Top Trademark Issues from 2023

1st Case: French luxury house v. NFT (nonfungible token) artist

• Do trademark owners’ rights extend to NFTs?
• Does the creation of an NFT fur-covered MetaBirkin bag infringe Hermès’ trademark rights (1) in its use of the BIRKIN trademark and/or (2) to the related trade dress embodied by physical BIRKIN bags

STATEMENTS

• Hermes argued, amongst other claims, that BIRKIN is a famous mark and Rothschild acted in bad faith, causing a likelihood of confusion
• Rothschild argued that the NFTs are not subject to trademark claims

RESOLUTION

• The jury disagreed with Rothschild; Defendant’s creation/sale was not protected by 1st Amendment
• “Rothschild’s use of the BIRKIN mark was not just likely to confuse potential consumers but was intentionally designed to mislead potential consumers into believing that Hermès was associated with Mr. Rothschild’s MetaBirkins project.”

What should IP owners do to protect themselves?

• File for trademark protection if entering the NFT space
• Take swift action (e.g. C&D letter) against infringers
• Expand enforcement and watch services to cover NFTs

 

2^ND CASE: ADIDAS SUED THOM BROWNE OVER 4 STRIPES ON APPAREL

Can Adidas stop other clothing brands from using stripes on clothing?

• Thom Browne originally used 3 stripes. In response to Adidas’ cease & desist letter in 2006, Thom Browne added a 4th stripe.

Office of designated Contracting Party

Substantive examination: Refusals must be made within set time limits from publication of international registration.

• No refusal: effect as a national or regional registration
• Refusal: national or regional procedure followed; final result reported to IB

STATEMENTS

• Adidas sued Thom Browne for trademark infringement in 2021 when Thom Browne expanded into activewear
• Thom Browne argued there is no confusion between its 4 horizontal bars & Adidas 3 vertical stripes…and the jury agreed!

RESOLUTION

The arguments that cinched it for the jury were . . .

• Adidas doesn’t own all stripes for all goods, and
• These companies target different consumers, so Thom Browne was not stealing business from Adidas

• At trial, Adidas argued that the jury should assess consumer confusion during the “initial interest” or “post-sale” phases of consumer engagement
• SDNY instructed jury to determine “whether the accused products and Adidas products compete for the same consumers.”
• 2nd Circuit recently denied the petition

3^RD CASE: Can slogans that consist of common colloquial phrases be recognized as trademarks?

MLBPA v. Chisena (TTAB 2023)

In a precedential TTAB decision, the Major League Baseball Players Association (“MLBPA”) and Aaron Judge successfully opposed Applicant, Michael P. Chisena’s applications for two slogans: “ALL RISE” and “HERE COMES THE JUDGE”

• To succeed, the Opposers had to prove both priority and a likelihood of confusion.
• With respect to priority, on May 2017, Aaron Judge appeared on the cover of Sports Illustrated and was featured in an article: “All Rise! The Yankees Youth Movement Is in Session. The Powerful AARON JUDGE Presiding.”
• Applicant tried to argue that consumers did not identify Aaron Judge as the source of these slogans in connection with apparel.
• The critical inquiry is how it would be perceived by the relevant public.

RESOLUTION

• The Board disagreed: the relevant purchasing public perceived the word “JUDGE” in the context of HERE COMES THE JUDGE as a play on words which embraced both, the judicial and surname meaning.
• The Board also addressed the use of ALL RISE as Aaron Judge’s nickname.
• Based on the evidence of sports shows, baseball fans and commentators use of the phrase ALL RISE as a play on Judge’s last name, the Board stated there may be a protectable right where the public has come to associate the phrase with a source.

4RD CASE: Can an artist receive protection for popularizing a less known phrase?

Lizzo filed two trademark applications for the mark 100% That Bitch in connection with apparel

• The Examining Attorney issued a Failure To Function refusal because the mark did not identify the source: The phrase 100% THAT BITCH was “a commonplace term, message or expression widely used by a variety of sources that merely conveys an ordinary, familiar, well-recognized concept or sentiment,”

The TTAB disagreed with the Examiner and decided that the slogan as used by Lizzo is not, in fact, a commonplace expression but instead is entitled to registration.

STATEMENTS AND ANALYSIS

Board’s Analysis – In determining consumer perception, the Board’s analysis focused on a few main factors:

1. Ornamental Use of the Mark Ornamental use is relevant to consumer perception.
2. Nature of the Message Conveyed by the Mark

• – The Board found most consumers would perceive 100% THAT BITCH used on the goods in the application as associated with Lizzo rather than as a commonplace expression.

3. Widespread Use of the Mark
4. Other Registrations of Lyrics

 

Resolution AND LESSONS:

Best practices to avoid and overcome a failure to function refusal:

• If your client did not originate the phrase it is seeking to register, try to show that the mark was not in widespread use before your client adopted the mark.
• Carefully scrutinize the Examiner’s evidence.
• Engage in a campaign of vigorous enforcement of third-party infringers

5^TH CASE

Can you tack trademark rights to related goods/services?

Bertini v Apple (Fed. Cir. 2023)

• Apple attempted to tack its APPLE MUSIC trademark to the 1960s APPLE trademark which it had acquired from Apple Records (the Beatles label)
• Apple was trying to gain priority over jazz musician Charlie Bertini who challenged the APPLE MUSIC trademark based on his own prior use of APPLE JAZZ in the 1980s

STATEMENTS

• Apple launched its streaming service in 2015 and applied the same year for a federal “Apple Music” trademark covering several categories of music and entertainment services.
• Bertini opposed the application, arguing the name would cause confusion with the “Apple Jazz” branding he had used since 1985 to advertise concerts.
• TTAB sided with Apple and allowed Apple to tack all the services back to the original registration

 

6^th CASE

Trademark Rights v. Free Expression

Jack Daniels v. VIP Products (June 2023)

• VIP Products created a dog toy that looks like the Jack Daniels whisky bottle
• VIP Products filed a Declaratory Judgement, asserting there no trademark infringement/dilution

STATEMENTS

• VIP Products tried to argue its dog toy was an expressive work under the Rogers 1st Amendment framework
• 1st Amendment says Congress cannot make a law limiting freedom of speech

RESOLUTION

• The Court sided with Jack Daniels, disagreeing that this was an expressive work; thus, Rogers did not apply
• Fatal flaw: VIP Products claimed in its pleadings that Bad Spaniels & the dog toy appearance are VIP Products trademarks
• So the Court must apply trademark rules, not 1st Amendment/free speech principles