The Red Hot Chili Peppers Sue Showtime over “Californication”

I had a feeling that this one was coming. I have been an avid watcher of Showtime’s new series “Californication” since it first aired back in August. For those not familiar with the show, it stars David Duchovny as a middle-aged writer living in Los Angeles and coping with a mid-life crisis in his own mature-audiences-only way. The title “Californication” is most apropos -- combining fornication, which Duchovny’s character does a lot of in the series, with California, the geographical backdrop of the show. Of course, for anyone between the ages of 20 to 45, the show’s title also brings to mind the famous Red Hot Chili Peppers’ (“RHCP”) song “Californication” from their 1999 multi-platinum album of the same title.

New stories were abound today (e.g., here and here) reporting that on Monday, November 19, 2007, the four members of the RHCP filed a lawsuit in Los Angeles Superior Court against Showtime Networks, Inc., Twilight Time Films, Inc.; Aggressive Mediocrity, Inc., and Tom Kapinos (collectively “Showtime”) alleging false designation or orgin under Section 43(a) of the Lanham Act (15 USC §1125(a), unfair competition under California law, trademark dilution under federal and California law, and unjust enrichment arising from Showtime’s use of the name “Californication.” See Anthony Kiedis et al v. Showtime Networks, Inc. et al, Case No. BC 380894 (L.A. Super. Ct.). A copy of the complaint can be downloaded here (courtesy of Past Deadline Blog).

RHCP wants Showtime to stop using the name and is seeking treble damages and an accounting and disgorgement of profits made by Showtime while using the name. In a press statement (link here), the band’s lead singer, Anthony Kiedis, was quoted as saying “'Californication' is the signature CD, video and song of the band's career. For some TV show to come along and steal our identity is not right.”

Much of the complaint details the “extraordinary critical and commercial recognition” of both the “Californication” album and song. The album has sold over 14 million copies, received two Grammy nominations, was voted by “Rolling Stone” magazine as one of the Top 500 Albums of All Time, and has gone multi-platinum in over 35 countries worldwide. The song has been “legally” downloaded nearly half a million times in the last two years, has been played on domestic radio alone nearly 200,000 times, and received a Grammy nomination. The video for the song has been played over 1500 times in the U.S. alone and was voted by VH-1 as one of the 35th Greatest Videos of All Time.

One interesting part of the complaint is that not only does RHCP have a problem with the name of the show, but the group also has a problem with a “compilation CD” of music used on the show put out by Showtime. As such, when a search is done for the name “Californication” (in iTunes for example), this music compilation appears alongside the album and songs of RHCP.

RHCP is also fighting with Showtime in the USPTO over the title of the series. On April 10, 2007, Showtime filed a Section 1(b) application to register the mark CALIFORNICATION (for entertainment in the nature of an on-going comedy series). The mark was published for opposition on October 2nd. RHCP have filed an extension of time to file an opposition (link here) – currently due January 30, 2008.

Comments:
There are a few obvious flaws with the complaint (nothing that a First Amended Complaint can’t fix – if this dispute goes that far). The second claim for relief is supposed to be for unfair competition under California law – but instead, the complaint copied and pasted the Lanham Act section – without changing the relevant cites. In addition, the complaint cites to Section 43(a) as the basis for federal dilution – rather than Section 43(c) of the Lanham Act. Furthermore, the language of the dilution seems to pattern the false designation of origin section rather than addressing the specific factors that must be proven under 15 U.S.C. §1125(c)(1).

Prediction #1: Confidential out-of-court settlement. In the RHCP’s favor – strong mark and likelihood of confusion. In Showtime’s favor – First Amendment and Fair Use.

The parties should just reach an amicable settlement and let the show’s creators (the lawsuit identifies Kapinos as the creator, writer and executive producer of the show) get back to creating what is arguably one of the best new shows on TV. “Californication” is to Showtime what “The Sopranos” was to HBO – a quality series with some themes, scenes, and dialogue that could not be aired on mainstream television, but which make you want to subscribe to the pay-channel just to watch.

And while it may be awkward to rename the show after such a stellar first season (the name encapsulates so much about the theme of the show), the writing is so good that you could call this show anything and it would be just as good (how about “The Showtime Adult Comedy Formerly Known as Californication”?).

Prediction #2: And the Golden Globe for Best Television Comedy goes to . . .

What ever happened to “What Happens In Vegas Stays In Vegas”?

I’m referring, of course, to the trademark dispute. The phrase itself, of course, is alive and well (much to the chagrin of most Las Vegans who cringe whenever the phrase is used by outside media with reference to any news story about Las Vegas). Nonetheless, what would a Las Vegas trademark blog be without at least one post on “What Happens In Vegas Stays In Vegas.” (“WHIVSIV”)

In reviewing some of the pending oppositions (or extension of time to file oppositions) filed by the Las Vegas Convention and Visitors Authority against businesses with trademark applications that are some play on the WHIVSIV slogan (click here to see the list), I got to wondering about the status of the trademark dispute that started it all.

For those not familiar with the history of the WHIVSIV slogan, R & R Partners Inc. (“R&R”), a big powerhouse advertising and public relations firm in Las Vegas, came up with the ad slogan “What Happens Here Stays Here. Only Vegas.” (“WHHSH”) for the Las Vegas Convention and Visitors Authority (“LVCVA”). The slogan quickly gained in popularity thanks in part to ads which first ran on TV in February 2003. From there, the slogan took on a life of its own as it morphed into “What Happens In Vegas Stays In Vegas.” The WHIVSIV phrase could be heard in TV shows, movies, and news stories about Las Vegas. Steve Friess wrote a good article for the Chicago Tribune and Boston Globe back in 2004 titled “A firm hits jackpot on Las Vegas ads” about how the WHIVSIV phrase entered into the public lexicon.

The only problem is that neither R&R or LVCVA sought to apply for registration of its WHHSH slogan on the USPTO’s principal register. An enterprising lady named Dorothy Tovar, however, saw the commercial potential with the WHIVSIV phrase, and on February 28, 2003, filed two Section 1(b) intent-to-use applications with the USPTO to register the WHIVSIV mark for shirts and for underwear, sleepwear, and headwear.

R&R and LVCVA discovered Tovar’s use of the WHIVSIV slogan in selling T-shirts as well as her trademark applications, and on March 22, 2004, filed suit against Tovar and her company, Adrenaline Sports, Inc., in the U.S. District Court for the District of Nevada. See R and R Partners, Inc. v. Dorothy L. Tovar, Case No. 3:04-cv-00145-LRH-PAL (D. Nev.). On the same date, R&R filed its own trademark applications for WHHSH (for public relations). While the case was proceeding, Tovar’s two applications registered, respectively, on March 8, 2005 and August 16, 2005.

While there were news stories back in August 2006 (see here and here) that announced that Tolar had lost on summary judgment, the actual judgment did not get filed until May 17, 2007. The court’s order can be downloaded from the TTAB (link here) – where a copy of the judgment was included in a TTAB status report response. What I find interesting is that this judgment does not appear to have registered on the mainstream media’s radar screen (not like the judge’s determination back in August) – a little like a criminal being found guilty, but no one cares about the actual sentence given.

District Court Judge Larry Hicks apparently found that Tovar did not have the right to register the WHIVSIV mark and ordered her two registrations cancelled and five pending applications abandoned. The court also ordered her Nevada and California state trademark registrations cancelled. The court enjoined Tovar from selling any goods or services using the WHIVSIV mark, ordered her to remove all goods with the mark, and ordered her to transfer any domain names incorporating the WHIVSIV mark to LVCVA. Finally, the court ordered $81,258.90 in damages and $33,228.32 in costs, with post-judgment interest rate of 4.93%.

Tovar filed an appeal of the decision to the Ninth Circuit on May 21, 2007. See R&R Partners, Inc., et al v. Tovar, et al, Case No. 07-15928 (9th Cir.). However, Tovar does not appear to be expeditiously prosecuting the matter. She filed a motion to extend time to file her opening brief to October 6, 2007, which was granted (and extended to October 9th). However, it appears from the case docket that Tovar never filed her opening brief and R&R/LVCVA have filed a motion to dismiss for failure to prosecute.

Based on the district court’s judgment, Tovar’s two registrations have been canceled (as of October 1, 2007) and her remaining applications, to the extent they had not already gone abandoned, have been abandoned (although there is one still live – due either to the PTO’s backlog in canceling it or perhaps because this application was not explicitly mentioned in the court’s order, although such order did include catch-all order requiring Tovar to abandon all other federal and state applications).

While the battle continues at the Ninth Circuit, Tovar continues to fight LVCVA on another front. Tovar and another company, SanSegal Sportswear, Inc. (“SanSegal”), each filed oppositions (Opposition No. 9117036 and Opposition No. 91170135) against R&R’s trademark application for WHHSH on March 29, 2006. While Tovar’s opposition is suspended pending the outcome of the Ninth Circuit appeal, SanSegal continues its fight to oppose registration. R&R is currently seeking summary judgment before the TTAB.

The fight over WHIVSIV and WHHSH continues.

Got Trademarks?

Treasure Island Faces Opposition from New York Restaurant Chain over DISHES

I felt like writing about something different today, and found myself perusing some of the recently filed TTAB oppositions against Las Vegas-based companies.

Treasure Island Corp. (“TI”), the owner of the Treasure Island Hotel & Casino, is seeking to register the mark THE BUFFET AT TI AMERICA'S FAVORITE DISHES (stylized) (pictured above) for restaurant, bar, and lounges services.

On October 24, 2007, Uncommon Grounds Enterprises, Inc. (“UGE”) filed an opposition against the registration of TI’s mark on the grounds of likelihood of confusion over its registered mark, DISHES (for restaurant services). See Uncommon Grounds Enterprises, Inc. v. Treasure Island Corp., Opposition No. 91180307. UGE owns a chain of four “Dishes” restaurants in the New York City area. UGE’s mark was registered on January 18, 2000, and a §15 Declaration of Incontestability was acknowledged by the USPTO on September 22, 2005.

This is apparently not the first time that TI and UGE have crossed paths. According to UGE’s opposition, TI once used the name DISHES for TI’s buffet, but stopped after receiving a cease and desist from UGE. In addition, this is not the first time that UGE has sought to oppose TI in the registration of a mark. When TI previously sought to register the mark DELICIOUS DISHES (sylized), UGE filed an extension of time to oppose the mark. However, another party, Dish D'Lish, Inc., the owner of the mark DISH D’LISH, filed an opposition first. TI eventually withdrew the application and the opposition was dismissed.

While one can see why Dish D’Lish may have had reasonable grounds for opposing TI’s application for DELICIOUS DISHES, I question UGE’s current opposition of TI’s mark based on a likelihood of confusion.

Such likelihood of confusion is judged by the TTAB based on a consideration and balancing of the thirteen factors set forth In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (CCPA 1973):
1. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
2. The similarity or dissimilarity of and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use.
3. The similarity or dissimilarity of established, likely-to-continue trade channels.
4. The conditions under which and buyers to whom sales are made, i.e. "impulse" vs. careful, sophisticated purchasing.
5. The fame of the prior mark (sales, advertising, length of use).
6. The number and nature of similar marks in use on similar goods.
7. The nature and extent of any actual confusion.
8. The length of time during and conditions under which there has been concurrent use without evidence of actual confusion.
9. The variety of goods on which a mark is or is not used (house mark, "family" mark, product mark).
10. The market interface between applicant and the owner of a prior mark: (a) a mere "consent" to register or use; (b) agreement provisions designed to preclude confusion, i.e. limitations on continued use of the marks by each party; (c) assignment of mark, application, registration and good will of the related business; (d) laches and estoppel attributable to owner of prior mark and indicative of lack of confusion.
11. The extent to which applicant has a right to exclude others from use of its mark on its goods.
12. The extent of potential confusion, i.e., whether de minimis or substantial.
13. Any other established fact probative of the effect of use.

The TTAB is likely to find the first factor dispositive of the case. See, e.g., Truescents LLC v. Ride Skin Care, L.L.C., 81 USPQ2d 1334 (TTAB 2006) (TTAB determined no likelihood of confusion based on the obvious dissimilarities of the marks for identical goods). As such, I will save the first for last.

With respect to the second factor both marks are directed to identical goods (restaurant services), so the this factor favors UGE.

With respect to the third factor, neither party has any restriction or limitations on trade channels or classes of consumers in their respective descriptions of services. As such, the TTAB will presume that the services are offered in all normal channels of trade to all the normal classes of consumers for such services. Any argument about UGE’s restaurant services being limited only to the New York area is rebutted by the mark’s presumption of an exclusive right to nationwide use regardless of the actual extent of use. See Section 7(b) of the Trademark Act (15 U.S.C. §1057(b)). While TI’s restaurant services are likely to be limited to its Las Vegas location and UGE restaurant services are currently limited to the New York City metro area, the fact is that UGE could open a restaurant in the Las Vegas area. In such case, there would be overlap in the channels of trade.

With respect to the fourth factor, restaurant consumers could easily be prone to source confusion if the marks are sufficiently similar. As such, this factor depends on the outcome of the first factor (discussed below).

With respect to the fifth factor, UGE asserts in its opposition that its marks are “famous.” Of course, UGE does not cite any evidence to back up this claim. While “famous” for purposes of likelihood of confusion is not the same as “famous” for dilution (in which case UGE would have no claim of fame whatsoever), such claim to fame still requires a company to show a level of fame similar to what has been found to be “famous” with respect to other consumer products. See Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894 (Fed. Cir. 2000); Kenner Parker Toys Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir. 1992).

Without seeing any figures regarding UGE’s advertising and sales, UGE likely can, at most, maintain that its mark is strong. How strong though is questionable. A Google search did not reveal much about this restaurant. Surprisingly, it does not appear to even have its own website. Of course, not having a website does not mean the mark identifying the restaurant can’t be famous – but one would expect a “famous” restaurant would be one that is at least talked about by others on the Internet. All I could find were a few sites reviewing the restaurant (here and here). So, with all due respect to UGE, the DISHES mark seems “weak” (but not “very weak”) and as such, is entitled to a restricted range of protection, especially given its merely suggestive nature in light of the services described in the mark’s registration.

With respect to the sixth factor, there does appear to be other restaurants using a name similar to UGE’s mark for restaurant services. A quick Google search showed at least two other restaurants using a name similar to UGE’s mark for restaurant services: Dishes Restaurant (in Hartford, CT) and Little Dishes. While this is not a large amount, it does show that there are other restaurants out there using a mark that more closely resembles UGE’s mark than does TI’s proposed mark. This factor slightly favors TI.

With respect to the seventh and eighth factors, UGE does not cite any evidence of actual confusion. Of course, such absence of evidence of actual confusion could be due to scope of use of both UGE’s mark and TI’s mark – the former being concentrated mostly in the New York area while the latter is primarily in the Las Vegas area. Because of the lack of any significant opportunity for actual confusion to occur, the absence of actual confusion is typically considered of little probative value.

Of all the factors, however, the one that is probably most significant to this case is the very first factor – similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. On the one hand, UGE’s mark is not very strong, which normally requires the registrant to show a strong similarity between the two marks to support a finding of likelihood of confusion. See Westward Coach Manufacturing Co. v. Ford Motor Co., 388 F.2d 627, 634 (7th Cir. 1968), cert. denied, 392 U.S. 927 (1968). However, where the goods and services at issue are identical (as is the case with UGE and TI), the degree of similarity between the marks necessary to support a finding of likelihood of confusion is less than it would be if the goods were not identical. See Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992).

The test for similarity is whether the marks are sufficiently similar in terms of their overall commercial impression that confusion by the average consumer (who normally retains general impressions of trademarks) as to the source of the services offered is likely to result. Most importantly, however, is that while the marks are considered in their entireties, one feature of a mark may be more significant than another, and courts may give more weight to such dominant feature in determining the commercial impression of a mark. See In re Chatam International Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004); In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).

Because UGE’s mark is only a single word, it has no specific dominant feature – the word DISHES in association with a restaurant gives off the commercial impression of a restaurant that serves “food dishes.” TI’s mark, on the other hand, has the word “buffet” as its dominant feature along with the words “the” and “at TI” on the opposite sides. Furthermore, the word “dishes” is part of the phrase “America’s Favorite Dishes” appearing below the stylized “Buffet.”

In terms of appearance, sound, and meaning, the two marks are very dissimilar. The overall commercial impression of TI’s mark in association with restaurant services is that of a buffet which serves popular American “food dishes.” While UGE notes that the PTO required TI to disclaim the words “America’s Favorite” and “Buffet” apart from the mark as shown, this does not change the overall commercial impression that the mark, as used by TI, gives to the average consumer. Accordingly, I say that this factor favors TI.

Conclusion
While there is still enough ambiguity surrounding UGE’s opposition that some surprise evidence might come to light which changes the balance of the aforementioned likelihood of confusion analysis, a consideration of all the relevant factors, particularly the “weakness” of UGE’s mark and the dissimilarity between the two marks, tends to favor a finding of no likelihood of confusion.

All that remains to be seen is whether TI will go forth with this battle – or just change the name of its buffet (which is not uncommon amongst Las Vegas hotels).

Now I know where I'm going to be eating Thanksgiving Day.

Fourth Circuit Decision Puts Louis Vuitton's Trademark Infringement/Dilution Lawsuit in the Doghouse

I’m opting today to let other blogs relay the details of the Fourth Circuit’s decision in the Louis Vuitton trademark infringement and dilution lawsuit against Haute Diggity Dog over its Chewy Vuiton dog toys. See Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, No. 06-2267 (4th Cir. November 13, 2007). Click here for the decision.

The Filewrapper Blawg has a nice write-up (link here), but even they recognize the efforts of Rebecca Tushnet’s 43(B)log postings (link here).

Conclusions: 1) a good parody, even one that becomes a recognizable mark in itself, can be a defense against both trademark infringement and dilution; and 2) a mark’s strength can actually be a weakness in the face of a good parody.

A Cookie Controversy Sure to Make You Smile

In a day when the hot story in the trademark universe was the first day of the trial of the Tiffany-eBay spat over counterfeit Tiffany merchandise sold on eBay (see stories by AP and Wall Street Journal), here is a trademark infringement lawsuit story about which one can actually smile.

On November 12, 2007, Eat ‘N Park Hospitality Group, Inc. and EPR Investments, Inc. (“Eat 'n Park”) filed a lawsuit in the U.S. District Court for the Western District of Pennsylvania against The Clever Cookie Corp. (“Clever Cookie”) for trademark infringement and trademark dilution. See Eat ‘N Park Hospitality Group, Inc. v The Clever Cookie Corp., Case No. 2:2007cv01534 (W.D. Penn.).

The Smiley® Cookie

Eat ‘N Park, a franchise restaurant chain with nearly 100 locations in Pennsylvania, Ohio, and West Virginia, holds a registered trademark for a smiley face design for cookies (see above). Eat ‘N Park filed for the design mark on August 18, 1992, but claimed first use in commerce going back to November 1985. Eat ‘N Park had to argue acquired distinctiveness under §2(f) in order to overcome the PTO’s rejection that the mark was merely ornamental on such goods (cookies) and not an indicator of source. In addition to arguing that the smiley cookie had been used as a mark continuously for the five years preceding the application, Eat ‘N Park submitted evidence showing its advertising expenditures for the smiley cookie in connection with the Eat ‘N Park restaurant chain. The mark was registered on the Principal Register under §2(f) on December 7, 1993. Eat ‘N Park filed a §15 Declaration of Incontestability on April 19, 1999.

Clever Cookie is a Plainview, New York cookie company specializing in selling certified kosher cookies for unique events, holidays, birthdays and other special occasions (e.g. logo cookies, press release cookies, etc.) online and through catalog sales.

Eat ‘N Park claims in its lawsuit that Clever Cookie is selling a cookie that is “confusingly similar” to Eat 'n Park’s smiley face cookie. Click here to see the likely “infringing article” (pictured below) -- Clever Cookie’s “Smiley Face Planter” with “five delicious, smiley face cookies."

Eat ‘N Park’s case does seem compelling at first. The only difference between Clever Cookie’s smiley cookies and Eat ‘N Park’s smiley cookies is the additional dot of frosting in the middle of the cookie to make the smiley’s nose (not a significant difference).

However, if you look at Clever Cookie’s smiley cookie, it actually seems more to resemble the famed “Have a happy day" Smiley (pictured below) than Eat ‘N Park’s smiley. In addition, bakeries across the United States bake and sell similar “smiley face” cookies – is Eat ‘N Park’s going to start sending cease and desist letters to them all? Perhaps the fact that Clever Cookie is selling these online and through catalogs may have something to do with Eat ‘N Park’s enforcement efforts.

Have a Happy Day!

Still you have to wonder whether most consumers who see Clever Cookie’s smiley cookies will be confused into thinking that they are Eat ‘N Park’s smiley cookies – or will they simply bring to mind the “Have a happy day" Smiley.

Analyzing the likelihood of confusion factors, most of the factors tend to favor Eat ‘N Park – related goods, similar marketing channels, similar marks, consumers not likely to exercise a high degree of care with respect to cookies. It was probably not Clever Cookie’s intent to pass off its cookies as Eat ‘N Park’s smiley cookies, but rather to sell cookies invoking the Have a happy day" Smiley. So it all comes down to the strength of Eat ‘N Park’s smiley mark, which I think is drawn in to question given the fame of the other smiley logo.

While the uncertainty surrounding likelihood of confusion may be why Eat ‘N Park is also pursuing trademark dilution as well, such claim has its own uncertainties. Under the current Trademark Dilution Revision Act (“TDRA”), Eat ‘N Park’s mark would not be deemed “famous” because it is not “widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner.” Although the district court is in the Third Circuit, the court is likely to follow the Second Circuit's lead, which applied the TDRA to a claim for injunctive relief by Eat ‘N Park. See Starbucks Corp. v. Wolfe's Borough Coffee, Inc., 477 F.3d 765 (2nd Cir. 2007). However, to the extent that Eat ‘N Park seeks damages for cookies first sold by Clever Cookie before October 6, 2006 (the effective date of the TDRA), the court is likely to apply the standards of the Federal Trademark Dilution Act (FTDA), which requires Eat ‘N Park to prove actual dilution, but also may allow Eat ‘N Park to get away with showing that its smiley mark is famous within its “niche market” (which it probably is pretty certain given Eat ‘N Park’s regional notoriety in the Ohio, Pennsylvania, and West Virginia area). So Eat ‘N Park finds itself in an unusual situation. The Company will not likely be able to get an injunction on dilution grounds under the TDRA, but may be able to get damages under the FTDA (if actual dilution is shown).

I must add that all this talk about the “smiley face” logo reminded me of Franklin Loufrani, owner of SmileyWorld (based in London), and owner of the rights to the yellow-smiley logo in over 80 countries. But not in the United States, where he has been embroiled in controversy over the logo since June 3, 1997, when he filed two Section 1(b) applications for “Smiley” (here and here) for a wide range of good and services, although interestingly enough, not cookies.

One of his applications is currently part of an opposition ongoing since 2003. See America Online, Inc. v. Loufrani, Opposition No. 91156646. In addition, Loufrani himself has filed several oppositions against other applicants seeking to register either the word SMILEY or a logo similar to smiley (see list of pending TTAB cases here). Most notably is Loufrani’s opposition to an application by Wal-Mart’s to register its smiley face logo for retail department services, which was widely publicizing in many newspapers and blogs (see articles in NYTimes and Forbes). See Loufrani v. Wal-Mart Stores, Inc., Opposition No. 91152145 (Filed July 23, 2002). Both oppositions are ongoing and any TTAB decision will certainly be appealed to the Federal Circuit.

What's left to say ? Have a Happy Day !!

[Note: This post was subsequently edited to clarify comments in the trademark dilution paragraph.]

Starbucks suing another small coffee shop over logo.

I half expected Seattle Trademark Lawyer to cover this one before me – never one to miss a story about Seattle-based coffee behemoth Starbucks threatening to file trademark infringement lawsuits against mom-and-pop coffee shops using a name or logo similar to the Starbucks name or famed green encircled siren logo (pictured above – not that you didn't already know what it looked like). Click here to read STL's many blog posts on Big-Green’s past trademark enforcement efforts (with mixed results).

This current story has apparently been brewing (pun intended) since late October. New stories ran in The Macomb Daily on October 28th and in the Detroit Free Press on the 9th.

On October 22, 2007, Conga Coffee & Tea (“Conga”), a coffee shop in Mt. Clemens, Michigan, apparently received a cease and desist letter from counsel for Starbucks Coffee Co. (“Starbucks”) about Conga’s logo – a green circle with a black elephant silhouette in the middle (pictured below). Conga is owned by Michael Dregiewicz, who purchased the 11-year-old store back in February.



Starbuck’s counsel, Hope Shovein of Brooks Kushman, P.C., stated in her letter to Dregiewicz that Conga’s logo is "likely to cause consumers to think that Conga is an authorized licensee of Starbucks." The letter gives Conga a two week deadline to stop using the logo or face legal action. The letter also states that Starbucks is willing to negotiate a reasonable phase out the logo.

Dregiewicz has hired Melanie Frazier, of Romain, Kuck & Egerer, P.C., to defend Conga’s use of the logo. Dregiewicz has estimated the cost of changing his logo would cost up to $5,000 for reprinting business cards, paper cups, and other products as well as changing the store’s awnings.


Vegas™Esq Comments:

If Starbucks chooses to file an infringement action, it will likely include both infringement based on likelihood of confusion (under §32 and/or §43(a)) as well as trademark dilution by blurring under §43(c).

Dilution
With respect to the possibility of Starbucks using a §43(c) dilution claim against Conga, I’ll defer to “dilution-guru” Michael Atkins for comments. Check out his recent post entitled “How Courts Have Interpreted the Trademark Dilution Revision Act” on the uncertain status of trademark dilution jurisprudence.

Perhaps Starbucks may have been emboldened by its recent victory by the Second Circuit in Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 477 F.3d 765 (2nd Cir. 2007), where the court applied the Trademark Dilution Revision Act of 2006 (with its likelihood of dilution standard) rather than the Federal Trademark Dilution Act of 1996 (with its actual dilution standard) to Starbuck’s injunctive relief claim. If the new standard applies in the 6th Circuit, Starbucks may have an easier case to make for dilution by blurring than it would if it had to prove actual dilution.

If Starbucks chooses to pursue dilution, one wonders if Conga’s use in commerce of its logo was before Starbuck’s logo became famous? Conga has apparently been using its logo for 11 years, which would put its initial use in commerce around 1996. While Starbucks was founded in 1971 and went public in 1992, the current incarnation of Starbuck’s famous logo was applied for federal registration on January 15, 1993 – a Section 1(a) application claiming date of first use as August 30, 1992 for retail services (among other goods and services) with the color green claimed as a feature of the mark. The logo was registered on January 11, 1994. It is very likely that Starbuck’s logo became famous during this four year time period before Conga started using its logo, but it is an issue nonetheless.

Likelihood of Confusion
As for likelihood of confusion, Starbucks undoubtedly has a very strong mark and the services at issue are identical. As such, there is a greater likelihood that the public may mistakenly assume an association between Starbucks and Conga. The greater the likelihood that the public may make such an association, the less similarity that is required among the marks to find likelihood of confusion. The issue will come down to similarity of the marks, in particularly the visual similarity of the two logos.

On the one hand, when you look at the logos side-by-side, there is very little similarity other than the green circle. However, if you are driving around and you notice a round green logo, you may be confused into believe that it is a Starbucks (until you get close enough to see the sign, in which case you drive another block to the actual Starbucks – there is one on every corner after all).

In addition, coffee drinkers, especially Starbucks loyalists, do exercise some degree of care when it comes to getting their Starbucks-fix, and thus I do not think that they would be confused into thinking that Conga is somehow going to provide them the same “decaf Grande half-soy, half-low fat, iced vanilla, double-shot, gingerbread cappuccino, extra dry, light ice, with one Sweet-n'-Low and one NutraSweet” (the famed Starbucks Test) that they have come to expect from Starbucks. Then again, I’m sure there are those mornings when consumers are so desperate for their java that they may head towards the closest “Green circular logo” they can find. But in Mt. Clemens, Michigan?

Ninth Circuit upholds eBay’s infringement victory against PerfumeBay and gives eBay a second shot at dilution claim

On November 5, 2007, the Ninth Circuit Court of Appeals issued its decision in PerfumeBay.com, Inc. v. eBay Inc., No. 05-56794 (9th Cir. Nov. 5, 2007). A copy of the decision can be downloaded here. A good summary of the decision can be found on the Filewapper Blawg (link here). Another posting can be found here from the law firm that argued the case on behalf of eBay at the district court and before the Ninth Circuit.

The Ninth Circuit mostly affirmed the district court’s decision, which held that a) Perfumebay’s use of the mark “Perfumebay” was likely to cause confusion with eBay’s name; b) Perfumebay should be enjoined from using the domain names perfumebay.com and perfume-bay.com; and c) Perfumebay’s use of "Perfume Bay" (not conjoined) was not likely to cause confusion (even though, as discussed below, it may be likely to cause dilution).

However, the Ninth Circuit reversed the district court’s decision of no likelihood of dilution under California law finding that the district court applied the applicable test for dilution too narrowly. eBay argued at the district court that online retailers using names that combine a generic word for the goods or services sold with the suffix “Bay” (CarBay, AutoBay, RentBay, JewelryBay, EventsBay, and, of course, PerfumeBay) diluted eBay’s famous mark and threatened to make the suffix "Bay" synonymous with “online marketplace.” However, in denying eBay’s dilution claim, the lower court determined that eBay’s famous mark was not “nearly identical” to “PerfumeBay.” In reversing this decision, the Ninth Circuit found that the lower court had not considered the “highly distinctive” qualities of eBay’s famous mark in determining whether the marks were “nearly identical.” The court held that there was a likelihood of dilution given a) the “distinctiveness and fame” of the eBay mark, b) the strong recognition and association of eBay’s mark with its services, c) the presence of the dominant suffix “Bay” in the PerfumeBay mark, and d) both parties use the Internet to sell similar products. To the extent that online retailers such as PerfumeBay use the ‘Bay’ suffix in it name, consumers may no longer associate the usage of the ‘Bay’ suffix with eBay’s unique services, which would dilute the uniqueness of eBay’s mark.

The owner of PerfumeBay, Jacquelyn Tran, has her own blog, MakesNoScents, where she says she will continue fighting eBay by seeking an emergency stay of injunction as well as appealing to the Supreme Court. According to PerfumeBay’s court papers, Tran’s selection of the name PerfumeBay was not meant to confuse or deceive customers into believing her company was affiliated with eBay. Rather, she chose the name because it evoked an image of “a bay filled with ships importing perfumes from all parts of the world.” But the district court noted that Tran’s website did not contain any pictures of ships or a Bay or anything suggesting perfume-filled ships. Tran even admitted that some consumers called her asking if she was affiliated with eBay.

One part of the decision that seems a little inconsistent is that the court would affirm the injunction against the domain name perfume-bay.com, but also affirm the finding of no likelihood of confusion for the name Perfume Bay (with a space between the two words). The dash in the domain name serves the same purpose as a space in the Perfume Bay name, and yet this domain name was found to be likely to confuse. To the extent that Ms. Tran should be enjoined from using this particular domain, it should probably be on grounds of dilution rather than likelihood of confusion. Of course, eBay will now get to go back to district court to make its case for dilution against PerfumeBay – an argument that the Ninth Circuit appears to have wholeheartedly endorsed.