The Rat Pack is . . . Generic! -- Ninth Circuit Affirms Nevada District Court’s Decision that “The Rat Pack” is Generic in connection with “Rat Pack” tribute shows

The title of this blog post could also be entitled “How I won at the Ninth Circuit without doing a thing.” 

On February 16, 2016, the Ninth Circuit Court of Appeals issued its ruling in the appeal that was filed in 2013 by TRP Entertainment, LLC, seeking to overturn the Nevada district court’s 2009 decision which found that the “Rat Pack” was generic and ordered a disclaimer of the term “RAT PACK” on TRP’s trademark registration for “THE RAT PACK IS BACK.”  A copy of the decision can be downloaded here.   See TRP Entertainment, LLC v. BC Entertainment et al., Case No. 13-16754 (9th Cir.)

In upholding the lower court’s decision, the Ninth Circuit found that “the record demonstrates that the term ‘The Rat Pack’ describes a type of live entertainment show and does not identify any particular producer of a Rat Pack tribute show.”  The Court noted that even TRP had referred to “Rat Pack performances as a ‘genre’ of entertainment.”  As such, the district court did not err in determining that “The Rat Pack” is generic in the context of live shows about or in tribute to members of the Rat Pack.  The Ninth Circuit also held that the district court did not abuse its discretion in ordering a disclaimer of the term “The Rat Pack” modifying TRP’s trademark registration (citing 15 U.S.C. § 1119, which allows a court to order the modification of a trademark registration to include a disclaimer of generic components).  As such, the Ninth Circuit affirmed the district court’s grant of partial summary judgment and remanded the case back to the district court to instruct the Director of the United States Patent and Trademark Office to enter a disclaimer of the term “THE RAT PACK” on TRP’s trademark registration for ““THE RAT PACK IS BACK.” 

In order to understand how this victory is one for which I can claim some credit, I will defer to my prior detailed post on the district court’s decision when it was first handed down.  I was no longer Defendants’ counsel of record on the case at the time the decision was handed down, but it was the Motion for Partial Summary Judgment that I prepared and filed on behalf of the Defendants in that case that the district court ultimately ruled on in deciding that “Rat Pack” was generic – a decision that the Ninth Circuit has now affirmed.

Moreover, I was not involved in any briefings relative to TRP’s appeal, so that is why I write that I won at the Ninth Circuit without doing a thing – because indeed I did not.   In fact, the Ninth Circuit ruled against TRP despite having no substantive opposing briefs filed by the Defendants.  Original Defendant Barrie Cunningham did send a one page letter to the Ninth Circuit asking for the lower court’s decision to be upheld, but otherwise, no briefs were filed by the Defendants arguing in favor of upholding the lower court’s decision – which makes the decision of the Ninth Circuit to uphold the decision anyway all the more sweeter.  This victory for Defendants also demonstrates that just because no one opposes you on appeal does not necessarily mean you are going to win your appeal.

So short of an appeal by TRP of the Ninth Circuit’s decision to the U.S. Supreme Court or possibly a request for reconsideration with the Ninth Circuit, this decision marks the end of the great “Rat Pack Generic” saga that started as far back as 13 years ago.  The glory days of TRP claiming to have exclusive rights to the term “THE RAT PACK”  in connection with a “Rat Pack” tribute show – much like the “Rat Pack” itself – is forever gone. 

Casey’s Challenges Subway's Trademark Claim to FOOTLONG

As has been reported widespread in the media, last week, Casey's General Stores, Inc. (“Casey’s”), the owner of the convenience store chain Casey's General Store, filed a declaratory judgment action in Iowa federal district court against Doctor’s Associates, Inc. (“Subway”), the owner of the sandwich shop franchise Subway, seeking a declaration that the term “FOOTLONG” is generic when used in connection with a “footlong submarine sandwich” and thus Casey’s use of the term does not violate any trademark rights owned by Subway. See Casey's General Stores, Inc. v. Doctor's Associates Inc., Case No. 11-cv-00064 (S.D. Iowa February 11, 2011).

DuetsBlog provides a good blog post on the lawsuit filing (including a link to the complaint here). Other news coverage here, here, and here. Other blog coverage from Lawyers and Settlements and Trademarks and Brands.

Casey’s receipt of a cease and desist letter from Subway on January 31, 2011, regarding Subway’s claim over the FOOTLONG term apparently prompted Casey’s to file the action. In the complaint, Casey’s notes that in another pending lawsuit by Subway against convenience store chain Sheetz Inc. (see Doctor's Associates Inc. v. Sheetz Inc. et al, Case No. 09-cv-00088 (E.D. Va.)), the Court denied Subway’s early motion for a preliminary injunction and in doing so made the comment that the term “footlong” is “certainly generic.”

The complaint also notes that with respect to at least one of Subway’s applications for FOOTLONG (for restaurant services), the PTO has refused registration on the grounds that the mark is merely descriptive. In the PTO’s most recent Office Action (which included over 700 pages of exhibits), not only does the PTO note that the term “footlong” is commonly used, not only as an adjective to describe the size of sandwiches but also as a noun generically to refer to the sandwich itself and stating “Being potentially generic for applicant’s menu item, the mark FOOTLONG is highly descriptive for applicant’s restaurant services.” The PTO also noted numerous other restaurant menus, restaurant webpages, recipes, and articles using the term “footlong” to describe sandwiches and hot dogs that are one foot long and concluding that “Clearly, the evidence shows that the mark is and has been widely used descriptively, if not generically, in the food and restaurant industries for many years.”

Of course, as noted by DuetsBlog, the real question is how did Subway ever get its other FOOTLONG application (for sandwiches) to the publication phase? Numerous oppositions have been filed by companies including Long John Silvers, A&W, Taco Bell, Kentucky Fried Chicken, Dairy Queen, and Pizza Hut – with all but one suspended. The opposition that appears to be moving along is (not so coincidentally) the opposition filed by Sheetz. See Sheetz of Delaware, Inc. v. Doctor’s Associates, Inc., Opposition No. 91192657 (T.T.A.B.)

As for how the FOOTLONG application for "sandwiches" ever got the past the examination phase to the publication phase, not even the prosecution history provides a clear answer on that. In response to a descriptiveness refusal by the PTO, Subway merely argued “When applying the mark FOOTLONG to sandwiches it would require imagination, thought or perception to reach a conclusion as to the nature of those goods or services.” Subway added some sales figures in its Office Action response in order to make a claim for acquired distinctiveness if needed – but it never became an issue because the PTO, after dealing with the refusal discussed below, simply moved the application along to the publication phase.

Interestingly, it was not a descriptiveness refusal, but rather a likelihood of confusion refusal, that was Subway’s primary obstacle towards publication of its FOOTLONG application. In the PTO's office action, the Examining Attorney also cited the registered marks FOOTLONG EXPRESS (here and here) in support of a likelihood of confusion rejection. Subway was only able to get its application approved after winning by default cancellation actions against the marks FOOTLONG EXPRESS. See Doctor’s Associates, Inc. v. Skyline Chili, Inc., Cancellation No. 92050678 (T.T.A.B.).

But even after the cited marks had been canceled, the Examining Attorney still received a 72 page Letter of Protest on July 24, 2009 (which would have only been forwarded to the Examining Attorney if the PTO felt that the information raised important issues for the Examining Attorney to consider). While there is a notation in the file that the evidence was reviewed, the application was still forwarded for publication (and the approval itself would have certainly undergone the usual supervisory review, so the approval cannot be blamed on a single Examining Attorney). The rest is history (in the making). One suspects that the PTO, recognzing its mistake to have approved for publication the "sandwiches" application, went above and beyond in order to support its refusal of the "restaurant services" application.

Is there anybody out there that honestly believes that Subway is going to win this on any level?

Of course, this whole blog post was really just to give me an excuse to mention what I am reminded of when I hear the term “footlong” – a scene from the 80s Tom Hanks comedy “Bachelor Party” involving a male stripper who goes by the name “Nick the Dick.” If you watch this clip (sorry in advance for the 30 sec ad at the beginning) from the movie, at about the 1:30 mark, the lady asks “Is that footlong?” to which the gentleman replies “…and then some.” [A little bit of nostalgia for you Gen-Xers out there. . . in addition to being evidence that consumers recognize the term as a generic reference to the “size” of a “sandwich” (or at least a hot dog anyway).]

Nevada District Court rules that “The Rat Pack” is Generic in connection with “Rat Pack” tribute shows

I previously posted (link here) about the trademark infringement lawsuit brought by TRP Entertainment, LLC (“TRP”) – the production company behind the “Rat Pack” tribute show “The Rat Pack is Back” playing at the Plaza Hotel and Casino in Downtown Las Vegas and which owns the registered trademark for THE RAT PACK IS BACK – against BC Entertainment, Inc. (“BCE”) and Barrie Cunningham (the “Defendants”). See TRP Entertainment, LLC v. BC Entertainment, Inc. et al, Case No. 08-cv-00579 (D. Nev.). A copy of the complaint can be downloaded here. In short, TRP claimed that the Defendants use of the term “The Rat Pack” in connection with the Defendants’ production of a Rat Pack tribute show infringed on TRP’s trademark rights.

My law firm was subsequently retained by the Defendants to represent them in the lawsuit. After counterclaims had been filed, but very early into discovery, a Motion for Partial Summary Judgment was filed on behalf of the Defendants on several of Defendants’ counterclaims, including counterclaims seeking a declaration that the term “The Rat Pack” is generic when used in connection with a “Rat Pack” tribute show and an order to the U.S. Patent and Trademark Office ordering that TRP’s registered trademark for THE RAT PACK IS BACK include a disclaimer of the term “THE RAT PACK.”

On September 29, 2009, nearly a year after the original Motion was filed (and long after our law firm unfortunately had to withdraw as counsel for the Defendants), Nevada District Court Judge Lloyd George entered an order granting in part Defendants’ Motion for Partial Summary Judgment, in particular, finding that “The Rat Pack” is generic when used in connection with a Rat Pack Tribute show. See TRP Entertainment, LLC v. BC Entertainment, Inc. et al, Document #49, Case No. 08-cv-00579-LDG-RJJ (D. Nev. September 28, 2009). A copy of the court’s order can be downloaded here.

The Court stated the following regarding the evidence of the meaning of the term “The Rat Pack”:

Stated succinctly, Cunningham’s evidence establishes that, long before TRP offered live musical shows, the term the “The Rat Pack” had a meaning that was used in connection with the joint performances of members of the Rat Pack during the 1960s. While some of these performances included movie appearances, typically the joint performances were live musical performances. Since the 1960s, the term “The Rat Pack” has been used by producers of many types of goods or services to indicate that the goods or services relates to members of the Rat Pack or to the joint movie or live (or recorded) musical or movie performances of the Rat Pack during the 1960s. From its initial use to refer to members of the group, particularly when jointly performing live musical entertainment, “The Rat Pack” did not and, indeed, could not refer to or identify TRP’s live musical show.

The court acutely recognized that Defendants’ Motion was not directed towards TRP’s registered trademark but rather merely to the component term “The Rat Pack”:

The question before the court on Cunningham’s partial motion for summary judgment is not whether “The Rat Pack is Back” identifies and distinguishes TRP’s show in tribute to members of the Rat Pack from all other such live shows. Rather, the only question is whether the component term “The Rat Pack” so distinguishes TRP’s live show from all others about or in tribute to the Rat Pack. The evidence establishes that it does not and that TRP cannot appropriate the term “The Rat Pack” for its exclusive use.

And just to make it abundantly clear to TRP about the scope of its trademark rights, the court held that “As the term ‘The Rat Pack’ is generic in the context of live shows about or in tribute to members of the Rat Pack, TRP does not have an exclusive right to use the term ‘The Rat Pack.’”

Furthermore, not only did the court grant Defendants’ declaratory relief counterclaim finding the term “The Rat Pack” generic in connection with Rat Pack tribute shows, the court also granted Defendants' counterclaim which requested that the U.S. Patent and Trademark Office enter a disclaimer of TRP’s “incontestable” Trademark Registration No. 2,640,066 to add a disclaimer of the term “RAT PACK” -- something that arguably should have been done during the original prosecution phase, but which for various reasons was not. The lack of a disclaimer in TRP’s trademark registration is very likely what has allowed TRP to take its aggressive position regarding its trademark rights to the term “The Rat Pack” for so long. Not anymore.

As an attorney always hoping for a win for my clients, I am understandably happy with the court’s decision given my personal, direct involvement in preparing the Motion. And while there is so much else I would like to say about this case as a commentary on our legal system, the price of getting justice in this country, the abusive use of trademarks, and even the unintended consequences of maintaining a legal blog, I will defer such remarks to those who would like to hear them from me in person.

Instead, I would like simply to share this victory (however pyrrhic it might be) with the world – and particularly, any other production companies out there that have wanted to produce a Rat Pack tribute show and use the phrase “The Rat Pack” in the title somewhere, but have been scared away from doing so by the aggressive efforts of TRP based on its registered trademark THE RAT PACK IS BACK (or other asserted trademark rights). You now have at least one decision from a court of law that will back you up in your argument that the term “The Rat Pack” when used in connection with a Rat Pack tribute show is generic and cannot be claimed exclusively by anyone. Sounds ridiculously obvious – and yet so much time, energy, resources, and money was spent litigating just this point.

Of course, what’s really sad is that TRP will certainly attempt to appeal the judge’s decision – after all, this decision has dealt a significant blow to one of TRP’s most valuable pieces of intellectual property (at least in the arena of “Rat Pack” tribute shows). And unless the Defendants are able to garner the financial resources to continue the fight, TRP’s appeal might go unchallenged. If such an appeal follows, one can only hope that the Ninth Circuit Court of Appeals will recognize the reasonableness of the district court’s decision.

Lastly, I want to give thanks to my law firm colleague, Mark Borghese, who pushed the idea of pursuing an early Motion for Partial Summary Judgment that was focused on getting a decision that the “The Rat Pack” is generic and who provided other invaluable direction along the way. This victory is as much his as it is mine.

[Update: The Las Vegas Sun has an article on the decision here.]

[Update #2: On December 14, 2009, the Nevada District Court denied TRP's Motion for Reconsideration of the court's September 28, 2009 order. A copy of the latest order can be read here.]

Toy Maker Seeks Declaratory Judgment That “Boogie Board” is Generic for … Guess What?

Wham-O's BOOGIE® body board

Hong Kong based toy company Manley Toys, Ltd., the maker of the BANZAI line of water toys including a water slide with a Banzai “boogie board” (pictured below), filed a declaratory judgment action against Wham-O, Inc., the owner of the registered trademark BOOGIE (for body boards), after receiving a cease and desist from Wham-O over the use of the term “boogie board”. See Manley Toys, Ltd. v. Wham-O, Inc., Case No. 09-cv-04198 (C.D. Cal. June 12, 2009). A copy of the complaint is available here.

Banzai's Water Slide with "Boogie Board"

Psion Agrees to Surrender NETBOOK Registered Trademark

Back in February, Intel Corp. filed a declaratory judgment action against Psion Teklogix, Inc. seeking a declaration that Psion’s registered trademark NETBOOK is generic for laptop computers (previously blogged here). The action was filed after Intel (along with numerous other well-known names like Dell, HP, and Best Buy) received a cease and desist letter from Psion.

Intel was challenging Psion’s trademark registration on the grounds that while Psion may indeed have used the term NETBOOK in connection with small portable computers at one time, it abandoned the name in 2003 (making its 2006 Section 8 Declaration of Use fraudulent). Dell had also filed its own cancellation proceeding with the Trademark Trial and Appeal Board against Psion. That action was stayed pending the outcome of Intel’s declaratory judgment action.

News reports out yesterday (here and here) reported that Psion has agreed to settle the Intel lawsuit.

Psion stated in a press release that as part of its “amicable agreement” with Intel, it would surrender (i.e. voluntarily cancel) its NETBOOK trademark registration and will no longer pursue against trademark enforcement actions against any third parties using the term:

The litigation has been settled through an amicable agreement under which Psion will voluntarily withdraw all of its trademark registrations for ‘Netbook’. Neither party accepted any liability. In light of this amicable agreement, Psion has agreed to waive all its rights against third parties in respect of past, current or future use of the ‘Netbook’ term.

World Market Center Faces Major Setback in Cybersquatting Cases

In December 2008, World Market Center Venture, LLC (“WMC”) filed approx. 11 cybersquatting lawsuits against various defendants. Several of the lawsuits appear to have been directed against registrants of domain names using some variation of the terms “Las Vegas” and “Market.”

Nevada District Court Judge Roger Hunt has denied WMC’s Motion for Preliminary Injunction against one of those defendants (a Motion that was actually unopposed by the defendant, but which the Court opted not to grant anyway given the merits of the case). See World Market Center Venture, LLC v. Michael Ritz, Case No. 2:08-cv-1747-RLH-PAL, 2009 U.S. Dist. LEXIS 30816 (D. Nev. February 4, 2009).

World Market Center

World Market Center Venture, LLC owns and operates the furniture trade show complex located in downtown Las Vegas known as the World Market Center. Among WMC’s portfolio of marks is (believe it or not) the federally registered mark LAS VEGAS MARKET (“Las Vegas” disclaimed). The mark was filed in September 2004, but WMC claimed first use going back to April 2001. Because of the highly descriptive (and with this decision, now decidedly generic) nature of just the word MARKET, WMC was only able to get the mark registered on the Principal Register under section 2(f) acquired distinctiveness.

The allegedly cybersquatting domain name registered by Defendant Michael Ritz on or about May 2, 2002 (long before WMC filed is trademark registration applications), was marketlasvegas.com, which apparently provides links to Las Vegas hotels.

As eloquently described by the Court, WMC, which owns the domain name lasvegasmarket.com on which its promotes its furniture market showcase, “now wants to force Defendant to relinquish the domain name to it by resorting to expensive litigation with the claim that it has the exclusive rights to the phrase, Las Vegas Market. This may be what some characterize as reverse cyberpiracy.”

In denying WMC’s injunctive relief, the Court states succinctly as follows:

The Court concludes that the words or phrase, "Las Vegas Market," are generic and purely descriptive in the most basic sense, and not subject to trademark or service mark protection. Neither party can preclude the other, or anyone else for that matter, from using these words or this phrase. The word "market" is purely generic. "Las Vegas" is descriptive of the location of the market. To permit a single party to claim ownership to such a phrase would be against the public interest and deny others their legitimate right to describe their business or activities.

The remainder of the opinion is the Court going through the proper analysis of WMC’s case on the merits and why WMC cannot show a likelihood of success on the merits or the lack of any showing of irreparable harm if the injunction were not granted.

The Court went on to state:

It is inconceivable that anyone would confuse the domain name , which has links to Las Vegas hotels, with Plaintiff's trademarks, "Las Vegas Market" or "World Market Center Las Vegas," which showcases home and hospitality furnishings to wholesalers.

There is evidence that Defendant's registration of his domain name and his use thereof preceded Plaintiff's efforts to register its name. It is also clear that Plaintiff only has an anticipation of using the name for ventures outside the scope of its present business.

Furthermore, "marketlasvegas" is not confusingly similar to Plaintiff's distinctive WMCLV trademarks. There is no likelihood that its use will cause mark dilution. There is no evidence of bad faith on the part of Defendant. There is no likelihood of confusion. The marks are neither identical nor "extremely similar," although the domain names are merely reversed. No presumption of confusion arises in this instance.

Judge Hunt deserves major kudos for demonstrating that there can still be justice in the world for the little guys who are picked on by the big bullies with the bucks. Not only did he reach the right decision to deny WMC's motion for preliminary injunction, but he also rendered a final decision that “Market, Las Vegas, or any combination of those words, are generic and cannot be exclusively used by anyone” (which pretty much makes WMC's Certificate of Registration for LAS VEGAS MARKET nothing more than a pretty piece of paper). Moreover, he decided against WMC in the face of Local Rule 7-2(d) which provides that the failure to file points and authorities in opposition to a motion constitutes a consent that the motion be granted – the Defendants did not respond to the Motion, and yet the Court, recognizing the absurdity of the case, was “not inclined to invoke the Local Rule in this case where the merits of the Motion fail to justify its intent.”

So for all of those other litigants with “las vegas” and “market” domain names – if you haven’t already given in to WMC’s demands to turn over your domain name (and probably pay some attorneys fees as well), perhaps the Court’s decision in this case will give you some encouragement to continue the fight.

[Update: On March 23, 2009, WMC filed a Motion with the Court to reconsider its Order, which was promptly denied by the Court on March 25, 2009.]

Fourth Circuit Affirms Lower Court Decision That OBX Creator Has No Trademark Rights To The Term

Pamela Chestek over at her blog Property, intangible discusses the Fourth Circuit’s recent decision in OBX-Stock, Inc. v. Bicast, Inc., No. 06-1769 (4th Cir. Feb. 27. 2009). The decision serves as a good reminder about the importance of using a trademark as a trademark.

Too many people not familiar with trademark law fail to appreciate that just because you come up with a unique word or slogan and affix that word or slogan to various goods (most often T-shirts or other souvenir items) does not mean that you are using the word or slogan as a trademark, especially in the case where the term is acknowledged to signify a specific geographic location. Trademarks are supposed to serve as source identifiers for a company’s goods and services – not as an identifier of something else for which you then use on goods and services.

As the court eloquentlystated in this case:

Trademark law, at a general level, protects the goodwill represented by particular marks, enabling consumers readily to recognize products and their source and to prevent consumer confusion between products and between sources of products. The marks enable consumers to make informed, independent decisions about quality and other product characteristics. But the law also protects the "linguistic commons" by denying mark holders an exclusive interest in words that do not identify goodwill attached to products or product sources but rather are used for their common meaning or meanings not indicative of products and product sources. See America Online, Inc. v. AT & T Corp., 243 F.3d 812, 821 (4th Cir. 2001); see generally 1 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 1:27 (4th ed. 2008).

In this case, the plaintiff (“OBX-Stock”) had coined the term “OBX” as a reference to the Outer Banks of North Carolina and made money selling products with OBX affixed thereon. The evidence showed that the public came to embrace OBX as a reference to the Outer Banks (thanks in part to OBX-Stock's sale of merchandise emblazoned with the OBX mark).

A company can obtain trademark rights over geographically descriptive marks with evidence of acquired distinctiveness. Of course, you must first use the mark as a source identifier – and not in its geographically descriptive sense. In this case, the court found that OBX-Stock affixed the letters OBX to stickers, souvenirs, and other sundries not to label an OBX brand product produced by OBX-Stock, but to indicate an association with the Outer Banks (i.e., OBX-Stock’s use of OBX on its souvenirs was always meant to be a reference the Outer Banks, and not to communicate that the souvenirs were produced by OBX-Stock).

In this case, the court found that the evidence indicated overwhelmingly that "OBX" is [ed. - OBX-Stock used OBX as] a geographically descriptive or generic term for the Outer Banks. Moreover, OBX-Stock had failed to show any evidence that any consumer associates OBX with its products or with OBX-Stock itself.

The court found that OBX-Stock had failed to show ownership of a valid trademark and therefore dismissed its trademark infringement lawsuit. [Interestingly, the entire lawsuit was brought because of the Defendant’s use of the mark “OB Xtreme” on some stickers. Given the outcome, one wonders if this particular suit against Bicast was the smartest decision.]

Curiously, even though the Court of Appeals affirmed the district court’s decision that "OBX" was either generic or a descriptive mark without secondary meaning, the court did not overrule the district court’s decision not to order cancellation of OBX-Stock’s trademark registrations. For OBX-Stock’s trademark registrations on the Principal Register based on Section 2(f), the court’s decision would appear to nullify the 2(f) basis for maintaining the registration.

The court noted that the district court had concluded that Bicast’s evidence did not conclusively establish that every one of OBX-Stock’s trademark registrations should be cancelled. The court also seems to fault Bicast for not having filed counterclaims seeking cancellation (and only arguing the point on summary judgment). The court justifies its decision by stating that “Bicast has received an adequate remedy through the district court’s summary judgment in its favor, and the court’s final adverse decision on trademark validity will preclude OBX-Stock’s marks from becoming incontestable.”

Of course, while this is good for Bicast, what about future parties who may be afraid of using the OBX mark (even in a geographically descriptive fashion) for fear of being sued by OBX-Stock.

Last year, the Third Circuit reversed a district court’s decision not to order the USPTO to enter a disclaimer of the term “Cocoa Butter Formula” (which was found to be generic) on the principal registration of the mark “Palmer's Cocoa Butter Formula.” See E.T. Browne Drug Co. v. Cococare Prods., Inc., Nos. 06-4543 & 06-4658, 2008 U.S. App. LEXIS 16585 (3rd Cir. August 5, 2008). While the lower court had declined to order relief under 35 U.S.C. § 1119 believing that it would not benefit the party requesting such relief, the Court of Appeals reversed stating “even if Cococare will not benefit from that disclaimer, we should not allow the absence of a disclaimer on the principal register to confuse a future business into believing that it may not use the term ‘Cocoa Butter Formula.’”

Similarly, in this case, future businesses should not be confused by OBX-Stock’s trademark registrations for the OBX mark into believing that they may not use the term OBX (particularly as a reference to the Outer Banks). In my opinion, the Third Circuit should have remanded the case back to the district court to order OBX-Stock’s trademark registrations (at least those on the Principal Register based on Section 2(f)) to be cancelled.

Mélange of Trademark Stories

Gummy Bears Battle
The owner of the registered mark GUMMY BEARS (for Bracelets, Charm Danglers, General Jewelry as well as Toys and playthings, namely, board games, stuffed animals, infant toys, and musical toys) which also has a variety of other pending trademark applications filed a lawsuit against New Jersey-based Gummy Bear International (“GBI”) for using the mark in connection with the sale of music videos, animation, ringtones, mp3s, posters, stickers, and other goods (and which has its own pending applications for GUMMIBÄR and GUMMY BEAR). Of course, don’t be confused – this has nothing to do with the GUMMI BEARS candy made by Haribo of America, Inc., which owns the registered mark THE ORIGINAL GUMMI-BEARS).


Intel Attacks NETBOOK
Intel is seeking a declaratory judgment (complaint here) that the registered mark NETBOOK (registered by a Canadian company) is generic for laptop computers. Intel received a cease and desist letter from the registrant (Psion Teklogix, Inc.) on December 22, 2008 (a letter which allegedly was sent out to numerous other well-known names like Dell, HP, and Best Buy).

Intel currently owns the domain name http://www.netbook.com/, which is directed to a page for Intel’s ATOM processor for notebook computers. Intel alleges that the Section 8 Declaration filed in 2006 by Psion was fraudulent because it claimed continued use of the mark in commerce by submitting a specimen of a notebook computer that had been discontinued in 2003. Intel also cites numerous other third party uses of the term “netbook” in connection with laptop computers. Psion also apparently filed Google Adword complaints with Google regarding any purchase of the adword “network” including ads purchased by Google using the term.

Nordstrom Seeks to Resolve BECKONS dispute
The press surrounding the efforts by Nordstrom to seek cancellation of the mark BECKONS and the subsequent roar of outrage from the legal blogosphere could have sparked an actual resolution. Nordstrom VP of corporate communications Brooke White, in an e-mail to Information Week’s Global CIO Weblog, stated

Our intention from the beginning was to co-exist with Beckons in a manner that would enable Beckons to use their trademark on yoga merchandise, while we used the Beckon name for fashion apparel and accessories. We never intended to adversely affect Ms. Prater's business and we are sorry if this has happened. We are reaching out again to Ms. Prater's attorneys to reach a settlement that we are hoping she will find acceptable.

The Global CIO Weblog postings can be read here. (HT: Michael Atkins for his coverage).

Of course, unlike what happened in the case of MONSTER GOLF (blogged here), there does not seem to be any kind of outreach (yet) to help pay for Ms. Prater’s legal fees arising from this mess. However, given Nordstrom’s willingness to work out a coexistence agreement, if Ms Prater is unwilling to coexist in the way described by Nordsrom, is Nordstrom still the bad guy should it decide to proceed with its cancellation proceeding?

Blockshopper and Jones Day Settle

Several media stories and bloggers (here, here, here and here) reported on the unfortunate settlement by Blockshopper of the frivolous Jones Day trademark infringement lawsuit (previously blogged here, here, and here) – after accumulating over $100,000 in legal fees fighting the lawsuit.

Jones Day is apparently ok with BlockShopper publishing links to Jones Day as long as they are not “embedded links” and instead place the full web address next to references to the firm. For example, instead of writing something like “Jones Day’s frivolous and abusive lawsuit was brought by Paul W. Schroeder, Irene S. Fiorentinos, Meredith M. Wilkes, Robert P. Ducatman, and James W. Walworth Jr”, Blockshopper would instead have to write it as “Jones Day’s (http://www.jonesday.com/) frivolous and abusive lawsuit was brought by Paul W. Schroeder (http://jonesday.com/pwschroeder/), Irene S. Fiorentinos (http://jonesday.com/ifiorentinos/), Meredith M. Wilkes (http://jonesday.com/mwilkes/), Robert P. Ducatman (http://jonesday.com/rducatman/), and James W. Walworth Jr (http://jonesday.com/jwwalworthjr/).” Blockshopper has restored the links to the condos purchased by the Jones Day associates at issue. Blockshopper will now also have a page which explains why Jones Day gets treated so special and which describes the lawsuit.

So given the end result and the negative publicity that has been brought to the precious “Jones Day” name, one must really ask -- was it really worth bringing in the first place?

A Test of Your Generic (Trademark) Sensibility

The TTABlog® today offers up a list of Trademark Trial and Appeal Board ("TTAB") decisions addressing genericness as a test to trademark practitioners and the public on the TTAB’s seemingly schizophrenic approach to addressing genericness refusals. You may be surprised what the TTAB has found to be generic and what it has found to be merely descriptive (in which case such mark could be registered on the Principal Register upon a showing of acquired distinctiveness).

Fifth Circuit finds Urgent Care to be generic for providers of urgent care medical services

The Fifth Circuit Court of Appeals reversed a lower court’s decision granting a preliminary injunction enjoining an urgent care medical provider from using the term “Urgent Care.” See Urgent Care, Inc. et al v. South Mississippi Urgent Care, Inc. et al, 2008 U.S. App. LEXIS 17411, Case No. 08-60155 (5th Cir. Aug. 13, 2008) (unpublished)

Lydia King Rayner began operating Urgent Care, Inc. in Mississippi in 1985 and registered the name “Urgent Care, Inc” as a servicemark with the Mississippi Secretary of State in 2001, but not with the United States Patent and Trademark Office (“USPTO”). Rayner later formed “Urgicare, Inc” and registered the mark mark “UrgiCare” with both the Mississippi Secretary of State and the USPTO.

Rayner filed suit against two companies that started up medical clinics using the name Urgent Care (Apple Urgent Care Occupational Clinic and South Mississippi Urgent Care, Inc.) claiming infringement of the above state and federal registrations. The district court granted Rayner’s Motion for Preliminary Injunction against South Mississippi Urgent Care after determining that Rayner had established the required elements for preliminary injunctive relief, including substantial likelihood of success on the merits due to a likelihood of confusion between each of the parties’ marks and implicitly finding that the marks were protectable in the first place (i.e., not generic and that they had acquired a secondary meaning if descriptive).

In finding that the the district court had erred in its determination, the Court analyzed each of the marks at issue. With respect to the mark “Urgent Care,” the Court of Appeals concluded that the term had not become distinctive of Rayner’s goods and indeed was generic and therefore not entitled to any trademark protection. The court focused on the number of other medical providers that have adopted the word “Urgent Care” in their name as well as a definition of “Urgent Care Medicine” by the American Academy of Urgent Care Medicine. Such extensive use by others shows that others are equally entitled to use such nondistintive words to identify their own services. Finding the “Urgent Care” mark to be generic, the Court of Appeals found the district court’s injunction to be in error and an abuse of discretion.

As for Rayner’s other claimed mark for “UrgiCare,” Rayner’s argument for likelihood of confusion was that because “UrgiCare” sounds like the phrase “urgent care,” the use of the phrase “urgent care” infringed the “UrgiCare” mark. Having found the term “Urgent Care” to be generic, the Court rejected this argument stating that Raynor cannot prevent companies from using a generic term by obtaining a registration on a similar-sounding, but differently spelled mark. The Court further found that “South Mississippi Urgent Care” is sufficiently distinct from UrgiCare that Rayner’s trademark rights were not infringed. As such, the Court reversed the district court’s preliminary injunction with respect to the “UrgiCare” mark as well.

First Circuit Reverses Lower Court Injunction in the Boston “Duck Tours” Battle

In a lengthy opinion by the First Circuit Court of Appeals, the court of appeals reversed a district court’s decision granting a preliminary injunction in favor of Boston Duck Tours LP (“Boston Duck”) enjoining Super Duck Tours, LLC (“Super Duck”) from using the term “duck tour” in its name and using a logo of a duck after finding that the district court committed clear error in finding the phrase “duck tour” to be non-generic for such sightseeing tours, and thereby according it too much weight in its likelihood of confusion analysis. See Boston Duck Tours, LP v. Super Duck Tours, LLC, Case Nos. 07-2078, 07-2246 (1st Cir. June 18, 2008). For a copy of the lower court decision, see Boston Duck Tours, LP v. Super Duck Tours, LLC, Civil Action No. 07-11222-NMG (D. Mass. July 13, 2007) (courtesy of The TTABlog®, which has a write-up on the district court decision here).
Boston Duck and Super Duck both offer sightseeing tours via land and water in the Boston area, using amphibious vehicles commonly referred to as “ducks” (DUKWs are amphibious army vehicles which function as both trucks and boats). Similar amphibious vehicle land/water tours are found in many other cities throughout the U.S. and many use the phrase “duck tour” and have various logos featuring a cartoon duck.

Boston Duck has been offering its sightseeing tour since 1994 using old World War II DUKWs painted with a rainbow of colors and marked with the Boston Duck logo.

Boston Duck's "Duck Tour" Vehicle

Super Duck began offering similar services in 2001 in the Portland, Maine area using custom-made, modern amphibious vehicles called Hydra-Terras. The company adopted the name Super Duck Tours to play on the fact that its vehicles were bigger, stronger and newer than old DUKWs and adopted a logo of a white cartoon duck with an orange bill, muscular arms, and a cape parodying Superman and the slogan “It's a bus. It's a boat. It's a Super Duck!” Super Duck entered the Boston market after purchasing an existing tour company. The company began offering its tours in May 2007 – concentrating on the Boston waterfront area and avoiding the Back Bay area which is the focuse of Boston Duck’s tours.

Super Duck's "Duck Tour" Vehicle

On July 2, 2007, Boston Duck filed a complaint against Super Duck, alleging federal trademark infringement in violation of Section 32 of the Lanham Act, 15 U.S.C. § 1114, federal and state unfair competition, tortious interference with prospective business relationships, and a other state and federal claims. Boston Duck also sought to enjoin Super Duck from using its name and logo, or any similar mark confusingly similar to Boston Duck’s marks.

Boston Duck owns several federal trademark registrations for the word mark BOSTON DUCK TOURS as well as the design mark pictured above (duck and tour disclaimed) for “conducting sightseeing tours.” Super Duck has one federal registration for the word mark SUPER DUCK TOURS on the Supplemental Register in connection with its tour services.

In granting Boston Duck’s motion for a preliminary injunction, the district court found the term “duck tours” to be non-generic for amphibious sightseeing tours in the Boston area, and therefore capable of trademark protection. The district court further determined that Boston Duck had established a likelihood of success on the merits of its trademark infringement claim and enjoined Super Duck from using the term “Duck Tours” or a “cartoon duck” in association with sightseeing tour services in the greater Boston area.

Interestingly, on appeal, Super Duck conceded that that the BOSTON DUCK TOURS mark was entitled to trademark protection. Instead, Super Duck challenged the district court's conclusion that Super Duck's use of its mark SUPER DUCK TOURS is likely to cause confusion among the relevant consumer public with Boston Duck's use of its mark BOSTON DUCK TOURS. As such, the court, in addressing the generic arguments, focused on the likelihood of confusion analysis instead of whether the was entitled to trademark protection in the first place.

In coming to a contrary conclusion, the court, citing the eight factor test used by the First Circuit for determining likelihood of confusion set forth in Pignons S.A. de Mecanique de Precision v. Polaroid Corp., 657 F.2d 482, 487 (1st Cir. 1981), focused primarily on the first factor, the strength of the mark, because the claims of genericism directly implicate the strength of Boston Duck's mark and the ultimate scope of protection afforded the mark.

The court concluded that the district court committed clear error in finding that the phrase “duck tours” was non-generic by relying solely on one dictionary definition of the word “duck” without considering any other evidence for how the public perceives the term and for focusing on the separate terms “duck” and “tours,” and not the unified phrase.

The court stated that the district court failed to consider certain evidence showing that the phrase “duck tours” had become generic (i.e. commonly used with no effective alternative), including media and third party use, use by other companies within the sightseeing industry, and use by Boston Duck itself which provided strong evidence against its claim that the term was primarily associated with its company rather than the services it provides.

The court, noting that trademark law is designed to prevent consumer confusion between inherently distinctive marks or descriptive marks that have acquired secondary meaning and not between two similar, but generic marks, dismissed Boston Duck’s evidence of actual consumer confusion as suggesting little about whether the term is generic.

In light of the fact that the phrase “duck tours” is generic for the parties' services, the court concluded that BOSTON DUCK TOURS is highly descriptive of the services Boston Duck offers. Nonetheless, the court noted that Boston Duck’s use of the mark had made it a strong identifier of Boston Duck's tour services in the Boston area, even though part of the mark (“duck tours”) was not entitled to trademark protection at all.

As for similarity of the marks, with the “duck tours” part of the marks no longer a factor, the similarity came down to BOSTON vs. SUPER, which the court found reasonably dissimilar. There was no challenge by Super Duck regarding similarity of the goods and similar channels of trade. For the reasons stated above, the evidence of actual confusion was not weighted as heavily. As for Super Duck’s intent in adopting the mark, Super Duck’s use of a generic phrase “duck tours” for its sightseeing tours cannot be faulted.

In the end, the court, finding no likelihood of confusion, concluded that the district court was clearly erroneous in finding that Boston Duck was likely to succeed on the merits of its trademark infringement claim.

Regarding the likelihood of confusion between Boston Duck’s composite design mark and Super Duck’s logo, the court again applied the Pignons factors. In analyzing strength of the Boston Duck’s mark, while the court did not go so far as to accept Super Duck’s argument that the image of a duck splashing in water was generic for duck tour services, the court did conclude that such an image was highly descriptive of such services, and thus would be a weak source identifier, even though Boston Duck’s overall design mark was reasonably strong. As for similarity of the marks, the court found the designs as a whole -- while both contained a cartoon duck in water -- to be significantly different in overall appearance, especially when the marks other elements used in conjunction with the duck are substantially dissimilar. The court dismissed any evidence of actual confusion, finding that it could not be traceable specifically to the parties' logos. In the end, the court, finding no likelihood of confusion with respect to the parties’ logos, concluded that the district court was clearly erroneous in finding that Boston Duck was likely to succeed on the merits of its trademark infringement claim.

The court reversed the district court’s injunction and remanded the case for further proceedings.

A concurring opinion was filed by Judge Diclerico, who felt that the majority’s use of a genericism analysis in ascertaining the strength of Boston Duck’s mark “conflated the first and second elements of the trademark infringement standard, which in my opinion should be treated separately.”

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?