Using Someone’s Slogan is Not Fair Use


As blogged about previously here, a motivational services business Own Your Power Communications owed by Simone Kelly-Brown sued Oprah Winfrey and several of her companies for producing numerous publications, events, and online content using the phrase “Own Your Power.”

The District Court held that Oprah’s use of “Own Your Power” was fair use and dismissed the case.  The Plaintiffs appealed to the United States Court of Appeals for the Second Circuit.  The Second Circuit, reversed, finding no “fair use” on the part of Oprah and her companies.

The Appeals Court first set out the proper test for fair use in the Second Circuit,

In order to make a successful fair use defense to a trademark infringement claim, the defendant must prove three elements: that the use was made (1) other than as a mark, (2) in a descriptive sense, and (3) in good faith. See 15 U.S.C. § 1115(b)(4); EMI Catalogue P’ship, 228 F.3d at 64. Because fair use is an affirmative defense, it often requires consideration of facts outside of the complaint and thus is inappropriate to resolve on a motion to dismiss. Affirmative defenses may be adjudicated at this stage in the litigation, however, w 1 here the facts necessary to establish the defense are evident on the face of the complaint. McKenna v. Wright, 386 F.3d 432, 436 (2d Cir. 2004). Plaintiffs, in rebutting defendants’ arguments, are held only to the usual burden of a motion to dismiss, id., which is to say they must plead sufficient facts to plausibly suggest that they are entitled to relief, Iqbal, 556 U.S. at 678.

The Appeals Court held that in the Second Circuit, it is not required that Oprah have actually used Own Your Power as a trademark, rather all that is required is that Oprah used the phrase in commerce to attract attention (It is hard to imaging Oprah doing anything without attracting attention).

 in determining whether the defendants were using the words “Own Your Power” as a mark, we ask whether they were using the term “as a symbol to attract public attention.” JA Apparel, 568 F.3d at 400 (internal quotation marks omitted).

The Appeals Court held that this standard was met by Oprah using the phrase on the cover of her magazine, at an “Own Your Power” event, in promotions advertising the event, and in an online video.

As for the second factor, whether the phrase “Own Your Power” was used descriptively, the Appeals Court also found against Oprah.

At the outset, it should be noted that the phrase “Own Your Power” differs from the sort of phrase which courts usually find to be used descriptively. Courts more readily find a phrase descriptive when it is in common usage. … Defendants have not argued that the phrase “Own Your Power” was in popular usage.
. . .
here the phrase “Own Your Power” does not describe the contents of the Magazine. The words are prominently displayed in the center of the Magazine with the subtitles “How to  Tap Into Your Strength”; “Focus Your Energy”; and “Let Your Best Self Shine” in smaller type  below. Along the edges of the magazine are specific headlines for articles, including “THE 2010  O POWER LIST! 20 Women Who Are Rocking the World.” Although both the center phrase  and the article headline make use of the word “power,” it does not appear that the phrase “Own  Your Power” is meant to describe the contents of a particular item in the Magazine. For  example, the “Power List” inside the Magazine contains a list of admirable people, accompanied  by biographical information about each. But the list does not provide specific advice regarding how a reader can follow in the footsteps of any of these individuals, nor does it provide advice regarding how a reader can become more powerful in general.

Regarding the final factor, good faith, the Appeals Court again found against Oprah.

Kelly-Brown argues that she has pleaded facts sufficient to plausibly suggest that the defendants had knowledge of her mark and chose to go forward with the “Own Your Power” campaign anyway. Indeed, she alleges that prior to the rollout of Oprah’s new Oprah Winfrey Network, to be known as “OWN,” the defendants bought the rights to use the acronym “OWN” from a woman who had previously registered it as an acronym for the “Onyx Woman Network.” Kelly-Brown argues that this transaction plausibly suggests that the defendants conducted a trademark registration search for the 1 word “Own,” and that such a search would have turned up her then-pending service mark in the phrase “Own Your Power.” We agree that these allegations do plausibly suggest that the defendants had knowledge of Kelly-Brown’s mark, liked it, and decided to use it as their own. In other words, defendants’ allegations that they did not intend to trade on Kelly-Brown’s good will, even if true, do not preclude a finding of bad faith. See Cadbury Beverages, Inc. v. Cott Corp., 73 F.3d 474, 483 (2d Cir. 1996) (declining to decide good faith as a matter of law where defendant used a mark, which happened to be the name of defendant’s parent company, knowing it was identical to plaintiff’s registered mark); see also Kiki Undies Corp. v. Promenade Hosiery Mills, Inc., 411 F.2d 1097, 1101 (2d Cir. 1969) (explaining that defendant has the burden of persuasion in such circumstances).

So Oprah’s use of the phrase Own Your Power was not a clear-cut case of fair use — far from it.  And the Second Circuit vacated the District Court’s order and remanded the case back to the trial court.  The case will now proceed through discovery and to trial unless the matter is resolved.

Miller’s Ale House v. Carolina Ale House – Is copying a competitor’s name, décor, and layout fair competition or infringement?


Miller’s Ale House has approximately fifty locations primarily in Florida.  Each location has a geographically determined name (e.g. a street, a town, a district) followed by the phrase Ale House.  One location located in Boynton Beach, Florida is named Boynton Ale House.  About a mile from the Boynton Ale House a competitor opened a bar named Carolina Ale House.  Apart from merely copying the name, Miller’s Ale House argued that Carolina Ale House copied the décor, layout, and styling of its Boynton Ale House.

Miller’s Ale House sued Carolina Ale House for common law trademark infringement of the term “ale house,” trade dress infringement for copying the décor, and copyright infringement for copying its copyrighted restaurant layout.

Regarding the common law trademark infringement claim for the term “ale house” the court found that Miller’s Ale House and Carolina Ale House had already litigated this claim ten years earlier.  In that case, the Fourth Circuit Court of Appeals held that the term “ale house” was generic for bar and tavern services.  Despite the passage of time and the fact that Miller’s Ale House had spent significant advertising funds promoting its Ale Houses, the Eleventh Circuit Court of Appeals held that Miller’s Ale House was bound by the prior fourth circuit decision.  The Eleventh Circuit further found that “ale house” is a generic term for a facility that serves beer and ale.

we agree with the District Court that Miller’s is bound by the Fourth Circuit’s decision. Miller’s still has “no protectable interest in the words ‘ale house’ [because] [t]hey are generic words for a facility that serves beer and ale, with or without food.” Ale House Mgmt., 205 F.3d at 141. Because a generic name may not receive trademark protection, the District Court properly granted summary judgment on Miller’s trademark infringement claim.

While Miller’s did present some evidence of consumer confusion, the court found the evidence irrelevant.

 The prominent use of a generic term by two competitors may understandably confuse consumers; however, this does not make the term any less generic. See Gift of Learning Found., Inc. v. TGC, Inc., 329 F.3d 792, 801 (11th Cir. 2003) (“[C]onfusion . . . is irrelevant unless the mark is protectible in the first instance.”); Boston Duck Tours, 531 F.3d at 21 (“[T]rademark law . . . is not intended to prevent confusion between two similar, generic marks.”).

Miller’s also argued that Carolina Ale House infringed its trade dress in its décor.  Miller pointed out that Carolina Ale House copied its external red lettering, it severs dress of Khaki’s and polo shirts, its center bar, its open kitchen, and its wood paneling.  In order to be protective trade dress, however, the décor must be unique or otherwise distinctive.  The court held that Miller’s claimed trade dress was not “distinctive” and was therefore unprotectable.

We find nothing particularly unique in a restaurant fixing its name in red letters on the outside of its building and on its menu, branding items it sells with that name, dressing its staff in khakis and a polo shirt, featuring a center bar with a soffit, offering seating at “high-top” tables, and paneling its walls with wood. These are the prototypical features—what we might call the “common . . . design,” Brooks Shoe, 716 F.2d at 858—of a standard sports bar or brew pub. The particular name affixed on the wall and to menu items, the specific color of the polo shirts, the type of wood on the walls, the placement of the “high-top” tables, and the openness of the kitchen,14 “even if they in combination could be deemed unique,” Wiley v. American Greetings Corp., 762 F.2d 139, 142 (1st Cir. 1985), are all “mere refinement[s]” of this “commonly-adopted and well-known form of ornamentation,” Brooks Shoe, 716 F.2d at 858.

Miller’s last argument was that Carolina Ale House’s infringed its copyrighted floor plan.  The court was equally unimpressed with this argument.  In order to establish copyright infringement, “protectable” elements must be copied.  Here Miller’s argued that Carolina Ale House copied its center bar design, its booth seating to the left of the bar, its high-top tables to the right of the bar, the location of its kitchen and the location of its restrooms.  The court held that these elements, even in combination, was not sufficient to support a claim of copyright infringement.

Because there are only a limited number of ways to turn a rectangular building into a sports bar and restaurant, “similarities in the general layout of rooms can easily occur innocently.”

After an examination of the respective floor plans, we agree with the District Court “that the differences here are dramatic and overwhelming, and that the similarities between [Boynton Carolina’s] layout and Miller’s floor plan exist only at the broad conceptual level.”

So despite the similarities between the two ale houses, the Eleventh Circuit found that there was no infringement, merely fair competition.

Oriental v. Cooperativa: How long is too long to wait to sue a trademark infringer?


Oriental Financial Group (“Oriental”) began using the mark COOP ORIENTAL in Puerto Rico in 1964.  Two years later,  in 1966, Cooperativa de Ahorro Y Crédito ORIENTAL (“Cooperativa”) began using the same COOP ORIENTAL mark in Puerto Rico.

Forty-three years later, in 2009, Oriental sent Cooperative a cease and desist letter.  When Cooperativa refused, Oriental sued.  The district court found a likelihood of confusion between the two marks and entered an injunction requiring Cooperativa to stop using the most recent version of its logo, but allowed Cooperativa to use an older version of it logo.

Among several issues on appeal was Cooperativa’s argument that after forty-three years of using the COOP ORIENTAL mark, Oriental’s claims were barred by latches.

“Laches requires proof of (1) lack of diligence by the party against whom the defense is asserted, and (2) prejudice to the party asserting the defense.” Museum of Fine Arts, Bos. v. Seger-Thomschitz, 623 F.3d 1, 10 n.9 (1st Cir. 2010) (quoting Costello v. United States, 365 U.S. 265, 282 (1961)). However, laches applies only where the plaintiff knew or should have known of the infringing conduct. See Valmor Prods., 464 F.2d at 204; see also What-A-Burger of Va., Inc. v. Whataburger, Inc. of Corpus Christi, Tex., 357 F.3d 441, 450 (4th Cir. 2004) (“Instead of focusing on when the trademark owner first knew that another party was using its mark, the court should be trying to determine the time at which the use became infringing and the time at which the owner should have known it . . . .”); ProFitness Physical Therapy Ctr. v. Pro-Fit Orthopedic & Sports Physical Therapy P.C., 314 F.3d 62, 70 (2d Cir. 2002) (“[A] plaintiff should not be obligated to sue until its right to protection has ripened such that plaintiff knew or should have known . . . that plaintiff had a provable infringement claim against defendant.”).

Oriental argued that despite the diminutive size of Puerto Rico and the limited number of banks on the island, it had no knowledge of Cooperativa’s use of COOP ORIENTAL until 2009.   Oriental further argued that Cooperativa failed to establish prejudice.

In a classic move, the United States Court of Appeals for the First Circuit ignored both of these arguments.  Instead, the Court held that latches did not bar Oriental’s claim based on the doctrine of progressive encroachment.

As a general rule the progressive encroachment doctrine requires proof that (1) during the period of the delay the plaintiff could reasonably conclude that it should not bring suit to challenge the allegedly infringing activity; (2) the defendant materially altered its infringing activities; and (3) suit was not unreasonably delayed after the alteration in infringing activity. See generally 6 McCarthy, supra, § 31:20.

Here, satisfaction of the second and third requirements are not open to serious dispute. The second requirement “turns . . . on the likelihood of confusion resulting from the defendant’s moving into the same or similar market area and placing itself more squarely in competition with the plaintiff.” Kellogg, 209 F.3d at 573 (emphasis added). Put succinctly, we ask “whether [the] defendant, after beginning its use of the mark, redirected its business so that it more squarely competed with plaintiff and thereby increased the likelihood of public confusion of the marks.” ProFitness Physical Therapy, 314 F.3d at 70 (emphasis added); Kason Indus., 120 F.3d at 1205; see also Tillamook Country Smoker, 465 F.3d at 1110 (“To establish progressive encroachment, [a plaintiff] . . . ha[s] to show that [the defendant] ‘expand[ed] its business into different regions or into different markets.'” (quoting Grupo Gigante SA De CV v. Dallo & Co., Inc., 391 F.3d 1088, 1103 (9th Cir. 2004) (emphasis added))). Increases in the allegedly infringing advertising are also pertinent.

The Court noted that for years Cooperativa only had three branches in Puerto Rico all near the city of Humacao, and none in San Juan where Oriental was based.  It was not until 2008 that Cooperativa began to expand its business into San Juan.  (This was apparently sufficient for the Court even though Humacao is only a 45 minute drive  from San Juan).  In addition in 2009 Cooperativa began expanding its advertising efforts.  The court viewed these activities as an expansion of Cooperativa’s business from “regional” to “island-wide.” (This was apparently sufficient for the Court even though you can drive across the whole island in about three hours).

Latches is a tough issue for the courts.  On the one hand, it is difficult for a court to take away a trademark holder’s right to sue.  On the other hand, if a company has been using a mark for some what rights, if any, has it aquired?  It is often the case that companies may for years co-exist with no likelihood of confusion despite similar or even identical marks.  It is only when businesses change and enter in new areas (geographically or types of goods and services) that a conflict is actually created.

When is Paris, not in France? In Re Miracle Tuesday

Miracle Tuesday, LLC filed an intent-to-use trademark application for the stylized mark JPK Paris 75 for sunglasses, wallets, handbags and purses, travel bags, suitcases, belts, and shoes.  Because the applicant is a U.S. company, the trademark office rejected the mark as primarily geographically deceptively misdescriptive under Section 2(e)(3) of the Lanham Act, 15, USC § 1052(e)(3).

In support of the application, Miracle Tuesday argued that the owner of Miracle Tuesday Jean-Pierre Klifa (whose initials appear in the logo) is a French citizen who lived in Paris for 22 years.  Mr. Klifa also argued that he exhibit at two trade shows while in Paris.  The Examining Attorney disagreed finding that the primary significance of the mark is Paris and that Paris is famous for fashion.  Because the goods do not originate from Paris, the Examining Attorney found that misrepresentation regarding the geographic origin of the goods would be a material decision in a consumer’s decision to purchase products branded with the proposed trademark.

Miracle Tuesday appealed the Examining Attorney’s decision to the Trademark Trial And Appeal Board (“TTAB”).  The TTAB upheld the examiner’s decision and rejected Miracle Tuesday’s argument that the goods are not geographically misdescriptive as Mr. Kilfa is from Paris and designs the applicant’s goods.  The TTAB found that a substantial portion of consumers would believe that applicant’s goods came from Paris. The mark in question appears below:

Miracle Tuesday then appealed to the United States Court of Appeals for the Federal Circuit.  The Court explained that:

Under Section 2(e)(3) of the Lanham Act, a mark may not be registered on the principal register if the mark, “when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them.” 15 U.S.C. § 1052(e)(3). A mark is primarily geographically deceptively misdescriptive, and thus barred from registration, if: (1) “the primary significance of the mark is a generally known geographic location”; (2) “the consuming public is likely to believe the place identified by the mark indicates the origin of the goods bearing the mark, when in fact the goods do not come from that place”; and (3) “the misrepresentation was a material factor in the consumer’s decision” to purchase the goods. In re Cal. Innovations, Inc., 329 F.3d 1334, 1341 (Fed. Cir. 2003).

Reviewing the evidence submitted to the trademark office, the Federal Circuit upheld the refusal to register.  The court held:

It is undisputed that Paris is famous for fashion and fashion accessories, including the types of goods identified in the application. Because relevant purchasers are likely to think of Paris as a known source for fashion accessories, we agree with the Board that there is sufficient evidence of a goods/place association between Paris and the goods listed.

The court went on to find that the correct inquiry is whether there is a connection between the goods and the geographic location, not between the designer and the geographic location.

Although there is support for the proposition that goods need not be manufactured in the named place to originate there – and we do not endorse application of a contrary rule here – it is clear that there must be some other direct connection between the goods and the place identified in the mark (e.g., the place identified is where the goods are designed or distributed, where the applicant is headquartered or has its research and development facility, or where a main component of the good originates). Here, Miracle Tuesday concedes that the goods identified in the application do not originate in Paris. Indeed, at oral argument, counsel for Miracle Tuesday revealed that the goods at issue “are made outside the United States, in Asia.” See Oral Argument at 3:03. The record further reveals that the goods identified are designed in Miami, and there is no evidence that a main component of the goods, or even any component of the goods, comes from Paris. Simply put, there is no evidence of a current connection between the goods and Paris.

So it was three strikes you’re out for the applicant Miracle Tuesday.  (Or as they say in Paris, adieu.)

National Chamber Servicemark Found Descriptive… of National Chamber of Commerce Services

The United States Court of Appeals for the Federal Circuit in the case In Re Chamber of Commerce, 675 F.3d 1297, 102 U.S.P.Q.2d 1217 (Fed Cir. 2012) upheld a Trademark Trial and Appeal Board ruling rejecting as descriptive the mark NATIONAL CHAMBER filed in two applications:

Application Serial No. 77/147075: “Providing online directory information services featuring information regarding local and state Chambers of Commerce; providing information and news in the field of business, namely, information and news on current events and on economic, legislative, and regulatory developments as it relates to and can impact businesses; administration of a discount program enabling participants to obtain discounts on goods and services.”

Application Serial No. 77/975745: “Analysis of governmental policy relating to businesses and analysis of regulatory activity relating to businesses, all for the purpose of promoting the interests of businessmen and businesswomen; business data analysis.”

The Chamber of Commerce of the United States of America (“COC”) filed the appeal arguing that the services in the applications were not descriptive.  The court of appeals disagreed.

The Chamber of Commerce could have overcome the descriptiveness rejection by showing “secondary meaning” or “acquired distinctiveness” but offered no evidence in that regard for the trademark office to consider.  On appeal, the COC was therefore limited to arguing that NATIONAL CHAMBER was not descriptive of the services provided by a national chamber of commerce.  The appeals court was not persuaded:

To decide this case, we need only find that NATIONAL CHAMBER immediately conveys information about one feature or characteristic of at least one of the designated services within each of COC’s applications. See Stereotaxis, 429 F.3d at 1041 (“[R]egistration should be refused if the mark is descriptive of any of the goods for which registration is sought.”) (quoting In re Richardson Ink Co., 511 F.2d 559, 561 (CCPA 1975)). Because we find that NATIONAL CHAMBER describes at least one designated service within each of COC’s applications, we affirm the descriptiveness refusals.

The COC also argued that the appeal board’s lack evidence supporting its conclusory findings.  Again the Federal Circuit disagreed:

Lastly, we address COC’s contention that the TTAB’s reasoning was so conclusory as to preclude meaningful appellate review. We disagree with COC that the TTAB’s necessary findings were not “expressed with sufficient particularity to enable our court, without resort to speculation, to understand the reasoning of the Board, and to determine whether it applied the law correctly and whether the evidence supported the underlying and ultimate fact findings.” COC Br. at 15 (quoting Gechter v. Davidson, 116 F.3d 1454, 1457-58 (Fed. Cir. 1997)) (al-teration removed). The TTAB specifically cited COC’s own online chambers of commerce directory, and expressly found that the promotion of business interests is the core function of a chamber of commerce. While the TTAB’s decision would have been more helpful to us had it more explicitly tied its particular evidentiary findings to the individually recited services within the two applications, its reasoning in this case is sufficiently clear to permit us to understand why it believed that NATIONAL CHAMBER was descriptive of at least the two services discussed above.

And so the ruling of the TTAB was affirmed.

Oddly a review of the trademark records shows that the COC previously had a registration for NATIONAL CHAMBER which was granted in 1987.  For unknown reasons the trademark was not renewed at the ten (10) year mark in 1997.  If the COC had renewed the trademark and could have pointed to an existing registration this case may have gone differently.  At the very least the COC may have been able to show secondary meaning or acquired distinctiveness.  Moreover, considering this prior application claimed a date of first use of 1915, the COC certainly should have been able to show us in commerce for at least some of the services in the current application.  The services not in use could then have been moved to a divisional application.

The COC has not yet refilled its trademark applications.

How do you Pronounce Gallo?

Ernest Gallo and Julio Gallo founded their famous winery in 1933.  Their Gallo wine (pronounced gal-lo) is well-known all over the United States.

Cerveza Gallo (pronounced gai-yo, i.e. the Spanish word for rooster) is a beer which is well known in Guatemalan and brewed by Cervecería Centro Americana Sociedad Anónima.

According to a complaint filed by E. & J. Gallo Winery, the Cerveza Gallo mark for beer infringes its Gallo mark for beer.  It is unclear, however, what connection (if any) the defendants have to the Guatemalan brewer.

The defendants in the lawsuit are Cerveza Gallo S.A. Inc. d/b/a Gallo, Cerveza, Cerveza Gallo, Inc., Christopher J. Alexander and Maria E. Belcher.  According to the complaint, the defendants all reside in Louisiana.

E. & J. Gallo Winery filed the complaint after finding two trademark registrations in the state of Louisiana for Cerveza Gallo.  The complaint seeks to cancel the registrations as well as force the two companies to remove the word Gallo from their names.


The Guatemalan brewer currently sells its Cerveza Gallo in the United States under the brand name Famosa.


The relationship between the Guatemalan brewer and the defendants is not set out in the complaint.  It is possible the defendants have no relationship with the Central American company.  The complaint also does not include any information regarding any products the defendants actually sell.  It is possible the defendants are not currently selling a product.

In 2003 the defendants filed a federal trademark application for Cerveza Gallo.  The application was ultimately rejected, but not due to any potential confusion with E. & J. Gallo Winery.  In fact, the Office Action specifically states, “the Office records have been searched and no similar registered mark has been found.”

Rather, the marks were rejected based on three pending applications for a beer whose name is a English slang word for rooster (see the exhibits attached to the end of the Office Action).  In addition, the Examining Attorney rejected the mark for being filed as Cerveza Gallo, when the label they submitted as a specimen of use read Gallo Cerveza.

Although these rejections could have been overcome, the beer company chose not to file a response to the Office Action and the application went abandoned.

Since it is not apparent whether the defendants are even selling a product in the United States, it is unknown whether they will even contest this matter.


Does the service mark Brewskee-Ball infringe the trademark Skee-Ball?

Skee-Ball, Inc. the owner of the Skee-Ball brand of games — popular at amusement arcades for more than 100 years — filed a trademark lawsuit against Full Circle United (“Full Circle”), a company that runs Skee-Ball tournaments under the name “Brewskee-Ball.”

Defendant Full Circle is a customer of Skee-Ball, Inc., using standard Skee-Ball machines manufactured by Skee-Ball, Inc. for its Brewskee-Ball tournaments.  Despite this relationship, Skee-Ball, Inc. seeks to stop Full Circle from using the name “Brewskee-Ball” claiming it infringes, dilutes, and tarnishes its famous Skee-Ball mark.

In Skee-Ball, Inc.’s complaint, the company points out that the trademark Brewskee-Ball incorporates the famous mark Skee-Ball in the mark itself as well as in its the description of services.  Specifically, Brewskee-Ball was filed for the following services, “Entertainment in the nature of skee-ball games; entertainment services, namely, arranging and conducting of skee-ball competitions; providing a website that provides statistics for skee-ball league players; providing recognition and incentives by the way of awards to demonstrate excellence in the field of skee-ball.”

Skee-Ball, Inc. points to TMEP Section 1402.09, which states that another company’s trademark should not be used in the identification of services for a different company’s mark.  Rather, a generic word should be substituted. (Which, of course, begs the question – what is the generic name for Skee-Ball?)

In response, Full Circle argues that the word “skee-ball” has become generic for the game and that the trademark office required it to use the word “skee-ball” in its description of services.  Full Circle further argues that it has a federal registration for Brewskee-Ball, which it obtained in 2008 without opposition from Skee-Ball, Inc..  (Most likely, the application was not on Skee-Ball, Inc.’s radar as a search for “skee” or “skee-ball” would not turn up a pending application for Brewskee-Ball.)

There is an obvious connection between the trademark “Skee-Ball” and the service mark “Brewskee-Ball.”  Without a doubt, Brewskee-Ball is merely the word “brew” added to Skee-Ball.  That being said, it is difficult to imagine that anyone would believe that “Brewskee-Ball” was somehow sponsored by the manufacturers of Skee-Ball machines, rather than the bar where the tournament takes places.  Moreover, an increase in popularity of “Brewskee-Ball” would only serve to increase the sales of official Skee-Ball machines.  Skee-Ball, Inc. could even come out with a “tournament” line of machines to sell to bars that wanted to host tournaments.  Another synergistic opportunity lost to trademark litigation.

If Skee-Ball, Inc. is concerned with the tournament name “Brewskee-Ball” is it also concerned about the names of the teams in the Brewskee-Ball league?  Does the Skee Amigos, Skee Patrol, or Skee’s Company further infringe the Skee-Ball brand?  We will just have to wait and see as this case is just getting started.

The case was originally filed by Skee-Ball, Inc. in California.  Recently the court in California transferred the case to New York after Full Circle filed a motion to dismiss for lack of personal jurisdiction in California.  Now the fun moves back east as this case continues.

Lady Gaga? Never Heard of Her

On September 26, 2011, Stefani Germanotta, better known as Lady Gaga, and one of her companies, Ate My Heart Inc. sued Excite Worldwide LLC a company which is trying to trademark LADY GAGA and LADY GAGA LG.

The end result of this lawsuit is not in doubt: Lady Gaga will win, Excite Worldwide will lose.   Interestingly, this case was filed in state court in New York, rather than in federal court.  The complaint has not yet been scanned by the court and made available for public viewing, so we can only speculate as to the claims contained in the lawsuit.  Most likely, however, Lady Gaga did not file in federal court because Excite Worldwide is not yet using the applied for Lady Gaga trademarks in commerce — meaning that Lady Gaga does not yet have a federal trademark claim against Excite.  The state court claims are most likely a variety of torts which, while more difficult to prove, will not alter the final result of this litigation.

This “dispute” over claims to the Lady Gaga brand began in May 2010 when Excite Worldwide filed its two trademark applications.  The first application for Lady Gaga was filed May 7, 2010, the same day that HBO aired the special events concert: Lady Gaga Presents the Monster Ball Tour: At Madison Square Garden.  The second application for Lady Gaga LG was filed on May 10, 2010, less than two weeks before Lady Gaga’s heavily promoted Saturday Night Live Appearance on May 21, 2010.

After reviewing Excite Worldwide’s trademark applications, the examining attorneys at the PTO rejected them.  In one Office Action dated August 30, 2010, the PTO put the kibosh on the applications based on a number of grounds.  These included a Section 2(d) refusal for a likelihood of confusion with Lady Gaga’s existing trademark registrations.

The PTO also requested that Excite Worldwide state whether the name Lady Gaga identified a particular living individual (hint, hint).

Applicant must clarify whether the name or signature in the applied-for mark identifies a particular living individual. Written consent is required for registration of a name, including a pseudonym, stage name or nickname, or signature, if the name or signature identifies a specific living individual. Trademark Act Section 2(c), 15 U.S.C. §1052(c); TMEP §813; see TMEP §§1206 et seq.

(emphasis added).  In response, Excite Worldwide make the bold argument that Lady Gaga does not identify a particular living individual.  What? Apparently Excite Worldwide missed the unbelievable amount of media coverage and attention Lady Gaga has received.  If Saturday Night Live is too late for you, maybe you saw her on Good Morning America or The View or maybe you caught her in prime time on So You Think You Can Dance.  For crying out loud my late grandfather even knew who she was (but then again, he like anything Italian).

Excite Worldwide goes on to argue that Lady Gaga fans are very tech savvy individuals who often frequent boutiques and will in no way be fooled into thinking Lady Gaga endorses Applicant’s identically named brand.  Applicant points out that it plans to sell its products under its unique URL which will in no way of confuse Lady Gaga’s sophisticated fan base.  (While I did not find these arguments persuasive, I do give credit to Excite Worldwide’s attorney for at least trying to argue the impossible.)

In response to these arguments, the Trademark Office issued a second office action on April 1, 2011 (maybe this is an elaborate April Fool’s ruse?).  The PTO adds a new grounds for rejection, namely an intentional false association between Excite Worldwide and Lady Gaga.

Registration is refused because the applied-for mark consists of or includes matter which may falsely suggest a connection with LADY GAGA. Although LADY GAGA is not connected with the goods provided by applicant under the applied-for mark, LADY GAGA is so famous that consumers would presume a connection. Trademark Act Section 2(a), 15 U.S.C. §1052(a); see TMEP §§1203.03, 1203.03(e).

It will be interesting to see if Excite Worldwide can come up with some additional arguments to make in this case or if they will fold.  Who knows.  As the old adage goes, luck and intuition play the cards.

Court Rules Louboutin’s Red Soles are Fashion, not a Trademark

A federal court in New York has ruled that designer Christian Louboutin (“Louboutin”) does not have the exclusive right to make women’s designer shoes with red soles.

In 2008 Louboutin registered a trademark (Reg. No. 3,361,597) for women’s shoes with red soles, claiming the exclusive right to make shoes with red soles for “women’s high fashion designer footwear.”  The mark as filed with the United States Trademark office appears below.

Louboutin’s red sole shoes are popular with the rich and famous as they are ridiculously expensive.  The red soles apparently let people know at a distance that you spent a fortune on a pair of shoes.  The red soles have even inspired a 2009 song by Jennifer Lopez called “Louboutins” with the verse “I’m throwing on my Louboutins” repeated thirty-five times during the song along with the lines “Watch these red bottoms/ and the back of my jeans; Watch me go, by baby.”

In late 2010 and early 2011 Yves Saint Laurent (“YSL”) another high end maker of women’s shoes released four models of all red shoes with red soles.  Louboutin sued YSL on the theory that no one should be able to use the color red on the sole of the shoe even if the entire shoe is red.

Louboutin thereafter filed a motion for a preliminary injunction to halt the sale of YSL’s all red shoes.  Louboutin’s motion spends a lot of time educating the court as to the popularity of its shoes, the fame of its red soles, and the popularity of the shoes among real and fictional celebrities including Oprah and Barbie.

Without a doubt Louboutin has popularized the red sole shoe look with enormous media exposure in recent years.  The question for the court, however, is whether a red sole on a shoe serves a fashion function or is a legitimate trademark. Louboutin argues that because those familiar with luxury footwear now equate red soled women’s shoes with Louboutin that association amounts to a trademark.

In it’s opposition to the motion, YSL argues that shoe sole color is part of the fashion of the shoe, not a trademark.

Louboutin asks this Court to become the first ever to recognize trademark protection for a purported mark consisting solely of a color on a fashion item without even trying to explain how it avoids the aesthetic functionality bar. The Supreme Court has held that, where “color plays an important role (unrelated to source identification) in making a product more desirable,” the functionality doctrine bars trademark protection. That is inherently the case in the fashion industry, where aesthetic use of color is literally the function of the products.” . . . Allowing Louboutin to claim a monopoly on the use of red on a part of a shoe (and, by extension, on the right to make all-red shoes) would have an unprecedented, anti-competitive effect in limiting the design options available to all other designers.

YSL also argues that red soled shoes are not exclusive to Louboutin.

Louboutin ignores that YSL has been selling shoes with red outsoles for many years, in amounts greater than in the Cruise 2011 season, and that such prior sales have not resulted in a single instance of consumer confusion or other harm. Louboutin also ignores that dozens of other fashion designers also make shoes with red outsoles and have done so for years. These years of peaceful co-existence belie any argument that Louboutin will suffer irreparable harm if YSL continues to sell shoes with red outsoles, as it has done for years.

YSL goes on to argue that because both its shoes and Loubutin’s shoes are ridiculously expensive and purchased in high end stores by extremely fashion conscious consumers, no one is going to purchase a YSL shoe on the mistaken belief that it is a Louboutin.

Louboutin amazingly argues in its reply brief that color is not aesthetically functional in the case of shoe soles.  It further states that YSL should just pick a different shade of red if it wants to make all red shoes. Louboutin owns its particular shade of red for a shoe sole and no else can use it.

Louboutin’s trademark covers a specific red for outsoles, not the broad spectrum of red hues. Many shades of red and other colors are available for use by any party who wants to produce a shoe, “monochrome” or otherwise, without infringing the Red Sole Mark. Even Louboutin’s red color is available for competitors on other, more visible, parts of the shoe.

Louboutin also argued that if an injunction is not issued the floodgates will open to competitors.  Presumably this will result in the non-rich and famous being able to purchase shoes with red soles.  Once this style is available to the common unkempt masses,  Louboutin’s signature style will be forever tarnished.

The court, however, was not persuaded and ruled that in the fashion industry, color serves ornamental and aesthetic functions which cannot be trademarked.

Because in the fashion industry color serves ornamental and aesthetic functions vital to robust competition, the Court finds that Louboutin is unlikely to be able to prove that its red outsole brand is entitled to trademark protection, even if it has gained enough public
recognition in the market to have acquired secondary meaning. The Court therefore concludes that Louboutin has not established a likelihood that it will succeed on its claims that YSL infringed the Red Sole Mark to warrant the relief that it seeks.

An appeal is currently pending before the United States Court of Appeals for the Second Circuit.

Redskins tell Washington Post to Cease and Desist using Redskins Name

In what must be one of the stranger cease-and-desist requests in recent memory, the Washington Redskins have reportedly demanded that its home-town newspaper the Washington Post cease and desist using the name “Redskins” as part of its blog.  What?

A blog about the Redskins being told that they cannot use the name Redskins in their blog title?

The webcast and blog which was originally called “Redskins Insider” has since been named to “Football Insider.”

Did the Post have to change the name of its blog and webcast? Maybe.  That hypothetical case would hinge on whether readers of the Post believed that the Redskins organization was somehow sponsoring the blog and webcast.  (Although it seems doubtful that a jury made up of those in the D.C. area would believe that the Redskins organization was sponsoring anything in the Post which can be critical of the team and its management.)

The newly named Football Insider can be read here.