The Skinny on “Thins”

By Ira S. Sacks and Rachel B. Rudensky on Posted in IP Litigation, Trademarks

According to the Federal Circuit, the skinny on the term “Thins” is that it may be generic for thinly cut snack crackers. Real Foods Pty Ltd. V. Frito-Lay North America, Inc., (October 4, 2018 Fed. Cir.).

In 2012, Real Foods Pty. Ltd. (“Real Foods”) applied to register the trademarks CORN THINS for “crispbread slices predominantly of corn, namely popped corn cakes,” and RICE THINS for “crispbread slices primarily made of rice, namely rice cakes.” [1] The words “corn” and “rice” were disclaimed from their respective applications. Frito-Lay North America, Inc. (“Frito-Lay”) opposed registration of those marks, alleging that RICE THINS and CORN THINS were (i) generic names for the goods; (ii) so highly descriptive of the goods as to be incapable of acquiring distinctiveness; and (iii) merely descriptive of the goods, and Real Foods’ evidence of acquired distinctiveness of “Thins” was inadequate and insufficient. Continue Reading

Ninth Circuit Extends Tam 1st Amendment Protections to Advertising

By Ira S. Sacks and Rachel B. Rudensky on Posted in Advertising, IP Litigation, Trademarks

The Ninth Circuit extended the First Amendment protections enunciated by the Supreme Court in Matal v. Tam, 137 S.Ct. 1744 (2017)[1] to advertising in American Freedom Defense Initiative, et al. v. King County (9th Cir. Sept. 27, 2018).

Plaintiff American Freedom Defense Initiative is an organization co-founded by Pamela Geller and Robert Spencer, whose focus is to raise awareness and educate the public about the dangers of Islamic terrorism.  Both Geller and Spencer are strident opponents of various Islamic organizations, which they believe are terrorist front-groups.  It is therefore not surprising that they and their work, which includes sponsoring bus and billboard campaigns promoting their viewpoint, have met with considerable push-back. Continue Reading

Hashtag Is Not Enough to Save Another will.i.am Trademark Application

By Ira S. Sacks and Rachel B. Rudensky on Posted in Trademarks, USPTO

William Adams is a musical performer who is more famously known by his stage name, will.i.am. A recent ruling from the United States Patent and Trademark Office, Trademark Trial and Appeal Board, unfortunately makes him a two-time loser at the USPTO. The case, In re i.am.symbolic, llc, Serial No. 85916778 (TTAB, August 8, 2018) (precedential), is Mr. Adams’s second failed attempt to register a brand name.

Like many musical artists, Mr. Adams seeks to launch a fashion brand encompassing clothing, jewelry, handbags, cosmetics, and various accessories. Sometime in 2013, Mr. Adams settled on the brand name “I AM” and filed trademark applications with the USPTO. Those trademarks were denied registration based on a likelihood of confusion with prior registered marks. The Board affirmed. See In re i.am.symbolic, llc, 116 U.S.P.Q.2d 1406 (T.T.A.B. Oct. 7, 2015) (Symbolic I); In re i.am.symbolic, llc, No. 85044495, 2015 WL 6746544 (Oct. 7, 2015) (Symbolic II); In re i.am.symbolic, llc, No. 85044496, 2015 WL 6746545 (Oct. 7, 2015) (Symbolic III). The Federal Circuit also affirmed. In re i.am.symbolic, llc, (Fed. Cir. Aug. 8, 2017).

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The New Jersey Turnpike Authority Pays a Big Toll for Pizza

By Ira S. Sacks and Rachel B. Rudensky on Posted in Trademarks, TTAB, USPTO

The New Jersey Turnpike Authority (“NJTA”) was forced to pay a big toll when the United States Patent and Trademark Office, Trademark Trial and Appeal Board (the “Board”), dismissed its opposition to a pizza restaurant’s applied-for homage to the famous route to the Jersey shore.  In New Jersey Turnpike Authority v. Jersey Boardwalk Franchising Co., (Opposition No. 91219067 and Cancellation No. 92059657) (May 15, 2008), the Board found no likelihood of consumer confusion between the NJTA’s registered trademark and road sign and Applicant Jersey Boardwalk Franchising Co., Inc.’s (“JB”) Florida pizza restaurant’s mark, both of which are set forth below:

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TTAB Guidance on Disclaimers and Acquired Distinctiveness: “Furniture Warehouse” Must Be Disclaimed, But “American” Need Not

By Ira S. Sacks and Rachel B. Rudensky on Posted in Trademarks, TTAB, USPTO

In a precedential decision, the United States Patent and Trademark Office, Trademark Trial and Appeal Board (“TTAB” or the “Board”) affirmed a refusal to register the logo:

absent a disclaimer of the term “AMERICAN FURNITURE WAREHOUSE.” However, the Board also held that the phrase can acquire distinctiveness as a part of the overall trademark. In re American Furniture Warehouse CO, Serial No. 86407531 (April 23, 2018) (Opinion by Judge Cynthia C. Lynch).

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Discovery Sanctions Affirmed Despite Dwarfing Potential Value of Entire Case

By Ira S. Sacks and Sara L. Mandelbaum on Posted in Attorneys' Fees, Discovery, IP Litigation, Trademarks

In Klipsch v. ePRO, the Second Circuit affirmed discovery sanctions commensurate with the costs incurred by the moving party in addressing the sanctionable conduct ($2.68 million), as well as security for the sanctions, potential damages and potential attorneys’ fees; and held that such sanctions are not unduly punitive even if the likely ultimate value of the case (perhaps as low as $20,000) is considerably less than or even grossly disproportionate to the sanctions and security.

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Tam Extended: Prohibition of “Immoral and Scandalous” Trademarks Unconstitutional

By Ira S. Sacks and Rachel B. Rudensky on Posted in IP Litigation, Trademarks, TTAB, USPTO

The Court of Appeals for the Federal Circuit recently extended First Amendment protections for trademark applications in In re Brunetti, No. 15-1109 (Fed. Cir. December 15, 2017), ruling that Section 2(a) of the Lanham Act’s prohibition against registration of “immoral and scandalous” matter violated free speech protections. This ruling comes as no surprise, in light of the rulings in Matal v. Tam, 582 U.S. ___ (2017) (blogged here) and In re Tam, 808 F.3d 1321 (Fed. Cir. 2015) (blogged here).  Continue Reading

B&B Hardware Precludes Defense To Likelihood Of Confusion In District Court

By Ira S. Sacks and Patricia M. Flanagan on Posted in IP Litigation, Trademarks, TTAB

In 2015, the Supreme Court, in its decision in B&B Hardware, Inc. v. Hargis Industries, Inc. (“B&B”), held that sometimes issue preclusion should apply to prior Trademark Trial and Appeal Board (“TTAB”) decisions. 135 S. Ct. 1293 (2015). Under this directive, if the TTAB decides the issue of “likelihood of confusion” when making a determination of trademark registrability in the context of an opposition or cancellation proceeding, such decision will, under certain circumstances, prevent further litigation of that issue in the future, including in a later federal court litigation. The practical effect of B&B – i.e, the circumstances under which issue preclusion will be applied – is still being refined. The Southern District of New York (“SDNY”) recently added to this refinement in Cesari S.R.L. v. Peju Province Winery, L.P (“Cesari”).

In Cesari, the SDNY applied B&B to hold that the TTAB’s finding, in an opposition proceeding, that a likelihood of confusion existed between Cesari’s trademark LIANO for wines and Peju Province’s trademark application LIANA for wines precluded Peju Province, but not its affiliates, from defending against Cesari’s federal court claim that confusion was likely for the same marks as applied on the parties’ goods in the marketplace.   Continue Reading

TTAB Seals Fate of Trade Dress Claims for Design Covered By Utility Patent

By Ira S. Sacks and Rachel B. Rudensky on Posted in Trademarks, TTAB

It is natural for manufacturers to seek to widen their intellectual property protection. In the seminal case TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 US 23 (2001), the Supreme Court struck down the plaintiff’s attempt to expand the reach of its expired utility patents by claiming trade dress protection in those designs. The Supreme Court ruled that “functional” designs could never be protected trade dress.

The United States Patent and Trademark Office, Trademark Trial and Appeal Board (“TTAB” or the “Board”) last week provided further instruction in how to interpret trade dress claims in light of expired patents in Poly-America, L.P. v. Illinois Tool Works, Inc., Cancellation No. 92056833 (October 18, 2017). In this case, the Board cancelled a nearly fifty-year-old registration for the design of resealable plastic sandwich bags. Continue Reading

No Twist on Pretzel Crisps on Remand

By Ira S. Sacks and Rachel B. Rudensky on Posted in Trademarks, TTAB

In a 54 page decision issued on September 6, 2017, the Trademark Trial and Appeal Board (the “Board”) ended (again) a long-standing dispute between snack food makers Frito-Lay, Inc. (“Frito”) and Princeton Vanguard, LLC (“Princeton Vanguard”) over the registrability of Princeton Vanguard’s PRETZEL CRISPS trademark. Frito claimed that “Pretzel Crisps” was a generic term that all parties are entitled to use to describe pretzel-style chips. Continue Reading

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