And the Survey Says: Nothing?

Order Vacating ITC Invalidity and Infringement Determinations and Remanding for Further Proceedings, Converse, Inc. v. Int’l Trade Commission, (Fed. Cir.) (Oct. 30, 2018) (Judges Dyk, O’Malley, and Hughes)

We’ve previously discussed some of the challenges of obtaining quality consumer survey evidence in trademark litigation in past posts, such as here and here. The persuasiveness and wisdom of a consumer survey was once again called into question, this time by the Federal Circuit in its October 30 opinion in Converse’s long-running trademark litigation against Skechers, New Balance, and others. The appeals court identified a “series of errors” requiring remand, including that the International Trade Commission applied incorrect standards to both invalidity and infringement and erred in its secondary meaning analysis. READ MORE

Basket Weaves and Racing Stripes: Tensions in Defining the Scope of Protection in “Nontraditional” Trademarks in the U.S.

Steve Madden, Ltd., vs. Jasmin Larian, LLC, 1:18-cv-02043 (SDNY)

Early this spring, fashion company Steve Madden filed an action for declaratory judgment in a trademark dispute with up-and-coming designer, Jasmin Larian, responding to a series of cease and desist letters in which the latter accused Steve Madden of copying its handbags.[1] Steve Madden sought declaratory judgment that Jasmin Larian’s bag was a generic handbag ubiquitous in the handbag market, and thus not entitled to protection under the Lanham Act. Steve Madden’s allegations hinged on the claims that the Jasmin Larian handbag at issue – the Cult Gaia Ark bag – “slavishly copies the traditional bamboo picnic bag design (‘Traditional Japanese Design’) from the 1940s.” READ MORE

The Trademark Trial and Appeal Board Announces a New Test for Comparing Standard Character Marks with Word & Design Marks

Order Affirming Refusal to Register, In re Aquitaine Wine USA, LLC, Serial No. 86928469  (TTAB Apr. 2, 2018) (Ritchie, Wolfson and Adlin)

The Federal Circuit left the following question open in its In re Viterra decision from 2012:  How do we compare standard character trademarks (e.g., non-stylized word marks) with design marks for purposes of determining likelihood of confusion?  More specifically, in addition to considering that variations of standard character marks can include any font style, size, or color, can we also consider that variations may include a design element?  In In re Aquitaine Wine, the Trademark Trial and Appeal Board (“Board”) answered this question in the negative. READ MORE

Tangled in the Web: T.T.A.B. Dismisses Opposition Relying on Uncorroborated Internet-Based Evidence

Order Dismissing Opposition to Registration, WeaponX Performance Products Ltd. v. Weapon X Motorsports, Inc., T.T.A.B. (March 14, 2018)

Proving trademark rights in opposing an application to register a mark is crucial.  Opposers must marshal evidence substantiating such rights, and must be careful to select appropriate and sufficient evidence.  In the digital age, where trademark use is frequently over the Internet, parties often rely on websites and other Internet usage to substantiate claims of priority and a likelihood of confusion.  Recently, the Trademark Trial and Appeal Board (“Board”) dismissed WeaponX Performance Products Ltd.’s (“WeaponX Performance” or “Opposer”) opposition to Weapon X Motorsports, Inc.’s (“Weapon X Motorsports” or “Applicant”) application to register WEAPON X MOTORSPORTS, offering a reminder in a precedential decision that evidence from the Internet alone is not adequate. READ MORE

Applying a Law of Nature to Getting Desired Results Does Not Confer Patent Eligibility

Order Granting Motion for Summary Judgment of Invalidity, American Axle & Manufacturing, Inc., v. Neapco Holdings LLC and Neapco Drivelines LLC, (D. Del. Feb. 27, 2018) (Judge Leonard P. Stark)

In a recent patent infringement action filed in the District of Delaware, plaintiff American Axel & Manufacturing, Inc. (“Plaintiff”) and defendants Neapco Holdings LLC and Neapco Drivelines LLC (collectively “Defendants”) filed cross-motions for summary judgment on the issue of patent eligibility under 35 U.S.C. § 101. The patent at the core of the cross-motions was Plaintiff’s U.S. Patent No. 7,774,911 (“the ‘911 patent”), which disclosed a method for attenuating driveline vibrations transmitted through a shaft assembly in a vehicle.[1] Defendants argued that the asserted claims of the ‘911 patent were invalid because they were not directed to any specific discrete liner design but rather to a solution to the problem of attenuating shell and bending mode vibrations generally, by applying physics. The Court agreed with Defendants and found the patent invalid. READ MORE

Steering Away From Confusion: Despite Advisory Jury Finding, Court Rules No Infringement of DRIVEWISE Trademark

Findings of Fact and Conclusions of Law, Allstate Insurance Co. v. Kia Motors America Inc., C.D. Cal. (December 22, 2017) (Judge James Otero)

In a recent trademark infringement case, Judge James Otero of the Central District of California recently went against an advisory jury opinion and found that the plaintiff, Allstate Insurance Corporation (“Allstate”), failed to show likelihood of consumer confusion. Allstate brought suit against Kia Motor Corporation (“Kia”) in 2016, alleging that its “Drivewise” trademark used in connection with a usage-based insurance program that allows insurers to lower or raise insurances rates based on driving performance was infringed by Kia’s “Drive Wise” driver assistance system, which includes features such as blind spot detection, lane keeping assistance, smart cruise control, and autonomous emergency braking. Following a trial, an advisory jury reached a verdict in favor of Allstate finding a likelihood of consumer confusion. READ MORE

Federal Circuit Makes Way for FUCT, Striking Down the Statutory Bar on Immoral or Scandalous Trademark Registrations as Unconstitutional

Orrick has published a client alert titled, “Federal Circuit Makes Way for FUCT, Striking Down the Statutory Bar on Immoral or Scandalous Trademark Registrations as Unconstitutional,” discussing the recent U.S. Court of Appeals for the Federal Circuit decision involving the Lanham Act’s ban on  registering immoral or scandalous trademarks as unconstitutional on First Amendment grounds. Read the full alert here.

But We Had a Deal: Consent Agreement Cannot Overcome Likelihood of Confusion Finding

Order Affirming Refusal of Registration, In re 8-Brewing LLC,
T.T.A.B. (October 30, 2017)

Trademark applicants know the familiar sinking feeling when their clearance search turns up a potentially conflicting mark already on the Principal Register. But the situation is not hopeless, and registrants and applicants seeking to register similar marks are often able to reach an amicable coexistence agreement that allows both sides to use and register their respective marks. However, a recent decision from the Trademark Trial and Appeal Board has shown that, when it comes to a coexistence agreement, the devil may be in the details. READ MORE

Is It Too Late For Velcro to Hook the Public on Hook and Loop?

In an effort to protect itself against genericide—the death of a trademark because the brand name becomes synonymous with the type of product—Velcro’s legal department released a video two weeks ago pleading with the public to stop saying “Velcro” and start saying “hook and loop” or “self-adhesive straps.”  (Watch it, really.)  Amazingly, Velcro’s play on the ballad “We are the World” has already gone viral.  Though the comments on the video are mixed, Velcro’s video is certainly raising awareness of its brand.  READ MORE