Which is why Apple is challenging Australian company Woolworths from trademarking its apple logo.

Woolworth's New Logo and Apple's Logo

Woolworths recently launched a new logo as a stylized “W” that is in the shape of an apple with a stem. Woolworths’ application includes a wide class for electrical goods and technology, putting it in direct competition with Apple should the retailer choose to brand computers, music players or other devices.

The Australian chain is the largest retailer in Australia and New Zealand, selling products from groceries and liquor to the company’s own cell phones.

Apple argues that the new design is too close to its logo and has asked IP Australia, the government agency in charge of trademarks, to deny the Trademark application.

The focus of the inquiry is whether consumers will likely be confused. The goal is to protect consumers, not to protect trademarks. Therefore, even if the marks in question are quite similar but there is no real likelihood that consumers will be confused then there would be no harm.

So the question remains…will Woolworth’s shoppers believe they are buying Apple laptops when they are really buying Woolworth’s store brand laptops?

According to the Complaint, A Hundred Monkeys “provides marketing and branding consultation services throughout the United States and worldwide” and 100 Monkeys “provides marketing and branding consultation services throughout the United States.”

A Hundred Monkeys has been using the name since 1992 and was granted a trademark in 1999, according to court documents. The Wisconsin company was founded in 1998 and adopted the 100 Monkeys name in 2006.

Because the names sound so similar and the two companies are direct competitors, “customers and potential customers are likely to be confused into believing” the companies are related, the California company alleged in a lawsuit filed this week in Milwaukee.

The Wisconsin company disagrees, saying there is no infringement because the firms offer different services.

Likelihood of Confusion

In any likelihood of confusion analysis two key, although not exclusive, considerations is the similarities between the marks and the relationship between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).  See also In re E. I. du Pont de Numours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).

Relationship Between the Services

An analysis of the second du Pont factor, similarity or dissimilarity of the services, shows, at least on the pleadings, that the services are identical inasmuch as both parties provide “marketing and branding consultation services throughout the United States”.  Defendant’s own website states that their services include:  “Strategic Marketing Communications Planning” and they help with “brand identity, content creation, copywriting and search engine optimization”

It would appear that the du Pont factor involving the similarity of services weigh in favor of finding a likelihood of confusion.

Similarity Between the Marks

“When marks would appear on virtually identical goods or services, the degree of similarity necessary to support a conclusion of likely confusion declines.” Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992).

In this case the marks at issue are Plaintiff’s registered mark “A HUNDRED MONKEYS” and Defendant’s use of the mark “100 MONKEYS”

Turning to the first du Pont factor, similarity or dissimilarity of the marks when viewed in their entireties in terms of appearance, sound and connotation the use of the numeral “100” creates a sound impression identical to the word “hundred” in Plaintiff’s mark. 

It appears from the face of the pleadings that the marks are substantially similar and that consumers are likely to believe that the sources are in some way related or associated.

____________________________________
In re E.I. Du Pont De Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ2d 563, 567 (CCPA 1973), sets forth the factors for determining the likelihood of confusion. The relevant Du Pont factors in this case are:

(1) The similarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.

(2) The similarity 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 of established, likely-to-continue trade channels.

(4) The conditions under which, and buyers to whom, sales are made.

(5) The nature and extent of any actual confusion.

(6) The length and nature of any concurrent use without evidence of actual confusion.

(7) The fame of the prior mark.

The U.S. Court of Appeals for the Fifth Circuit ruled in an unpublished opinion on Wednesday that the district court erred in granting summary judgment to Domino’s because there were enough facts in dispute that the case could not be decided on summary judgment.

The case was remanded back to the District Court for further proceedings.

Likelihood of Confusion?

Red Bull North America has sued Central Supply, Inc. in the U.S. District Court for the Eastern District of New York for trademark infringement, unfair competition and copyright infringement for Central Supply allegedly importing and selling “gray market” versions of the popular energy drink.  Red Bull claims that the “gray market” energy drinks are intended solely for distribution at overseas locals and could have different nutritional information, unfamiliar ingredients and lack of federally mandated nutritional disclosures.

Probably more important to Red Bull’s bottom line is that these “gray market” imports circumvent authorized distribution networks.  In addition, Red Bull alleges that these gray market cans bearing Red Bull’s trademarks and copyrighted subject matter have a different overall image than the North American versions of the can and that this different look is “likely to cause consumer confusion, mistake and/or deception to the detriment of Red Bull.”

All too often clients seek to have a trademark filed with the USPTO even though they have yet to meet the requirements needed to legally file a trademark application.  More often than not, the applicant has not established a use in commerce for its trademark quite yet and simply hopes to file an Intent to Use trademark application in order to buy time.  Usually the applicant will use the six months until a Statement of Use must be filed to begin producing the goods or offering the services.   With priority being so important it is easy to see why clients are aggressive in their filings.

Decisions by the Trademark Trial and Appeal Board (TTAB) reaffirm that an Intent to Use Trademark, under section 1(b) of the Trademark Act, is not simply a means to buy time for the applicant to meet the requirements of a section 1(a) Use in Commerce trademark.  Even if the mark eventually achieves registration, it is subject to opposition and cancellation in light of the decision in L.C. Licensing, Inc. v. Cary Berman, Opposition No. 91162330 (TTAB March 28, 2008).

An applicant filing a section 1(b) Intent to Use trademark must possess a bona fide intent to use the mark.  Something more than a good faith intention to eventually use the mark is needed.  As the Board held in L.C. Licensing, , more is required; namely documentary evidence of your intent to use the trademark.  Such documentary evidence could include samples of brochures, fliers, signs, or other materials evidencing how the mark is going to be used; snapshot of websites, ; business plans; or other objective evidence showing how the mark will be used In commerce.  If you have purchased your domain name and have a website ready to go live and everything else is prepared and you have simply yet to use the mark in commerce or “go live”, than you would likely meet the requirements to file and Intent to Use Trademark as set forth in L.C. Licensing.

However, if you woke up today, as my client did, and thought of a future product line that does not exist, you will likely need to do some work before it is time to file an Intent to Use trademark.

The case began in 1992 when a petition to cancel the Redskins trademark was filed with the U.S. Patent and Trademark Office.  The petition to cancel was based on language in 15 U.S.C. 1052(a) that effectively prohibits the Patent and Trademark Office from registering a trademark if it:

“Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute”

Summary Judgment was granted by the United States District Court for the District of Columbia and recently the U.S. Court of Appeals for the D.C. Circuit affirmed that the claims were barred by the doctrine of laches.  The court ruled that the youngest member of the group seeking cancellation, Mateo Romero, unreasonably delayed his bringing of a cancellation petition and that his eight-year delay demonstrates a lack of diligence on his part. The Court further found that Romero’s delay has resulted in both trial prejudice and economic prejudice to Pro-Football, such that it would be inequitable to allow Romero to proceed with his cancellation petition

Mause citing  a 2001 ruling by the U.S. Court of Appeals for the 3^rd Circuit asserted that the doctrine does not apply, because the law explicitly allows cancellations of trademarks “at any time.” The opinion by now-Justice Samuel Alito, Jr. in Marshak v. Treadwell, 240 F.3d 184 (3d Cir. N.J. 2001) said trademark cancellation claims are not time-barred.

It appears that there is no consensus in the Circuits as to the availability of laches as a defense to cancellation petitions[1] so it may very well be up to the Supreme Court to iron-out this controversy.  Stay tuned…

________________________________

[1] Third Circuit’s suggests laches is not an available defense to cancellation, see Marshak v. Treadwell, 240 F.3d 184, 193-94 & n.4 (3d Cir. 2001).

Federal Circuit permits the defense of laches to a cancellation petition, see Bridgestone/Firestone Research, Inc. v. Auto. Club de L’Ouest de la France, 245 F.3d 1359, 1360-61 (Fed. Cir. 2001), see Pro-Football, Inc. v. Harjo, 415 F.3d 44, 48 (D.C. Cir. 2005).

KB toys filed for bankruptcy in December and sold its trademark, logo and web address at a bankruptcy auction for $2.1 million in August to CE Stores.

The couple, who has owned the 50-year-old Lions Tap since the 70s, filed a copyright suit with the U.S. District Court that charges the Oak Brook, IL mega-chain with trademark infringement, statutory unfair competition, false designation of origin and unjust enrichment according to Nation’s Restaurant News….

This is a good lesson on why you should register your trademark with the U.S. patent and Trademark Office.  Had there been a registered trademark, it is doubtful that McDonalds would have used the mark.  It will be interesting to see if McDonalds will fight this.  Are the angus burgers a a limited time thing?  Stay tuned….

Restaurant News

Nude Brands (NBL), run by eco-entrepreneur Bryan Meehan and Bono’s wife Ali Hewson, described as an ”investor and muse” of the company, is the owner of a registered trademark for the word NUDE – in capital letters – for a large range of goods and services including cosmetics and perfumery. Nude applied for and successfully registered the pan-European Community Trademark (CTM) for the word ‘Nude’ to be used as a trade mark specifically for perfumery and skincare, as well as for other products.

Apparently, Stella McCartney approached Nude in May 2008 for permission to use the trademark ‘Nude’ for a Stella McCartney perfume.  Nude refused claiming that they are developing a Nude scent and the product is forthcoming.

Nude considers the launch of ‘Stella Nude’ by L’Oreal to be a clear infringement of Nude’s trade mark and has taken the matter to the English High Court to protect their brand.

On August 20, the High Court confirmed that Nude has a clearly arguable claim of trade mark infringement against the Stella Nude perfume.

However, the judge refused to grant a preliminary injunction preventing a launch of STELLANUDE concluding that the likely damage to SML and L’Oreal if an injunction is wrongly granted outweighs the damage to NBL if it is refused.’

A trial of Nude’s claim will take place next year.

Are Fan Cans a Trademark Infringement?

Some colleges around the country are not cheering for Bud Light’s latest, some may call it brilliant, marketing campaign.

Using some 27  combinations, the cans carry the colors of various football teams throughout the nation. The Bud Light marketing campaign urges football fans to “show your true colors ” on game day.

Neither the name of the team nor its logo is displayed and the teams have no connection to the Bud Light campaign.

Nonetheless some colleges are complaining.

The Wall Street Journal reports that 25 colleges have formally asked Anheuser-Busch, brewer of Bud Light, to drop the campaign near their campuses, The University of Michigan  demanded that Anheuser-Busch not sell the “maize and blue cans in the  state,” the Journal reported. The University of Colorado, Oklahoma State University, Texas A&M University and Boston College have also told the company to stop distribution near their campuses, citing trademark issues and concern about student alcohol use, the newspaper said.

But is this a trademark or trade dress issue?  Neither the team name nor its logo are on the cans, merely colors.  So Bud Light could produce Navy Blue and Gold/Yellow cans and they could sell them around Navy, Notre Dame, West Virginia and Michigan just to name a few.  That fact alone weakens any claim that a color combination on a can is infringing the trademark or trade dress of a particular school.

I think the trademark infringement threat was dead on arrival.  Bottom line is Bud Light has brilliant marketers that  have appealed to the rabid fans’ obsession with anything containing their school’s colors.

Go Navy!