluck-U franchisees, including the preexisting Cluck-U restaurant franchises, as authorized to sell such products, which such franchisees have purchased from the Defendants.

These allegations are the basis for similar counts for a) §32 trademark infringement; b) 43(a) trademark infringement, false designation of origin, false representation, and unfair competition; and c) deceptive trade practices under New York Gen. Bus. Law §349 and dilution under New York Gen. Bus. Law §360-1. In addition, because the franchise agreements between Cluck-U and the preexisting Cluck-U restaurant franchises provide that such franchisees can only purchase branded Cluck-U food products solely from authorized distributors of such products, Cluck-U argues that Defendants are inducing a breach of contract between Cluck-U and those franchisees by inducing such franchisees to purchase its unauthorized goods. This is the basis for Cluck-U’s count for intentional interference with contractual relations.

Cluck-U seeks the usual remedies: injunctive relief, money damages, treble damages, lost profits, punitive damages, costs and attorney fees as well as a declaration that the CLUCK U 'RE WINGS mark is invalid and unenforceable and a court order to the Commissioner of Trademarks to cancel the registration.

Regarding the baseline question of likelihood of confusion between CLUCK-U and CLUCK U 'RE WINGS, the analysis that will be invoked by the District Court (within the Second Circuit) in determining whether consumers are likely to be confused when looking at the products as a whole, involves analyzing the following eight factors (courtesy of, who else, Ronald Coleman’s Likelihood of Confusion®):
(1) strength of the trademark;
(2) similarity of the marks;
(3) proximity of the products and their competitiveness with one another;
(4) evidence that the senior user may “bridge the gap” by developing a product for sale in the market of the alleged infringer’s product;
(5) evidence of actual consumer confusion;
(6) evidence that the imitative mark was adopted in bad faith;
(7) respective quality of the products; and
(8) sophistication of consumers in the relevant market.
Polaroid Corp. v. Polarad Electronics, Corp., 287 F.2d 492 (2d Cir. 1961); Nora Beverages, Inc. v. Perrier Group of Am., Inc., 269 F.3d 114, 119 (2d Cir. 2001).

Factors favoring Cluck-U
  • Cluck-U mark, having likely been used in the New Jersey area since at least 1986, is fairly strong.
  • Cluck-U’s sells chicken in its restaurants (and likely includes some dipping sauces). In this regard, Cluck-U’s products are similar to and do compete with Defendant’s products.
  • Cluck-U already sells chicken and sauces as part of its restaurant services – as such, Cluck-U has already “bridged the gap” and is selling such products in the same market.
  • Given the defendant’s prior involvement with the Cluck-U franchise, the evidence does suggest that Defendant’s adoption of the CLUCK U 'RE WINGS mark may have been in bad faith.
  • The respective quality of the products are likely to be similar.
  • The consumers of Cluck-U’s chicken and sauces are not likely to be of the level of sophistication where they would recognize a distinction between CLUCK U and CLUCK U 'RE.

Factors favoring Defendants

  • The marks are very similar in appearance -- both prominently have the words CLUCK U – which favors Cluck-U. However, one important difference is their verbal pronunciations -- CLUCK U will be pronounced “Cluck You” whereas the CLUCK U 'RE will be pronounced “Cluck Your.” I think this actually tends to favor the Defendants.

Factors favoring neither party

  • The complaint does not set forth any evidence of actual consumer confusion.
  • The complaint does not set forth sufficient information regarding the sophistication of the consumers

At this stage with the limited facts set forth in the complaint, the factors tend to favor Cluck-U. But it’s still early in the game, and who knows what facts may come to light that could change picture entirely.

Personal Sidenote:
As a big fan of all things hot and spicy (anyone interested in seeing my Tabasco® sauce collection?), I was intrigued by Cluck-U’s 911 sauce (although I’ve always felt that the liability waiver gimmick is a little corny). I’ve visited many chicken wing restaurants and always try the “hottest” sauce. While many of them are indeed very spicy, the taste of not always that great. In my opinion, just because a sauce is spicy does not make it good – if a sauce doesn’t taste good, then who cares how spicy it is. That’s why I’m a big fan of Wing Stop and their “Atomic” sauce. This is by far the best tasting and spiciest “hot” sauce I’ve ever encountered.

Wednesday, September 26, 2007

A lesson in applying for a Certification Mark

I stumbled across an interesting trademark application the other day. On September 10, 2007, three individuals filed a §1(b) intent-to-use application for the mark AIDS HAPPENS (for shirts and hats). What makes this application interesting is the type of trademark for which the applicants filed, namely a certification mark. The certification statement set forth in the application is as follows: “The certification mark, as intended to be used by authorized persons, is intended to certify Ramos, Joshua I Mozg, Thomas W Derousseau, Philip.”

So, the applicants are seeking a certification mark, to be used by authorized persons, to certify that the shirts and hats with the mark AIDS HAPPENS are certified as Josh Ramos, Thomas Mozg, and Philip Derousseau. Hmmmm. Not surprisingly, the applicants filed the application on their own, and did not seek counsel from a trademark attorney. If they had, they would have been told that what they are seeking is a regular trademark, and not a certification mark.

This happens more often than some may think – applicants filing a certification mark application, when what they are really seeking is a more traditional trademark or service mark. While I do not understand how such applicants exploring the USPTO’s trademark website could end up mistakenly filing for a certification mark rather than for a trademark or service mark , it happens enough that a basic review of certification marks is in order.

What is a Certification Mark?
Unlike a trademark, which is used to identify the source of goods and services, a certification mark is any word, name, symbol, or device, or any combination thereof used by a person other than its owner to certify to:
(1) Regional or other geographic origin of such person’s goods or services;
(2) Material, mode of manufacture, quality, accuracy or other characteristics of such person’s goods or services; or
(3) That the work or labor on such person’s goods or services was performed by members of a union or other organization or by a person who meets certain standards and tests of competency set by the owner.
See § 45 of the Trademark Act, 15 U.S.C. §1127.

There are two main differences between a certification mark and a trademark or service mark. First, a certification mark does not indicate commercial source nor distinguish the goods or services of one person from those of another person, but instead inform consumers that the goods or services of a mark user meet certain standards established by the mark owner. Second, a certification mark is not used by its owner in the sense that the owner of a certification mark does not apply the mark to the owner’s goods or services. Rather, the mark is used by other persons on their goods or services, and the owner of the mark controls the use of such by other persons by ensuring that the goods or services bearing the certification mark meet the certification criteria the owner has established for the mark.

Certification Marks certifying to Geographic Origin
Examples of certification marks that certify that goods or services originate in a specific geographic region are CERTIFIED MAINE LOBSTER and JERSEY FRESH FROM THE GARDEN STATE.

One issue that arises with respect to geographic region certification marks is the authority of the owner to control the use of the mark. Normally, a government agency or quasi-governmental organization with power and authority in the named geographic region is the owner of such a mark because such governmental bodies are perceived as being in the best position to fulfill the duties of ensuring the right of all persons in the region to use the term and preventing improper uses of the mark by those not entitled to do so. Using the above two certification marks as examples, CERTIFIED MAINE LOBSTER is owned by the Maine Lobster Promotion Council and JERSEY FRESH FROM THE GARDEN STATE is owned by the New Jersey Department of Agriculture.

Certification Marks certifying to Quality Standards
Examples of certification marks that certify that the goods or services meet certain standards in relation to quality, materials, or mode of manufacture are the UL logo (certifying that certain electrical equipment meets the safety standards of Underwriters Laboratories Inc.) and NSF (certifying that certain food equipment meets the public health standards established by NSF International).

Certification Marks certifying that Labor Was Performed by Specific Group
Examples of certification marks that certify that the work or labor on the goods or services was performed by a member of a union or other organization or by a person who meets certain standards and tests of competency set by the owner are UFCW UNION MADE (certifying that the goods were produced by members of the United Food & Commercial Workers International Union, AFL-CIO, CLC and in accordance with adopted standards) and CONCRETE HOME SPECIALIST (certifying that the designated contractors and installers meet the certifier's standards of training and experience in the installation and use of insulating concrete forms for home construction). The owner of this type of certification mark is not certifying to the quality of the work being performed, but rather only that the work performed was by a member of the union or other organization or by a person meeting certain standards established by the owner.

Certification Marks of Competency versus Titles or Degrees
One issue that arises with respect to this type of certification mark is where the mark serves more as a title or a degree of a person signifying the professional qualifications of such person. Whether a mark that appears to be a title or degree can function as a certification mark depends on the standards set by the owner. See, e.g., CERTIFIED SOFTWARE MANAGER (certifying persons who passed the certifier's examination and have met certifier's standards for software asset and licensing management), which when used on a certificate was found to indicate only that the holder of the certificate had been awarded a title or degree; compare the registered certification mark CERTIFIED CONTROL SYSTEMS TECHNICIAN (certifying such persons as having met certain educational and experiential criteria, has passed the core and specialty examinations in the field of industrial instrumentation and process controls, and adheres to ethical standards established by applicant). Where the standards set by the owner appear to be nothing more than passing a test and following certain established rules, such mark would be deemed more of a title, and not a certification mark. However, where the standards set by the owner involve having certain academic and work experience in addition to passing an exam and following established rules, the mark serves more of a certification function.

Certification Marks of Work done by a Group versus Collective Marks
A certification mark used to certify that the work or labor on the goods or services was performed by a member of a union or other organization is not to be confused with a collective mark, which is a type of trademark indicating membership in a group. A collective trademark or service mark serves to indicate the origin of goods/services in the members of a group. E.g., THE FTD BELOVED BOUQUET and AII AMERICAN INSTITUTE OF INSPECTORS. A collective membership mark indicates membership in an organization. E.g. REALTOR ASSOCIATE (Interesting tidbit: the famous REALTOR mark is actually a registered service mark, and not a collective membership mark). In the case of a collective mark, the users of the mark are all members of the same collective group and the collective organization owns the collective mark for the benefit of all members. Contrast this with a certification mark used to certify that the work or labor on the goods or services was performed by a member of a union or other organization. In such case, the certification mark is not certifying that the user is a member of an organization, but rather that the labor which worked on the user's goods or services was performed by a member of a union or other organization or by a person who meets certain standards and tests of competency set by the owner.

Examination of Certification Marks
Certification marks are subject to the same laws governing the registration of regular trademarks (e.g., descriptiveness, disclaimers, likelihood of confusion, etc.). One exception is with respect to marks that are “primarily geographically descriptive” – while such a mark may be rejected as a trademark or service mark, it can be allowed as a certification mark indicating geographic regional origin.

Because of the different purposes served by certification marks compared to trademarks/service marks, an owner of a registered trademark for goods or service mark for services cannot register the same mark as a certification mark for such goods and services, and likewise, an owner of a registered certification mark which certifies particular goods or services cannot register the same mark as a trademark/service mark for such goods or services. See §4 of the Trademark Act, 15 U.S.C. §1054. The rationale behind the prohibition is obvious – having the same mark used for two such different purposes would cause consumer confusion about the meaning of the mark.

However, an owner may have what is called a composite certification mark, which is a certification mark that includes a trademark or service mark. A composite certification mark is allowed so long as it does serve the function of certifying the goods or services to which it is attached, and not used to indicate origin of the goods or services. In such case, the trademark/service mark part of the composite certification mark serves an informational role, such as to identify the certifying owner. See., e.g., the certification mark AAA APPROVED contains the registered trademark AAA. In order to obtain a composite certification mark, the trademark owner and the certification mark owner must be the same.

Certification mark applicants must provide a statement of the characteristics, standards, or other features that are certified or intended to be certified by the mark. Such a statement can begin with "The certification mark, as used (or intended to be used) by authorized persons, certifies (or is intended to certify) . . . ." See 37 C.F.R. §2.45. In addition, when specifying dates of first use, applicants must indicate that the certification mark was first used under the authority of the applicant or by persons authorized by the applicant. Applicants must also make a statement that the applicant is not engaged in or will not engage in (for §1(b), §44 or §66(a) applications) the production or marketing of the goods or services to which the mark is applied.

Certification marks do not have the same classifications of goods and services as typical trademark and service marks. In certification mark applications, all goods are classified in Class A and all services are classified in Class B – and a single application may contain both classes. The goods and services do not need to be identified as specifically as a traditional trademark/service mark application. For an application based on §66(a), the classification is already established by the International Bureau of the World Intellectual Property Organization in accordance with the Nice Agreement for the International Classification of Goods and Services for the Purposes of the Registration of Marks, and therefore, cannot be changed to conform to the PTO’s Class A-B system. If the §66(a) application appears to be for a certification mark, the PTO will keep the original international classification.

An application to register a certification mark may be based on a foreign registration under §44 of the Trademark Act; however, the scope of the foreign registration may dictate whether such registration can serve as a basis for registering the mark in the U.S. For example, a foreign trademark registration cannot serve as a basis for registration as a certification mark in the United States.

The specimen of use that must be submitted with the application (or with the amendment to allege use or the statement of use for §1(b) applications) must show how persons other than owner will use the mark on goods or services in order to serve one of the three main certification functions mentioned above.

In addition, a copy of the standards established by the owner to determine which persons can use the owner’s certification mark for their goods or services must be submitted with the application (or with the amendment to allege use or the statement of use for §1(b) applications). These standards do not have to be original, and can be the standards established by a government agency or adopted by a private organization.

Finally, the applicant must assert that the applicant is exercising control over the use of the certification mark in commerce (for §1(a) applications) or has a bona fide intent to exercise control over the use of the certification mark in commerce (for §1(b), §44, or §66(a) applications). For a §1(b) application, the applicant must make this statement in either the amendment to allege use or the statement of use before the certification mark can be registered.

Finally, and most importantly for the AIDS HAPPENS applicants and any other applicants who wrongly file for a trademark using the certification mark application form, an applicant can amend the application to a different type of mark. The examining attorney will typically attach the form necessary to the non-final office action and will suggest the proper classification of goods and services.
So let that be a lesson to you, Messrs. Ramos, Mozg, and Derousseau. Good luck with the prosecution of your trademark application (emphasis on the word trademark).

Tuesday, September 25, 2007

More companies using their trademarks to quash online critics

Who amongst us hasn’t wanted to speak out against a particular company that has wronged us in some way? The Internet has made it much easier for a single voice to be heard among the masses. With more consumers using the Internet to express their grievances over particular companies, the companies are taking notice and using their trademark portfolio as a weapon to silence such criticism.

Last Friday, The Register ran a story (link here) about one such effort by Lowe's Companies Inc. (“Lowe’s”). Allen Harkleroad received a cease and desist letter from an attorney for Lowe’s regarding his website -- Harkleroad paid Lowe’s $3,500 to install a chain-link fence; however, after the fence was installed, Harkleroad repeatedly complained to Lowe's about gaps in the chain-link fence that were so large that his dogs were able to repeatedly escape from his yard. After being unable to resolve the problem with Lowe’s, Harkleroad refused to pay the rest of the money owed for the fence and created the lowes-sucks website, which documented his ordeal, including pictures of the poorly constructed fence.

Despite no logos being used on the website and despite the obvious non-affiliation between the website and Lowe’s, the company’s attorney maintained in his letter that Harkleroad’s use of Lowe’s trademarks, including the registration of, infringes upon Lowes’ trademark rights, specifically, the rights of LF, LLC, a Delaware limited liability company, that apparently holds and manages Lowe’s trademarks.

Harkleroad is fortunate that he is only facing threatening legal letters at this time. One Maryland man is already facing the prospect of having to go to court to fight a similar battle.

Earlier this month, the Maryland Daily Record (subscription only link) ran a story about a man named Erik G. Levy who bought his Delaware home from Gemcraft Homes, Inc. in 2005. Apparently not satisfied with his home, Mr. Levy started up his own website named, documenting his troubles with Gemcraft and urging homeowners to be wary of buying a new home constructed by the company.

Now, Gemcraft is suing Levy for tortious interference, trademark infringement, defamation, intentional infliction of emotional distress and invasion of privacy and asking for $8 million. The complaint alleges that Levy is making defamatory statements about the company and its employees on the website, posting telephone numbers and addresses of the employees, and posting signs around Delaware and sending out mailers advertising his site.

This trend by companies to use trademark law against these so-called gripe websites has been growing for some time. See Baldas, Tresa “Trademark Lawsuits: The Price of Online Griping,” The National Law Journal (December 2, 2004) (link here). There is even a website dedicated to websites posting consumer gripes --

The trend has its origins in the Anticybersquatting Consumer Protection Act, which was enacted into law on November 29, 1999, and established a cause of action that trademark owners could bring against registrants of domain names that contain such owner’s trademarks. A domain name registrant is liable to a trademark owner if the registrant (i) registers, traffics in, or uses a domain name that a) is identical or confusingly similar to a distinctive mark or b) is identical or confusingly similar to or dilutive of a famous mark and (ii) has a bad faith intent to profit from that trademark, including a personal name, which is protected as a trademark under Section 43 of the Lanham Act. See 15 U.S.C. § 1125(d)(1)(A).

The problem has been with respect to the interpretation of when a registrant has a “bad faith intent to profit.” While the ACPA sets forth nine factors a court may consider in determining “bad faith intent to profit” (see 15 U.S.C. § 1125(d)(1)(B)), the Federal Circuits have taken differing approaches in deciding the issue. For a discussion of the differences among the Federal Circuit Courts, see Mazzie-Briscoe, Sarah, “Free Speech v. Trademark Rights: Has the weather changed?” DePaul University College of Law (March 19, 2006) (link here).

For most courts, the determination of “bad faith intent to profit” comes down to whether the website owner intended to extort money from the trademark owner or merely to express an opinion protected by the First Amendment, and involves an analysis of the facts and a weighing of the website owner’s right to free speech against the trademark owner’s right to protect the value and goodwill of its trademarks.

It would seem obvious that these gripe websites and their noncommercial use of a trademark would protected by the First Amendment. However, because the determination is fact specific, there is no quick and easy way of deciding such cases either way. Courts must review the facts because there may indeed be facts supporting an argument that a website owner was looking for a quick payday and established the website simply to get paid off. For a good article on the complex trademark and First Amendments issues surrounding these “forum websites,” see Barrett, Margreth, "Domain Names, Trademarks, and the First Amendment: Searching for Meaningful Boundaries," Connecticut Law Review, Vol. 39, 2007 (Available at SSRN:

Such uncertainty tends to favor the trademark owners, who can use the prospect of costly litigation to shut down website owners despite the fact that such website owners may be perfectly within their first amendment rights. In Mr. Levy’s case, the attorney for Gemcraft alleges that Levy is trying to use the Web site in an unlawful attempt to extort money from Gemcraft. The use of the phrase “attempt to extort money” is an obvious attempt to cast Gemcraft’s allegations as colorable under the ACPA. Allegations are one thing – facts are another.

It is puzzling why companies are willing to spend so much time and energy into silencing these consumer websites when, by taking such actions, they end up bringing more attention to these websites than they likely every would have received. If Mr. Harkleroad and Mr. Levy have the energy to put forth a fight, the facts seem to favor their websites as the type which expresses an opinion protected by the First Amendment. Whether they have the wherewithal to put up a fight is another matter. In a time when even a simple defense of a frivolous case can easily cost $20,000, who can blame them for settling out of court, walking away, and moving on with their lives.

[Sept. 26, 2007 update: Coincidentally, also ran a story today on this very subject (link here). ]

Monday, September 24, 2007

Google files motion to dismiss American Airlines trademark infringement lawsuit

Last Wednesday, September 17, 2007, Google filed a motion to dismiss the American Airlines (“AA”) Adwords trademark infringement lawsuit (previously blogged here) under Fed. R. Civ. Pro. 12(b)(6) for failure to state a claim upon which relief can be granted. A copy of the motion to dismiss filed with the U.S. District Court for Northern District of Texas can be found here (courtesy of

Trademark Use
As expected, Google’s primary argument is that Google and its advertisers are not using the marks as trademarks when used to trigger advertisements (i.e., Google’s Adwords programs) and are using the marks in permissible ways (accurately describing products or providing information) when the trademarks are used in ad text. Motion at 5-6.

Regarding the use of trademarks to trigger advertisements, Google argues that trademark law provides trademark holders with the ability to prevent others from using a mark (or confusingly similar mark) to identify the source or origin of the product. Motion at 6. In the case of Google and its “Sponsored Link” advertisers, however, neither are using AA’s trademarks to identify the source of the advertisers’ products or services. Google cites to Exxon Corp. v. Oxxford Clothes, Inc., 109 F.3d 1070, 1083 (5th Cir. 1997) in asserting that the use of a trademark or trade name occurs only when the label is used as an indicator of origin and/or quality of particular goods or services. Motion at 7. Google maintains that the use of the terms by Google and its advertisers is tantamount to contextual advertising – referencing or using a trademark as part of a consumer marketing strategy rather than as an indicator of the source or origin of goods and services.

Google also cites to the 1-800 Contacts case to support its position that the triggering of Internet ads is not trademark use under the Lanham Act. See Motion at 8: “The only federal appellate court that has considered the propriety of triggering Internet advertisements with terms similar to trademarks concluded that this activity is not trademark use under the Lanham Act. 1-800 Contacts, Inc. v., Inc., 414 F. 3d 400, 407 (2d Cir. 2005).” Google goes on to discuss the Second Circuit’s conclusion that the defendant in that case was not using the trademark as trademarks (i.e. using them to pass its products off as emanating from or authorized by 1-800 Contacts), but rather in the same way that a store uses rival trademarks when it is placing its own generic brand products next to trademarked brand products in order to induce customers looking for the brand name to try a similar, but cheaper alternative product. Google then cites to the numerous federal district court decisions that have held there is no trademark use when a “Sponsored Link” on Google’s search engine is triggered by a search of a trademarked term. Motion at 8-9. Google also cites to the numerous federal district court decisions that have held just the opposite. Google notes that none of the “Sponsored Link” ads contain AA’s trademarks in either its title or text – nothing indicates or implies that AA is the source of the ad (citing to a search hit for U.S. Airways Official Site, which was one of the ads submitted by AA as evidence of infringement).

Regarding the use of trademarks in the text of advertisements appearing from a regular Google search, Google argues that the two types of such ads that AA complains about – advertisements from independent sellers of AA’s services or merchandise and advertisements from websites that provide news and information about AA – both fit within the fair use of a trademark. Independent sellers are allowed to accurately describe what they sell, such as the case of, one of the advertisers complained about by AA, which sells American Airlines tickets. “Funjet is permitted to accurately promote the availability of American Airlines tickets on its website even if it also sells tickets on other carriers.” Motion at 11 (citing Scott Fetzer Co. v. House of Vacuums, Inc., 381 F. 3d 477 (5th Cir. 2004)). Furthermore, websites that provide news and information about AA are not prohibited by trademark law from using the trademarked names of the companies about which such websites are reporting and such use of a trademark is fair use. Motion at 11 (citing WCVB-TV v. Boston Atheletic Ass’n., 926 F.2d 42, 47 (1st Cir. 1991). In the case of one of the websites cited by AA, “” provides information on AA as well as links to other articles about AA.

Direct Trademark Infringement
Google argues that AA cannot state a claim for direct infringement because Google has not labeled its search engine or advertising services using AA’s trademarks. Motion at 12-13.

Contributory Trademark Infringement
Google asserts the following test for contributory trademark infringement: “a plaintiff must show that the defendant either intentionally induced another to infringe a mark or continue to produce or distribute a product knowing or having reasons to know the recipient is engaging in trademark infringement.” Motion at 13 (citing Inwood Labs., Inc. v. Ives Labs., Inc. 456 U.S. 844, 860 (1982)).

With respect to the first part, Google argues that AA has not plead any facts showing that Google has intentionally induced any advertisers to do anything, much less infringe AA’s trademarks (noting that AA’s pleadings of legal conclusions without pleadings facts cannot sustain a complaint, citing Bell Atlantic Corp. v. Twombly, ___ U.S. ___, 127 S. Ct. 1955, 1964-65 (May 21, 2007)). AA’s complaint references the use of loopholes by Google’s advertisers, which only supports the argument that Google does not control its advertisers or the text they write any more than a newspaper publisher or billboard owner can control their advertisers (such as when one car company places an ad next to a competitor’s ad or a fast food restaurant places its billboard near a competing fast food chain). As for whether Google makes suggestions to advertisers regarding the use of brand name keywords, AA has not specifically alleged that Google made such suggestions to any advertiser that used AA’s trademarks as a keyword.

With respect to the second part, liability arises only if a service provider has actual knowledge of infringement using a service under its direct control. Motion at 16 (citing Lockheed Martin v. Network Solutions, Inc., 194 F.3d 980 (9th Cir. 1999)). Google argues that the rationale which led the Ninth Circuit to conclude that Network Solutions had no affirmative duty to police the internet in search of potentially infringing domain name registrations applies equally to its situation regarding its advertisers.

Vicarious Trademark Infringement
Google asserts that vicarious liability can be based only on a special relationship (principal-agent, employer-employee) such that the defendant and infringer have an apparent or actual partnership, have authority to bind one another in transactions with third parties, or exercise joint ownership or control over the infringing product. Motion at 15-16. Google argues that AA has not alleged facts demonstrating any partnership between Google and any merchant using AA’s trademarks (including authority to bind), nor any joint control or ownership of any product or service which AA claims infringes on AA’s trademarks.

Remaining Causes of Action
The remainder of Google’s motion focuses on AA’s state law claims and AA’s claim for false representation under the Lanham Act. Google argues that the Communications Decency Act of 1996 (“CDA”), 47 U.S.C. §230, immunizes a website such as Google (“interactive computer services”) from state law claims and non-intellectual property federal claims regarding content on the website that is provided by third parties. 47 U.S.C. §230(c)(1) states: “No provider or user of an interactive computer service shall be treated as the publisher or speaker of any information provided by another information content provider.” One exception is for intellectual property causes of action (47 U.S.C. §230(e)(2)), which has been construed by at least one federal appellate court as meaning federal intellectual property causes of action, and not state law intellectual property claims. Motion at 21-22 (citing Perfect 10, Inc. v. CCBill LLC, 488 F.3d 1102, 1118-19 (9th Cir. 2007). Furthermore, Google argues that the Lanham Act false representation claim is not an intellectual property claim by virtue of the fact that the U.S. Supreme Court, in considering whether a bank’s lawsuit for false misrepresentation against the State of Florida was barred by sovereign immunity, held that a false misrepresentation did not implicate a property right to exclude others. Motion at 23 (citing College Sav. Bank v. Florida Prepaid Postsecondary Educ. Expense Bd., 527 U.S. 666 (1999)). Because Google is an “interactive computer service” and the content is “provided by another information content provider” (and AA does not allege otherwise in its complaint), the CDA immunity applies to Google. Therefore, AA’s state causes of action (including intellectual property causes of action) and the Lanham Act false misrepresentation claim must be dismissed.

Regarding AA’s claim for money had and receive, Google argues that such a claim must be based on AA receiving money intended for Google’s use and that recovery cannot be had where AA has not alleged any facts showing its ownership over such money or any privity between the parties in relation to the money sought to be recovered. Motion at 23-24.

Regarding AA’s claim for misappropriation under Texas law, Google also argues that AA has not alleged any facts showing that Google and AA are competitors in order to show that Google has misappropriated AA’s name for the commercial purposes of running an airline. Motion at 24-25.
Finally, with respect to AA’s claim for unfair competition under Texas law, Google also argues that AA has not alleged that Google makes any products or sells any service which Google is passing off as a product or service of AA. Motion at 25.

[Comment: As with the other federal district court cases, this case will all come down to whether the sale of trademark terms constitutes “use in commerce” for the purposes of the Lanham Act. Will this District Court judge follow the line of federal cases holding that such use is not “use in commerce” -- Merck & Co., Inc. v. Mediplan Health Consulting, Inc., 425 F.Supp.2d 402, 408 (S.D.N.Y.2006); 1-800 Contacts v. When, Inc., 414 F.3d 400 (2d Cir. 2005); Rescuecom Corp. v. Google, Inc., 456 F.Supp.2d 393 (N.D.N.Y.2006)? Or will this Court reject those Second Circuit based decisions and follow the decisions from other Circuits finding such use to be “use in commerce” -- 800-JR Cigar, Inc. v., Inc., 437 F.Supp.2d 273 (D.N.J.2006); Buying for the Home, LLC v. Humble Abode, LLC, 459 F.Supp.2d 310 (D.N.J.2006); Edina Realty, Inc. v. TheMLSOnline.Com, 2006 WL 737064 (D.Minn.2006)? It is anybody’s guess at this point.]

Friday, September 21, 2007

TM/SM versus ® --- State versus Federal Trademark Registration

Several years ago, I was speaking with the publisher of a local Las Vegas restaurant guide “Taste of Vegas” (Disclaimer: the communications were not as attorney-client, but rather … well that’s a longer story for another time).

Maybe it’s the natural instinct of a trademark attorney, but when I saw the ® symbol next to his logo TASTE OF VEGAS, my first instinct was to go online to the USPTO’s TARR database to view the registration. To my surprise, the PTO did not have any records of any such trademark registration. The closest registration was A TASTE OF LAS VEGAS, which is owned by Ethel M. Chocolates and covers the goods “candy.” When I spoke to the publisher again, I inquired about his trademark registration. He informed me that he did file a trademark registration. After further inquiry, I figured out that what he had done was register the mark TASTE OF VEGAS with the Nevada Secretary of State and not the USPTO. He was confused when I explained to him that obtaining a state trademark registration does not provide the same benefits as filing for a federal registration – most notably, a trademark owner cannot use the ® symbol unless the mark is federally registered.

I thought about this business owner when I came across a recent article written by Paul E. Thomas, an attorney with Manatt, Phelps & Phillips, LLP , entitled “Unclean Hands Accusation Makes Trademark Owner Take Notice.”

The article describes a trademark opposition by Barbara’s Bakery, Inc., which holds the registered mark BARBARA’S (and design) for bakery goods (note: Barbara’s Bakery in its recent Section 8 filing cancelled the remaining goods that remained in IC 29 as well as some goods in IC 30, leaving only bakery goods), BARBARA’S for food products in two different classes, and has a pending application for BARBARA’S BAKERY (and design) for potato chips and processed organic foods. Barbara’s Bakery filed an opposition against Barbara Landesman, who was seeking registration of the trademark BARB’S BUNS BAKERY, INC. for printed recipes, recipe books, and newsletters containing recipes.

While Barbara’s Bakery, Inc. successfully opposed Landesman’s registration (see the TTAB decision here; see also John Welch’s TTABlog entry on the decision here), one interesting argument raised by Landesman was that Barbara’s Bakery, Inc. had “unclean hands” through its misuse of the ® symbol on its BARBARA’S BAKERY mark before it had been registered.

The evidence tended to support Landeman’s argument, including the fact that the original drawing that Barbara’s Bakery submitted with its application contained the ® symbol rather than the TM symbol for unregistered trademarks where owners believe they have common law trademark rights. On September 29, 2002, the PTO informed Barbara’s Bakery that the ® symbol “may not be used until a valid registration is obtained” and instructed Barbara’s Bakery to provide a new drawing without the ® symbol, which it subsequently did.

The PTO thereafter suspended prosecution on the application on May 8, 2003 while the opposition was pending (which was not decided until January 23, 2007). Landesman also submitted evidence that Barbara’s Bakery was still using the BARBARA’S BAKERY mark with the ® symbol on the packaging in grocery stores in 2004 and 2005.

Barbara’s Bakery argued that the misuse of the ® symbol was not a deliberate attempt to mislead the public or to create the misimpression that Barbara’s Bakery had a registered mark when it did not. Barbara’s Bakery maintained that the mistake arose because Barbara’s Bakery has a federal registration for the word mark BARBARA’S, which was part of the design mark at issue. The TTAB accepted this explanation and ruled that Landesman failed to show that Barbara’s Bakery had deliberately misused the ® symbol.

On the one hand, I agree with the TTAB’s decision because if you look at the design mark, the ® symbol is clearly after the name BARBARA’S and not anywhere indicating that the whole logo itself is registered. Looking at it myself, I did not have the impression that the whole design was registered, but rather just the name BARBARA’S. On the other hand, Barbara’s Bakery was put on notice in 2002 about the impropriety of the ® symbol in that location, and yet continued to use it on its packaging. Can the company maintain that it was just a mistake to continue to display the design mark with the ® symbol even after being put on notice by the PTO’s office action (and later by the TTAB proceedings) that it was wrong to have it there.

If Barbara’s Bakery indeed corrected the problem, as its Vice President of Sales & Marketing told the TTAB it would, the company likely incurred great expense when it had to correct all of the printed packaging that had the ® symbol. I say “if” because a quick look at the design mark on the company’s website suggests that they never corrected this “misuse.” A close look seems to reveal that the ® symbol is still in the same location as the sample of the mark first submitted to the PTO. As of today, the BARBARA’S BAKERY (and design) mark has still not been registered, although it was published for opposition on July 31, 2007, so it should be registered sometime soon (unless some other company decides to start their own opposition).

So what are the lessons learned in the above stories.

First, state trademark registration is not the same as federal registration. While every state issues their own trademarks, getting a state trademark does not buy you much in the way of protection of your mark. While the process is often faster than federal registration, the state registration will only serve as evidence of use of the mark in commerce and the geographic area of use. If another party gets a federal registration, then such registration is constructive notice that the registrant has the right to use the mark throughout the entire country (even if the registrant is not using it in a specific geographic area) and can prevent others from using the same or similar mark anywhere in the U.S. unless the mark was in use before the date of first use of the registered mark, in which case the prior user may have some rights to use the mark but limited to a certain area. State registrations can serve as evidence for a prior user to help establish rights to the mark in those states where such a registration was obtained.

Second, the ® symbol can only be used when the trademark owner obtains a FEDERAL trademark registration, and not after receiving a state trademark registration and not after simply filing a federal trademark application. Instead, a trademark holder must continue to use the superscript TM or SM (for service marks), the same as would be used if there was no registration at all and the owner wished to proclaim to the world that the owner consider the mark to be a trademark protected under common law. In addition, “[d]eliberate misuse [the ® symbol] can have serious consequences. It can lead to the PTO’s final refusal to register a mark. It can give rise to claims of false advertising. And it can seriously injure a trademark owner’s enforcement rights in an infringement action: misuse of the ® symbol has led courts to deny requests for injunctions or damages. In most cases, however, both the TTAB and federal courts have been reluctant to divest trademark owners of rights and, absent persuasive evidence of a deliberate intent to deceive, have accepted reasonable explanations for inadvertent misuse of the ® symbol.” Thomas, supra.

Thursday, September 20, 2007

Burger King won't let former franchisee Have It Their Way

Burger King Corporation (BKC) filed a lawsuit yesterday in the U.S. District Court for the Southern District of Florida against three indivduals who operated a Burger King restaurant franchise in Des Moines, Iowa. See Burker King Corporation v. Meltzer et al., Case 1:07-CV-22468 (download copy of complaint here). The complaint sets forth causes of action for trademark infringement, false designation, common law trademark infringement, common law unfair competition, and breach of contract.

BKC is seeking damages and injunctive relief against the defendants' unauthorized use of BKC's trademarks, which are owned by Burger King Brands, Inc., by assignment from BKC, and licensed exclusively to BKC. BKC then grants its franchisees a limited license and authority to use the trademarks in such a manner as is authorized by BKC.

BKC alleges that the defendants failed to stop using BKC's trademarks after their franchise agreement was terminated by BKC for repeated failure to maintain and operate their Burger King restaurant in accordance with BKC's standards as required by the franchise agreement. Upon termination of the franchise agreement, terminated franchisees are prohibited from identifying themselves as a current or former Burger King franchisee; from using any of BKC's trade secrets, promotional materials, BKC's trademarks (or confusingly similar mark); and are required to change all signage and the restaurant premises to distinguish its apperance from other Burger King restaurants.

BKC maintains that the defendants continue to hold themselves out as operating a genuine Burger King restaurant by using BKC's trademarks even after the franchise agreement was terminated. In doing so, the defendant's are infringing on BKC's trademarks and breaching its continuing obligations under the franchise agreement.

BKC asks for a preliminary and permanent injunction enjoining the defendants from displaying or using BKC's trademarks and from taking any other actions which are likely to lead the public into believing that the defendants are affiliated with BKC. BKC also asks for an order requiring the defendants to turn over to BKC any materials that bear BKC's trademarks as well as BKC's confidential franchisee operating manual and to allow BKC to inspect the premises and make any changes deemed necessary to distinguish the restaurant from a Burger King restaurant. BKC also asks for an accounting of and payment to BKC of all profits derived by defendants from their improper use of BKC's trademarks.

BKC asks for actual damages, treble damages, punitive damages, prejudgment interest and attorney's fees (as provided for in the franchise agreement to a prevailing party), and costs. Finally, BKC requests an injunction preventing the defendants from operating a hamburger restaurant within a two mile radius of where the Burger King restaurant was located for a one year period.

Interesting Burger King Fact: BKC is seeking a trademark on the word "KURGER BING". Based on the specimen of use submitted, KURGER BING appears to be the name of the "king" mascot -- and not just Burger King when you are drunk (as the Urban Dictionary defines it).

Wednesday, September 19, 2007

Philip Morris USA Files More Trademark Infringement Lawsuits Against Two More Internet-Based Cigarette Vendors

Altria Group, Inc put out a press release today announcing that its operating company, Philip Morris USA Inc., had filed lawsuits on September 17, 2007, in the U.S. District Court for the Southern District of New York against two Internet site operators, and (along with other related websites), engaged in the sale of imported cigarettes bearing Philip Morris USA’s trademarks. See Philip Morris USA, Inc. v. Cigmall et al., No. 1:2007cv08135 (PACER link for complaint) and Philip Morris USA, Inc. v. Howard et al., No. 1:2007cv08134 (PACER link for complaint).

According to the press release, the complaints allege that the defendants are selling cigarettes that have been imported in violation of the Imported Cigarette Compliance Act of 2000, have made false statements about the legality of these sales on their websites, and fail to comply with applicable tax laws and the federal Jenkins Act.

The lawsuits represent a continued effort on the part of Philip Morris to use its trademarks as a weapon to stop online cigarette retailers. See 2002 story here. More recently, in April 28, 2006, Philip Morris filed a similar lawsuit against several companies that operated online cigarette stores through websites such as,, and See Philip Morris USA v. Veles Ltd. et al., Civil Action No. 06-CV-2988 (S.D.N.Y). The complaint alleged that the defendants used Philip Morris’ trademarks without authorization in advertising and selling “grey market” cigarettes in the U.S. bearing Philip Morris’ trademarks. “Grey market” cigarettes are those manufactured by Philip Morris affiliates overseas which are intended for sale outside the United States.

The trademark aspect of the lawsuit garnered attention earlier this year when Judge George B. Daniels, on March 12, 2007, issued a decision and order denying the defendants’ motion to dismiss for failure to state a claim for relief under the Lanham Act (a copy of the order can be downloaded here courtesy of

The defendants argued that Philip Morris could not state a claim for relief under the Lanham Act because the websites are selling Phillip Morris-brand cigarettes and because the defendants posted a disclaimer on their websites to the effect: “The Phillip Morris products being sold were not originally intended for sale in the United States and have been distributed by a company unaffiliated with Philip Morris. . . . Further, we do not make any claim to ownership of the Philip Morris Trademarks or trade names.”

Philip Morris argued that the cigarettes manufactured by its overseas affiliates are materially different than those made and sold in the U.S., and, as such, the defendants’ use of Philip Morris’ trademarks could mislead consumers into believing that the websites are affiliated with Philip Morris.

The court noted that while the Lanham Act does not prevent the reimportation and sale of genuine articles under their real trademarks, such is not the case if the domestic and foreign products are materially different – in which case the sale of the foreign product in the United States has a potential to mislead or confuse consumers who will otherwise assume the foreign product to be the same as the normal product sold domestically. See R.J. Reynolds Tobacco Co. v. Cigarettes Cheaper!, 462 F.3d 690, 700 (7th Cir. 2006).

Philip Morris asserted that its domestic cigarettes are subject to quality control measures regarding the shipping and storage of its cigarettes and the replacement of damaged and stale products in order to ensure that U.S. consumers receive the high-quality cigarette they have come to associate with Philip Morris’ trademarks. These same quality control measures are not applied to Philip Morris’ foreign made cigarettes intended to be sold abroad, and thus, U.S. consumers purchasing such cigarettes may receive an inferior product.

The defendants argued that the website disclaimer prevents any consumer confusion that may arise with respect to the “grey market” cigarettes they are selling. However, the court found such disclaimer inadequate because it did not provide notice to consumers that the foreign cigarettes they are buying may be made under different quality control standards from domestic cigarettes sold under the same brand name in the United States.

The court found Philip Morris’ claim of a material difference in quality control standards between its domestic and foreign cigarettes bearing Philip Morris’ trademarks to be a “legally feasible contention.” As such, Philip Morris’ allegations were sufficient to raise an inference that defendant’s sale of foreign cigarettes in the U.S. could be misleading to consumers, and therefore state a claim for relief under the Lanham Act. The defendants’ motion to dismiss for failure to state a claim for relief under the Lanham Act was denied.

Tuesday, September 18, 2007

Agassi and Armstrong each sue companies for trademark infringement.

Las Vegas resident Agassi sues Target for trademark infringement

The big story today was Andre Agassi’s lawsuit against Target Corp. for use of his name without his permission. See news articles here, here, and here. A copy of the complaint I downloaded through PACER can be found here.

On September 14, 2007, Agassi Enterprises, Inc. (“AEI”) filed a lawsuit in the U.S. District Court for the District of Nevada against Target Corporation for trademark infringement and unfair competition under 15 U.S.C. §1125(a), common law trademark infringement under Nevada law, and violation of right of publicity under Nevada law (NRS 597.770 et seq.). The complaint arises from Target’s selling in its stores and online of 52,589 "Agassi" leather flip-flops worth an estimate $661,184. In addition to seeking injunctive relief to stop the sale of the sandals (under 15 U.S.C. §1116), and to recover Target’s profits from the infringing use, AEI is also seeking recovery of actual and treble damages, exemplary and punitive damages, and AEI’s costs and attorney’s fees. AEI has the exclusive right to use and sublicense the AGASSI name by virtue of an employment agreement with Andre Agassi entered into in 1994.

According to the complaint, Agassi’s lawyers contacted Target on June 27th and demanded that the retailer stop selling the sandals. Target apparently wrote back on July 27th explaining that using Agassi's name was consistent with Target's convention of using male given names as model names for certain footwear, but that it would relabel or remove Agassi's name from the sandals and would stop selling them online. However, on August 15th, AEI purchased the infringing sandals from a Las Vegas Target store. On August 24th, AEI acquire one of the infringing sandals from On September 3rd, AEI purchased the infringing sandals from a different Las Vegas Target store.

Target officials apparently maintain that the store was still in the process of renaming the sandals at the time it was notified of the lawsuit.

It is interesting to note that Agassi has not obtained a registered trademark on his name. A quick search of the PTO’s TARR database did not reveal any registered or pending AGASSI trademarks except for marks related to his charitable foundation and to his furniture business (all of which are pending applications).

Verdict: Game, Set, and Match Agassi.

Lance Armstrong suing over Yellow pet collars

The other big athlete-related trademark story involves Lance Armstrong and his famed LIVESTRONG yellow bracelet.

Last week, the Lance Armstrong Foundation filed a lawsuit in the U.S. District Court for the Western District of Texas against Chris Ohman and the Animal Charity Collar Group (d/b/a for trademark and trade dress infringement. Parts of the actual complaint can be viewed on The Smoking Gun (link)

According to the complaint, beginning in June 2005, the defendants began selling yellow pet collars bearing the words BARKSTRONG or PURRSTRONG. The Foundation alleges that these collars infringe the Foundation’s LIVESTRONG yellow bracelets that sell for $1.00 each and have raised over $70 million for cancer research.

The Foundation holds several trademark registrations (with several other pending applications) for the word LIVESTRONG for various goods and services, most relevant of which is 3052284 (word) for jewelry and charitable fundraising services. The Foundation also holds trademark registrations for the signature yellow bracelets – 3157452 and 3226837, both for charitable fund raising.

The complaint seeks injunctive relief preventing the defendants from continuing to sell its BARKSTRONG or PURRSTRONG collars, a court order shutting down the website, the destruction of all infringing products, a public notice by the defendants disavowing any connection with the Foundation, monetary damages, and a withdrawal of defendants pending trademark applications for its collars – one of which has already registered (see PURRSTRONG; see also pending applications BARKSTRONG, DOES YOUR DOG BARKSTRONG, and DOES YOUR CAT PURRSTRONG).

The Foundation filed an opposition against BARKSTRONG back on June 21, 2006, but the opposition has been suspended pending settlement negotiations. Curious that the Foundation did not file a similar opposition against PURRSTRONG given that both marks were published for opposition at the same time.

Also interesting to note that another applicant, Donald Westfall, also filed trademark applications for BARKSTRONG and PURRSTRONG, both for pet collars, less than a month after defandant Chris Ohman filed his. Could two people from two parts of the country have possibly come up with the same infringing idea at the same time?

Verdict: Armstrong looks poised to win this race, but its not over until he crosses the finish line given the distinct differences between a wristband and pet collar.

Monday, September 17, 2007

Geographically Descriptive Marks – LAS VEGAS BURGER loses its $325 trademark gamble

When I saw that a Section 1(b) trademark application for LAS VEGAS BURGER (word mark) for restaurants went abandoned last Friday, September 14, 2007, I could not resist using it as an illustration of the Section 2(e)(2) geographically descriptive rejection, especially since it has the words LAS VEGAS in it (and I’m all about Vegas).

In its non-final action, the PTO refused registration under Section 2(e)(2) of the Trademark Act, 15 U.S.C. §1052(e)(2), on the grounds that the mark was primarily geographically descriptive of the origin of applicant’s goods and/or services. The office action set forth the three-part test for determining whether a mark is primarily geographically descriptive of the goods and/or services within the meaning of Section 2(e)(2):
(1) the primary significance of the mark must be geographic (i.e., the mark names a particular geographic place or location);
(2) purchasers would be likely to make a goods-place or services-place association (i.e., purchasers are likely to believe the goods or services originate in the geographic location identified in the mark); and
(3) the goods and/or services originate in the place identified in the mark.
See TMEP §1210.01(a); see also In re MCO Properties, Inc., 38 USPQ2d 1154 (TTAB 1995); In re California Pizza Kitchen, 10 USPQ2d 1704 (TTAB 1989).

The examining attorney attached evidence from Wikipedia showing that the primary significance of the term “Las Vegas” is the name of a geographic location. Furthermore, consumers are likely to believe the goods will originate in Las Vegas because the applicant is located in Las Vegas. When the geographic significance of a term is its primary significance and the geographic place is neither obscure nor remote, then for purposes of §2(e)(2) the PTO can presume a services-place association from the fact that the applicant's services originate in the place named in the mark – a presumption which is rebuttable. See TMEP §1210.04; see also In re JT Tobacconists, 59 USPQ2d 1080 (TTAB 2001) (MINNESOTA CIGAR COMPANY primarily geographically descriptive of cigars); In re California Pizza Kitchen Inc., 10 USPQ2d 1704 (TTAB 1988) (CALIFORNIA PIZZA KITCHEN held primarily geographically descriptive of restaurant services that originate in California); In re Handler Fenton Westerns, Inc., 214 USPQ 848, 849-50 (TTAB 1982) (DENVER WESTERNS held primarily geographically descriptive of western-style shirts originating in Denver). Furthermore, the addition of another generic or merely descriptive term (e.g., BURGER) to a geographic term does not overcome a refusal based on geographic descriptiveness. See In re JT Tobacconists, 59 USPQ2d 1080 (TTAB 2001); In re Carolina Apparel, 48 USPQ2d 1542 (TTAB 1998); TMEP §1210.02(c)(ii).

In response to the non-final action, applicant made the following argument:

The examining attorney has refused registration because the mark is allegedly primarily geographically descriptive of the goods and/or services. Las Vegas is indeed a city in Nevada, but it is also reference that invokes far-reaching implications regarding gambling, recreation, vacationing, images of slot machines, a glittery style, a campy style, etc. In fact, the Applicant's first restaurant is not in Las Vegas, but instead is located in Primm, Nevada, near the California border. The Applicant's restuarants [sic] are Las Vegas-themed, and include a single hamburger called the "Ace," a double burger called a "Pair," a triple burger called "Three of a Kind," etc. "Las Vegas" in this context indicates the gambling theme, design, look and feel of a restaurant that is not located in Las Vegas. Inasmuch as the goods and services provided by a restaurant originate at the restaurant (in the presence of the customers) where they are sold and rendered, the good and services in this case do not originate in the place identified in the mark, and therefore the mark is not primarily geographically descriptive.

In the PTO’s final office action, the examining attorney, however, found applicant’s argument unpersuasive. The examining attorney cited to the applicants business address (Food Courts of Nevada, LLC; 300 S. 4th Street, 11th Floor, Las Vegas, NEVADA 89101 ) and stated that “[s]ince applicant’s services appear to be located in Vegas, a geographic place and location that is not remote or obscure, nor has any other significant non-geographic meaning, a public association of the services with the place is presumed. . . .”

In both actions, the examining attorney reminded applicant about the possibility of registering the mark on the Supplemental Register once it is actually being used (and either an amendment to allege use or statement of use is filed). I’ve mentioned before the benefits of registration on the Supplemental Register (here).

Two things I found strange about this application’s prosecution. First, how come the application was not filed under Section 1(a)? Applicant’s response to the non-final action stated that “In fact, the Applicant's first restaurant is not in Las Vegas, but instead is located in Primm, Nevada, near the California border.” This would seem to suggest that the applicant was already using the mark in commerce. In addition, the applicant filed state trademark registrations in Nevada (see here and here) in March 2005, which suggests the marks were being used at that time. More significantly, if this was the case, why didn’t the applicant submit evidence that the restaurant was located in Primm, Nevada, and not in Las Vegas? The PTO cited to the company’s corporate records filings to support the notion that the services originate in Las Vegas. Evidence of the applicant’s Primm restaurant under this name could have helped rebut the PTO’s services-place association presumption.

Second, the same applicant has an application for VEGAS BURGER for restaurants, but in that case, an amendment to allege use was filed and the applicant filed an amendment to have the mark registered on the Supplemental Register. So why would the applicant choose to “expressly” abandon this application, rather than go for registration on the supplemental register. At least they could put the ® symbol next to the mark and prevent anyone else from registering, at the federal level, a confusingly similar mark. After all, they already paid the $325 filing fee – a supplemental trademark registration is better than nothing. Perhaps they decided to go with VEGAS BURGER instead of LAS VEGAS BURGER for the name of its chain. They also have two applications pending for design versions of the same marks, here and here.

I personally think the applicants may have gotten an unfair refusal simply because they have their corporate address in Las Vegas. The address cited by the PTO – 300 S. 4th Street, 11th Floor – is not the future home of any burger restaurant, but instead more likely rented office space or mail drop that Nevada corporations and LLCs sublease from Brownstein Hyatt Farber Schreck, P.C., 300 S. 4th Street, Suite 1200 – the applicant’s Nevada resident agent.

If this restaurant had opened up in any other part of the country, the outcome may have been different. But for the fact that the applicant had a Las Vegas address, the PTO would have likely have had to base its refusal of the mark on either §2(e)(3) (primarily geographically deceptively misdescriptive) or §2(a) (geographically deceptive). However, under these grounds for refusal, the services-place association that the PTO easily presumed for §2(e)(2) purposes requires some additional reason for the consumer to associate the services with the geographic location invoked by the mark. See In re Municipal Capital Markets, Corp., 51 USPQ2d 1369, 1370-71 (TTAB 1999) ("Examining Attorney must present evidence that does something more than merely establish that services as ubiquitous as restaurant services are offered in the pertinent geographic location."). A services-place association in a case dealing with restaurant services requires a showing that the patrons of the restaurant are likely to believe the restaurant services have their origin in the location indicated by the mark – a much greater burden due to the presence of restaurants everywhere. See In re Les Halles De Paris J.V., 334 F.3d 1371 (Fed. Cir. 2003); In re Consolidated Specialty Restaurants, Inc., 71 USPQ2d 1921 (TTAB 2004).

So while I do not think that consumers would necessarily think that that LAS VEGAS BURGER’s services originate from Las Vegas, the PTO has the rebuttable presumption in its favor – a presumption that applicant did not sufficiently rebut. The PTO also has the California Pizza Kitchen precedent -- a TTAB decision with which I do not necessarily agree -- to rely upon, which has held that when the goods or services may be said to originate both in the geographic place named in the mark and outside that place, registration is normally refused based on primarily geographically descriptive under §2(e)(2). See In re California Pizza Kitchen Inc., 10 USPQ2d 1704, 1706 n.2 (TTAB 1988) (CALIFORNIA PIZZA KITCHEN for restaurant services held primarily geographically descriptive, where the services were rendered both in California and elsewhere

Instead, it looks like Las Vegas Burger will have to just use the mark in commerce, and later come back and file a Section 2(f) application for principal registration arguing secondary meaning – which is exactly what California Pizza Kitchen did for “restaurant services” (see here).

All this thought about burgers is making me hungry. I can’t wait to check out the menu and try the “ROYAL FLUSH” (currently under suspension pending the outcome of ROYAL FLUSH for energy drinks).

Friday, September 14, 2007

Exploiting Baby Dannielynn – trademark style!

Because any story mentioning Anna Nicole Smith and her baby girl, Dannielynn, is a ratings grabber – and with my blog being in its infancy and in need of some ratings – I decided to join the media frenzy.

It was nearly impossible to miss the fact that Dannielynn turned 1 year old on September 7th (e.g., here, here, and here). The media coverage is so intense at times (especially by the people at E.T. and The Insider with their “exclusive” coverage of the birthday party) that one would think Dannielynn is royalty (and treated accordingly). If Anna Nicole Smith was Queen Anna, then that would make her little girl Princess Dannielynn.

So I found it interesting when I came across a Section 1(b) intent-to-use trademark application filed (coincidentally?) on September 7th, for the word mark PRINCESS DANNIELYNN for “Baby bibs not of paper; Baby bodysuits; Baby bottoms; Baby tops; Belts; Caps; Children's and infants' cloth bibs; Cloth bibs; Infant and toddler one piece clothing; Infant cloth diapers; Jerseys.” The named applicant is Tereza Timo, an individual apparently residing in New York. I was almost expecting to see Howard K. Stern as attorney of record.

As the legal protector of the Anna Nicole Smith legacy and estate and by virtue of such fact a protector of Dannielynn, the sole heir of the estate, Mr. Stern being may want to brush up on his trademark law if he wants to oppose registration of this mark. This is assuming that the PTO does not reject it on the basis of Section 2(c) of the Trademark Act, 15 U.S.C. §1052(c), which bars registration of a trademark where the mark “[c]onsists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent . . . .” Requiring the consent of a living individual in order to obtain a trademark registration of such person’s name protects the person’s rights of privacy as well as the person’s right of publicity in their own names. See University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., Inc., 703 F.2d 1372, 1376, 217 USPQ 505, 509 (Fed. Cir. 1983), aff'g 213 USPQ 594 (TTAB 1982). While Dannielynn may not know it yet, her name is becoming such as famous as her mother’s – and as such has publicity value.

I doubt Larry Birkhead, as Dannielynn’s guardian, will give consent to the registration of his daughter’s name in this way. However, the PTO may not require anything more from the applicant than a statement to the effect of: “The name PRINCESS DANNIELYNN does not identify a living individual.” See TMEP §813. But given the fame surrounding Anna Nicole Smith and baby Dannielynn, can the PTO really accept such a statement without question? But as any experienced trademark prosecuting attorney will tell you, it does happen.

The burden would then be on Mr. Stern to file an opposition to registration based on Section 2(c). “The fact that a name appearing in a mark may actually be the name of more than one person does not negate the requirement for a written consent to registration, if the mark identifies, to the relevant public, a particular living individual. See In re Steak and Ale Restaurants of America, Inc., 185 USPQ 447 (TTAB 1975) (affirming refusal to register PRINCE CHARLES, for meat, in the absence of consent to register by Prince Charles, a member of the English royal family).” TMEP 1206.01 (emphasis added). In addition, a name does not have to be the person’s full name, but can be just the person’s surname. See Ross v. Analytical Technology Inc., 51 USPQ2d 1269 (TTAB 1999) (§2(c) prohibited registration of surname without consent where the relevant public would associate the good with the opposer given his reputation in the field); but cf. Société Civile Des Domaines Dourthe Frères v. S.A. Consortium Vinicole De Bordeaux Et De La Gironde, 6 USPQ2d 1205, 1209 (TTAB 1988) (Board found that Section 2(c) did nto apply to surnames except where a particular individual is known by a surname only). However, an argument could be made that with respect to the field related to the relevant goods (baby bibs, in this case), the name Dannielynn is not well known and therefore, the mark would not constitute the identification of a particular person under §2(c). See Martin v. Carter Hawley Hale Stores, Inc., 206 USPQ 931, 933 (TTAB 1979).

Given the general public’s obsession with Anna Nicole Smith and now Dannielynn, I would suspect that this application ultimately will not be registered. I think this is another case where an individual, without consulting at trademark attorney, decided to claim rights to a name that has some widespread recognition – without contemplating the legalities behind claim such rights. Now whether the registration is stopped by the PTO or by Howard K. Stern is another question.

I can’t wait to hear “I’m Pat O’Brian. Coming up on The Insider . . . getting a trademark on Dannielynn’s name. Howard K. Stern speaks out on one person’s attempt to exploit the name of Anna Nicole’s baby” (ominous music playing in the background).

To read another story from last year about Larry Birkhead and trademarks, see (surprise surprise) The Insider Online’s article “Larry Birkhead Denies Filing for Trademark.” Here is a link to the application for “Goodnight My Sweet Anna Baby” which is still pending and which also faced the same Section 2(c) issue, but with a significant difference since Anna Nicole Smith is no longer living. But it was interesting to note that it was not lost upon the PTO that the Anna at issue in the mark was Anna Nicole Smith – the PTO is requiring the applicant to submit the following statement: “Anna, referring to Anna Nicole Smith, does not identify a living individual.”

Thursday, September 13, 2007

Thanks to Seattle Trademark Lawyer

My thanks go out to Michael Atkins of fame for his warm welcome on his blog today. He along with others (you know who you are) have set a blogging standard in this little niche area of the law to which I will strive to uphold.

Coincidentally, I was going to write a blog entry earlier this week describing the differences between trademarks, copyrights, and patents -- but Mr. Atkins beat me to it. In order to avoid any further allegations of creating a likelihood of confusion given my choice of domain names, I chose to write about something else and graciously defer to to his blog entry entitled "What Is a Trademark? How Does It Differ from a Copyright and a Patent?"

Intent-to-use trademark applications provide glimpses into the future.

One of the enjoyable aspects of dealing with trademarks and monitoring the USPTO’s TARR database through the TESS search function is the insight provided into a particular company’s plans with respect to future products and services.

Case in point, check any out the 54 applications filed by Las Vegas Sands Corp. (so far) between August 28th and September 6th of this year, covering the word mark LAS VEGAS SANDS MEGACENTER as well as the above logo for various goods ranging from “keychains” and “magnets” to “arena services” and “rental of computers and software.”

A quick search online did not reveal anything about what this “Megacenter” could be. Could this be a renaming of the Sands Expo once the Venetian’s add-on megaresort, Palazzo (Reg. # 2,729,637 and 2,683,895, along with other applications for VENETIAN PALAZZO), is completed and open for business? (I have a daily view of the Palazzo from my office).

Staying close to home – another local Las Vegas favorite, Station Casinos, Inc., is planning to continue spreading “Station” casinos across the valley, which is certainly not news to anybody (especially those of us living in Las Vegas). For a list of the potential names of those future casino sites, look no further than the Company’s Section 1(b) intent-to-use trademark applications for the following names (among many):

  • Mount Rose Station
  • Sierra Station
  • Summit Sierra Station
  • Viva Station

Wednesday, September 12, 2007

Trademarked Colors – The tale of two trademark registrations for colors

Do you recognize either of these products? The unique colors on these two goods are both registered trademarks as of September 11, 2007.

The first one is the grey and yellow handle scissors manufactured by Acme United Corporation. Reg. # 3290520 (for scissors) on the Principal Register.

Contrast this to the second picture, which anybody who owns a pool (myself included) may recognize. The blue bottle with yellow cap is the container for Hach Company’s Aquacheck pool chemical testing strips. Reg. # 3292471 (for chemical test strips) on the Supplemental Register.

These two applications not only illustrate one of the hurdles faced by those claiming colors as a trademark, but also the difference between the Principal and Supplemental Register.

If a proposed color mark is not functional, it can be registered on the Principal Register with a showing of acquired distinctiveness or on the Supplemental Register. Because color marks are not inherently distinctive, they cannot be registered on the Principal Register without a showing of acquired distinctiveness under §2(f) of the Trademark Act, 15 U.S.C. §1052(f). Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 211-212, 54 USPQ2d 1065, 1068 (2000) (citing Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 162-163, 34 USPQ2d 1161, 1162-1163 (1995)); In re Thrifty, Inc., 274 F.3d 1349, 61 USPQ2d 1121, 1124 (Fed. Cir. 2001); TMEP §1202.05(a).

Most applicants seek registration on the Principal Register because it provides such benefits as constructive notice, statutory damages, federal court jurisdiction, incontestability after 5 years of continuous use, ability to register the marks with the U.S. Customs and Border Protection, and presumption of validity. However, registration on the Supplemental Register has certain advantages as well, namely:

  • The registered trademark owner may use the registration symbol ®;
  • The registered mark is protected against registration of a confusingly similar mark under §2(d) of the Trademark Act;
  • The registered trademark owner may sue for trademark infringement in federal court; and
  • Registration may serve as the basis for a filing in a foreign country under the Paris Convention and other international agreements.
Acme decided to go the §2(f) route by arguing acquired distinctiveness in order to get its mark registered on the Principal Register. Acme argued that the mark had been continuously used in commerce for over five years. Acme also submitted eight sworn statements from sales executives from Applicant’s industry as further evidence that the mark had acquired distinctiveness. Finally, Acme cited to the myriad of knock-off scissors trying to copy the look of Acme’s scissors, which federal courts have held to be evidence of a mark’s acquired distinctiveness. Acme’s arguments must have been convincing because the mark was published for opposition on June 26, 2006, and registered on September 11, 2007.

Hach took the easy way, and amended the application to be on the Supplemental Register. After overcoming some issues regarding the submission of a drawing which show the colors as they will appear on the goods, the mark was registered on September 11, 2007 (since marks on the Supplemental Register are not published for opposition; see 37 CFR §2.82).

Tuesday, September 11, 2007

MIJOVI not wanted by Bon Jovi . . . dead or alive.

The New York Times today ran an article today about the trademark dispute between rocker Jon Bon Jovi and the maker of an energy drink named MIJOVI. The maker of the drink, The Mijovi Company, is seeking to register the mark MIJOVI for soft drinks, energy drinks, etc. The application was published for opposition on July 3, 07, but Jon Bon Jovi Productions, Inc. filed an extension of time to oppose on August 2, 2007, setting a deadline of October 31, 2007 for JBJ to oppose registration of the mark (although additional extensions of time can be requested).

The dispute has apparently been brewing (no pun intended) for some time. Earlier this year, Bon Jovi’s lawyers sent a letter to Marcos Carrington, the creator of the Mijovi drink and the owner of The Mijovi Company, accusing him of improperly using Bon Jovi’s name to market his product. Supporting Jovi’s position was that Carrington was using “itsmilife” as one of Mijovi’s marketing slogans (which sounds like the title of the Bon Jovi song “It’s My Life”). Bon Jovi’s lawyer, Peter Laird, alleged that the slogan and the name of the drink “constitute a willful and intentional attempt to mislead the public and to associate our client with your product.” Mr. Carrington’s lawyer, James Nichols, responded to Laird’s letter by agreeing to stop using the “itsmilife” slogan, but maintained that Mr. Carrington is within his rights to use the MIJOVI name.

Jon Bon Jovi registered the trademark BON JOVI for his band in 1988 (officially, for entertainment services, namely live performances by a musical group).

In light of this dispute, he now appears to want to corner the market on using the term JOVI. On June 22, 2007, he filed two Section 1(b) intent-to-use applications for JOVI GIRLS and JOVI GEAR, both for clothing. He also filed Section 1(b) application on September 6, 2006 for his own name, JON BON JOVI, for clothing.

But he doesn’t seem to have a problem with the registrations JOVI PAK (orthopedic supports) or JOVI design mark (for pens, pencils, etc.). If Bon Jovi were to have a problem with any pending mark, I would think it would be the Section 1(a) application DOKAJOVI (for entertainment namely, live performances by a musical band) filed June 23, 2007 (a day after Bon Jovi’s clothing marks). I would expect Bon Jovi to oppose registration of this one when it is published for opposition.

One other interesting application is the BON JOVI HOME THEATER SYSTEM applied for by Florida resident named Anthony Bongiovi. No response was ever made to the USPTO’s non-final office action, which required a disclaimer of the terms HOME THEATER SYSTEM, but was silent about the BON JOVI part, even though such would clearly be likely to cause confusion with Bon Jovi’s registered mark. Maybe Bon Jovi’s attorneys got ahold of this guy as well. But this case is a little more clear cut.

Bon Jovi will most likely try to argue a likelihood of confusion under Lanham Act Section 2(d), 15 U.S.C. §1052(d), as grounds for opposing the registration of the MIJOVI mark. In In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973), the Court of Customs and Patent Appeals discussed the following thirteen factors relevant to a determination of likelihood of confusion (the “du Pont” factors):
(1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
(2) The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use.
(3) The similarity or dissimilarity of established, likely-to-continue trade channels.
(4) The conditions under which and buyers to whom sales are made (i.e. "impulse" vs. careful, sophisticated purchasing).
(5) The fame of the prior mark (sales, advertising, length of use).
(6) The number and nature of similar marks in use on similar goods.
(7) The nature and extent of any actual confusion.
(8) The length of time during and conditions under which there has been concurrent use without evidence of actual confusion.
(9) The variety of goods on which a mark is or is not used (house mark, "family" mark, product mark).
(10) The market interface between applicant and the owner of a prior mark.
(11) The extent to which applicant has a right to exclude others from use of its mark on its goods.
(12) The extent of potential confusion, i.e., whether de minimis or substantial.
(13) Any other established fact probative of the effect of use.

Applying the "du Pont" factors to the MIJOVI mark tends to favor a finding of no likelihood of confusion, but it's not exactly a clear-cut case.

The factors favoring MIJOVI:

  • The marks are not similar in appearance, sound, and commercial impression and the nature of the goods/services are different (entertainment services versus beverages). The trade channels are different (except for maybe the occasion BON JOVI concert where MIJOVI might also be sold).
  • The Bon Jovi mark is not used on a variety of other goods (such as beverages).

The factors favoring Bon Jovi :

  • Buyers purchasing the MIJOVI drink are more on the impulse side.
  • The BON JOVI mark is very famous.
  • Another probative fact -- Bon Jovi may try to argue that Carrington adopted the MIJOVI mark in bad faith – as evidenced by the “itsmilife” marketing slogan; however, without any more evidence, and given the fact that Carrington stopped using the phrase after being notified by Bon Jovi, this may not be enough.

The factors favoring neither side:

  • There is no evidence of actual confusion (although given the power of the Bon Jovi name in New Jersey, and with New Jersey being the primary market for MIJOVI, such evidence may be possible to obtain).
  • There are only a few other marks that contain the word JOVI, but there are some, and they don’t belong to Bon Jovi.
  • There has been no market interface between the two parties (although apparently Carrington and Jon Bon Jovi did have a polite discussion one evening).
  • The extent of potential confusion is more than de minimus, but not substantial.

It will be interesting to see how far Bon Jovi is willing to take this dispute. Given Carrington’s investment in this name, he is not likely to abandon the mark just to avoid a possibly lengthy opposition.

Personally, I didn’t even think about Bon Jovi when I saw the name Mijovi and I do not think most consumer would either. What first came to my mind was the famous mark MIDORI for liqueurs. Perhaps Suntory Ltd. would be interested in this dispute.