In Brief:  A popular catch phrase can become someone’s trademark.

In Brief:   Parody is permitted but not always available for registration as a trademark.

In Brief:  “The” can be a trademark.

In Brief:  Adopting a portion of someone else’s trademark can lead to a likelihood of confusion.

In Brief: A generic top level domain name needs something more to be a trademark.

In Brief:  If you intend to get your trademarks back after a transfer, be sure that’s what your documents say.

In Brief: Trademarks that co-exist for a long time don’t always create a likelihood of confusion.

In Brief:  Use of a licensed trademark is limited by the scope of the license.

In Brief:  Using someone else’s descriptive trademark can be fair use.

In Brief:  A trademark has to meet minimum standards of creativity for a copyright registration.

In Brief:   An emoji trademark wasn’t used in commerce.

For the Mother Cluckers trademark saga, we need a little background about goodwill. A trademark establishes a connection between the owner’s goods and services and the consumer. That connection is the goodwill in the trademark. In order to be effective, a trademark assignment requires the assignment of the goodwill attached to it. 

Assigning goodwill along with the assignment of a trademark isn’t form over substance.

Molson Coors Beverage Company sells a hard seltzer called Vizzy. Future Proof Brands, LLC sells a hard seltzer called Brizzy. Future Proof sued Coors for trademark infringement alleging that Vizzy is likely to cause confusion with Brizzy.  

Even when two product names sound similar, a likelihood of confusion isn’t automatic.

The US Supreme Court won’t be weighing in on some interesting cases in the world of IP. Here are just a few of them by topic:
Copy

• rights in Fictional Characters
• Right to Challenge Patents
• Trademarks

Most people are familiar with Apple Inc. and its apple logo. Apple Inc. and its products are ubiquitous and pervasive. At any time, a person can be wearing one of their watches, talking on one of their phones and watching a video on one of their tablets.

PrePear is a new app that allows the user to save and organize recipes, create meal plans, shop efficiently for food and prepare healthy foods. PrePear adopted a pear logo, which makes sense considering the pun in the name. When PrePear sought to register its pear logo as a trademark, USPTO’s Examining Attorney didn’t see a likelihood of confusion between the pear logo and any other logo. The Examining Attorney cleared the application for publication.

Then, Apple filed an opposition.

In 2012, Veronica Morales registered the trademark, BLUE IVY, for her event planning company. Four years later, Beyoncé Knowles-Carter’s company, BGK Trademark Holdings, LLC filed a trademark application to protect, BLUE IVY CARTER, (named after Beyoncé’s daughter) for entertainment services.

That’s when the fight began.

Brooklyn Brewery (“Brewery”) has been around for more than 30 years. Brewery sells craft beers all over the country. Brooklyn Brew Shop (“Brew Shop”) was founded in 2009 and sells beer brewing kits.

In 2010, Brewery started receiving calls from customers trying to reach Brew Shop. So Brewery emailed Brew Shop about it and suggested that Brew Shop “keep an eye on it”.

Apparently, neither side was too worried about customer confusion at that time. Brewery and Brew Shop started collaborating on projects related to beer making, including co-branded beer-making kits, promotional events, books on beer making and educational beer making programs.

It was a match made in beer heaven. Until May 2015.

This blog recently discussed the inability to protect movement during a sightseeing tour as trade dress (“Emotionally Yours”, 6/2/2020). Other types of trade dress can also have problems.

Mondelez International Inc. owns a lot of trademarks. One of them is “Chiclets” for gum. Mondelez almost lost it.

VIP Products LLP sells a series of dog toys called “Silly Squeakers”. The toys are often fashioned to look like well-known beverage containers. One of the toys is called “Bad Spaniels”. It looks like a Jack Daniel’s whiskey bottle but with alterations. Of course, the name was changed from Jack Daniel’s to Bad Spaniels. But it didn’t stop there. Instead of “Old No. 7”, it said “Old No. 2 on your Tennessee Carpet” (which should resonate with dog owners). The alcohol description read 42% POO BY VOL” and “100% SMELLY” (again something instantly recognized by dog owners).

The Hard Rock Café’s operating company, JC Hospitality LLC, tried to register the trademark “The Joint” for its casino based music venues. The USPTO refused registration. On appeal, the TTAB affirmed. Hard Rock then appealed to the Federal Circuit Court of Appeals who also affirmed the refusal.

If the words “reply all” sound familiar to you, then you probably use email to communicate with others for various and sundry reasons. Despite their widespread use, these two words became the subject of trademark litigation.

Thru Inc. sued Dropbox for trademark infringement claiming to own the “DropBox” trademark. After a lot of litigation and some really good discovery, Dropbox was able to show that Thru may have had some bare rights to the “DropBox” mark but it never actually used the mark. Thru then sat back and watched as DropBox branded itself and became a household name for shareable file storage. Then Thru continued to drag its heels in litigation to cash in on DropBox’s initial public offering in 2018. DropBox discovered emails from Thru’s CEO which unabashedly chronicled Thru’s strategy. In the end, DropBox obtained a $2.3 million judgment that included attorney’s fees and costs.

In two recent cases, trademark holders learned that it was a huge Missed-Steak to sue when puns were involved.

That’s not a typo. The subject of today’s blog is THE. THE Ohio State University filed an application to register THE for wearing apparel. According to news sources, Ohio State demands to be called “THE Ohio State University”. Ohio State argues that THE is part of its name. Sports and journalists have often commented on Ohio State’s branding insistence calling it stupid, ridiculous, pompous and arrogant. Ohio State responds to these negative comments saying that it has every right to protect its brand.