The Supreme Court to Determine Whether Parody Dog Toys Are Allowable Under Federal Trademark Laws

Author: Benni Amato

We previously wrote about the trademark and trade dress dispute between Jack Daniels and VIP Products’ “Bad Spaniels” parody toy here. Approximately two years later, the United States Supreme Court granted certiorari to weigh in on the case.

Original Motions for Summary Judgment
In 2016, the District Court of Arizona ruled on the parties motions for summary judgment. VIP Prod., LLC v. Jack Daniel’s Properties, Inc., No. CV-14-2057-PHX-SMM, 2016 WL 5408313 (D. Ariz. Sept. 27, 2016). The district court ruled in Jack Daniels’ favor that its marks were valid and rejected VIP’s nominative fair use defense and First Amendment fair use defense. The district court held a four-day bench trial on Jack Daniels’ claims for trademark infringement and dilution in 2017. In 2018, the district court issued a Findings of Fact, Conclusions of Law, and Order that VIP’s Bad Spaniels toy infringed on and diluted Jack Daniels’ trademark and trade dress and issued an injunction prohibiting VIP from selling the Bad Spaniels toy. VIP Prod., LLC v. Jack Daniel’s Properties, Inc., 291 F.Supp.3d 891, 897 (D. Ariz. 2018).

Ninth Circuit Reversal
VIP appealed to the Ninth Circuit Court of Appeals. In 2020, the Ninth Circuit affirmed that Jack Daniels’ trademarks were valid and that VIP’s nominative fair use defense was not, but reversed the district court’s other findings. VIP Prod. LLC v. Jack Daniel’s Properties, Inc., 953 F.3d 1170, 1172 (9th Cir. 2020). The Ninth Circuit found that VIP did not dilute the Jack Daniels marks because the Bad Spaniels toy was used to convey a humorous message, which the First Amendment protected. Further, because the Ninth Circuit found the Bad Spaniels toy to be an expressive work, no likelihood of confusion analysis could take place unless Jack Daniels established one of the two Rogers test requirements—namely, whether VIP’s use of the mark was either “not artistically relevant to the underlying work,” or “explicitly misleads consumers as to the source of content of the work.” In 2020, Jack Daniels filed a petition for certiorari to the United States Supreme Court, which was denied in early 2021. Jack Daniel’s Properties, Inc. v. VIP Prod. LLC, 141 S. Ct. 1054 (2021).

Summary Judgment on the Rogers Test
On remand to the district court, VIP moved for summary judgment, arguing that Jack Daniels could not satisfy either prong of the Rogers test. As to the first prong of artistic relevance, the district court noted that under the Rogers test, any non-zero level of artistic relevance is sufficient. VIP Prod. LLC v. Jack Daniel’s Properties Inc., No. CV-14-02057-PHX-SMM, 2021 WL 5710730 (D. Ariz. Oct. 8, 2021). Since the Bad Spaniels toy relies on Jack Daniels’ trade dress as its punchline, it was found to be artistically relevant.

As to the second prong of being explicitly misleading, the district court noted that this “is a high bar that requires the use to be an explicit indication, overt claim, or explicit misstatement about the source of the work.” Consumer perception or confusion is irrelevant; instead, what is relevant is: (1) the degree to which VIP used the mark in the same way as Jack Daniels, and (2) the extent to which VIP added its expressive content to the work beyond the mark itself. Although the Bad Spaniels toy heavily imitated the Jack Daniels trade dress, nearly every element was altered with VIP’s expressive content. Thus, Jack Daniels could satisfy neither prong of the Rogers test.

That said, the district court criticized the Rogers test, as almost no court has ever found a mark to be irrelevant to a junior use, and the “explicitly misleading” standard displaces the likelihood of confusion test and excuses almost every use short of “slapping another’s trademark on your own work and calling it your own.” Nonetheless, the district court noted that it was bound by Ninth Circuit precedent and ruled in VIP’s favor. The Ninth Circuit affirmed the district court’s rulings, and Jack Daniels again petitioned the Supreme Court for certiorari, the questions on appeal virtually identical to its first petition. VIP Prod. LLC v. Jack Daniel’s Properties, Inc., No. 21-16969, 2022 WL 1654040 (9th Cir. Mar. 18, 2022). This time, however, the Supreme Court has granted certiorari. Jack Daniel’s Properties, Inc. v. VIP Prod. LLC, 143 S. Ct. 476 (2022).

Questions Before the Supreme Court
The questions before the Supreme Court are (1) whether the Bad Spaniels parody products are subject to the traditional likelihood of confusion test or the Rogers test that provides heightened First Amendment protection, and (2) whether the Bad Spaniels parody products are “non-commercial” under 15 USC § 1125(c)(3)(C) and thus prevented from a trademark dilution by tarnishment claim. Previously, the Ninth Circuit had reasoned that speech is non-commercial “if it does more than propose a commercial transaction…and contains some ‘protected expression’…even if used to ‘sell’ a product.” Because the Bad Spaniels product was used to “convey a humorous message” protected by the First Amendment, the Ninth Circuit ruled that VIP was entitled to summary judgment regarding federal and state law dilution claims. The parties are briefing the Supreme Court on these issues, and while no dates have been set for oral arguments, we anticipate the Supreme Court will issue a decision by the end of this year.

About the Author: Benni Amato is a partner in Gordon Rees Scully Mansukhani’s Intellectual Property Practice Group. Her practice focuses on litigation matters involving trademarks, copyright, trade secrets, patents, internet issues, cybersecurity, contractual disputes, domain name arbitrations, and trademark and copyright prosecution and licensing. Ms. Amato’s biography can be found here.

Damages Claims Not Barred by Prior TTAB Cancellation Proceedings

Author: Violaine Brunet

The “Ebonys” is a 70s soul group, which helped create the “Philadelphia Sound,” incorporating elements of soul, funk, disco. The group was founded in 1968 by David Beasley (“Beasley”) and other members. William Howard joined the band in the 1990s, but departed after a few years.

In 2012, Howard registered “THE EBONYS,” as a federal trademark registration with the PTO (the “ ‘469 mark”), which prompted Beasley to ask the Trademark Trial and Appeal Board (the “TTAB”) to cancel the registration (the “ ‘469 mark”). However, the TTAB dismissed Beasley’s 2013 and 2017 petitions.

Unsatisfied with the outcomes of the TTAB proceedings, Beasley sued for trademark infringement in federal court in 2019. The District Court granted Howard’s motion to dismiss Beasley’s Complaint on the grounds of claim preclusion. The District Court reasoned that claim preclusion barred Beasley from asserting the claim because it turned on “facts and legal theories [that] were all actually litigated in” the 2017 petition, and Beasley could have raised any priority of use arguments in his 2013 petition. The trial judge further concluded that claim preclusion applied even though Beasley sought a damages remedy that he did not pursue at the TTAB.

Beasley then appealed the trial court’s decision to the Third Circuit Court of Appeals. The central issue of this appeal was whether Beasley’s prior losses in cancellation proceedings before the TTAB precluded Beasley’s Section 43(a) claim (pertaining to damages for trademark infringement) before the District Court. The Court of Appeals held that they do not. Specifically, the appellate court stated that “a limit to claim preclusion applies to cases, like this one, where a plaintiff seeks damages or an injunction in a section 43(a) infringement action after pursuing a cancellation claim before the TTAB.”

The Appeals Court held that the TTAB is “not a general-purpose tribunal for trademark disputes. Instead, it has limited jurisdiction ‘to determine only the right to register’ a trademark and cannot ‘decide broader questions of infringement or unfair competition.’ ” (citations omitted) (emphasis added) “[T]he TTAB’s jurisdiction is narrow,” while the “statutory provision [Section 43(a) infringement action] under which Beasley sues is broad.” (emphasis added).

The Court wrote that “[b]ecause the TTAB has no jurisdiction to consider whether an infringer’s use of a mark damages a petitioner seeking cancellation, and in turn cannot award any remedy beyond cancellation for the injuries a petitioner has suffered. . . a Section 43(a) claim is not one that could have been brought in a TTAB cancellation proceeding.” (emphasis added).

This decision from the Third Circuit provides some comfort and reassurance to litigants that they can bring their claims before the TTAB without fear of waiving their rights to bring any future trademark infringement actions in federal courts, including actions that seek monetary and injunctive relief, which are not available in the TTAB.

On a related note, this Third Circuit decision joined the rulings of the Ninth and Second Circuit, which held that that preclusion is tightly limited to only those issues actually decided on the merits in the TTAB and for which the TTAB has jurisdiction to decide.

About the author: Violaine Brunet is an associate in Gordon Rees Scully Mansukhani’s Intellectual Property Practice Group. Her practice focuses on litigation matters involving copyright, trademarks, and patents. Ms. Brunet also has experience in international law from her work in the Superior Court of Quebec in Quebec City, Canada. Ms. Brunet’s biography can be found here.

Lady A vs. Lady A: (Trademark) Battle of the Bands

Author: Hannah Brown

The tragic death of George Floyd last summer sparked nationwide protests and activism. This response and demand for change led to noteworthy decisions by many corporations and entities. Quaker Oats announced its plans to rebrand its Aunt Jemima brand of syrup and pancake mix because the company recognized that “Aunt Jemima’s origins are based on a racial stereotype.” The companies that own Mrs. Butterworth’s and Cream of Wheat also proclaimed their intent to reshape the brands’ images. The Washington Redskins announced that they would no longer use the name and logo “Redskins” and the team (for now and maybe permanently) will go by the name the “Washington Football Team.”1

Further, in June 2020, a country band that had gone by the name “Lady Antebellum” since it was formed in 2006 officially changed its name to “Lady A.” The band issued a public statement, noting that they named the band after the southern “antebellum” style home where they took their first photos together, but they “did not take into account the associations that weigh down this word referring to the period of history before The Civil War, which includes slavery.” The band pledged to drop the word “antebellum” and “move forward as Lady A, the nickname [their] fans gave [them] almost from the start.”

Following this announcement, the band was criticized by blues singer Anita White, who claims she has recorded music and performed under the name Lady A for decades. The parties attempted to work out a way where they could both use the name, with the band offering Ms. White money for legal fees and a promise to help her with her career if she gave them rights to use the name Lady A. Ms. White did not agree to these terms and requested a $10 million payment to allow the band to continue to use the mark. The band did not accept and filed suit in Tennessee federal court, seeking declaratory judgment that the band’s trademarks incorporating “Lady A” do not infringe any of Ms. White’s rights in “Lady A.” The band claims it has been using “Lady A” interchangeably with “Lady Antebellum” since 2006. The band attached evidence to its complaint that it registered the trademark “Lady A” for musical records and for entertainment services in 2010 and 2011. Ms. White did not oppose or contest the registrations, which are now incontestable. See Section 15 of the Trademark Act, 15 U.S.C. § 1065. The band also notes that Ms. White never applied to register “Lady A” as a trademark. The band specifies in its complaint that it does not wish to prohibit Ms. White from performing as “Lady A” nor does it seek damages; instead, it wishes to peacefully coexist with her.

Ms. White countersued in Washington federal court, alleging that the band “usurped” her brand and caused her to lose business and status. She brings causes of action for trademark infringement and unfair competition, claiming that she has used the stage name and trademark “Lady A” for nearly thirty years and has thus accrued common law rights in the trademark. She seeks an injunction and damages.

Both cases are still ongoing and nothing on the merits has been decided. There seems to be no dispute that the band has been using the name “Lady A” for at least a decade; they submitted proof of online articles, clothing, and other evidence that they can be associated by the name as well as by the name “Lady Antebellum.” The band also registered the mark, while Ms. White did not. The band notes the incontestability status of their marks, but this is likely not something that will help them in this case. Incontestability relates to the validity of a mark, not the strength of the mark. The mark’s registration as incontestable is not relevant to the issue of whether the mark is sufficient to trigger confusion. An incontestable mark is also subject to the challenge that another party used the mark in commerce first—before the incontestable mark’s registration. This is what Ms. White is claiming, that she used the mark in commerce first through performances and music sales. Ms. White claims she released albums as “Lady A” since 2006 and has been performing using the name since at least the early 1990s.

The band also claims that Ms. White has never used “Lady ‘A’” as a trademark to identify her goods or as a service mark to identify her entertainment services, and, if she did use it as a trademark, it was after the band established their rights in the mark. Ms. White disagrees, stating she has used the name for decades.

Ms. White will need to prove the territory in which she has continued to use the mark without significant interruption since prior to the band’s use in that territory. The band is nationally, if not internationally, known, but, as of now, it appears that Ms. White’s territory of use is not so clear or established. If Ms. White can establish her territory of use (along with a zone of natural expansion), she will likely have rights superior to the band in that territory. If Ms. White’s use has been restricted to only one small area, such as Seattle, the band may be granted nationwide use of the mark, subject only to an exception in that area. Even the band’s incontestable registration would not grant it the exclusive right to use the mark where Ms. White has continued to use the mark and has established rights since prior to the band’s registration. It is unclear how such a division and exception could be made for the band who performs and sells music nationwide.

As of now, the only pending questions before both district courts in the parties’ cases relate to venue and the first to file rule. But eventually, the dueling trademark rights will be analyzed and this will be an interesting case for trademark lawyers to continue to follow.

About the author: Hannah Brown is an associate and member of Gordon Rees Scully Mansukhani’s Intellectual Property Practice Group, specializing in trademark, copyright, and patent litigation. She is a former law clerk to the Hon. Janis Sammartino and Hon. Cynthia Bashant of the U.S. District Court, Southern District of California.
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1 As an interesting intellectual property-related side note, this is not the first time the Redskins have been criticized for their name. In 1992, several Native Americans filed a joint petition with the Trademark Trial and Appeal Board (TTAB) of the U.S Patent and Trademark office requesting the cancellation of the term “Redskins.” The petition claimed the term is “disparaging” to American Indians. The TTAB judges canceled the federal registration of the mark Redskins “on the grounds that the subject marks may disparage Native Americans and may bring them into contempt or disrepute.” The case underwent several rounds of appeals. Eventually, the Fourth Circuit Court of Appeals reinstated the trademark. See Pro-Football, Inc. v. Blackhorse et al., Case No. 15-1874 (4th Cir. 2015). The decision was based on a Supreme Court decision issued in June 2017 in an unrelated case involving a rock band, the Slants. The Supreme Court declared that a section of federal law banning trademarks that may disparage people was a violation of the First Amendment. It was this section of the Lanham Act that the Native Americans relied upon to argue that the Redskins’ trademarks should be cancelled. The Fourth Circuit therefore issued a decision consistent with the Supreme Court ruling that the disparaging trademark ban is unconstitutional.
Although technically a loss for the plaintiffs, the lawsuit alerted the nation to the Native Americans’ contentions and feelings regarding the team’s name. Now, their request has been granted and the “Redskins” are no more.

Are Commercial Parody Dog Toys Subject to the Heightened Rogers Test, and Do They Qualify As Non-Commercial Works under the Trademark Dilution Revision Act? Jack Daniels and Amici Ask the U.S. Supreme Court to Overturn the Ninth Circuit

Author: Benni Amato

The dog toy industry has drawn the ire of many famous brands; one of the latest examples is VIP Products’s “Bad Spaniels Silly Squeaker” dog toy, fashioned to resemble Jack Daniel’s Old No. 7 Black Label Tennessee Whiskey. The toy replaced “Jack Daniel’s” with “Bad Spaniels,” along with a drawing of a guilty-looking spaniel. Instead of “Old No. 7 Tennessee Sour Mash Whiskey,” the toy read, “Old No. 2 on your Tennessee Carpet.” Instead of “40% ALC BY VOL (80 PROOF),” the toy read, “43% POO BY VOL” and “100% SMELLY.”

Jak Daniel’s emerged victorious before the United States District Court, District of Arizona on summary judgment and after a bench trial on its trademark infringement and trademark dilution claims. However, while the Ninth Circuit Court of Appeals affirmed the validity of Jack Daniel’s trade dress, it vacated and remanded the judgment on the infringement claim, and reversed the judgment on the dilution claim.

The Infringement Claim

The Ninth Circuit noted that while trademark and trade dress infringement cases turn on likelihood of confusion, if the otherwise infringing goods involve “artistic expression,” a plaintiff must also show either that the defendant’s use of the mark is either “not artistically relevant to the underlying work,” or “explicitly misleads consumers as to the source of content of the work”—otherwise known as the Rogers test, named after Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) and adopted by the Ninth Circuit in Mattel, Inc. v. MCA Records, 296 F.3d 894, 900 (9th Cir. 2002).

Whether a work is expressive depends on whether the work “communicat[es] ideas” or “express[es] points of view.” The work need not be considered high art, nor do the work’s availability commercially vitiate any expressive qualities. The Ninth Circuit concluded that the Bad Spaniels toy was an expressive work that conveyed humor, and it thus vacated judgment and remanded the claim to the district court to consider the Rogers test.

Jack Daniels now seeks certiorari from the United States Supreme Court, arguing that the Rogers test should be limited to the use of trademarks in the titles or contents of expressive or artistic works, not a commercial dog chew toy.

The Dilution Claim

The Ninth Circuit noted that a non-commercial use of a mark is not subject to trademark dilution claims. Then, without any in-depth discussion, the Ninth Circuit concluded that because the Bad Spaniels product was protected by the First Amendment, VIP was entitled to judgment on the dilution claims in its favor.

Jack Daniels also seeks certiorari from the Supreme Court on this issue, arguing that a commercial product’s use of humor should not render the product “noncommercial” under 15 U.S.C. § 1125(c)(3)(C), and thus barring a dilution by tarnishment claim.

Previously, in the Mattel case, the Ninth Circuit held that as long as a work was not purely commercial (for example, the song “Barbie Girl”), then the First Amendment defense can apply to dilution claims. Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 907 (9th Cir. 2002). However, due to the lack of analysis in the Jack Daniels opinion, it is not clear how the Ninth Circuit found the Bad Spaniels squeaker toy as not purely commercial.

Jack Daniel’s and its amici—including Campbell Soup Company, Campari America, Alcohol Beverage Industry Associations, Constellation Brands, and International Trademark Association—expressed concern in their briefing that a defendant selling a commercial product may escape any liability under the dilution laws by simply making the product humorous.

Chewy Vuitton

One of the more famous dog toy cases is Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 263 (4th Cir. 2007), which involved a “Chewy Vuitton” dog toy. In fact, the Ninth Circuit cited to this Fourth Circuit case in supporting its own Jack Daniels opinion. However, in the Louis Vuitton case, while the dog toy’s parodic nature dominated much of the opinion, the Fourth Circuit found no likelihood of confusion in part because the products were different, and there was minimal overlap between advertising and sales channels. The Jack Daniels district court found the opposite, that likelihood of confusion existed, in part because Jack Daniels licensed its intellectual property for certain dog products.

As to the dilution by tarnishment claim in Louis Vuitton, the Fourth Circuit ruled that Louis Vuitton failed to satisfy its burden that the dog toy would harm its reputation. While reaching a similar result, the Ninth Circuit instead cited to the First Amendment and non-commerciality as its reason for reversing judgment on the dilution by tarnishment claim.

In other words, while both the Fourth Circuit and Ninth Circuit ruled in favor of the dog toy producers, the appellate courts relied on different analyses.

Case Status and Opinions

The Supreme Court has yet to grant certiorari to review the case. VIP Products and its amici—Trademark Law professors, including Rebecca Tushnet of Harvard Law School—filed their briefs on December 16, 2020, and Jack Daniels filed its reply brief on December 23, 2020.

While consumers may or may not confuse a famous whiskey brand with a potty-humored dog toy, and the dog toy may or may not tarnish the whiskey brand’s reputation, it appears that the main objections from the Jack Daniels amici and commentators stem from the Ninth Circuit’s reasoning, or lack thereof. The Ninth Circuit’s opinion could lead to an expansion of what constitutes “expressive” and/or “non-commercial” works, unless the Supreme Court decides to take on the issue and rule otherwise.

About the author: Benni Amato is a partner in Gordon Rees Scully Mansukhani’s Intellectual Property Practice Group. Her practice focuses on litigation matters involving trademarks, copyright, trade secrets, patents, internet issues, cybersecurity, and contractual disputes, as well as domain name arbitrations and trademark and copyright prosecution and licensing. Ms. Amato’s biography can be found here.

Trademark Battle Heats Up Over Fizzy Way To Cool Down

Author: Tessa Carberry

In the past few years, cooling off with a hard seltzer on a hot summer day has become increasingly popular. While the two biggest players in the market, White Claw and Truly, enjoy the lion’s share of the market, many other companies are looking to capitalize in the hard seltzer market. And, as the Summer of 2020 begins to heat up, so does the trademark battle between two of these companies: Future Proof Brands, LLC (“Future Proof”) and Molson Coors.1

The Products and the Marks

On September 1, 2019, Future Proof launched “Brizzy,” a seltzer cocktail offering consumers a refreshing alcoholic beverage with only 100 calories, 2 carbs, 1 gram of sugar and 5% alcohol by volume. Brizzy flavors include Watermelon Mule, Strawberry Rose, and Mixed Berry Mojito. Future Proof applied to register the Brizzy mark with the USPTO in November 2018. Originating in Austin, Texas, the products can now be found in over 1,000 retail locations in four states with plans to expand into more states this year.

Molson Coors’s hard seltzer, “Vizzy,” is advertised as “the only hard seltzer with antioxidant Vitamin C.”2 It similarly offers 100 calories, 2 carbs, 1 gram of sugar and 5% alcohol by volume. In September 2019, Molson Coors filed an application to register the Vizzy trademark. Vizzy flavors include “hint of” pineapple mango, black cherry lime, blueberry pomegranate, and strawberry kiwi.

Future Proof Attempts to Protect Brizzy

In February 2020, after filing an action for trademark infringement, Future Proof filed a motion seeking a preliminary injunction prohibiting Molson Coors from selling and marketing Vizzy on the grounds that Vizzy was confusingly similar to Brizzy.3 Future Proof sought to enjoin Molson Coors from: (1) advertising or selling alcoholic beverages with Vizzy or any other confusingly similar mark to Brizzy; and (2) using, registering, or applying to register the Vizzy mark or any variation thereof.

However, the court refused to grant the preliminary injunction finding Future Proof did not meet its burden on the first requirement of the Rule 65 standard—namely, that it was likely to succeed on the trademark infringement claim. The court held that Future Proof failed to show it would succeed on the merits of the claim because there was not a likelihood of confusion between the marks – one of the two elements of infringement. The court examined the eight factors for confusion, discussed below, before concluding that, taken as a whole, there was insufficient evidence to demonstrate a likelihood of success on the merits.

The strength of the mark allegedly infringed

While Future Proof asserted that Brizzy was a strong mark, the court disagreed for two reasons. First, relying on precedent, the court reasoned that because the two marks share in the common root word “fizzy,” “which is certainly an adjective that a customer looking for a flavored, alcoholic seltzer product would desire…Plaintiff cannot realistically hope that by obtaining a mark based on and characterized dominantly by one word…it can prevent competitors from doing the same.” Second, the court points out there is a “plethora of competing products humorously close to [Future Proof’s] mark” such as Malibu’s Fizzy, Izzie Beverages, and Bizzy Cold Brew, among others. For these reasons, the court weighed this factor strongly in favor of denying the injunction.

The similarity between the two marks

Here, the court considered the similarity of the two marks by looking at their appearance, sound, and meaning. The court acknowledged that the letter “B” and “V” are easily confused4, but agreed with Molson Coors that the “logos, font, coloring, cans and packing could not be more different.” Since this factor is considered through the lens of how the customer perceives the marks, the court did not believe there was a high likelihood a customer would think the marks are similar, favoring denial of the injunction.

The similarity of the products or services, identity of the retail outlets and purchaser, and the advertising media used

The court considered these elements together and, with relatively minimal discussion, concluded they weigh in favor of granting the injunction.

The defendant’s intent

The court focused its inquiry on whether Molson Coors intended to derive benefits from Future Proof’s reputation. Future Proof presented no evidenced that Molson Coors intended to derive such a benefit and the court noted Molson came up with Vizzy months before Brizzy hit the market. This factor weighed in favor of denying the injunction.

The evidence of actual consumer confusion

Future Proof offered one instance of actual confusion wherein a wholesaler asked a Future Proof employee to talk about “Vizzy” when referring to the Future Proof product. However, the court drew the distinction that this was not consumer confusion, but wholesaler confusion and added this was a “fleeting mix-up of names.” Again, the court weighed this factor in favor of denying the injunction.

The degree of care exercised by potential purchasers

The court did not spend much time on this factor, stating “given the low cost of the products at issue, this factor provides little or no relevance to the court’s determination.”

Future Proof Refuses to let its Argument Fall Flat

On April 20, 2020, Future Proof filed a notice of interlocutory appeal of the court’s denial of the preliminary injunction motion. On June 10, 2020, Future Proof, refusing to let its argument fall flat, filed its 54-page brief opening brief on appeal, raising the overarching question of whether the “trial court erred in applying the factors…for evaluating a likelihood of confusion.”5 Future Proof asserted that Molson Coor’s use of Vizzy is “textbook trademark infringement” and focused its argument on four of the eight confusion factors: strength of the mark; similarity of marks; actual confusion between marks; and consumers’ degree of care and Molson Coor’s intent.

Strength of the Mark

Future Proof argues the trial court erred in finding Brizzy is a “weak” mark because it misapplied precedent by: (1) ignoring the presumption of distinctiveness enjoyed by a trademark holder and; (2) ignoring the tests adopted by the 5th Circuit to assess descriptiveness. Future Proof asserts that “a trademark is presumed to be inherently distinctive where, as here, the PTO registered the mark without requiring evidence of secondary meaning,”6 while also acknowledging this is a rebuttable presumption. Future Proof claims the only evidence Molson Coors has offered is an empty assertion that Brizzy comes from the word fizzy. Future Proof also challenges the court’s descriptiveness analysis, arguing that the court did not consider any of the four applicable tests under 5th Circuit precedent, under which Future Proof asserts its mark is not descriptive.

Mark Similarity

Similarly, Future Proof asserts the trial court erred in two distinct ways by: (1) focusing on certain visual differences in product packaging instead of the marks; and (2) ignoring the aural similarities between the marks. Future Proof relies on 5th Circuit authority stating the words should be the focus of the analysis, not the product packaging. Further, Future Proof states that the rhyming and audible difficulty in distinguishing between the “V” and “BR” consonants when spoken establishes similarity. Future Proof raises an interesting point in that sound in this case is particularly important as alcoholic beverages are likely to be ordered orally at a restaurant or bar.

Actual Confusion

Future Proof relies on authority suggesting that actual confusion is the best evidence of a likelihood of confusion and that “testimony of a single known incident of actual confusion by a consumer has been found to be sufficient evidence to support the district court’s finding of actual confusion.”7 Future Proof refuted the trial court’s distinction between a wholesaler and a consumer, citing 5th Circuit authority to support the proposition that a retailer or distributor’s confusion is consumer confusion.

Degree of Care and Intent

Future Proof argues that the trial court failed to give due weight to these two factors. Concerning the degree of care consumers use in selecting the products, Future Proof asserted that in the hard seltzer market, with a relatively low price point, consumers are making quick decisions among a “crowded array” of products in fast-paced environments, tilting this factor in its favor. Finally, Future Proof asserted that Molson Coors did have the intent to infringe based on a Molson Coors executive’s awareness of Brizzy before launching its media blitz for Vizzy.

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While we await a ruling from the 5th Circuit to determine whether there is a likelihood of confusion between Brizzy and Vizzy, let the arguments of each side percolate and bubble as you come to your own conclusion.

About the author: Tessa Carberry is a litigation associate in the Denver office of Gordon Rees Scully Mansukhani and a member of the firm’s Intellectual Property Practice Group. With a background in biology and mathematics, and as a former emergency medical technician, Ms. Carberry’s interests include the overlap between healthcare and IP law.
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1 Molson Coors refers collectively to both named defendants in the lawsuit: Molson Coors Beverage Company F/K/A Molson Coors Brewing Company and MillerCoors, LLC.
2 https://www.vizzyhardseltzer.com/#about-us
3 Future Proof Brands, LLC v. Molson Coors Beverage Company, et al., No. 1:20-cv-00144-JRN (W.D. Tex. Feb. 6, 2020).
4 Examining Krim-Ko Corp. (Krim-Ko Div., Nat. Sugar Ref. Co.) v. Coca-Cola Bottling Co. of New York, 390 F.2d 728, 731-32 (C.C.P.A. 1968)
5 Future Proof Brands, LLC v. Molson Coors Beverage Company, et al., 5th Cir. Court of Appeals Case No. 20-50323, Appellant’s Opening Brief.
6 Alliance for Good Gov’t v. Coalition for Better Gov’t, 901 F.3d 498, 507- 508, 510 (5th Cir. 2018).
7 Streamline Prod. Sys. v. Streamline Mfg., 851 F.3d 440, 457 (5th Cir. 2017)

SCOTUS: Willfulness Not Required for Trademark Infringement Plaintiff to Recover Defendant’s Profits

Author: Patrick Mulkern

On April 23, 2020, the Supreme Court resolved a long-standing circuit split regarding whether a trademark infringement plaintiff must show willfulness as a prerequisite to recovery of the defendant’s profits. In Romag Fasteners, Inc. v. Fossil, Inc., Case No. 18-1233 (Apr. 23, 2020),1 a near-unanimous Court2 lowered the bar for half the country, announcing: no, a trademark holder need not show willfulness before it can recover the accused infringer’s profits.

Summary of Underlying Dispute

Petitioner Romag Fasteners, Inc. (“Romag”) sells magnetic snap fasteners for use with leather goods, while Respondent Fossil, Inc. (“Fossil”) sells fashion accessories. The parties entered an agreement under which Fossil would use Romag’s fasteners in Fossil’s handbags. Eventually, Romag learned that Fossil’s manufacturer was using counterfeit fasteners instead of authentic Romag products.

At trial, the jury agreed with Romag, finding that Fossil had infringed and acted “in callous disregard” of Romag’s rights—but ultimately rejected the contention that Fossil had acted “willfully” as that term had been defined by the judge. Therefore, pursuant to then-applicable Second Circuit precedent under which a trademark plaintiff must first prove the infringement was willful, Romag could not recover Fossil’s profits. A well-defined split among the circuit courts on this issue led to the Supreme Court’s grant of certiorari.

Court’s Decision

The Court’s decision can be broken down into three sections: a statutory interpretation portion, a historical analysis portion, and a policy argument portion.

The statutory interpretation segment began with the language of the Lanham Act, noting the only limitation on recovery under Section 1117(a) (including “defendant’s profits”) was “subject to the principles of equity.” The Court explained why this limitation was significant, as the Lanham Act does explicitly require willfulness as a precondition for profits under Section 1125(c) (governing dilution)—but Romag had proceeded under Section 1125(a) (relating to false or misleading use of trademarks). The Court identified a slew of instances in which the Lanham Act clearly required specific mental states,3 and concluded that “this court [does not] usually read into statutes words that aren’t there. It’s a temptation we are doubly careful to avoid when Congress has (as here) included the term in question elsewhere in the very same statutory provision.”

The Court then reviewed Fossil’s argument that “principles of equity” provided a historical basis for requiring willfulness—an argument that the Court characterized as a “curious suggestion.” Citing first to Black’s Law Dictionary, then treatises from the 1800s, as well as several of the Supreme Court’s own decisions, the Court held “principles of equity” is a “trans-substantive” concept and does not relate or call to mind any trademark-specific requirements. Even if the Court were to assume the Lanham Act sought to incorporate common law principles, it was “far from clear whether trademark law historically required a showing of willfulness before allowing a profits remedy.” On this point, the Court acknowledged competing authority—with Fossil’s cases seeming requiring willfulness, and the fact that “Romag cites other cases that expressly rejected any such rule”—and then reiterated “the ordinary, trans-substantive principle that a defendant’s mental state is relevant to assigning an appropriate remedy.”

Finally, the Court’s decision concluded by identifying the parties’ competing policy arguments, then punted, stating, “the place for reconciling competing and incommensurable policy goals like these is before policymakers” (i.e., Congress).

Concurring Opinions

Justices Alito, Breyer, and Kagan wrote one of two concurrences, in which they simply reiterated the point that “willfulness is a highly important consideration in awarding profits under § 1117(a), but not an absolute precondition.” Justice Sotomayor wrote the other concurrence, in which she rejected the majority’s suggestion that profits would (or should) ever be awarded for innocent infringement, but agreed in the ultimately judgment. In so finding, she wrote to explicitly disagree with any interpretation of the Lanham Act in which profits could be awarded “for innocent or good-faith trademark infringement[.]”

Impact

This decision lowers the bar for nearly half the country, as the First, Second, Eighth, Ninth, Tenth, and D.C. Circuits had previously used willfulness as a threshold requirement in trademark infringement claims seeking defendants’ profits. Now, it is likely that defendant’s profits analysis will track that which has been used in the Third, Fourth, Fifth, Sixth, Seventh, and Eleventh Circuits, where willfulness was just one of several factors in a flexible analysis. See, e.g., Quick Techs., Inc. v. Sage Grp. PLC, 313 F.3d 338, 349 (5th Cir. 2002) (stating that “willful infringement” is “an important factor”).

Ultimately, the following passage from the Court’s opinion (together with the language found in both concurring opinions) will likely serve as support for those circuit courts that wish to make willfulness a key factor in their analysis going forward:

[I]t is a principle long reflected in equity practice where district courts have often considered a defendant’s mental state, among other factors, when exercising their discretion in choosing a fitting remedy. . . . Given these traditional principles, we do not doubt that a trademark defendant’s mental state is a highly important consideration in determining whether an award of profits is appropriate. But acknowledging that much is a far cry from insisting on the inflexible precondition to recovery Fossil advances.

About the author: Patrick J. Mulkern is an associate in Gordon Rees Scully Mansukhani’s Intellectual Property Practice Group. His practice focuses on intellectual property litigation and transactional matters, with a particular emphasis on patent, trademark, and trade secret litigation. Mr. Mulkern is a registered patent attorney and his biography can be found here.
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1 https://www.supremecourt.gov/opinions/19pdf/18-1233_5he6.pdf.
2 Justice Gorsuch delivered the opinion of the court, with which all but one justice joined. Justice Sotomayor concurred in the judgment only.
3 See, e.g., § 1117(b) (requiring treble damages and attorney’s fees when certain conduct is intentional); § 1117(c) (increasing cap on statutory damages for certain willful violations); § 1118 (permitting courts to destroy infringing items for any violation of section 1125(a) or any willful violation of section 1125(c)); § 1114 (providing certain innocent infringers subject only to injunction); § 1125(d)(1)(A)(i) (prohibiting certain conduct only if undertaken with “bad faith intent”).

Lions, Tigers, and Trademarks: IP Lessons from “Tiger King”

Author: Alison Pringle

Netflix’s recent docu-series “Tiger King” has quarantined Americans captivated—a reported 34 million viewers binged the series within the first ten days of its release alone. Amongst the series’ tiger-related exploits lies a bitter trademark lawsuit brought against the series’ mullet-sporting anti-hero Joseph Maldonado-Passage (known to viewers as “Joe Exotic”).

Maldonado-Passage created the Oklahoma-based “GW Exotic Animal Memorial Park” and filled it with tigers, lions, and other exotic animals. Throughout the 2000s, Maldonado-Passage became infamous in animal rights circles for breeding tiger cubs and exhibiting his animals at malls across the country.

The “Tiger King” series chronicles the long-standing feud between Maldonado-Passage and Carole Baskin. Baskin is the founder of “Big Cat Rescue,” a non-profit sanctuary for big cats. Maldonado-Passage was eventually put on trial after an unsuccessful plot to murder Baskin went awry. While Maldonado-Passage is currently serving a twenty-two year prison sentence for attempted murder-for-hire and violations of the Endangered Species Act, it was a trademark judgment that served as the catalyst for Exotic’s downfall.

Trademark Litigation

In 2005, the Big Cat Rescue Corp. registered a BIG CAT RESCUE logo for charitable fund raising services, animal rescue services, and entertainment services such as animal exhibition1:

After trying to shut down Maldonado-Passage for years, it was Baskin’s trademark rights that allowed her to finally pounce and take legal action against him. In 2011, Big Cat Rescue filed a lawsuit in the Middle District of Florida against Maldonado-Passage and GW Exotic after the latter adopted the trade name “BIG CAT RESCUE ENTERTAINMENT.” Big Cat Rescue alleged Maldonado-Passage and GW Exotic sought to disparage Big Cat Rescue through the “BIG CAT RESCUE ENTERTAINMENT” mark by causing the public to believe Big Cat Rescue was engaged in the exploitation of exotic animals.

For a trademark infringement claim, a plaintiff must show that: (1) it has developed a protectable trademark right in a trademark; (2) the defendant uses a confusingly similar mark in such a way that creates a likelihood of confusion, mistake and/or deception with the public; and (3) the plaintiff incurred damages as a result of the defendant’s infringing actions.

Big Cat Rescue’s trademark registration evidenced its rights in the “BIG CAT RESCUE” mark. Big Cat Rescue also did not have a large hurdle to jump in demonstrating Maldonado-Passage’s “BIG CAT RESCUE ENTERTAINMENT” mark was confusingly similar to the “BIG CAT RESCUE” mark. Big Cat Rescue further presented three key facts demonstrating Maldonado-Passage willfully infringed its mark.

First, Maldonado-Passage created the below ad featuring the “BIG CAT RESCUE ENTERTAINMENT” mark over a photo of a snow-leopard’s eyes, which Big Cat Rescue alleged was “virtually identical” to a photograph Big Cat Rescue used as the banner for its website at the time. The ad for the Oklahoma-based zoo displayed a Florida telephone number and the words “Florida Office,” which Big Cat Rescue argued would confuse the public into believing “Big Cat Rescue Entertainment” was affiliated with the Florida-based Big Cat Rescue.

Second, Big Cat Rescue demonstrated Maldonado-Passage used the BIG CAT RESCUE ENTERTAINMENT mark to try to divert Google traffic to his sites rather than those of Big Cat Rescue. A Facebook post created by a user named “Joe Exotic” stated, “If you must know, I registered Big Cat Rescue Entertainment and leased the name out so you could ruin BCR on Google all by yourself, and it is working. LOL.” Another “Joe Exotic” post referred to Big Cat Rescue Entertainment as “My new company LOL.” Maldonado-Passage attributed both posts to hackers.

Finally, Big Cat Rescue alleged Maldonado-Passage had also sought to file the trade name “The Caroll Baskin Entertainment Group.”

In defense of the infringement claim, Maldonado-Passage argued in his pre-trial statement that his actions were a necessary response to BCR’s campaign of disseminating misinformation about him in an effort to shut him down:

Defendants had no alternative but to respond, in part, by reflecting the egregious conduct of BCR and the Baskins back upon BCR through a counter-campaign designed to do nothing more than cause BCR to suffer from its own misconduct.

This lawsuit, and BCR’s abuse of copyright laws, is merely one more tool for the Baskins and BCR in their all-out assault on Defendants.

This argument did not absolve Maldonado-Passage from liability for the trademark claims brought against him. The parties ultimately stipulated to entry of a consent judgment against Defendants prior to trial.

References to Baskin’s Late Husband Excluded from Trademark Trial

Of note for fans of the series and legal procedure buffs, Big Cat Rescue filed a motion in limine to exclude any reference at trial to Baskin’s late husband, Jack Donald Lewis. Lewis’s 1997 disappearance remains a significant source of controversy and was featured heavily in the docu-series. Throughout his feud with Baskin, Maldonado-Passage frequently spouted his belief that Baskin killed Lewis and fed him to one of her tigers. Maldonado-Passage even went so far as to reference Lewis’s disappearance in his pretrial statement and press releases related to the lawsuit. As Big Cat Rescue argued, and the Court affirmed in granting the motion (unsurprisingly), mention of Lewis’s disappearance would likely prejudice a jury against Big Cat Rescue and had no relevance to the trademark infringement claims at issue.

Trademark Judgment

 The docu-series demonstrates the power and value of a trademark as well as the potentially high stakes of an infringement suit. The trademark judgment aided in eventually bringing down the “Tiger King.” Big Cat Rescue was able to recover all of Maldonado-Passage and GW Exotic’s profits from their mall road shows during the time period Defendants adopted the “BIG CAT RESCUE ENTERTAINMENT” mark. Total gross receipts from Defendants’ road shows between 2010 and 2011 equaled $653,000.00. Big Cat Rescue was also entitled to $300,000 for its attorneys’ fees and costs related to the trademark lawsuit, amounting to a total judgment of $953,000.

As shown in the series, the judgment financially ruined Maldonado-Passage and GW Exotic. Big Cat Rescue’s aggressive judgment enforcement actions seem to have sent Maldonado-Passage into a tailspin that eventually led to him hiring a hitman to take out Baskin.

Tiger King offers much in the way of Jerry Springer-esque entertainment and nothing when it comes to moral guidance. Viewers can take away one lesson, though: don’t use your competitor’s trademark as a weapon and brag about it on the internet.

Alison Pringle is an associate in Gordon Rees Scully Mansukhani’s Intellectual Property Practice Group. Her practice focuses on intellectual property and commercial litigation, with an emphasis on trademark, copyright, contract, technology, and privacy disputes. She also counsels clients on transactional intellectual property issues. Ms. Pringle’s biography can be found here.
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1 USPTO Serial No. 76568568. In 2014, the Big Cat Rescue Corp. also registered the word mark BIG CAT RESCUE under USPTO Serial No. 85850084.

Damages in Trademark Infringement: Is Willfulness Required for Defendant’s Profits?

Author: Patrick Mulkern

Introduction

On June 28, 2019, the Supreme Court agreed to take up a case that looks to settle an equally-divided circuit split regarding the threshold evidentiary showing required before a trademark infringement plaintiff can recover the infringer’s profits. In Romag Fasteners, Inc. v. Fossil, Inc. et al., Case No. 18-1233, the petitioner sought a writ of certiorari on the question of: “Whether, under section 35 of the Lanham Act, 15 U.S.C. § 1117(a), willful infringement is a prerequisite for an award of an infringer’s profits for a violation of Section 43(a), 15 U.S.C. § 1125(a).”

Underlying Dispute

The case stems from a long-standing dispute between Petitioner Romag Fasteners, Inc. (“Romag”) and Respondents Fossil, Inc. and its retailers (collectively, “Fossil”). Romag sells patented magnetic snap fasteners under the ROMAG trademark. Fossil designs and distributes various items like handbags. In 2002, Romag and Fossil entered into an agreement where Fossil would use Romag’s fasteners in its products. In 2010, however, Romag discovered certain Fossil products were being sold in the United States with counterfeit fasteners bearing the ROMAG mark.

Romag brought suit against Fossil in November 2010, alleging both patent and trademark infringement. In April 2014, a jury found that Fossil had infringed Romag’s trademark, infringed Romag’s patent, but that none of Fossil’s violations were willful. The jury then awarded about $90,000 in Fossil profits to Romag “to prevent unjust enrichment” and another $6.7 million in profits to Romag “to deter future trademark infringement”—attributing 1% of Fossil’s profits to its trademark infringement. The district court ultimately determined, however, that “Romag is not entitled to any award of profits as a result of [its] failure to prove that Fossil’s trademark infringement was willful.”

Romag appealed to the Federal Circuit, which affirmed the district court’s ruling, though noting the circuit split on the issue of whether willfulness was required for an award of an infringer’s profits. Romag then filed a writ petition, seeking resolution of two questions: (1) the trademark question raised here, and (2) an unrelated patent question involving laches. The Supreme Court had addressed the second patent question in an intervening decision and so Romag’s petition was granted, the Federal Circuit’s decision was recalled, and the case was remanded to the district court for evaluation of that patent damages issue.

In November 2017, the district court entered an amended judgment. Romag again appealed, though Fossil opposed review of the trademark issue claiming it had already been litigated. In February 2019, the Federal Circuit agreed with Fossil and limited the appeal to the patent damages issues. Romag then petitioned the Supreme Court for review.

Petition for Certiorari

Romag’s petition is predicated on the significant and stark split among the circuits with respect to whether a trademark plaintiff must establish willful infringement before it can be entitled to an award of the infringer’s profits. Six have said “yes, they do”; six have said “no, they do not.”

The Third, Fourth, Fifth, Sixth, Seventh, and Eleventh Circuits do not require a willfulness showing before an award of profits. Instead, the infringer’s intent is just one of several factors in a flexible analysis. See, e.g., Quick Techs., Inc. v. Sage Grp. PLC, 313 F.3d 338, 349 (5th Cir. 2002) (“plain language of 1117(a)” includes no bright-line rule; “willful infringement” is instead “an important factor which must be considered”).

The First, Second, Eighth, Ninth, Tenth, and D.C. Circuits do require a threshold showing of willfulness before a plaintiff can litigate their entitlement to recover an infringer’s profits. The Second, Eighth, Ninth, Tenth, and D.C. Circuits require that willfulness showing in all instances. See, e.g., Stone Creek, Inc. v. Omnia Italian Design, Inc., 875 F.3d 426, 441 (9th Cir. 2017) (“willfulness remains a prerequisite for awarding a defendant’s profits”). The First Circuit requires a willfulness showing only if the litigants are not direct competitors. See, e.g., Fishman Transducers, Inc. v. Paul, 84 F.3d 187, 191 (1st Cir. 2012) (describing the direct-competition context as the “primary exception” to the “usual[] require[ment]” of willfulness).

Against this backdrop, Romag argued that a willfulness requirement “often determines whether the mark holder can recover any monetary remedy for a trademark violation” for compensation based on a plaintiff’s actual damages “is often difficult to measure and obtain.” Pet. at 20. While many courts require actual confusion to receive damages, “literally hundreds of cases . . . have universally acknowledged that proof of actual confusion is extremely difficult, if not almost impossible, to secure.” Id. Therefore, Romag explained, “[a]n award of the infringer’s profits . . . can be the difference between a meaningful recovery for trademark infringement and no recovery at all.”

Next Steps

The Supreme Court granted the petition without comment. Though not yet formally set, a joint motion following the petition being granted suggests the case will be heard during the January 2020 term—with a decision likely announced in Summer 2020. Given the binary outcome that is likely to result—yes, willfulness is required; or no, willfulness is not required—the decision may potentially have a significant impact on the scope of damages available in trademark cases for half the country. Whether they become easier or more difficult to secure for that half, though, remains to be seen.

About the author: Patrick J. Mulkern is an associate in Gordon Rees Scully Mansukhani’s Intellectual Property Practice Group. His practice focuses on intellectual property litigation and transactional matters, with a particular emphasis on patent, trademark, and trade secret litigation. Mr. Mulkern is a registered patent attorney and his biography can be found here.

Craft Beer Attorneys Can Describe Their Services As Craft Beer Attorneys

Author: Michael Kanach

In an interesting case for intellectual property lawyers specializing in craft beer, distilled spirits, and wine, the trademark dispute between a dozen law firms over the use of the phrase “CRAFT BEER ATTORNEY” is now over.

Craft beer attorneys everywhere are relieved. They can go back to describing themselves as CRAFT BEER ATTORNEYS without the threat of a lawsuit due to a pending application to federally register the trademark for the phrase that describes their legal services.

Like other descriptive terms in the craft brewing industry, such as BREWING COMPANY, BREWERY, ALE, or NE IPA, and descriptive terms in the legal industry, such as ATTORNEY, ESQ. or LAW FIRM, these terms may be used without the apprehension of suit for trademark infringement when used to accurately describe one’s goods or services. Typically, an attempt to register as a trademark a generic and merely descriptive word or phrase will be refused by the United States Patent and Trademark Office (“USPTO”). The public policy behind refusing registration of these words and phrases – or disclaiming them – is to permit individuals and companies to describe their goods and services in fair competition.  In addition, such words and phrases do not indicate a single source of those goods and services, so they do not function as a trademark.

Here, the applicant, the law firm of The Craft Beer Attorney, APC, filed an application to register the trademark CRAFT BEER ATTORNEY in connection with legal services. The application was filed almost three years ago, on January 15, 2015 (Serial No. 86504533). The USPTO sent an office action refusing the mark as (1) generic, and, alternatively, (2) merely descriptive, and (3) lacking sufficient evidence of acquired distinctiveness. This was followed by the Applicant’s response, which overcame the refusals, and a notification of publication was issued on December 16, 2015. On January 5, 2016, the mark was published in the Official Gazette for the purpose of opposition “by any person who believes he will be damaged by the registration of the mark.”

Who would file an opposition? It turns out that eleven law firms filed oppositions in the allotted time: (1) Funkhouser Vegosen Liebman & Dunn Ltd.; (2) Nossaman LLP; (3) GrayRobinson, PA; (4) Tannenbaum Helpern Syracuse & Hirschtritt LLP; (5) Lehrman Beverage Law, PLLC; (6) Davis Wright Tremaine LLP; (7) Ward and Smith PA; (8) Strike & Techel LLP; (9) Martin Frost & Hill PC; (10) Spaulding Mccullough & Tansil LLP; and (11) Wendel Rosen Black & Dean LLP (See USPTO Trademark Trial and Appeal Board (“TTAB”) Opposition No. 91227647 (parent)).

In their Oppositions, the other law firms argued that the trademark CRAFT BEER ATTORNEY was generic and/or descriptive, among other things. A generic name is entitled to no trademark protection, as it is part of the common language that we need to identify such services or goods. A generic name refers to the services or goods, rather than to the mark owner’s brand for the services or goods. A descriptive name is a word or phrase that identifies or describes some aspect, characteristic, or quality of the services or goods to which the mark is affixed in a straightforward way that requires no exercise of imagination to be understood. Descriptive words must acquire distinctiveness or secondary meaning to be protectable as a trademark. In other words, the consumers must come to recognize the mark as designating a single source.

As the Ninth Circuit’s jury instructions state: “Descriptive marks are entitled to protection only as broad as the secondary meaning they have acquired, if any. If they have acquired no secondary meaning, they are entitled to no protection and cannot be considered a valid mark.” Ninth Circuit Manual of Model Civil Jury Instructions, 15.11(last modified September 2017).

These twelve parties litigated before the TTAB for more than a year and a half, and participated in discovery.

On October 31, 2017, the Applicant’s representative, Candace L. Moon, filed an Express Abandonment of Application Serial No. 86504533, seeking to withdraw the application and end the dispute over the name. As a result of the Applicant’s abandonment, judgment was entered against applicant. In a November 7, 2017 Board decision sustaining the oppositions filed by the eleven law firms, the TTAB held that oppositions were sustained and registration to applicant was refused.

Now, all of these attorneys can get back to work representing their craft beer clients and describing themselves as CRAFT BEER ATTORNEYS without the potential threat of a lawsuit.

For more information about Gordon Rees Scully Mansukhani LLP’s Intellectual Property Practice Group, including the firm’s specialization in the craft beer industry, please visit www.grsm.com/practices/food-beverage/craft-breweries intellectual property law. Mr. Kanach is a Partner in the firm’s Intellectual Property and Food & Beverage practice groups, and a frequent speaker and writer on craft beer trademark law.

Fox’s Empire Secures First-Amendment Win against Trademark Infringement Claims

Last month, in Twentieth Century Fox Television v. Empire Distribution, Inc., 2016 U.S. Dist. LEXIS 13013 (C.D. Cal. Feb. 1, 2016), the United States District Court for the Central District of California ruled that Twentieth Century Fox Television’s use of the word “Empire” in connection with its hit television series of the same name is protected by the First Amendment. In a rebuke of similarly-named Empire Distribution, Inc.’s claim that the Fox series infringed upon and diluted the company’s trademarks, the court found that the show’s title deserved protection as an artistic expression.

Empire, the Fox television series that premiered in 2015, tells the story of Lucious Lyon and his family, all of whom fight for control over Lyon’s music and entertainment company, “Empire Enterprises,” upon learning that the mogul has been diagnosed with a fatal disease. Empire Distribution, meanwhile, is a record label, music distributor and publishing company founded in 2010. Similar to the fictional Empire Enterprises, Empire Distribution is a large producer and distributor of urban, hip hop, rap and R&B music. Empire Distribution also uses the trademark “Empire.”

In response to a cease and desist letter from Empire Distribution claiming it had rights to the Empire name and that the debut of the Empire series caused confusion over the affiliation between Empire Distribution and Fox’s Empire series, Fox filed suit to “protect its intellectual property rights” in the show. Empire Distribution counterclaimed for trademark infringement, trademark dilution, unfair competition and false advertising.

U.S. District Judge Perce Anderson analyzed Empire Distribution’s claims under the two-part test for balancing Lanham Act claims with First Amendment rights first established by the Second Circuit in Rogers v. Grimaldi, 875 F.2d 994 (2nd Cir. 1989) (the “Rogers test”), later adopted by the Ninth Circuit in Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002). Under the Rogers test, which is reserved for expressive works, an artistic work’s use of a trademark that would otherwise violate the Lanham Act is not actionable unless the mark has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless it explicitly misleads as to the source or the content of the work.

The first prong of the Rogers test requires showing that the use of a mark has artistic relevance to the underlying work. The court held that the word “Empire” was “clearly relevant to Fox’s work,” as the Empire series “tells the story of characters struggling for literal control over an entertainment company called ‘Empire Enterprises’ and figurative control over the vast ‘empire’ that Lucious Lyon has built. Additionally, the Empire series is set in New York, the Empire State.” Because the word “Empire” had genuine relevance to the Empire series and was not arbitrarily chosen to exploit Empire Distribution’s fame, the court held that the mark satisfied the first Rogers prong.

The second prong of the Rogers test requires a “junior user” – such as Fox – to show that its work does not explicitly mislead as to the source or content of the work. Here, again, the court sided with Fox, stating that it found no evidence of an “explicit indication, overt claim, or explicit misstatement” as to the source of the work. In reaching this determination, the court noted that “consumer confusion” as to the source of the work was irrelevant.

Accordingly, the court granted summary judgment in favor of Fox and ruled that Empire Distribution take nothing by way of its claims. The court’s ruling highlights the importance of First Amendment protections in the United States, particularly as Judge Anderson refused to consider ample evidence of consumer confusion in making his ruling. For example, when Empire Distribution recording artist Shaggy tweeted the record company’s logo, numerous fans immediately mistakenly interpreted it as a reference to the Empire series, retweeting the logo along with the hashtag “#teamcookie” (a reference to a character on the television series). The court’s focus on the behavior of the user, as opposed to the impact of the use, can serve as an important defense in many trademark infringement cases to come.