Tuesday, April 29, 2008

Juicy Couture sues Victoria’s Secret for trademark and trade dress infringement

I previously wrote (link here) about the efforts by Juicy Couture Inc. (“Juicy Couture”), the owner of the mark JUICY (most often seen on the back side of skintight terrycloth sweatpant-wearing females) to stop the owner of the Juicy Campus website from selling clothing emblazoned with the name “Juicy Campus.” The news today (here, here, and here) was about another lawsuit filed by Juicy Couture, but this time against a much more formidable foe – Victoria’s Secret (“VS”). See Juicy Couture Inc. v. Victoria's Secret Stores Brand Management Inc. et al., Case No. 08-cv-3985 (S.D.N.Y April 28, 2008).

According to published media reports (I have not reviewed a copy of the filed complaint), Juicy Couture is apparently upset over VS’s Pink line of clothing products alleging that they are confusingly similar to Juicy Couture’s own popular clothing lines (“Pink has applied slogans across the seat of pants which famously originated with Juicy Couture and identifies its brand.”).


Juicy and Pink
[ed.- anyone else detect a common theme here?]


Juicy Couture also objects to certain candy-shaped product packaging introduced by VS last October (click here for one account of these new products). Juicy Couture apparently is objecting to VS’s “Panty Pops” (ladies underwear packaged like lollipops), “Panty Candy” (a line of thongs packaged like bon-bons) and “Camy and Panty Cone” (a holiday gift set with tank top and matching underwear wrapped in an ice-cream box).

“Panty Pops"


“Panty Candy”


“Camy and Panty Cone”

Juicy Couture argues that VS’s candy-shaped packaging is confusingly similar to Juicy Couture's own Sweet Shoppe line of packaging resembling lollipops, bon-bons and ice cream cones and thus constitutes trade dress infringement ("In copying Juicy Couture's distinctive and unique trade dress, defendants crossed the line from design imitation to trade dress infringement. Because of the source-identifying function of Juicy Couture's packaging and the striking similarities, the defendant's packaging is likely to deceive consumers as to the origin of the products contained within.") I was unable to any pictures of Juicy Couture's “distinctive and unique” Sweet Shoppe packaging online – all I could find with respect to Sweet Shoppe was a charm bracelet.


Juicy Couture's Sweet Shoppe Charm Bracelet

Juicy Couture appears to be trying to corner the market on terrycloth shorts and sweatpants with slogans across the seat of the pants. As for Juicy Couture’s trade dress claims, while I could not find any pictures of Juicy Couture’s product packaging online (which does make you wonder how unique, distinctive, and recognizable it could be), I doubt that Juicy Couture’s product packaging is so distinctive that it has come to be recognized as a unique source identifier for Juicy Couture – instead of merely novelty product packaging appealing to a female audience.

Monday, April 28, 2008

What are the differences between a trademark, service mark, certification mark, collective mark, trade dress, and trade name?

I am asked the questions often enough that their answers are worthy of a blog post.

Trademark
A “trademark” is any word, name, symbol, or device, or any combination thereof, used by a party to identify and distinguish its goods from those manufactured or sold by others and to indicate the source of the goods (even if that source is unknown). See §45 of the Lanham Act (15 U.S.C. §1127).

Service Mark
A “service mark” is the same as a “trademark” except that it is used by a party to identify and distinguish the services of that party from the services of others and to indicate the source of the services (even if that source is unknown). See §45 of the Lanham Act (15 U.S.C. §1127). The law specifically states that titles, character names, and other distinctive features of radio or television programs may be registered as service marks notwithstanding that they, or the programs, may advertise the goods of the sponsor.

In short, the two basic functions of a trademark or service mark is 1) identifying the source and origin of particular goods or services and 2) distinguishing for the consuming public the goods or services of one party from the goods or services of others.

Certification Mark
A “certification mark” is any word, name, symbol, or device, or any combination thereof, used by a person other than the mark owner which certifies:
  1. Regional or other geographic origin of such person’s goods or services (e.g., CERTIFIED MAINE LOBSTER and JERSEY FRESH FROM THE GARDEN STATE);

  2. Material, mode of manufacture, quality, accuracy or other characteristics of such person’s goods or services (e.g., the UL logo certifying that certain electrical equipment meets the safety standards of Underwriters Laboratories Inc.; NSF certifying that certain food equipment meets the public health standards established by NSF International); 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 (e.g., UFCW UNION MADE certifying that the goods were produced by members of the United Food & Commercial Workers International Union and AFL-CIO).

See §45 of the Lanham Act (15 U.S.C. §1127); see also prior blog post here on certification marks.

Collective Mark
A “collective mark” is a mark used by members of a cooperative, an association, or other collective group or organization. See §45 of the Lanham Act (15 U.S.C. §1127). There are two basic types of collective marks:

  1. A collective trademark or service mark, which is a mark adopted by a collective group for use by its members who use the mark to identify their goods or services and to distinguish such members’ good or services from the goods or services of nonmembers (e.g., THE FTD BELOVED BOUQUET and AII AMERICAN INSTITUTE OF INSPECTORS); and

  2. A collective membership mark, which only serves to indicate membership in the collective group (e.g., the logo used by members of the Sheet Metal Workers International Association).

While collective trademarks and service marks are classified in the international class as the underlying good or services which the collective mark identifies, a collective membership mark has its own international class (IC 200) (see 37 C.F.R. §6.4).

One important distinction with respect to a “collective mark” compared to a trademark/service mark is that it only serves to indicate membership in the collective group – the collective group itself does not actually use the collective trademark or service mark to identify or distinguish any goods or services although it can advertise and promote the goods sold or services rendered by its members using the collective mark.

Trade Dress
“Trade dress” refers to the design or packaging of a product or service which serves to identify the source or origin of the product or service – the arrangement of identifying characteristics or decorations connected with a product or service (through its packaging, design, or otherwise) that make the source of the product or service distinguishable from others making the same products or offering the same services and which promotes the sale of such product or service. Trade dress involves the total image or overall appearance of a product or service, and includes, but is not limited to, such features as size, shape, color or color combinations, texture, graphics, and even particular sales techniques. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992); Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205 (2000); Traffix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001); Int'l Jensen, Inc. v. Metrosound U.S.A., Inc., 4 F.3d 819 (9th Cir. 1993).

In order for trade dress to be protected as a trademark or service mark, it must be a) nonfunctional and b) distinctive enough in the marketplace to serve as a source identifier (i.e. either because it is inherently distinctive, which is often the case for “product packaging,” or because the trade dress has acquired a secondary meaning, which is often necessary to show for “product designs”).

A product feature is considered functional, and thus cannot serve as a trademark, if the product feature is essential to the use or purpose of the product or if the product feature affects the cost or quality of the product (i.e., exclusive use of the feature would put competitors at a significant, non-reputation-related disadvantage). See TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 33 (2001); Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 165 (1995); Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 850, n.10 (1982).

The basis behind the functionality doctrine was explained by the U.S. Supreme Court in Qualitex as follows:

The functionality doctrine prevents trademark law, which seeks to promote competition by protecting a firm’s reputation, from instead inhibiting legitimate competition by allowing a producer to control a useful product feature. It is the province of patent law, not trademark law, to encourage invention by granting inventors a monopoly over new product designs or functions for a limited time, 35 U.S.C. §§154, 173, after which competitors are free to use the innovation. If a product’s functional features could be used as trademarks, however, a monopoly over such features could be obtained without regard to whether they qualify as patents and could be extended forever (because trademarks may be renewed in perpetuity).

Qualitex Co., 514 U.S. at 164-65.

Some of the factors used by courts to determine functionality are: (1) whether there exists a utility patent directed to the design, (2) whether the owner touts the utilitarian advantages of the design in advertisements, (3) whether there are alternative and competitive designs, and (4) whether the design is cheaper and simpler to manufacture than alternative and competitive designs. See In re Morton-Norwich Products, Inc., 671 F.2d 1332, 213 USPQ 9 (CCPA 1982). If trade dress is found to be functional, it will not be protected as a trademark or service mark regardless of the extent to which the public may attribute such trade dress to a single source and regardless of any public confusion over competing parties’ goods or services.

You will sometimes hear the labels de facto functional and de jure functional. De facto functionality refers to a product design that may be functional but which is not necessary for its function (e.g., the design of the Coca-Cola bottle is functional, in that it serves as a container for Coca-Cola soda beverages; however, the particular design is not necessary for the bottle to serve as a container). This is the type of functional design that can be protected as a trade dress. De jure functionality, on the other hand, refers to a product design that, because of the particular design, provides the owner with a competitive advantage. This type of functional design cannot be protected as a trademark because such protection would allow a owner to control in perpetuity a “useful” product feature thereby inhibiting competition.

Trade Name
Unlike a trademark or a service mark, which serves to identify and distinguish the source and origin of goods and services, a trade name is any word, name, symbol, or other designation, or any combination thereof, which serves to identify a particular business, vocation, or enterprise and which distinguishes such business, vocation, or enterprise from the business, vocation, or enterprise of another. See §45 of the Lanham Act (15 U.S.C. §1127); see also Restatement (Third) of Unfair Competition, §12 (1995). While trade names will typically include such entity designations such as “Inc.,” “Corp.,” “Company,” or “LLC,” a trade name can include the name under which the company is “doing business as” (d/b/a). In addition, a trade name does not function as a trademark or a service mark, and will not be protected as such, unless it somehow attaches to goods or services in such a way that purchasers and prospective customers would recognize the business identified by the trade name as the source and origin of such goods or services.

House Mark
A “house mark” is a mark that is used by a business in conjunction with a line of products to identify the business as the source of such products. A house mark is closely related to a trade name because often times a trade name will serve as a company’s house mark in conjunction with a trademark or service mark used to identify a specific product or service. For example, Toyota Corp. uses the Toyota trade name as a house mark in identifying its line of automobiles including TOYOTA SIENNA, TOYOTA COROLLA, TOYOTA CAMRY, and TOYOTA PRIUS. While house marks are often the same as the business’ trade name, a house mark can also be a separate trademark or service mark, such as the name CRAFTSMAN, which Sears uses in conjunction with a line of hardware tools.

Family of Marks
Finally, you will occasionally hear about a company that has a family of marks. A family of marks is a group of trademarks or service marks that have some kind of common element which allows consumers to recognize the source and origin of the goods or services identified as such. The classic example of a family of marks is McDonald Corp.’s use of the “Mc” prefix attached to some other word to identify one of its products or services including MCRIB, MCMUFFIN, MCFLURRY, etc. (For a recent blog post on McDonalds’ efforts to protect its family of marks, check out this post (here) on Michael Atkins’ Seattle Trademark Lawyer blog).


Friday, April 25, 2008

Finding expert witnesses for trademark cases

Michael Atkins offers some excellent advice on his Seattle Trademark Lawyer blog about finding expert witnesses for trademark cases.

One popular online source is the online expert witness directory JurisPro. Other expert witness websites listing the credentials of various trademark experts include ALMExperts.com, expertwitnesses.com, and Intota.com.

Of course, one of the more interesting "trademark experts" out there touts his credentials via YouTube (link here). Of course, before you hire him, you may want to check out this wikipedia writeup or the string of posts about this expert on The TTABlog®.

Thursday, April 24, 2008

Federal court judge supports Domino’s Pizza’s right to sell Brooklyn Style Pizza

On April 21, 2008, a U.S. Magistrate Judge for the Eastern District of Texas issued his report and recommendations recommending that the district court grant a motion for summary judgment filed by Domino’s Pizza (“Domino's”) in a trademark infringement lawsuit brought by The Great American Restaurant Company (“Pizzeria”) over Domino’s use of the name “Brooklyn Style Pizza.” See The Great American Restaurant Company v. Domino's Pizza LLC et al, Case No. 07-cv-00052, 2008 U.S. Dist. LEXIS 32495 (E.D. Texas April 21, 2008).

Pizzeria’s complaint alleged, inter alia, trademark infringement by Domino’s of Pizzeria’s registered trademarks for A TASTE OF THE OLD NEIGHBORHOOD and BROOKLYN'S OLD NEIGHBORHOOD STYLE PIZZERIA. After the lawsuit was filed, Domino’s stopped running advertisements using the slogan “taste of the old neighborhood,” but continued to market its Brooklyn Style Pizza. Pizzeria maintained that Domino’s use of the Brooklyn Style Pizza mark will cause consumers to associates Pizzeria's “high quality, hand-made pizza” with Domino's “inferior quality, machine-produced pizzas” even though Pizzeria acknowledges that it does not sell “Brooklyn style pizza.”


Noting that a trademark cannot be infringed by a generic term for the product it designates, the court analyzed Pizzeria’s claim of infringement by turning its focus to the classification of Domino’s “Brooklyn Style Pizza” mark (i.e., whether it is generic or, if descriptive, whether it has acquired a secondary meaning identifying the source of a product, and not just to identify the product itself).

In order to demonstrate that the public perceives the Brooklyn Style Pizza mark as generic, Domino's submitted survey evidence, various newspaper advertisements mentioning “Brooklyn style pizza,” and 28 media articles referring to the term generically. Domino’s also noted that over a hundred restaurants around the country use the Brooklyn Style Pizza name and even the USPTO has recognized “Brooklyn style pizza” as a generic term not entitled to protection.

Pizzeria attempted to argue that there is no such thing as “Brooklyn style pizza” by having a food expert testify as such and arguing that this at least created a factual issue as to the whether the “Brooklyn Style Pizza” mark was generic. The court stated the following regarding Pizzeria’s expert:

Schwartz [Pizzeria’s expert] then devotes four pages of his affidavit directing the Court to where the best pizza can be found and how it is made -- a must read for any pizza maven. Where is the best pizza? According to Schwartz, it is not Domino's, but probably at Di Fara's, which has recently been reopened after having been closed down by the health department. Equally interesting is that Di Fara uses sheep's milk cheese.

2008 U.S. Dist. LEXIS 32495 at *10.

Pizzeria also argued that Domino’s own arguments and evidence demonstrated that the “Brooklyn Style Pizza” mark was at least descriptive. However, the court rejected Pizzeria’s position because, even assuming the mark to be descriptive, Pizzeria had not submitted any evidence showing the “Brooklyn Style Pizza” mark to have acquired a secondary meaning whereby its primary significance to the consuming public was to identify the source of a product, rather than the product itself. Pizzeria’s own survey, which the court actually excluded because it “too flawed to be reliable,” found that ¾ of the participants surveyed had no idea that Domino’s sold a “Brooklyn style pizza.”

The court concluded that, whether viewed as generic or as descriptive, Domino’s use of the name “Brooklyn Style Pizza” could not serve as a basis for Pizzeria to claim for trademark infringement

The court added that, even if Domino’s use of “Brooklyn Style Pizza” could be a basis for Pizzeria’s trademark infringement claim, there was no likelihood of confusion between Domino’s “Brooklyn Style Pizza” mark and Pizzeria’s “Brooklyn’s Old Neighborhood Style Pizzeria.”

Although the court did not do a factor-by-factor analysis of the eight likelihood of confusion factors used by the Fifth Circuit (see American Rice, Inc. v. Producers Rice Mill, Inc., 518 F.3d 321, 329 (5th Cir. 2008)), the court noted that Domino’s survey report was the only probative survey which even addressed the issue of likelihood of confusion, and concluded that there was none. The court noted that the two establishments, while selling the same product (pizza), are different in that Pizzeria is primarily a dine-in restaurant where the pizza is delivered to the customer’s table whereas Domino’s is primarily delivery where the pizza is delivered in a car. [Ed.- this is what the court wrote]. The court further noted that Pizzeria submitted no evidence that Domino’s selected its name with the intent to compete with Pizzeria – rejecting the evidence by Pizzeria of a few customers who presented Domino’s coupons (such evidence “fails to suggest real confusion since it is not unusual according to the testimony for individuals to present inappropriate coupons. See also Pizzazz Pizza & Rest. v. Taco Bell Corp., 642 F. Supp. 88 (N.D. Ohio 1986).” 2008 U.S. Dist. LEXIS 32495 at *12-13). Finally, the court found that Pizzeria had presented no evidence to raise a genuine issue of material fact with respect to a likelihood of confusion with respect to its other phrase “a taste of the old neighborhood”

The court summarized its decision as follows:
If nothing else, this whole exercise has been a learning experience in defining what a Brooklyn style pizza is. One of Domino's exhibits states that its allure is so powerful that Carmine Giovianzzo (CSI: NY) still walks the streets of Southern California in search of a Brooklyn style pizza (evidently he didn't find it at Domino's). So, in the end analysis, if you are from Brooklyn, you may know what it is or what it is not, but, in any event, the mere mention of [“Brooklyn Style Pizza”] doesn't conjure up the image of a $ 9.99 pizza delivered in a cardboard box with a red domino on it.
Id. at *13-14.


The court recommended summary judgment be granted in favor of Domino’s with respect to Pizzeria’s trademark infringement and unfair competition claims arising from Domino’s use of the phrase “Brooklyn Style Pizza.”

The court went on to dismiss Pizzeria’s other claims for unfair competitions under both the Lanham Act and Texas law noting that Pizzeria simply did not address whether Domino’s use of the mark “a taste of the old neighborhood” for the limited time it did caused or was likely to cause any confusion. The court further noted that the parties “exercised 99% of their resources addressing [“Brooklyn Style Pizza”] and nothing more.” Id. at *14. The court recommend summary judgment be granted in favor of Domino’s with respect to Pizzeria’s trademark infringement and unfair competition claims arising from Domino’s use of the phrase “a taste of the old neighborhood.”

Finally, Pizzeria had also sought injunctive relief under the Texas Anti-Dilution Act (see TEX. BUS. & COM. CODE § 16.29). Because the statute allows for recovery without a showing of likelihood of confusion, the court did not grant summary judgment with respect to this claim; however, because this state law claim was the only remaining claim, the court declined to exercise supplemental jurisdiction over the claim (see 28 U.S.C. § 1367 (c)(3)) and recommended it be dismissed without prejudice.

Vegas™Esq Comments:
Around the time Domino’s introduced its Brooklyn Style Pizza, The New York Times ran an article (link here) about the authenticity of Domino’s Brooklyn style pizza – and addresses the issue of what exactly constitutes a "Brooklyn style pizza."

Any reader thoughts about the issue of Brooklyn style pizza?

Tuesday, April 22, 2008

Caribbean Crème files trademark infringement lawsuit against Krispy Kreme over “Caribbean Kreme”

Caribbean Creme's smoothie machine


On April 21, 2008, Caribbean Crème, Inc. (“CCI”), a St. Louis, Missouri-based company that produces and sells equipment to make a fruit smoothie by the name “Caribbean Crème,” filed a trademark infringement lawsuit against Krispy Kreme Doughnuts, Inc. and other affiliates companies (“Krispy Kreme”) in the U.S. District Court for the Eastern District of Missouri to stop the famed doughnut maker from selling a frozen beverage drink it calls “Caribbean Kreme.” See Caribbean Creme, Inc. vs. Krispy Kreme Doughnuts, Inc., et al., Case No. 08-cv-00541 (E.D. Mo. April 18, 2008). A copy of the complaint (courtesy of TMZ.com) can be downloaded here.



CCI holds a trademark registration for the design mark CARRIBEAN CRÈME (and Design) (pictured above on the left) for non-dairy, flavored frozen confections and ice cream drinks. According to the complaint, CCI has been selling its flavored semi-frozen drink under the name “Caribbean Crème” flavored since 1994.

Krispy Kreme, in addition to its popular line of doughnuts, has been selling a line of flavored frozen smoothies called Chillers. Sometime before April 8, 2008, Krispy Kreme introduced a new “limited time” (until June 2nd) Chiller flavor called Caribbean Kreme Chiller coinciding with Krispy Kreme limited-time specialty Caribbean Kreme Doughnut.



CCI argues that Krispy Kreme’s use of the name Caribbean Kreme for its competing semi-frozen beverage is likely to cause confusion with its own semi-frozen beverage. CCI claims federal trademark infringement under Section 32 of the Lanham Act (15 U.S.C. §1114), unfair competition under Section 43(a) of the Lanham Act (15 U.S.C. §1125(a)(1)(A)), common law trademark infringement, trademark infringement under Missouri law (Mo. Rev. Stat §417.066(1), and trademark dilution under Missouri law (Mo. Rev. Stat §417.061(1))

In addition to seeking an injunction against Krispy Kreme and an order destroying anything bearing the infringing mark, CCI also seeks Krispy Kreme’s profits, treble damages (under the premise that Krispy Kreme’s infringement was willful), costs, and attorney’s fees (under the premise that this case is “exceptional” under 15 U.S.C. §1117(a))

Vegas™Esq. Comments:
One wonders why CCI did not seek (at least not yet) any kind of preliminary injunction. After all, by the time this case gets anywhere, Krispy Kreme will no longer even be selling the Caribbean Kreme. If CCI was really serious about this infringement and wanted to stop it, why would it not seek an immediate preliminary injunction -- unless perhaps CCI realized its tenuous case for likelihood of success on the merits (weak mark, dissimilar marks when viewed in their entirety, no competitive proximity, Krispy Kreme's intent). The only factors seemingly favoring CCI are identical goods and low degree of care by purchasers (a factor that some Eighth Circuit decisions have recognized in deciding likelihood of confusion). Should CCI decide to push the case, the parties will likely reach some kind of settlement.

One wonders if CCI would have still had an issue if Krispy Kreme had chosen the name “Karibbean Kreme” – a much more fanciful mark more in line with the company’s famous KRISPY KREME mark and which is one additional "K" removed from CCI's mark.

Monday, April 21, 2008

Energy Drink Maker Wins Preliminary Injunction Against Rival Based on Trade Dress Infringement

On April 14, 2008, a Michigan federal district court judge granted the motion for preliminary injunction brought by Innovation Ventures, LLC d/b/a Living Essentials (“Living”) against rival energy drink maker N2G Distributing, Inc. and Alpha Performance Labs (together “N2G”) based on trade dress infringement by N2G of Living’s distinctive product packaging while rejecting Living’s claims for trademark infringement. See Innovation Ventures, LLC (d/b/a Living Essentials) v. N2G Distributing, Inc. et al., Case No. 08-CV-10983 (S.D. Mich. April 14, 2008).



Living is the maker of a 2 fl. oz. bottled energy drink called “5 Hour Energy” (pictured above). On June 14, 2004, Living filed an intent-to-use application with the U.S. Patent and Trademark Office (“PTO”) to register the mark 5 HOUR ENERGY (for homeopathic supplements, pharmaceutical preparations, nutritional supplements and dietary supplements that relieve or prevent fatigue) on the Principal Register. The PTO rejected registration of Living’s mark on the grounds that it was merely descriptive under Trademark Act §2(e)(1) (15 U.S.C. §1052(e)(1)) (the mark describes a specific characteristic of the goods, namely, providing the user with energy for up to 5 hours). Rather than attempt to argue acquired distinctiveness, Living apparently amended its application to register the mark on the Supplemental Register, rather than the Principal Register (this after it had already filed an Amendment to Allege Use that it began using the mark as early as June 2005).

N2G makes and distributes a line of energy drinks called “Nitro2Go” (normally sold in 8.4 or 16 fl. oz. cans). In August 2007, N2G introduced a product called “Nitro2Go Instant Energy” in 2 fl. oz. bottles (announcement here).

Living discovered N2G’s product at a trade show in early March 2008 after some trade show attendees apparently expressed belief to Living's representatives that Living was also the maker of the “Instant Energy” product. On March 7, 2008, Living filed its lawsuit against N2G alleging federal trademark infringement and counterfeiting, false designation of origin and trade dress infringement, and common law trademark infringement. On March 13, 2008, Living filed a Motion for a Temporary Restraining Order and a Preliminary Injunction against N2G.

The court granted Living’s motion for preliminary injunction, but it did so based on trade dress infringement, not trademark infringement.

The court, in analyzing Living’s likelihood of success on the merits (the first of the four factors the court must balance in deciding to grant a preliminary injunction), focused first on Living’s trademark infringement claim. Living argued a likelihood of confusion between its “5 Hour Energy” mark and N2G’s “6 Hour Energy Shot.” The court noted, however, that registration on the Supplemental Register does not provide the same benefits as registration on the Principal Register, and that essentially the registration provides no additional rights beyond what Living has under the common law. As such, the court first had to determine whether Living’s mark was distinctive or had acquired a secondary meaning.

Living tried to argue that its sales and advertising figures as well as its 90% share of the two-ounce energy drink market (27 times greater than the next closest competitor) supported its argument that its “5 Hour Energy” mark had acquired a secondary meaning. However, the court found that Living had not carried its “heavy burden” at this point in demonstrating that the primary significance of Living’s highly descriptive mark to the public would be as a source identifier of the product rather than an identifier of the product itself. N2G also provided evidence of other two-ounce energy drink products from different manufacturers with such phrases as “7 Hour Energy Boost,” “6 Hour Energy!,” “Extreme Energy Six Hour Shot,” and “6 Hour Power,” which goes against Living’s argument that its “5 Hour Energy” has a strong secondary meaning that particularly identifies the source of the product. As such, the court found that Living had not demonstrated a “strong likelihood of success” on its trademark infringement claim to support its motion for preliminary injunction.

With respect to Living’s trade dress infringement claim, the court first noted the U.S. Supreme Court’s distinction between trade dress cases involving product packaging (which can be inherently distinctive and thus no secondary meaning analysis is necessary) and product designs (which cannot be inherently distinctive). See Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 214-15, 120 S. Ct. 1339, 146 L. Ed. 2d 182 (2000). In addition, the court noted that to the extent that a product's overall trade dress is arbitrary, fanciful, or suggestive, it is still considered inherently distinctive despite its incorporation of generic or descriptive elements. See Paddington Corp. v. Attiki Imps. & Distribs., 996 F.2d 577, 584 (2d Cir. 1993).

Living asserted that the following elements made up its distinctive trade dress packing for its “5 Hour Energy” drink: (1) a terrain climber at sunrise design; (2) color scheme (red, orange, yellow, and shades of blue); (3) the size, color, and font of the product name; and (4) the shape of the bottle (a short neck and a main container with broad shoulders).

While N2G tried to argue that each of the individual elements of Living’s trade dress were either descriptive or generic, the court concluded that, although Living’s “5 Hour Energy” drink product packaging may have some generic and descriptive elements, the “overall product packaging image - the color scheme, fonts, and most significantly the graphical depiction of the landscape and figure –” constitutes an arbitrary, fanciful, or suggestive trade dress thatis inherently distincitve and thus can be protected from infringement without a showing of secondary meaning.

Finding that Living’s “5 Hour Energy” drink product packaging constituted protectable trade dress, the court proceeded to determine whether the N2G’s trade dress is confusingly similar.

While the court recited the likelihood of confusion factors used by the Sixth Circuit (citing Abercrombie & Fitch Stores, Inc. v. American Eagle Outfitters, Inc., 280 F.3d 619, 646 (6th Cir. 2002), the court decided to forgo doing a factor-by-factor analysis and instead focused on the fact that the Sixth Circuit recognizes a presumption of likelihood of confusion in cases where evidence points to “intentional copying” (where the intent of the copier is to piggy-back on the reputation of the product copied). See Ferrari S.P.A. Esercizio Fabriche Automobili E Corse v. Roberts, 944 F.2d 1235, 1242-43 (6th Cir. 1991).

N2G attempted to focus on several different aspects of its product packaging as evidence that it did not copy Living’s trade dress; however, the court found Living’s evidence of intentional copying compelling enough – at least at this preliminary stage – to support a determination that the trade dresses of the two products are confusingly similar. The court specifically noted that N2G’s packaging contains the exact same color scheme, the same black-type italicized font for the logo, the depiction of a silhouetted athletic figure ascending a silhouetted mountain, and even copied Living’s “caution” warnings word-for-word.

As for the other three factors the court must balance in deciding whether the grant a preliminary injunction, the court found irreparable harm based on the general presumption that irreparable harm arises when there is a likelihood of confusion (N2G apparently made no arguments against application of the presumption). The court accepted Living’s argument that the harm to its reputation and goodwill outweighed the harm to N2G in having to recall its product and redesign its packaging. Finally, the court held that the public interest in preventing confusion and deception in the marketplace and protecting Living’s interest in its trade dress weighed in favor of Living.

With that, the court granted Living’s motion for a preliminary injunction.


Vegas™Esq. Comments:
The court’s opinion is a little confusing with respect to N2G’s infringing trade dress. The opinion specifically points out in the beginning that N2G began distributing a product called “Nitro2Go Instant Energy” in two-ounce bottles in August 2007 (pictured above) suggesting that this is the infringing product (and one can see the similarities). However, throughout the remainder of the opinion, the infringing product is referred to as N2G’s “6 Hour Energy Shot,” including specific references to a hiker image and “6 Hour Energy Shot” logo on N2G’s bottle – neither of which appear in the above picture (I only see a surfer and bicyclist).

So it’s not clear if the court’s decision is based on the bottle pictured above or if N2G had some other kind of product packaging that more closely resembled Living’s product packaging. If the former, then I’m not so sure I would agree with the court’s decision with respect to intentional copying and likelihood of confusion; however, if the latter, then the court’s determination as such may be justified.

Friday, April 18, 2008

Cost Plus World Market and World Market Center settle trademark dispute over WORLD MARKET


I previously wrote (link here) about the trademark infringement lawsuit filed by Cost Plus World Market against the Las Vegas-based World Market Center over the mark WORLD MARKET CENTER. See Cost Plus Management Services, Inc. et al v. World Market Center Venture, LLC, Case No. 07-cv-00156 (D. Nev.). (Links to other news stories on the lawsuit can be found here, here, and here).

World Market Center in Las Vegas

The parties announced yesterday (link to press release here) that they have reached an agreement that will allow both businesses to continue to use their respective logos and names and which will dismiss the pending lawsuit.

Bob Maricich, president and chief executive officer of World Market Center, was quoted as saying:

I am very pleased that we were able to come to a fair and equitable resolution to these trademark and brand-related issues. We believe this agreement preserves the integrity of both brands and allows each of us to move forward with our unique and compelling business models.

Naturally, the terms of the agreement were not disclosed.

Thursday, April 17, 2008

Planet Hollywood sues to stop local Las Vegas music band from using the name SUNSET STRIP


On April 16, 2008, OpBiz, LLC (“OpBiz”), the owner and operator of the Planet Hollywood Resort & Casino (“Planet Hollywood”) in Las Vegas, filed a trademark infringement lawsuit in the U.S. District Court for the District of Nevada against The Production Group, LLC (“TPG”) and its managing member, Glenn Medas, and Shay/Chambers, LLC d/b/a M/C Productions (“MC Productions”) and its managing member David Michael Chambers. See OpBiz, LLC v. Production Group, LLC et al, Case No. 08-cv-00482 (D. Nev. April 16, 2008). A copy of the complaint can be downloaded here.

The mark at issue is the name SUNSET STRIP for use by a live musical band.

OpBiz purchased the formerly bankrupt Aladdin Hotel and Casino in 2004 and began rebranding the entire hotel using the Planet Hollywood name. As part of this effort, OpBiz began developing ideas for the type of entertainment that would be offered in connection with the hotel under its new Planet Hollywood identity.

Sometime in early 2005, a decision was made for the hotel to have its own house band that would “symbolize the PLANET HOLLYWOOD brand – a high-energy, live music and entertainment group performing within the Planet Hollywood property.” OpBiz, supposedly in consultation with Defendants Medas and Chambers and after a clearance search was performed, chose to name this house band “The Sunset Strip Band.”

According to the complaint, OpBiz planned to use THE SUNSET STRIP BAND as a mark designating Planet Hollywood’s ubiquitous house band – and not meant as the name of a specific band. In correspondence between OpBiz and the Defendants, however, the Defendants claim that name was always meant to be for this specific band.

OpBiz hired the Defendants (TPG and MC Productions are in the business of staffing entertainers for various venues) to assemble a music band and dance group for THE SUNSET STRIP BAND, which had its first performance at Planet Hollywood on August 22, 2005.

The complaint notes the Defendants provided the performers and was in charge of what songs, music, and dance would be performed, but that OpBiz “controlled the overall production, including lighting, sound, and final approval on overall style and content.”

On September 28, 2005, OpBiz filed a Nevada state trademark application for the mark THE SUNSET STRIP BAND for “entertainment services rendered by a musical group.” On October 8, 2005, OpBiz filed a federal trademark application for the mark THE SUNSET STRIP BAND (“band” disclaimed) for “entertainment, namely live performances by a musical band.” The mark was registered on January 1, 2007.

The complaint asserts that OpBiz has spent “several hundred thousand dollars” promoting its entertainment services offered under its mark THE SUNSET STRIP BAND in print and broadcast media as well as online through its websites and that consumers have come to recognize Planet Hollywood as the source of the entertainment services offered under the name THE SUNSET STRIP BAND.

From August 2005 to June 2006, Defendants' performers performed regularly at the Planet Hollywood until supposedly they were notified that OpBiz was “temporarily discontinuing performances” while the venue where the band performed was being renovated. OpBiz acknowledges that it is not currently performing any entertainment services under the mark THE SUNSET STRIP BAND, but that it does have a “bona fide intent” to resume use after the renovations are completed.

According to the complaint, sometime in July 2006, Medas asked OpBiz for permission to use the name THE SUNSET STRIP BAND outside of Planet Hollywood for a period of six months so that Medas could help his performers finding another “gig.” Supposedly, OpBiz verbally agreed to such use and sent a written memo confirming such (although a copy of such memo cannot currently be found).

OpBiz maintains that the Defendants continued to use the mark in connection with a musical band and dance group long after the six months had expired. The Defendants registered the domain name http://www.sunsetstriplasvegas.com/ in April 2006, but subsequently linked the domain to a website with information about Defendants' music and dance group. The Defendants continue to promote their group on TPG’s website and MC Productions’ website and have offered their services under the mark to other Las Vegas hotels.

On June 15, 2007, TPG filed its own Nevada service mark application for the mark SUNSET STRIP for “entertainment services, namely performers[sic] by singers, dancers, & musicians & related miscellaneous product[sic] and merchandise" and claiming first use date of August 15, 2005 (7 days prior to OpBiz's claimed first use date).

OpBiz contacted the Defendants on several occasions to demand that the Defendants stop using the SUNSET STRIP name and to cancel its Nevada state service mark. OpBiz contacted Medas by phone on June 22, 2007 and by letter three times (July 18, 2007, September 25, 2008, and October 16, 2007). Medas supposedly ignored the first three contacts, but responded to the October letter asking for OpBiz’s “authority” for its demands – and also mentioning that the name of the group was always SUNSET STRIP and always intended as the name of the group.

When OpBiz provided copies of its federal and state registrations, Medas, on April 3, 2008, responded by denying any infringement and maintained that there was no likelihood of confusion between OpBiz’s THE SUNSET STRIP BAND and its mark SUNSET STRIP.

The Defendants, under the name SUNSET STRIP (pictured below), are currently performing at the Las Vegas Hilton hotel and casino (link here), having secured a long-term contract to provide its musical entertainment services. See also here and here.

OpBiz’s causes of actions are for federal trademark infringement, false advertising, unfair competition/false designation of origin, cybersquatting, trademark infringement and deceptive trade practices under Nevada law, common law trademark infringement, and intentional interference with prospective economic advantage.

OpBiz seeks a preliminary and permanent injunction against the Defendants to stop them from performing under the name SUNSET STRIP and from registering any more domain names with the mark SUNSET STRIP (and ordering the transfer to OpBiz of sunsetstriplasvegas.com domain name). OpBiz also seeks cancellation of TPG’s Nevada State service mark registration, a disgorgement of profits earned by the Defendants for any performances using the SUNSET STRIP mark, the usual damages (compensatory, consequential, statutory, and punitive damages) as well as interest, costs, and attorneys' fees.


The "Sunset Strip" performers

Vegas™Esq Comments:
Noticeably missing from the exhibits attached to the complaint is any type of agreement between OpBiz and both TPG and MC Productions memorializing the understandings of the parties back when the Defendants were first hired by OpBiz to help develop the show. Such agreement might also show what kind of understanding there was with respect to OpBiz’s promotion of the show.

One must always remember that a trademark registration, unless incontestable, is just “prima facie” evidence of the registrant’s ownership of the mark and registrant’s exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the certificate (see §7(b) of the Lanham Act, 15 U.S.C. §1057(b)). As such, a defendant faced with allegations of trademark infringement, but armed with some contradictory evidence to suggest that the registrant might not be the owner of the mark nor have the exclusive right to use the mark, has a fighting chance against such allegations.

One can imagine Medas and Chambers coming back with a different story that they were hired to come up with a band and worked with OpBiz executives to come up with a name for the ban that OpBiz felt was consistent with the Planet Hollywood brand and which also would not infringe any other trademark (thus the clearance search by OpBiz) – but with an understanding among the parties that the name was for Defendants' specific band, and not a Planet Hollywood house band as the complaint alleges.

Also curious is that OpBiz waited several weeks until after the first use of the name to apply to register the mark. If OpBiz was serious about using that name as a mark for a Planet Hollywood house band, why did it not file a Section 1(b) intent-to-use application right away? Perhaps because OpBiz did not think to even claim any ownership rights to the name at that time – and only after recognizing the popularity of the band that had been created by the Defendants did it seek to claim the exclusive right to that name.

Of course, to the extent that Medas claims that the name was always meant to be for Defendants’ band, evidence that Medas asked for permission to use the name following June 2006 could be quite detriment to the Defendants’ position. However, as the complaint acknowledges, there is no evidence of such “verbal agreement” yet (and the OpBiz executive who supposedly gave the consent to use the name is not even identified in the complaint). And if that purported memorandum is never found, then it will be a case of who do you believe between Medas and whomever Medas supposedly received permission from at OpBiz.

Wednesday, April 16, 2008

Harry Potter and the Disappearing Trademark Infringement Claims


In the trial of the lawsuit filed by J.K. Rowling and Warner Bros against RDR Books over its planned publication of the “Harry Potter Lexicon” (a print version of the free-of-charge Harry Potter Lexicon fan website - http://www.hp-lexicon.org/ - created by Steven Vander Ark), so much of the media attention has focused on the copyright infringement claims that I was beginning to wonder when the parties would get around to the “good stuff” – namely, the claims for trademark infringement and unfair competition that were part of the original and amended complaint. See Warner Bros. Entertainment Inc. et al v. RDR Books et al, Case No. 07-cv-09667 (S.D.N.Y.); see also previous blog posts here and here.

Well, either through wizardry or good lawyering, it appears that the parties may have reached a settlement of those claims.

As reported by the WSJ.com Law Blog today (link here), the lawyers informed the court this morning that they had reached a settlement on the false advertising and deceptive trade practices claims whereby RDR agreed not to use J.K Rowling’s name nor her quote endorsing the online version of the Lexicon on the cover of the book version.


In addition, Anthony Falzone, the executive director of the Fair Use Project at Stanford University’s Center for Internet and Society, who is one of the attorneys representing RDR Books, also informed the court that the parties want to “paper a settlement” on the trademark infringement and unfair competition claims.

Sounds like the parties have reached an agreement on the disclaimer to be used on the book’s cover and elsewhere (and possibly an agreement not to use the stylized Harry Potter mark) in order to prevent the public from being confused as to any affiliation, connection, or association of the publisher with Rowling and Warner Bros. or as to the origin, sponsorship, or approval of the Lexicon by Rowling and Warner Bros.
With those claims settled, that only leaves that boring copyright infringement claim. (yawn – ed.)

But for those of you interested in the copyright infringement aspects of the case, which are significant especially with respect to the fair use defense, check out the following posts:
  • WSJ Law Blog Q&A with King & Spalding IP attorney Ethan Horwitz (link here)

  • Prof. William Patry’s post (here) on “The Patry Copyright Blog” regarding the case

  • Professor Tim Wu’s comments (here) on Slate about the lawsuit

Tuesday, April 15, 2008

NIKE goes after MIKE

Another one for the category “What was this applicant thinking?”

Nike, Inc. (“Nike”), owner of several registrations for the mark NIKE (for footwear and clothing), filed an opposition today against an individual named Scott Nelson who filed a Section 1(b) intent-to-use trademark application to register the mark MIKE (for various clothing). See Nike, Inc. v. Scott Nelson, Opposition No. 91183553 (T.T.A.B. April 15, 2008). A copy of the notice of opposition can be downloaded here.

The opposition not only invokes the obvious grounds for rejecting registration of the mark (likelihood of confusion, dilution), but also cites Section 2(a) of the Lanham Act (15 U.S.C. § 1052(a)) (which prohibits registration of a mark which falsely suggests a connection with a person, living or dead) and Section 2(c) of the Lanham Act (15 U.S.C. § 1052(c)) (which prohibits registration of a mark which comprises a name identifying a particular living individual except by his written consent).

Of course, the person at issue in this case would be legendary basketball player Michael Jordan. Nike’s notice of opposition notes the long-standing endorsement and licensing relationship between Nike and Jordan, whereby Nike has developed and used many trademarks consisting in whole or part of Michael Jordan's name, image or likeness, which has caused the public to closely associate Jordan with Nike.

Nike argues that Mr. Nelson has no legitimate connection with Michael Jordan, and thus registration of the mark would falsely suggest to the public a connection with Jordan. Furthermore, the mark, when used on the goods at issue, is a name identifying a particular individual, namely Michael Jordan, whose written consent to register his name is not of record. It does not matter that the mark at issue is not Michael Jordan’s full name. See In re Sauer, 27 USPQ2d 1073 (TTAB 1993), aff’d per curiam, 26 F.3d 140 (Fed. Cir. 1994) (BO, the recognized nickname of professional football and baseball star Bo Jackson, found to be so well known by the general public that use of the name BO in connection with sports balls would lead to the assumption that he was in some way associated with the goods or with applicant’s business); see also Reed v. Bakers Engineering & Equipment Co., 100 USPQ 196, 199 (PTO 1954) (“‘Name’ in §2(c) is not restricted to the full name of an individual but refers to any name regardless of whether it is a full name, or a surname or given name, or even a nickname, which identifies a particular living individual...”).

For those who may feel that Nelson did not intend for the name MIKE in this case to be a reference to Michael Jordan, I would point out that one of Nelson’s other pending applications (link here) is for the below design mark (also for clothing):


Nike also opposed registration of this design, which bears a striking resemblance to Nike's own registered design mark of the profile of a well-known former basketball player (pictured below). See Nike, Inc. v. Scott Nelson, Opposition No. 91182458 (T.T.A.B. February 14, 2008). If the outcome of that opposition is any indication, Nelson is not going to fight Nike over MIKE.


Sunday, April 13, 2008

What’s in a name? Ask Roscoe and Patsy.


It was quite a week for restaurant name trademark disputes.

Earlier this week, I wrote (link here) about a North Carolina pancake house that was doing business under the name “It’s Hop’n” that was sued for trademark infringement by IHOP

On Thursday, the big story (here and here) was about the Los Angeles-based chicken and waffles chain “Roscoe's House of Chicken 'n Waffles” (“Roscoe’s”) The restaurant chain filed a trademark infringement lawsuit against the owner of “Rosscoe's House of Chicken and Waffles” (“Rosscoe’s”) in Chicago (two “S”’s and the word “and” instead of an ampersand), for infringement of its service mark ROSCOE'S HOUSE OF CHICKEN N WAFFLES (pictured below). See East Coast Foods, Inc. v. VFJ Enterprises, Inc. et al, Case No. 08-cv-01990 (N.D. Ill. April 8, 2008).





At the court’s hearing on Roscoe’s motion for a temporary restraining order, it was announced that the parties had reached an agreement as to a temporary restraining order. Rosscoe’s agreed to remove the name from all signs and menus by next Wednesday and change the name to Chicago's House of Chicken and Waffles. Meanwhile, attorneys for Roscoe's are indicating that they still plan to seek damages for Rosscoe’s infringement of its trademark. At the conclusion of the hearing, U.S. District Judge Samuel Der-Yeghiayan was quoted as saying: "I see that both parties understand the issues and facts of life and none of the parties are waffling on the issue."

One interesting aspect of the case is that Roscoe's apparently allowed Rosscoe's to operate a “Rosscoe's House of Chicken and Waffles” in New York for eight years without any claims of infringement. Roscoe's founder and long-time owner, Herb Hudson, was quoted as saying that he had no plans to expand to the New York market, and thus did not have a problem with the New York Rosscoe’s. But Hudson did have plans to open in Chicago next year, thus the reason behind the lawsuit to stop Rosscoe's this time.

One wonders whether Roscoe's considered the consequences of not enforcing its trademark rights throughout the entire U.S. Roscoe's lack of enforcement with respect to a confusingly similar mark in New York ultimately diminishes the ability of the mark to serve as a unique source identifier, and thus it value as a service mark. The story below demonstrates what can happen to a prior user’s trademark rights when an owner does not take steps to vigorously enforce such rights.


The dueling "Patsy's"


On Friday, the trademark news story of the day (link here) was about a jury verdict in an ongoing trademark battle in the New York city area over the name “Patsy’s” between Patsy's Italian Restaurant and Patsy's Pizzeria (background articles here, here, here, and here). Patsy's Italian Restaurant filed this particular trademark infringement lawsuit against the owners of Patsy's Pizzeria in October 2006. See Patsy's Italian Restaurant, Inc. v. Banas et al, Case No. 06-cv-05857 (E.D.N.Y. October 30, 2006).

Patsy's Italian Restaurant, located in Manhattan's theater district, was founded in 1944 by Pasquale "Patsy" Scognamillo and claims to have been patronized by celebrities from Frank Sinatra and Tony Bennett to Jennifer Lopez and George Clooney. Patsy's Pizzeria, on the other hand, opened up in Syosset, New York in 2006, after obtaining a license to use the name from the owner of the original Patsy's Pizzeria located in East Harlem which was founded in 1933 by Patsy Lancieri. In 1991, Lancieri's widow sold Patsy's Pizzeria, and the new owner soon after began expanding the pizzeria chain to six locations in Manhattan, one in Long Island, and then to Syosset.

While the jury found that there was a likelihood of confusion between the two restaurant names, the court did not yet order an injunction stopping Patsy's Pizzeria from using the name nor has the issue of damages been determined. A hearing on Patsy's Italian Restaurant’s request for injunctive relief is set for sometime in August.

This dispute between the two “Patsy’s” restaurants goes back almost ten years, and has quite an interesting procedural posture both in federal court and at the Trademark Trial and Appeal Board (“TTAB”). For a detailed background on one part of the dispute, read the published decision Patsy’s Brand, Inc. v. I.O.B. Realty, Inc., 317 F.3d 209, 65 USPQ2d 1442 (2d Cir. 2003).

The two businesses coexisted for nearly half a century. In 1993, the owners of Patsy's Italian Restaurant decided to begin selling pasta sauces in jars for retail distribution and formed Patsy's Brand Inc. (“PBI”), which filed an intent-to-use application to register its mark PATSY’S PR SINCE 1944 (stylized) for sauces. The mark was registered January 17, 1995 (with Patsy’s claiming first use in February 1994). Meanwhile, Patsy’s Pizzeria, through I.O.B. Realty, Inc. (“IOB”), had received two registrations for the marks PATSY’S and PATSY’S PIZZERIA (both for restaurant services) registered in May 21, 1996 and December 29, 1998, respectively.

On October 9, 1998, IOB filed a petition to cancel PBI’s registration for sauces alleging likelihood of confusion over its registrations. See I.O.B. Realty, Inc. v. Patsy's Brand, Inc., Cancellation No. 92028142 (TTAB October 9, 1998). Not only did PBI deny the allegations and assert the affirmative defense of estoppel, laches, and acquiescence, PBI turned around and filed its own petition to cancel IOB’s two registrations based on likelihood of confusion over its registered mark as well as fraud on the part of IOB. See Patsy's Brand, Inc. v. I.O.B. Realty, Inc., Cancellation No. 92029614 (TTAB October 28, 1999).

Theses cancellation proceedings were suspended sua sponte by the TTAB on June 21, 2000, when the TTAB was informed of a lawsuit filed by PBI on September 30, 1999 in the U.S. District Court for the Southern District of New York, alleging inter alia, trademark infringement, seeking cancellation of IOB’s registered mark PATSY’S, and seeking an order withdrawing IOB’s cancellation petition. See Patsy's Italian Restaurant, Inc. v. IOB Realty et al, Case No. 99-cv-10175 (JSM) (S.D.N.Y.). The district court in that case granted PBI’s motion for summary judgment, finding infringement, entered an injunction, and ordered the PTO to cancel IOB’s PATSY’S registration.

On appeal to the Second Circuit, the court affirmed the district court’s decision regarding likelihood of confusion. The court also held that while IOB may have originally had priority with respect to the name PATSY’S, its long-standing tolerance of the use by Patsy’s Italian Restaurant prevented IOB from stopping Patsy’s Italian Restaurant from using the name for restaurant services. Because the parties’ rights to use the PATSY’S name for restaurant services was equal, IOB had no grounds for objecting to Patsy’s Italian Restaurant's expansion into the “related market” for sauces. The Court of Appeals, however, did find the district court exceeded the scope of the litigation by restricting IOB’s use of the mark PATSY’S in connection with restaurant services and modified the district court’s injunction to remove the order to the PTO to cancel IOB’s PATSY’S registration.

Unfortunately, PBI, soon after the district court’s decision but before IOB had filed its appeal, filed a motion with the TTAB on October 18, 2001, to resume the cancellation proceeding. PBI did not notify the TTAB of IOB’s appeal to the Second Circuit. Because IOB did not file a response to PBI’s motion, the TTAB granted PBI's motion and granted PBI's petition to cancel IOB’s PATSY’S registration and dimissed with prejudice IOB’s cancellation proceeding against PBI.

On March 28, 2003, the TTAB sua sponte issued an order to IOB to show cause why judgment should not be entered against IOB on the PATSY’S PIZZERIA registration, which was also part of PBI’s original cancellation petition. By this time, the Second Circuit decision had been rendered, and IOB informed the TTAB of the decision by the Court of Appeals reversing the district court’s order to cancel IOB’s registration. PBI continued to maintain that IOB’s registrations should be canceled because IOB “had lost interest” and because of IOB’s false statement that it had exclusive right to use the mark, when the Second Circuit had held that both parties have an equal claim to the name.

Unfortunately for IOB, on May 27, 2003, the Commissioner for Trademarks went ahead and ordered the cancellation of both of IOB’s registrations because the TTAB had erroneously prepared and forwarded an order for the Commissioner to sign – even though the TTAB’s original order did not formally order IOB’s PATSY’S PIZZERIA registration to be canceled.

Further complicating matters is that when PBI filed its lawsuit against IOB, PBI also filed a new application to register the mark PATSY’S PR (stylized) for restaurant services and for PATSY’S (for restaurant services not including pizza). While these applications were at first rejected as likely to be confused with IOB’s registrations, when those registrations were prematurely canceled, the PTO withdrew its rejections and allowed PBI’s marks to be published and subsequently registered on November 1, 2005.

On that same day, IOB filed another application to register the mark PATSY’S PIZZERIA for (restaurant services, namely, take-out restaurant services). That application was rejected by the PTO on grounds of likelihood of confusion over the above two registrations held by PBI for restaurant services as well as two additional pending applicaitons filed by PBI (PATSY'S OF NEW YORK for restaurant services and PATSY'S for frozen eggplant parmigiana). Perhaps because of the PTO's rejections, on January 9, 2007, I.O.B. Realty filed two petitions to cancel each of PBI’s new registered marks. See I.O.B. Realty, Inc. v. Patsy’s Italian Restaurant, Cancellation Nos. 92046912 and 92046867 (TTAB Jan. 9, 2007). Of course, these cancellations were subsequently suspended once they became the subject matter of the federal district court lawsuit filed by Patsy’s Italian Restaurant. Interestingly, the Examining Attorney, in a subsequent non-final office action, maintained the 2(d) refusal to register IOB's mark, but only citing the PATSY'S OF NEW YORK and PATSY'S (eggplant parmigiana) registrations. Further proceedings on this particular application were suspended December 30, 2007.

To add insult to IOB’s injury, the TTAB, on June 28, 2007, upon reviewing and recounting the “tortured procedural history” of the case (link here), cancelled IOB’s registrations under §8. After PBI noted that IOB had not made the required filings under §8 (declaration of use) of the Lanham Act, the TTAB ordered the register to be corrected to reflect that IOB’s registrations were canceled on such basis – even though such a filing would not have been approved given its cancelled status. The TTAB refused IOB’s request for reconsideration.

On August 28, 2007, the judge in the above district court case ordered the PATSY’S PIZZERIA registration restored under §37 of the Lanham Act (15 USC §1119), but no action has been taken until such time as the court’s order is final (the court was unwilling to certify the order as final to allow IOB to pursue an immediate appeal).

Only time will tell if the most recent jury verdict will start to bring some order to the "procedural morass" (the TTAB's own words) in this case. Given the long-running nature of the dispute, however, one highly doubts that this dispute will end at the district court level.

Thursday, April 10, 2008

A JUICY trademark dispute


On April 4, 2008, Juicy Couture, Inc., the owner of several trademark registrations on the mark JUICY and other variations, filed a trademark infringement lawsuit against Lime Blue, LLC (“Lime Blue”), the owner of the website http://www.juicycampus.com/, in the U.S. District Court for the Southern District of New York. See Juicy Couture, Inc. v. Lime Blue, LLC, Case No. 08-cv-3376 (S.D.N.Y. April 4, 2008).


Why would a clothing company known for its terrycloth sweatsuits and “hoodies” be suing a college campus gossip website for trademark infringement? Because Lime Blue, as part of its efforts to promote its website, was also selling T-shirts and hoodies with the ornamentation “Juicycampus.” And that’s what we call in the trademark world– likely to cause confusion.

While other news outlets ran stories about the lawsuit (see, e.g., here), first prize has to go to Sarah Horne of radaronline.com with her own witty, yet poignant summary (link here) of the dispute (I've excerpted my favorite parts):

It's a proud day for terry-sweatsuit loving Long Island housewives. Juicy Couture, the purveyor of fuzzy, sherbert-colored hoodies and skintight lounge pants with "Juicy" emblazoned across the ass, is suing nasty campus gossip site juicycampus.com for "trademark infringement."
. . .
In related fashion news, Juicy Couture is also suing apples, pears, and anything else that might confuse their tanorexic clients about what, in fact, the "Juicy" brand signifies.

The founder of Juicy Campus, Matt Ivester, did the wise thing and immediately stopped selling clothes on the website with the Juicy Campus ornamentation. So long as the website sticks to gossip, he should be ok – at least from a trademark standpoint. Apparently, the website is facing some other legal issues. The New Jersey attorney general’s office is investigating whether the site has violated New Jersey’s Consumer Fraud Act (story link here) and a California Assemblyman recently asked the California attorney general’s office to investigate whether the website can be held responsible for malicious gossip postings (story link here).

For a good discussion of the impact that the recent Ninth Circuit decision in Fair Housing Council v. Roommates.com, LLC, Case No. 04-56916 (9th Cir. April 3, 2008) (en banc) may have on Juicy Campus’s claims of immunity under the Communications Decency Act (CDA) (47 U.S.C. § 230), check out this post on Concurring Opinions written by Prof. Daniel Solove. (Remember me Dan?)

Wednesday, April 9, 2008

Two big players give two small business owners lessons in trademark infringement

Two stories in the news yesterday showcase the perils in which small businesses often find themselves when they get crosswise with big companies with powerful trademark portfolios.



The first story (link here) is about Ken Litvack, the founder of NavQuest – a website that helps boat owners create their own ocean navigational charts. AOL LLC (“AOL”), the owner of the popular directions and road map website MapQuest, filed a trademark infringement lawsuit against Litvack to stop him from operating his website on the grounds that his the name NAVQUEST is confusingly similar to portfolio of MAPQUEST marks See AOL LLC v. Kenneth E. Litvack and NavQuest, Inc., Case No. 08-cv-00153 (E.D. Va. February 21, 2008). A copy of the complaint can be downloaded here.



This is not Litvack’s first trademark run-in with AOL. In 2003, he filed an intent-to-use application to register the mark CHART QUEST (for cartography and mapping), but the PTO rejected the application on the grounds of likelihood of confusion over AOL’s MAPQUEST and MAPQUEST.COM marks. That application went abandoned in 2004, but on August 18, 2006, Litvack filed another application (a use-in-commerce application this time) to register the mark NAVQUEST (for cartography and mapping services). While the PTO allowed this mark to be published for opposition, AOL filed a notice of opposition on August 30, 2007. See AOL LLC v. Ken Litvack, Opposition No. 91179250 (TTAB Aug. 30, 2007). The opposition has been suspended pending the outcome of the lawsuit.

Vegas™Esq Comment: Because MapQuest is a strong mark, the similarity of the marks and the relatedness of the goods do not need to be as strong. The marks are very similar in appearance, sound, and meaning and the goods are similar (online mapping function). There is a good chance that the public is likely be confused as to source and origin. Personally, I think AOL should just buy the website from Litvack – it complements AOL’s MapQuest business model quite nicely (which further shows why Litvack may have an uphill battle).




The second news story (link here) involves the efforts by several business entities comprising The International House of Pancakes (“IHOP”) empire to stop a small business owner from operating his local pancake restaurant under the name “It’s Hop’n.”

John Langley, the owner of It’s Hop’n, opened the restaurant on February 29th. The site of the restaurant was an IHOP from 1973 to 2002

On March 17, Langley received a cease and desist letter from a lawyer representing IHOP demanding that Langley stop using the “It’s Hop’n” name and change the color of the “identifiable blue roof” by March 27th. Langley did not take the C&D letter seriously; however, with the filing of its lawsuit, Langley soon discovered that IHOP was very serious about its demands.

The lawsuit filed by IHOP against Langley not only claims infringement of IHOP’s trademarks, including a pending intent-to-use application for IHOP’N Go, but also for IHOP’s distinctive trade dress, specifically, the blue roof of the restaurant. See IHOP Corp. et al. v. John Langley, Case No. 08-cv-00168 (E.D. N.C. April 3, 2008). Interestingly, IHOP tried to get a registration for its blue roof trade dress, but does not appear to have been successful. IHOP had a registration for a roof design mark that was the color blue, but that registration was subsequently cancelled.

IHOP is also an illustration of how big companies, while often aggressive in enforcing their marks, can also overlook simple maintenance details. On February 9, 2007, IHOP disclosed in a press release that it had allowed some trademark registrations to lapse, thus forcing IHOP to have to revise its Uniform Franchise Offering Circular. This apparently led to IHOP voluntarily surrendering many of its marks in early 2007 (see, e.g., IHOP and IHOP stylized) and opting to start fresh with new registration applications for many of the same marks.

In light of IHOP’s lawsuit, Langley says that he is planning on changing the name of his restaurant to Langley’s Pancake House. However, he seems unwilling to repaint the roof. Langley claims that he did not pick the color of the roof, but that it was already painted blue when he agreed to take over the site, which had been vacant since the IHOP closed until a restaurant and bakery called Shirley’s opened in March 2007. The roof was beige, until a painting company (coincidentally owned by Langley) painted the roof blue at the request of the proprietors of Shirley’s restaurant. Shirley’s closed by the end of 2007, and so Langley, with some coaxing from the site’s landlord, decided to rent the building and open his breakfast restaurant.

The "blue roof" restaurant

Vegas™Esq Comment: Smart move by Langley changing the name. The name may be “cute” (Langley’s own words), but it’s not so great that Langley should put up a fight against a big company like IHOP. However, I doubt IHOP will stop its lawsuit until Langley has repainted the roof as well. While Langley maintains that other pancake houses have blue roofs, those other restaurant likely do not have the same overall look as this particular location, which just so happens to have been an IHOP restaurant for a very long time.

Langley seems adamant that he does not want to change the color of the roof, but he should really ask himself if a blue roof is really that important to the ultimate success of his business. What can you get by having a blue roof that you will not be able to get with some other bold color – unless your intent is to exploit a little bit of the goodwill that IHOP has garnered in the public mind with respect to a pancake restaurant with a blue roof. Given that Langley already owns a painting company, I assure you that repainting the roof will be less costly than fighting this trademark battle against this big company.


Final Lesson: Do not underestimate the importance of seeking the advice of a qualified trademark attorney during the startup phase of a new business. A trademark attorney can help advise you in how to create and protect a unique business identity, including trademarks, from the onset and how to avoid becoming the target of a trademark infringement lawsuit.

Tuesday, April 8, 2008

A Trademark Two-for-Tuesday for Eleventh Circuit appeals: Use of trademark in Metatags upheld as infringement

In addition to the Eleventh Circuit’s decision late last week regarding the mark ANGEL FLIGHT (discussed here), there was another trademark related decision published yesterday by the Eleventh Circuit Court of Appeals in a case involving trademark infringement arising from the use of trademarked terms in website metatags. See North American Medical Corp. v. Axiom Worldwide, Inc., Case No. 07-11574 (11th Cir. April 7, 2008).

Eric Goldman on his Technology and Marketing Blog (link here) describes the decision as a “bizarre and frustrating ruling."

The lesson learned – to the extent that you insist on using trademarked terms in your website’s metatags, make sure that the words themselves are not displayed along with your website in the search engine results and make sure that the terms are used in such a way where they would be deemed comparative advertising. Of course, the safest course of action would be not to use trademarks in your metatags at all.

Eleventh Circuit affirms lower court decision in favor of Georgia group on use of ANGEL FLIGHT mark

The Eleventh Circuit Court of Appeals last week reaffirmed a lower court’s decision upholding a Georgia organization’s senior rights to use the mark “Angel Flight” in Georgia, Alabama, South Carolina, Mississippi, North Carolina, and Tennessee. The court also upheld the lower court’s decision to cancel a trademark registration for the mark “Angel Flight” on the basis that it was acquired through fraud. See Angel Flight of Georgia, Inc. v. Angel Flight Southeast, Inc. et al, Case No. 07-11460 (11th Cir. April 4, 2008).

The case involves the group of organizations that operate under the name “Angel Flight” A man named Jack Welsh formed an organization called the American Medical Flight Support Team (“AMSFT”) in 1982 made up of volunteer pilots willing to provide free transportation for donated organs and medical patients. AMSFT chapters soon after began forming in other regions of the country.

In 1983, the Las Vegas chapter of AMSFT began using a mark with the words "The Angel Flight" with a winged caduceus. With permission from the Las Vegas chapter, the Los Angeles chapter of AMSFT (later known as Angel Flight West) also began using the same mark. After the Las Vegas chapter went defunct, Angel Flight West continued to use the mark, which it later modified slightly by altering the design of the wings and adding a stylized type to the words “Angel Flight” (picture above).

In 1983, an AMFST chapter was formed in Georgia (later known as Angel Flight of Georgia (“AFGA”)) and became the first organization to use the Angel Flight name in Georgia, Alabama, South Carolina, Mississippi, North Carolina, and Tennessee. In 1986, an AMFST chapter was formed in Florida (later known as Angel Flight Southeast (“AFSE”)) and operated primarily in Florida.

In 1987, Angel Flight West applied for registration of its modified “Angel Flight” mark (see ANGEL FLIGHT (and design) for transportation of human patients, tissue and organs, principally by air) after confirming that the Las Vegas organization was no longer in existence. The date of first use in commerce was claimed as November 21, 1983 (three years prior to the date Angel Flight West had created its modified “Angel Flight” mark). Angel Flight West, through its President at the time, signed the typical declaration (i.e., that Angel Flight West was the owner of the mark and, to the best of his knowledge and belief, no other person, firm, corporation, or association had the right to use the mark in commerce, either in an identical form or a near resemblance such as would be likely to cause confusion or mistake or deceive) – even though Angel Flight West certainly knew that other organizations were using the name Angel Flight in connection with similar air transportation services for medical patients and organs. The mark went on to be registered on June 7, 1988.

In 2000, many, but not all, of the regional Angel Flight organizations came together to form a national association known as Angel Flight America (“AFA”) which then divided the country into territorial zones and authorizing its members to operate in its designated geographical regions. Both AFSE and Angel Flight West joined AFA, but AFGA did not.

In May 2001, Angel Flight West agreed to assign its registered mark to AFA, which in turn licensed the mark to its affiliated member organizations.

Before joining AFA, AFSE originally served Florida patients and medical facilities, transporting patients and organs into and out of Florida; however, after joining AFA, AFSE began operating in Florida, Georgia, Mississippi, Alabama, and South Carolina. More significantly, AFSE began recruiting donors and promoting its services at trade shows and to medical facilities within those states. Sometime in 2001, AFGA became aware of AFSE's plans to open an office in Augusta, Georgia.

After becoming aware that donors and news media were confusing the two, AFGA on May 8, 2003, wrote to AFSE demanding that it cease and desist from promoting its services under the Angel Flight mark in Georgia, Alabama, South Carolina, Mississippi, North Carolina, and Tennessee. When AFSE refused, AFGA, on November 23, 2003, filed a lawsuit in the U.S. District Court for the Northern District of Georgia against AFSE alleging false designation of origin, false advertising, common law trademark infringement, common law unfair competition, and deceptive trade practices and other related state law claims. AFA later intervened in the lawsuit, and the AFA and AFSE filed similar counterclaims against AFGA

In July 2006, the district court ruled in favor of AFGA’s claims and against AFA/AFSE’s counterclaims. The district court issued a permanent injunction enjoining AFA and any of its members from using the Angel Flight mark in Georgia, Alabama, Mississippi, Tennessee, North Carolina, or South Carolina for the purpose of soliciting donations, advertising, promoting their services, or recruiting volunteers. In addition, the court ordered that AFA’s trademark registration be cancelled on the grounds that Angel Flight West had committed fraud in obtaining the registration by falsifying information in the application, specifically the incorrect date of first use as well as the failure to disclose the rights of others to use the mark.

On appeal to the Eleventh Circuit Court of Appeals, AFA and AFSE tried to argue that the district court erred by relying on hearsay testimony to support a finding of actual confusion, refusing to apply the doctrine of laches or acquiescence against AFGA, crafting an overly broad injunction, and canceling AFA’s registered trademark.

Hearsay Evidence of Actual Confusion
The district court found that AFGA was the senior user of the Angel Flight mark in the geographic region at issue. Much of the court’s conclusion of infringement was based on the similar manner in which AFSE was using the mark and AFGA’s evidence of actual confusion.

The evidence of actual confusion consisted of two AFGA employees who testified regarding conversations they had with donors and medical personnel. The district court allowed the evidence under Fed. R. Evid. 803(3), the hearsay exception permitting receipt of out of court statements for the purpose of showing the declarant's "confused" state of mind; however, in its order, the district court recounted such stories as fact (i.e. used the out-of-court statements for the truth of the matters asserted, which is hearsay).

The court noted, however, that evidence of actual confusion was just one part of the court’s overall determination that a likelihood of confusion existed. Even if such evidence were excluded, the court found sufficient evidence to support the district court's finding that confusion was likely (identical mark, identical services, targeting the same consumers, identical advertising methods, and AFSE intent to exploit AFGA’s goodwill with its opening of an office in Georgia and contacting established AFGA donors). Thus, the court found no error in the district court’s determination of a likelihood of confusion with respect to AFGA’s common law trademark rights..

Laches and Acquiescence
With respect to AFA’s argument that the district court erred in finding that AFA and AFSE had not proven the affirmative defenses of laches and acquiescence, the court found no abuse of discretion by the district court, which ruled that AFGA did not unreasonably delay before bringing its lawsuit. Specifically, before 2001, AFSE’s use of the mark in AFGA’s territory was limited to flying patients and organs in and out of the area before; however, after 2001, AFSE opened a branch office in the territory and began soliciting donations and promoting its services.

The court stated:

Under the doctrine of progressive encroachment, "delay is to be measured from the time at which the plaintiff knows or should know she has a provable claim for infringement." Kason Indus., Inc. v. Component Hardware Group, Inc., 120 F.3d 1199, 1206 (11th Cir. 1997); see also 6 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 31.19 (4th ed. 1997) ("The senior user has no obligation to sue until the likelihood of confusion looms large. . . ."). The district court found AFSE's change of tack in 2001 justified the timing of AFGA's lawsuit. That finding was supported by the evidence and was not an abuse of discretion.

Slip op. at 14.

The court noted further than even if AFA and AFSE had proven their affirmative defenses, it would not have precluded the court from issuing a permanent injunction in order to prevent a likelihood of confusion. See 6 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 31.10 (4th ed. 1997); see also SunAmerica Corp. v. Sun Life Assur. Co. of Canada, 77 F.3d 1325, 1337 (11th Cir. 1996); Coach House Rest., Inc. v. Coach & Six Rests., Inc., 934 F.2d 1551, 1564 (11th Cir. 1991). As such, the district court did not err in rejecting AFA/AFSE affirmative defenses of laches and acquiescence as grounds for barring AFGA’s injunctive relief

Permanent Injunction
AFA/AFSE, in trying to argue that the district court erred in granting a permanent injunction, argued that the district court was wrong in deciding that an injunction would serve the public interest. AFA/AFSE argued that the public interest at stake was the “interest in accessing free medical transportation,” which could be harmed by the court’s injunction.

In response to the argument that avoiding confusion is a legitimate public interest for granting an injunction, AFA/AFSE tried to argue that confusion “cannot be the only public interest considered by the court when deciding whether to issue an injunction . . . because no litigant can win a trademark infringement lawsuit without proving it likely that the public will be confused by similarities between the original and infringing marks, the ‘public interest’ in an injunction must be more than a mere interest in avoiding confusion. Were that not the case, an injunction would issue in every trademark action where infringement has been shown.” Id. at *19-20. The court, however, notes that indeed in most trademark infringement actions, complete injunctions are imposed against the infringing party for the simple reason that “the public deserves not to be led astray by the use of inevitably confusing marks-even in cases in which more than one entity has a legal right to use the mark.” Id. at *20.

Because the district court found a likelihood of confusion, the court found that the district court did not err in issuing an injunction to stop AFA/AFSE from using the Angel Flight mark in a way that would cause confusion in violation of AFGA’s senior rights. To that end, the court noted that the district court carefully crafted the injunction to allow AFA/AFSE to continue to use the mark in a way that it had before opening the Atlanta office. The district court’s injunction only prohibited AFA and its members (including AFSE) from using the Angel Flight mark in Georgia, Alabama, Mississippi, Tennessee, North Carolina, and South Carolina for the purpose of soliciting donations, advertising or promoting their services, or recruiting volunteers – the injunction does not prevent AFA and its members from using the mark to identify its planes flying into and out of these states and does not prevent them from promoting their services or recruiting volunteers in other states. The court found no error on the district court’s part with respect to issuing the injunction or its scope.

Cancellation of Trademark Registration on basis of Fraud
Finally, the court upheld the district court’s cancellation of AFA’s trademark registration.

The court noted:

In any action involving a registered mark, a court may order the cancellation of the registration, in whole or in part, when such action is warranted. See 15 U.S.C. § 1119. One ground on which a party may petition to cancel a registered service mark is that the registration was obtained fraudulently. 15 U.S.C. § 064(3) [sic]. Fraud occurs when an applicant knowingly makes false, material representations of fact in connection with an application for a registered mark. Metro Traffic Control, Inc. v. Shadow Network Inc., 104 F.3d 336, 340 Fed. Cir. 1997).

Slip op. at 19.

The district court found that Angel Flight West, the original applicant, committed two acts of fraud in obtaining its registration: intentionally providing an incorrect first date of use for the registered mark and intentionally failing to disclose known use of the mark by others

Regarding the first act of fraud, the court noted that “A misstatement of the date of first use in the application is not fatal to the securing of a valid registration as long as there has been valid use of the mark prior to the filing date.” Id. at 20 (quoting Car Subx Serv. Sys., Inc. v. Exxon Corp., 215 U.S.P.Q. 345, 351 (P.T.O. T.T.A.B. 1982) and citing Pony Exp. Courier Corp. of America v. Pony Exp. Delivery Serv., 872 F.2d 317, 319 (9th Cir. 1989)). In this case, because Angel Flight West did not modify the earlier version of the mark created by the Las Vegas AMFST chapter until 1986, it could not have used such mark in 1983; nonetheless, the court found that Angel Flight West was using the modified mark before it filed for federal registration, and therefore, “the improper first use date contained in the application cannot be a basis for invalidating the registration.” Id. at 21.

However, with respect to the Angel Flight West’s failure to disclose in its application the fact that other organizations were using the term “Angel Flight” despite knowledge of other organizations rightfully using the name, the court noted that “[p]urposely failing to disclose other users' rights to use the same or similar marks may qualify as a material omission justifying cancellation of a trademark. See L.D. Kichler Co. v. Davoil, Inc., 192 F.3d 1349, 1352 (Fed. Cir. 1999) (suggesting proof of noninfringing, consequential use by others may invalidate applicant's claim when combined with proof of intent to deceive).” Id.

Given the evidence that Angel Flight West was aware of other organizations using the “Angel Flight” name for similar transportation services at the time the application was filed and yet failed to disclose such material information to the PTO, the district court’s ruling that Angel Flight West had committed fraud was not clearly erroneous, and thus the district court did not err in canceling the registration on the basis of fraud.

Afterthought
AFA also has a second registration for the word mark ANGEL FLIGHT for “Transportation of human patients, tissue and organs by air.” The first date of use in commerce is cited as November 21, 1983 (the same date as the registration cancelled above). In addition, the registration suffers the same flaw as the above application – it was filed in January 28, 2003, and yet includes the same kind of declaration by AFA that no other person, firm, corporation, or association has the right to use said mark in commerce, either in the identical form thereof or in such near resemblance thereto as may be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or cause mistake, or to deceive. AFGA filed extensions of time to file an opposition back when the mark was published for opposition, but did not follow through. AFGA would appear to have the necessary ammunition should it desire to cancel this registered mark as well.