Trademark Law

USPTO Reverses Position on Apple’s IPAD MINI Trademark Application

April 5, 2013, by Mandour & Associates, APC

Los Angeles – Late last year Apple, Inc. filed a trademark application for IPAD MINI for the new smaller and sleeker version of its famous iPad.  Apple has already owned a registered trademark for IPAD since 2010.

On January 24, 2013, the United States Patent & Trademark Office issued a first Office Action rejecting the IPAD MINI Application, claiming that the trademark was merely descriptive.  The Examining Attorney found the word “mini” descriptive as “something that is distinctively smaller than other members of its type or class.”  The Examiner also rejected the IPAD portion of the trademark as descriptive, stating “…‘IPAD’ is descriptive when applied to applicant’s goods because the prefix ‘I’ denotes ‘internet, and the term “PAD” is descriptive of the goods because it “refers to a ‘pad computer’ or ‘internet pad device’”.

The refusal was somewhat surprising in that the U.S. Patent and Trademark Office previously allowed registration of the IPAD trademark.  Beyond the descriptiveness refusal, the specimen of use submitted with the application, a web page from Applicant’s catalog, was also rejected.  The Examining Attorney stated that the specimen “fails to include a picture or a sufficient textual description of the goods in sufficiently close proximity to the necessary ordering information, a web link for ordering the goods, and thus, appears to be mere advertising material.”

However, in a near complete reversal, on April 3, 2013, the Examining Attorney “superseded” the original Office Action and issued a Supplemental Office Action.  In the new Office Action, the Examiner withdraws both the descriptiveness refusal and the refusal of the specimen of use.  Now, with her apologies, she only requires a disclaimer of the term MINI apart from the trademark as shown.

It is unknown whether the Examiner made a second review of her first Office Action, if a supervisor reviewed the Office Action she initially sent to Apple, or if Apple’s counsel spoke to the Examiner requesting clarification of the Office Action.  Regardless, Apple will undoubtedly agree to disclaim the word MINI.

Apart from the descriptiveness and specimen refusals, eight different prior pending applications were cited against the IPAD MINI application on the basis of a likelihood of confusion.  So, unfortunately for Apple, it does not appear that IPAD MINI will be registering any time soon.

Tagged as: Apple, iPad Mini

Redskins Defend Name in TTAB to Protect Trademark Rights

March 14, 2013, by Mandour & Associates, APC

Los Angeles – The Washington Redskins asked the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board to dismiss six petitions to cancel filed by a group of Native Americans, arguing that there is no evidence to support the group’s claim that a considerable percentage of Native Americans find the team’s name offensive.

At the hearing held last Thursday, the group of Native Americans argued that the NFL team’s name, former fight song, cheerleader outfits and halftime shows illustrate the team’s disparaging and offensive treatment of Native Americans.

The Washington Redskins’ countered that its name is associated with the team, football and the entertainment it provides at games and claimed that it has never used the name in order to perpetuate an ethnic slur or disparage Native Americans in any way.

The Redskins and the TTAB both pointed out that Native Americans would have had to have found the term Redskins offensive at the time the trademarks were registered in order for the Redskins trademark protection to be cancelled.  The six trademarks in question were registered between 1967 and 1990.

The Redskins argued that a group of five Native Americans claiming that the name is offensive is not evidence that the term is offensive to a significant amount of the Native American population.  Nor does the opinion of the five petitioners offer any evidence that Native Americans were offended by the name during the 23-year period when the trademarks were registered.

The Native Americans told the three-judge panel that the Redskins’ six trademarks they are petitioning fall under provisions of the Lanham Act that prohibit any trademark that is disparaging from being registered.

“We are focused on the word ‘Redskin’ and no other matter,” the Native American group argued.  “‘Redskin’ is an ethnic slur.  It is an epithet.”

Though the TTAB cannot prevent the team from using the name, the Native Americans hope that if the team loses trademark protection, it will be persuaded to rebrand the team.

The petitions, filed in 2006, are the second attempt to cancel the Redskins’ trademarks.  In 1992, a group of seven Native Americans petitioned to cancel the trademarks.  The TTAB granted the petition in 1999, but the U.S. District Court for the District of Columbia overturned it in October 2003 ruling that the petitioners did not have standing to complain because they did not take legal action until 25 years after the first trademark registered.

It could take up to a year for the TTAB to make a decision on the current petitions.

Tagged as: Washington Redskins

Yankees have Rights to Evil Empire without Trademark Registration

February 25, 2013, by Mandour & Associates, APC

Los Angeles – A U.S. Patent and Trademark Office panel recently ruled that the New York Yankees have rights to its nickname Evil Empire and can prevent others from registering the name as a trademark, even though the team has never attempted to register the trademark.

On February 8, the Trademark Trial and Appeal Board held that the company Evil Enterprises Inc. could not trademark BASEBALL’S EVIL EMPIRE, which it planned to use on clothing with the Yankees logo and a depiction of a devil holding a pitchfork.  The TTAB said that consumers are likely to be confused by the clothing and believe that the goods are associated with the Yankees.

The team has never attempted to trademark the phrase, nor has it used the name in connection with any goods or services, yet the TTAB said the name has become linked with the Yankees in the minds of the average American to the point that the team has inherent rights to the name.

The panel cited a number of news articles about the 27-time World Series champions that referred to the team as the Evil Empire and concluded “there is only one Evil Empire in baseball and it is the New York Yankees.”

Evil Enterprises originally filed a trademark application for BASEBALL’S EVIL EMPIRE in 2008, which the Yankees filed a notice of opposition to in 2009.

Evil Enterprises argued that it should be able to trademark the name as it refers to any sports team that is willing to spend huge sums of money to get the best athletes.  The board rejected this argument, saying that articles that refer to other sports teams as Evil Empires merely indicate the teams want to be in the Yankees position and be able to afford a roster of players that can win more championships.

The board also rejected Evil Enterprises argument that the trademark is a “spoof and parody” of the team and therefore will not cause confusion.

Despite the ruling, Evil Enterprises said it will continue to produce its Evil Empire apparel, saying that just because it cannot register the trademark does not mean it cannot use the term as a brand identifier.  The team has never shown any indication that it plans sue for trademark infringement over the use of the name on apparel.

Evil Empire was initially coined by Larry Lucchino, president of the Boston Red Sox, after Jose Contreras signed with the Yankees instead of his team.  Red Sox fans quickly adopted the nickname as a way of disparaging the Yankees.  The Yankees, however, saw the name as a reflection of the team’s success and embraced the name in several ways, including playing Darth Vader’s theme song from “Star Wars” at home games.

Tagged as: Evil Empire, New York Yankees

Apple Likely to Purchase IPHONE Trademark in Brazil

January 7, 2013, by Mandour & Associates, APC

Los Angeles – Apple is expected to make an offer on the IPHONE trademark in Brazil which is currently owned by IGB Eletrônica SA.  IGB Eletrônica SA released an Android-powered smartphone called the IPHONE Neo One under the company’s Gradiente brand this month.

Gradiente said that it will take all measures available to it to protect its intellectual property rights, as it does not believe the two brands can coexist in the same market.

Gradiente applied for the trademark in 2000, two years after Apple launched the iMac, but six years before Apple announced the launch of the iPhone at Macworld San Francisco.

Gradiente was granted the right to use the trademark on its smartphones in Brazil in 2008.  Brazil’s trademark office said that Gradiente requested the right to the trademark before Apple and therefore it has exclusive rights to the brand until 2018.

Despite being granted the right to use the trademark in 2008, Gradiente did not start using the trademark on smartphones until last week.  The company claims its focus had been on a corporate restructuring process, which it wrapped up earlier this year.

Gradiente said it registered the trademark because it expected “there would be a technological revolution in the world of smartphones with the convergence of voice and data transmission and reception via mobile Internet.”

The company, however, has not kept up with the technological revolution.  The phone’s appearance is similar to Apple’s iPhone, but it runs on the outdated 2.3 version of Android’s operating system.  The phone features a 3.7-inch touch screen, Bluetooth, Wi-Fi, 3G and a camera.

Gradiente said it currently does not plan to sell or license the rights to the brand, but it is likely that Gradiente and Apple will come to some agreement that will allow Apple to use the trademark, as Apple will not want to stop selling the iPhone in Brazil.

This is not the first time Apple has had international competition for its trademarks.  Due to a loophole in its contract, Apple was unable to procure rights to the iPad brand in China from Proview Technology before it launched the iPad.  Apple ended up paying Proview $60 million for the trademark.

The trademark in Brazil is not expected to bring that much money in, as the market is significantly smaller in Brazil than it is in China.  However, the company will likely still pay a substantial amount of money for the trademark, thanks to the popularity of the iPhone name.

Tagged as: Apple, Gradiente, IGB Electronica

Los Angeles Based Paramount Pictures Files Trademark Applications for World War Z

July 23, 2012, by Mandour & Associates, APC

Los Angeles – Imagine a world where legions of humans are inflicted with a terrible virus that turns them into flash-eating monsters. Zombie fans were given reason to rejoice when Paramount Pictures filed trademark applications with the United States Patent and Trademark Office to register the enormously popular World War Z concept for use with video games. Evidently, gamers will be treated to games based on the wildly popular Zombie books by Max Brooks. Brooks’ original novel, The Zombie Survival Guide, was released in 2003 and quickly became a cult classic. The apocalyptic author’s second zombie novel, World War Z: An Oral History of the Zombie War, was released to critical acclaim in 2006 with movie rights quickly purchased in 2007.

The World War Z trademarks were originally filed back in May, 2011 for use on mugs, beverage glassware, waste baskets, figurines, key chains, statutes, various types of apparel, masks, Halloween costumes, action figures, board games and toy model hobby craft kits. The most recent applications, quite possibly in anticipation of the movie being released in June 2013, were filed July 10th. The trademark applications were filed in order to secure the trademarks for use with various video game platforms. The USPTO website further reveals that the World War Z trademarks were intended for use with “entertainment services, namely, providing online electronic games, downloadable electronic game programs, electronic game software for handheld electronic devices, video game cartridges and discs”.

Undoubtedly, a deluge of World War Z products will hit the market in the summer of 2013 when the movie is released. The movie will star Brad Pitt.

Christian Louboutin Loses Another Trademark Infringement Lawsuit Over Red-Soled Shoes

June 20, 2012, by Mandour & Associates, APC

Los Angeles – Can a designer obtain trademark protection for a specific color used on the soles of its shoes? This question appears to be one step closer to finality after a recent decision was handed down by a French court against designer Christian Louboutin.

The case was initiated in 2008, but Louboutin did not exhaust all of its appeals against Spanish fashion designer Zara until this week. Louboutin had accused the Spanish designer of counterfeiting and unfair competition, claiming that red-soled shoes have been the signature trademark of its shoe collection for over twenty years.

This case is particularly interesting because of its implications for the ongoing battle in a New York Appeals Court between the famous shoe designer and its rival Yves Saint Laurent. Louboutin also sued its competitor Yves Saint Laurent in 2011 over what it considered a trademark infringement of the red sole on its shoes. The lower court rejected Louboutin’s request to stop the sale of YSL’s similarly colored shoes and denied a request for $1 million in damages. A decision has not yet been reached by the new panel of judges in the current appeal. However, Louboutin is relying on the same argument used by Tiffany & Co. in a recent lawsuit against one of its competitors for its trademark blue boxes. Tiffany won its trademark infringement case by showing that consumers recognized the blue box exclusively as that associated with the Tiffany & Co. brand. A decision by the New York Appeals court is highly anticipated by a number of designers who either currently use red on the soles of their shoes, or would like to incorporate the popular trend in their own footwear lines.

Louboutin quickly released a statement after the findings were handed down in its most current lawsuit. The Paris based company is anticipating that its competitors will see this latest decision as diminishing or eliminating its rights to the famous red sole on its shoes. However, Louboutin claims that it continues to own valued and enforceable trademark rights to its red sole trademark in France and the rest of the world. Louboutin also claims that other court decisions have recognized the strong association between Christian Louboutin and its red sole trademark. As such, Christian Louboutin insists that it will continue to enforce and protect its rights to its red sole trademark.

Los Angeles District Court: Canadian Toymaker Sues Lego For Trademark Infringement

January 24, 2012, by Mandour & Associates, APC

Los Angeles – In a long-running trademark infringement battle over the rights to the shape of interlocking bricks in toy construction sets, Mega Brands Inc. of Canada has filed yet another action against the Lego Group.

According to the action, filed in U.S. District Court in Los Angeles, the Montreal-based Mega Brands is seeking to invalidate Lego’s trademark rights to the designs. In a recent news release, the Canadian toymaker said it is also seeking unspecified “other remedies.”

The recent court action was apparently prompted when the United States Customs and Border Protection agency advised Mega Brands that it “intends to restrict the importation of certain of its products which have been sold in the U.S. for over twenty years,” a spokesperson for the company said in a statement. When asked about the ongoing trademark dispute, Mega Brands stated that it is simply challenging Lego’s attempts to use United States trademark laws to protect its well-known plastic mini-bricks used by children to construct mechanical models.

According to Mega Brand’s complaint, Lego’s interlocking block patents expired more than twenty years ago, prompting courts in several other countries to rule against its claims that its famous toy bricks are unique and protected and that no other company can make toy blocks using the same eight-knob pattern.

“Courts around the world, including the United States, have ruled against its attempts to use trademark law for functional elements,” a spokesperson for Mega Brands said.

The Canadian company, which manufacturers and markets its own brand of interlocking bricks called Mega Bloks, says that it will seek a temporary restraining order and a preliminary injunction from the court to ensure that its Mega Bloks sold in the United States are not affected by Lego’s trademark.

The Denmark-based Lego Group has been fighting off competition to manufacture and sell the plastic bricks from Mega Brands for years. Initially designed by Danish carpenter Ole Kirk Christiansen, the plastic building blocks went on to become the company’s flagship product and are still enjoyed by children around the world. The company’s legal troubles began in 1978, when it lost patent protection on the toy bricks, however it has continued to assert its legal rights using trademark laws.

Lego’s claim that its has exclusive rights to the interlocking toy brick technology has been routinely dismissed by courts in Canada, France, Germany, Italy, the Netherlands, and Spain. Furthermore, in September 2010, the European Court of Justice denied Lego’s attempts to use trademark laws to protect the shape of its multi-colored building blocks.

The Case for Color: Can Louboutin Protect Red-Sole Trademark?

January 9, 2012, by Mandour & Associates, APC

Los Angeles – Later this month, the United States Court of Appeals for the 2nd Circuit will hear arguments from both sides on high-fashion shoe designer Christian Louboutin’s appeal to retain the trademark for red lacquered shoe soles. This stems from a trademark infringement lawsuit Louboutin filed last year against competitor Yves Saint Laurent (YSL).

Louboutin’s posh heels, worn by trendy celebrities and businesswomen alike, are known exclusively for the red colored bottom of the shoe. In court, the designer will argue that the red-colored soles serve only to identify the Louboutin brand, much like Tiffany’s robin’s-egg blue packaging for its pricey jewelry. Consequently, Tiffany’s filed an amicus brief on behalf of Louboutin’s interpretation of color and trademarks.

When the case was initially presented to a judge, defendant YSL countered that Louboutin admittedly had aesthetic reasons for lacquering the soles of his shoes red. YSL’s attorneys therefore maintained that Louboutin is not entitled to a trademark for the red soles, citing the United States Supreme Court’s 1995 decision in Qualitex v. Jacobson Products. In that particular case, the court ruled that a color can only be trademarked if it “can act as a symbol that distinguishes a firm’s goods and identifies their source, without serving any other significant function.” Furthermore, according to YSL’s defense, since the red color serves only as an aesthetic function as in Louboutin’s shoes, it cannot be trademarked.

In court last week, YSL’s interpretation of trademark law got endorsements from eleven law school professors, who filed an amicus brief in support. A statement from the professors’ brief read: “This court should recognize that the shadow cast by a trademark in a single color on a fashion item creates enormous uncertainty for other designers and should regard claims of single-color trademarks in fashion with considerable skepticism.” This opinion was also shared by Manhattan federal court Judge Victor Marrero, who in August denied Louboutin’s request for an injunction to bar all of YSL’s red-sole shoes.

This is definitely not a slam-dunk case. However, fashionistas around the world would probably agree that Louboutin’s red soles distinguishes the shoes as high-fashion, high-priced luxury items that few can afford. In Louboutin’s defense, many women would contend that if someone sees the red soles on your heels, they will know who you’re wearing.

Oral arguments for the case will be presented at 2:00 on January 24.