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.

NFL remains aggressive over SUPER BOWL while Patriots go for 19-0 THE PERFECT SEASON

Every year as the date of the Super Bowl draws near, it has become a perennial favorite topic in the trademark law arena to discuss the National Football League’s (“NFL’s”) notoriously aggressively enforcement of its SUPER BOWL trademark.

Numerous stories in the past (see, e.g., USA Today story from 2004) have reported on the Las Vegas hotels cancelling their Super Bowl parties after receiving cease-and desist letters from the NFL. Then there are the stories about the Super Bowl parties organized by churches (see yesterday’s Washington Post article) that are facing the same cease and desist threats by the NFL

The NFL’s policy is to ban any public exhibitions of its football games on large movie screens or TVs with a screen size larger than 55 inches (although sports bars are apparently exempt from the prohibition). The NFL’s rationale is understandable given that a large group of viewers watching the game outside of their home affects TV ratings, which in turns affects advertising revenue (although no one apparently has told that to the many advertisers who are still lining up to pay a record $2.7 million for a 30 second spot this year – see story here).

And then there is the use of the SUPER BOWL mark itself. Most businesses, after either receiving notice directly from the NFL or otherwise hearing stories of other businesses receiving such notices from the NFL, began referring to the Super Bowl football game event as “The Big Game.” This allowed businesses to capitalize on the event that has become a holiday of its own without coming under the wrath of the NFL for trademark infringement. In addition, use of “The Big Game” served to reinforce the NFL’s exclusive ownership of the Super Bowl name and worked to prevent false association and “genericide.” As more businesses became more aware of the NFL’s trademark rights (and its aggressiveness in enforcing such rights), more and more adopted the substitute phrase.

And that’s why the NFL looked really bad when it applied to register THE BIG GAME mark as its own trademark. It looked pretty unfair for the NFL, after aggressively forcing merchants to adopt another phrase that would not infringe its SUPER BOWL mark, to then seek to claim proprietary rights to such mark after such wide-scale adoption. The NFL ultimately (and wisely so) abandoned the application. An article today in Forbes magazine (link here) recounts the effort by one law firm to oppose the NFL’s application. And there is fellow blogger Ron Coleman who (rightly so) gives himself a pat on the back for saying the same thing (link here) months earlier – and who also deserve credit as the originator of the Super Bowl® Watch and Contest I.

But the same old Super Bowl trademark enforcement story was not the only trademark news today. There was another Super Bowl-themed trademark story this year to go along with the usual fun.

Photo by Patrick Whittemore (Boston Herald)

Now comes news (courtesy of the Boston Herald) that the Patriots are so confident in their victory on Sunday that they have already filed trademark applications to register the marks 19-0 and 19-0 THE PERFECT SEASON. Kraft Group, LLC (“Kraft”), the owner of the New England Patriots NFL franchise, filed the Section 1(b) intent-to-use applications on January 17, 2008, listing the same five classes of goods in each application, including DVDs and video games; calendars, posters, and bumper stickers; clothing; toys; and providing sports and entertainment information and online computer games.

For those who think that the Patriots don’t have a chance in getting either mark registered, there was a Section 1(b) intent-to-use application filed back in 1998 by Bill and John Harpole for THE PERFECT SEASON 19-0, which received a notice of allowance, although a statement of use was never filed and the application went abandoned. There was another Seciton 1(b) intent-to-use application for the mark 19-0 filed in 1998 (for two classes of goods), but it was abandoned for failure to respond to the USPTO's non-final action.

Much depends on how the Patriots will actually use the mark on the aforementioned goods and services. As so often happens with trademark applications seeking to register a slogan or phrase to put on various items such as clothes and video games, the USPTO may refuse registration on the grounds that the mark is merely ornamentation that consumers are likely to perceive as conveying a message rather than indicating the source of the goods or to distinguish the goods from those of others. See In re Owens-Corning Fiberglass Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985); Damn I’m Good Inc. v. Sakowitz, Inc., 514 F. Supp. 1357, 212 USPQ 684 (S.D.N.Y. 1981). In order to overcome such an ornamental rejection, an applicant typically must -- a) argue and submit evidence showing that the mark has become distinctive of applicant’s goods (Section 2(f) acquired distinctiveness argument); b) submit evidence that the mark would be recognized by the public as a trademark through applicant’s use of the mark with goods or services other than those identified in the application (the mark is an indicator of secondary source or sponsorship); c) amend the application to seek registration on the Supplemental Register; or d) submit a new specimen showing non-ornamental use. In this case, Kraft may be able to argue effectively either indicator of secondary source or sponsorship (namely, the New England Patriots) or acquired distinctiveness. Otherwise, it may be left with registration on the Supplemental Register.

While some have decried Kraft’s applications as smug and snooty, Kraft representatives assert that the filing is merely defensive mechanism to prevent people from profiting from the Patriot’s historic season. And based on another application that was pending at the time of Kraft’s filing, they may have a point.

On November 8, 2007, William Harpole again filed an application to register the mark THE PERFECT SEASON 19-0 (for hats, jackets, sport shirts, sports jackets, sports shirts [sic], t-shirts in Class 25) on the Supplemental Register. Because Harpole is seeking registration on the Supplemental Register, the aforementioned ornamental rejection will not be an issue. However, Harpole has a different issue he must face – namely, registration on the Supplemental Register can only be sought when the mark is being used in commerce. If Harpole’s application was supposed to be a §1(b) application requesting registration on the Supplemental Register, the application will be rejected under §23 of the Lanham Act – a refusal that can only be satisfied by filing an acceptable allegation of use. See TMEP 815.02. However, the effective filing date of Harpole’s application will be the date on which Harpole files his allegation of use – not the filing date. Kraft’s applications, on the other hand, will have a constructive date as of the filing date of the applications. Depending on if and when Harpole was actually using the mark in commerce, this could set up an interesting priority contest between the two parties.

Assuming the Patriots win (I can’t imagine they would want to use the marks if they lose) and desire to follow through with using the mark in commerce, Kraft’s trademark applications are likely to be suspended pending the outcome of the prosecution of Harpole’s applications – at least with respect to the Class 25 goods (which Kraft could divide out should it so desire). Nonetheless, if Harpole is somehow able to get his mark registered on the Supplemental Register, it could still prevent the registration of any confusingly similar mark by Kraft (I suspect that Kraft’s 19-0 mark would be confusingly similar to Harpole’s THE PERFECT SEASON 19-0).

Of course, the New York Post (ever defensive of its hometown team, the New York Giants) responded to the news of Kraft’s trademark applications (see article here) with what has to be one of the best arch-rival responses ever – in the form of a trademark application to register the mark 18-1 (Serial No. 77385477 – not yet available on TARR). While I doubt the New York Post has any honest “intent-to-use,” it sure does make for a good laugh – and it only cost $325 ($275 if they were smart enough to use TEAS Plus).

Vegas™Esq Prediction:
Being in Vegas, it’s not about who wins or loses – it’s about who covers the spread. With the Giants getting 12 points, I think Patriots will win, but they won’t cover (although I am tempted to put a small Moneyline bet on the Giants – Super Bowl’s tend to be wacky games and you never know – the Giants may just pull it off).

A Registered Trademark on CYBERLAW?

Eric Goldman’s Technology & Marketing Law Blog had a good post last Friday (link here) on the recent trademark application filed by a District of Columbia intellectual property attorney named Eric Menhart to register the mark CYBERLAW for legal services. The application was filed on December 1, 2007, but first use in commerce is claimed as February 22, 2007.

Prof. Goldman’s research uncovered compelling evidence for why Mr. Menhart’s application is very likely to be rejected under §2(e)(1) as merely descriptive. Indeed, Prof. Goldman may have done a great service to Mr. Menhart’s future assigned examining attorney by providing all the evidence he or she will need to support a descriptiveness rejection.

In addition to the plethora of convincing reasons provided by Prof. Goldman (not to mention some of his fun facts about Mr. Menhart), I would add the fact that several other trademark applicants have sought registration of a similar mark in the past – none with any success:

• CYBERLAW (for development and dissemination of legal educational materials) – §1(a) application filed April 2, 1996, abandoned December 26, 2000.
• A CYBER LAW OFFICE (for legal services provided licensed attorneys by global computer network) – §1(b) application filed June 9, 1999, abandoned March 16, 2000.
• CYBERLAWZ (for legal services) -- §1(b) application filed October 13, 1999, abandoned August 29, 2000.
• CYBERLAW ADVISOR (for legal advice and services related to the law of computers, the Internet and electronic commerce) – 1(b) filed February 7, 2000, abandoned February 15, 2001.

Granted, we don’t know the exact grounds of rejection in each application because the PTO’s TDR system does not have the complete file available online for these older applications. Nonetheless, the single §1(a) application went abandoned after a final refusal and the other three §1(b) applications went abandoned after the initial non-final action.

However, there may be another explanation for the above applications being rejected, and the explanation may actually may bode well for Mr. Menhart. The above applications may not have been rejected for descriptiveness, but instead rejected based on §2(d) as likely to be confused with the registered mark CYBERLAWYER (for attorney referrals and providing legal information), which was registered October 15, 1996, but subsequently cancelled July 19, 2003, for failure to file a Section 8 declaration of continued use. Perhaps, there is now an opening for Mr. Menhart to receive a registration for his mark.

Mr. Menhart attempts to defend his application in his own blog post (link here) responding to a blog post by Corynne McSherry of the Electronic Frontier Foundation (link here) in which she was critical of Mr. Menhart’s attempt to claim trademark rights to the term.

Notably, in defense of his application, Mr. Menhart states: “The mark [CyberLaw] was granted to Attorney Jonathan Rosenoer of Greenbrae, California in 1996. Mr. Rosenoer let his protection expire in 2000. All such information is publicly available to Ms. McSherry or anyone else at the USPTO web site.” However, this particular application cited by Menhart is among the list of application cited above that were not registered. If you click on the link for CYBERLAW, one can see that Mr. Rosenoer was never granted a registration for this mark. The application was suspended for sometime and then a final refusal was issued (with no appeal filed).

So Mr. Menhart is incorrect in his assertion regarding any prior grant of a registration on the mark “CyberLaw.” If anything, Mr. Menhart should have cited to the CYBERLAWYER mark, which seems more supportive of his position that the PTO has shown willingness in the past to allow such a mark to be registered. Of course, one big difference is that CYBERLAWYER was registered in 1996 – when the Internet was still in its infancy and the use of the prefix “Cyber-” was not as much a part of the mainstream lexicon as it is today. Twelve years have passed, and the term has become much more prevalent since that time.

As most trademark practitioners will tell you, you never know how the PTO is going to respond to an application. Perhaps the past registration of CYBERLAWYER may provide Mr. Menhart with enough of an opening to argue that his mark is at least suggestive.

Most likely, however, Mr. Menhart’s only chance at obtaining a registration on the Principal Register is to argue acquired distinctiveness under §2(f). But given the ubiquitous use of the term CyberLaw, it would seem nearly impossible to argue convincingly that the consuming public has come to associate the mark CYBERLAW with Menhart’s services – especially after less than one year in use.

Perhaps Mr. Menhart will settle for a registration on the Supplemental Register. If the mark is refused registration based on descriptiveness, Mr. Menhart can try to argue that the mark is still capable of distinguishing his services. It’s still an uphill battle given the widespread use of the term (i.e., if its used by so many others to describe an area of the law, how can is possibly distinguish Mr. Menhart’s services). But if the PTO is willing to allow supplemental registration, it may be better than nothing – at least if he can’t have a registration on the Principal Register, he can be assured no one else can (at least not for related goods and services).

Is Pussycat Dolls Founder in for a catfight over GIRLICIOUS?

In browsing through some recent trademark filings, I noticed an application for the mark GIRLICIOUS. What I found interesting about this mark is that a quick search revealed the same mark for the same type of goods from three different applicants – all filed within 3 months of each other. What’s even more interesting, however, is the story that is unveiled when you start to look more closely at the applications themselves as well as the registrants filing them.

On June 28, 2007, Robin Lee Antin filed a Section 1(b) intent-to-use application for the mark GIRLICIOUS (for 13 different classes of goods, including clothing under Class 25). On September 20, 2007, Pussycat Dolls, LLC (the company apparently established to own and manage the intellectual property of the famed Pussycat Dolls music group) filed twelve separate Section 1(b) intent-to-use applications for the mark GIRLICIOUS, one of which was for various articles of clothing under Class 25. One thing to note – Robin Antin is the founder of the Pussycat Dolls group and is the co-producer/creator of the reality TV show Pussycat Dolls Present: The Search For The Next Doll. According to Wikipedia, there is going to be a season 2 of the show which will search for three women to make up a new all-female group named . . .surprise surprise . . . Girlicious. Click here to see Ms. Antin herself talk about the new season.

Finally, on September 24, 2007, a company named Girlicious, Inc. submitted a Section 1(a) use-in-commerce application for the mark GIRLICIOUS (for clothing) claiming a first use in commerce of July 16, 2005.

Ms. Antin’s application already received a non-final office action on September 21, 2007 (coincidentally, one day after the Pussycat Dolls’ filings). The examining attorney cited two pending applications with earlier filing dates that if registered may create a likelihood of confusion – the first is for the mark COWGIRLICIOUS and the second is for the mark LADYLICIOUS.

With respect to the LADYLICIOUS mark, this is an §66A (Madrid Protocol) application filed by a Swiss limited liability company named kreis3production on October 31, 2006 (the application’s international registration date) for three classes of goods, one of which is clothing under Class 25. The application’s base registration date in Switzerland is May 18, 2005.

However, on March 16, 2007, the PTO issued a non-final action refusing to register the LADYLICIOUS specifically for the Class 25 goods. The examining attorney found a likelihood of confusion with the registered mark LADY LUSCIOUS for women’s clothing – the marks are similar in appearance and in sound, the goods are similar (clothing), the goods will go through the same trade channels (department stores, boutiques, etc.) and are likely to be encountered by the same consumers who are likely to believe the goods derive from one common source. The fact that no response to the office action was filed by the September 16, 2007 deadline seems to indicate that the company is not interesting in pursuing the application further (although they could come back later within two months of abandonment to revive the application).

Regarding the COWGIRLICIOUS mark, the application was originally filed under Section 1(b) on June 14, 2006. The mark was published and received a notice of allowance. The applicant submitted her statement of use on May 31, 2007 – claiming first use in commerce on July 11, 2006. However, the examining attorney notified the applicant on August 21, 2007, that it was refusing to register the mark because the mark, as used on her submitted specimens, was merely a decorative or ornamental feature of the goods and did not serve as a indication of the source of the goods or to distinguish the goods from those of others. See In re Owens-Corning Fiberglass Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985).

The applicant submitted a picture of T-shirt with the word “COWGIRLICIOUS” in the middle of the shirt. The examining attorney found such use to be more of a slogan and by its size and location in the middle of the shirt would not be perceived as a source identifier or as a trademark which identifies applicant’s goods and distinguishes such goods from those of others. The larger the display of the mark relative to the size of the goods, the more likely that consumers will not view it as a mark. In addition, the location of where the mark is fixed on the goods is a consideration of how it will be viewed by the public. Where consumers are used to seeing a trademark in certain locations on clothing (i.e. collar label for shirts, above or on the rear pocket for jeans), consumers are less likely to perceive the mark as a source indicator when such mark is placed in a location that is less often associated with a brand name (i.e. the breast area of a shirt).

In order to overcome the ornamental rejection, the applicant must --
a) argue and submit evidence showing that the marks has become distinctive of applicant’s goods (Section 2(f) acquired distinctiveness argument);
b) submit evidence that the mark would be recognized by the public as a trademark through applicant’s use of the mark with goods or services other than those identified in the application (the mark is an indicator of secondary source or sponsorship);
c) amend the application to seek registration on the Supplemental Register; or
d) submit a new specimen showing non-ornamental use.

I doubt that the COWGIRLICIOUS applicant can provide evidence to obtain the mark under 2(f), show that the public identifies the mark with applicant’s other services, or has any other specimens showing non-ornamental use of the mark COWGIRLICIOUS. Her only option is likely to be registration on the Supplemental Register (see previous blog entry here regarding the benefits of registration on the Supplemental Register). The only question is – will she recognize the benefit of having this registration as opposed to no registration at all? She does not have an attorney representing her in the case, and is likely to just forgo registration altogether. Which, as discussed below, is what Ms. Antin needs to hope for to the extent she wants to get a registration for GIRLICIOUS for clothing.

The final hurdle for Ms. Antin would appear to be the application submitted by Girlicious, Inc. While the filing date is after her application (and even after those by Pussycat Dolls, LLC), the application is a Section 1(a) use-in-commerce application claiming use in commerce beginning July 16, 2005, which certainly predates that of Ms. Antin.

But this Pussycat Doll need not roll over and play dead just yet. A review of the specimen submitted by Girlicious, Inc. shows a T-shirt with the word “Girlicious” on the chest. Sound familiar? This application will likely end up suffering the same ornamental rejection as COWGIRLICIOUS. In this case, however, Girlicious, Inc. may have a stronger argument that the mark is an indicator of secondary source (see the company’s official website here).

Should COWGIRLICIOUS be registered (even if on the Supplemental Register), the examining attorney will likely cite the registration against Girlicious, Inc.’s GIRLICIOUS application as grounds for a likelihood of confusion refusal. In such case, Girlicious, Inc. may have to pursue a petition to cancel the COWGIRLICIOUS registration given Girlicious, Inc.’s earlier use in commerce.

But Girlicious, Inc. has other issues to deal with -- a review of its website shows that the company is using the ® symbol next to the mark GIRLICIOUS. However, I was unable to find a federal registration for this mark (either word or design). Misuse of the ® symbol can be grounds for claims of false advertising and can be used as a grounds for the PTO to refuse registration of the mark. See my previous blog entry here regarding misuse of the ® symbol. It could also impact Girlicious, Inc.’s ability to cancel the COWGIRLICIOUS mark should it desire to do so. In addition, according to the Illinois Secretary of State, Girlicious, Inc. was dissolved on November 1, 2005, which not only raises the issue of a dissolved corporation filing a trademark application, but also raises the issue of whether the corporation is capable of suing and being sued in a court of law (which it must be in order to be a “juristic person” that can file a petition for cancellation).

So what’s the bottom line with all of this? While she still has some hurdles to overcome, I suspect that Ms. Antin will ultimately come out the winner in this catfight.

Unless the COWGIRLICIOUS applicant opts for Supplemental Registration, that application will go abandoned and will not be a problem. The LADYLICIOUS mark will not likely be registered (at least not for clothing goods). Finally, Girlicious, Inc., which was probably in the best position to argue that it was the first to use such mark on clothing, may have harmed its case by misusing the ® symbol and not keeping up its annual corporate filings.

Furthermore, given Ms. Antin’s efforts to make the public associate the mark GIRLICIOUS with her and the Pussycat Dolls, she will have some good evidence for a 2(f) acquired distinctiveness argument or that the mark is recognized by the public as a trademark through use of the mark in connection with this new girl group that will undoubtedly be highly publicized.

The GIRLICIOUS applications filed by Pussycat Dolls, LLC likely will be suspended pending resolution of Ms. Antin’s GIRLICIOUS application (where there are conflicting goods and services). But given her intimate involvement with the Pussycat Dolls, I would presume that the two parties will work it out any claims of priority amongst themselves (she may even be the sole member of Pussycat Dolls, LLC, but this I could not confirm).

All this fuss over a mark ending in “licious” would not be complete without some mention of three pending Section 1(b) applications for FEGALICIOUS filed September 25, 2006 for musical programs, clothing, and, surprisingly, ice cream and candies. Just imagine Fergie dancing around in a commercial for FERGALICIOUS ice cream.

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Trademarked Colors – The tale of two trademark registrations for colors

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

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

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

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

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

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

• The registered trademark owner may use the registration symbol ®;
• The registered mark is protected against registration of a confusingly similar mark under §2(d) of the Trademark Act;
• The registered trademark owner may sue for trademark infringement in federal court; and
• Registration may serve as the basis for a filing in a foreign country under the Paris Convention and other international agreements.
  

Acme decided to go the §2(f) route by arguing acquired distinctiveness in order to get its mark registered on the Principal Register. Acme argued that the mark had been continuously used in commerce for over five years. Acme also submitted eight sworn statements from sales executives from Applicant’s industry as further evidence that the mark had acquired distinctiveness. Finally, Acme cited to the myriad of knock-off scissors trying to copy the look of Acme’s scissors, which federal courts have held to be evidence of a mark’s acquired distinctiveness. Acme’s arguments must have been convincing because the mark was published for opposition on June 26, 2006, and registered on September 11, 2007.

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