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Trademark Issues for Businesses in the Food, Energy, and Water Sectors

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Trademark Issues for Businesses in the Food, Energy, and Water Sectors

This course will provide an overview of trademarks including how to select, register, and maintain. The course will then discuss a number of recent court decisions relating to trademarks in the food, energy, and water sectors.

Presenters

Kirby Drake
Founder
Kirby Drake Law PLLC

Transcript

Kirby Drake - Hello, today I'm gonna talk to you a little bit about how trademarks are being protected and enforced in several different industries.

 

So first, let's look at a couple of different trademarks. These trademarks are shown on the screen here. So thinking to yourself, when you see these four listed, do you know who owns the trademark? Take a second and think about it. Did you get them right? They're Burger King, Converse, Ford and Nike. How quickly did you identify the company that makes each of the items listed? Was it in split seconds? Was it instantaneously? Just think about that. And on this next slide, we see a couple of different logos for different companies. Again, think about who owns those logos or what those logos are associated with. If you said that they were Instagram, Target, Amazon and Toyota, you would be correct. And again, how quickly did you identify the company that makes the item listed? So let's look at another one. These are some items that you may have seen the designs for. If you guessed the iPhone, which is Apple. Oreo, which is Nabisco. A Hershey Kiss, owned by Hershey. And Lego, you would be correct.

 

So why do you think that you matched each of these trademarks so quickly? There can be lots of different reasons. Including you've bought the item before, you've seen commercials for it, you've seen it in magazines. You may have seen it at the store. Friends or families have had a previous experience with the brand. It could have been endorsements, official products of your favorite sports team. But to get those instantaneous impressions on consumers, could spend a lot for those commercials, endorsements, naming, package development, advertising, sponsorship of events, premiums for shelf space in a store. And even premiums for placement on a website or in search results. And when you're developing that sort of trademark, you're hoping that the investment you made in developing your brand results in distinguishing your product from that of your competitors. Developing goodwill with your consumers. And setting the consumer's expectation of the quality or experience that they'll receive with your product.

 

So how do you protect your investment in this brand awareness? Of course, claiming trademark rights in your product name and/or in your brand. Trademarks can represent one of the most important assets of many businesses. How having a good trademark can distinguish the business' products and/or services from those provided by competitors. Accordingly, it can be critical to the success of a business to secure trademark protection. So what is a trademark? A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identify and distinguish the source of the goods of one party from those of others. The service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product.

 

 Essentially, a trademark is a source identifier for a business. Trademarks can include words, logos, shapes, colors, as well as combinations of the same. The critical part of a trademark is use. If a trademark continues to be used, it can last forever. And as we will discuss a little later, it is necessary to file paperwork to show use periodically to keep those trademark rights. A trademark essentially serves three important purposes. It identifies the origin of a product or service. It identifies the goods and services of the company. It also provides an assurance of quality. And it creates and sustains consumer loyalty and brand awareness. Trademarks represent the goodwill and values of a company and are oftentimes the most valuable asset to a company. So now let's look at selecting a trademark.

 

As you'll see on this slide, in terms of selecting a trademark, there's often a sliding scale that indicates the strength of a trademark. As shown here on the slide, generic trademarks are the weakest form of trademarks. Generic trademarks are the common name for a good or service, and an example would be gasoline. The word gasoline has ceased to function as a source identifier or indicator of origin. This means that everyone can use the word or image without any problem. That's why you can print a picture of apples on the side of an apple bag without asking Apple computers first. It's also why Apple computers can't sell real apples and force everyone else to call theirs crispy fruit.

 

Descriptive marks are next on the sliding scale, from weakest to strongest. A descriptive trademark is one that describes a quality or characteristic of the goods or services to be associated with the mark. And these are the marks that are usually the hardest to obtain and enforce. Descriptive trademarks get right to the point by describing a company's products. However, this means they don't get as much protection from trademark laws. This is because it's possible for someone to use the trademark word or image to describe a different product. For example, some reviewers use the term best buy to describe good products. But you don't have to visit a Best Buy store to buy them. Companies named after their founders, like Ford Motors, also use descriptive trademarks. This is because a man named George Ford could own a motor and call it Ford's Motor. Someone who is unfamiliar with trademarks may believe that his or her selected trademark is good because it describes the goods and/or services to be associated with the mark.

 

Similarly, they may believe that the trademark is good because a potential customer would know what is being sold merely by being presented with that mark. But when a descriptive trademark is selected to be used, there's a risk that the trademark office may reject that mark for being too descriptive. Leading to no registration at all. It will most likely at least lead to a rejection. And there may be limited options to address the rejection, such as having the trademark placed on the supplemental register. But it can end up costing the person more time and money, than not having pursued the descriptive trademark in the first place. Suggestive trademarks can be made up or real words or images. But in this case, the mark may suggest something about the company's products. For instance, the company Microsoft produces software. So there is some connection. The Greyhound Bus Company took the name of a fast dog breed to suggest speed. And Timex watches have the word time in their name. Suggestive trademarks are weaker than arbitrary trademarks, but the trademark office still considers them to be relatively strong marks.

 

Arbitrary marks are those marks not readily identified as being related to the good or service. An arbitrary trademark is a word or image that already exists, but it has nothing to do with the business that uses it. Apple computers is one of the classic examples, since iPhones and laptops have nothing to do with fruit or cider. Shell gas stations and Camel cigarettes are other good examples.

 

Finally, the strongest trademarks are considered to be fanciful trademarks. Sometimes called coined trademarks, which are completely made up words such as Exxon, Kodak, Pepsi, Clorox, or Xerox. To have the best chance of protection, a company will want to try to select arbitrary or fanciful marks for the company name and/or product name. This lets the company have the full protection of US trademark law. After all, no one has a reason to use a made up word except for the company. They are the strongest types of trademarks. And as I said, one of the most well-known examples would have to be Kodak, which George Eastman made up for his camera and film company because he liked the hard K sounds. Most drug names are also made up, like Tylenol, Advil and Percocet. Trademarks are subject to varying degrees of protection. The stronger the mark, the greater protection it will receive. It's important for a company to resist the temptation to select a mark that just describes the goods or services. It is difficult, if not impossible, to protect a mark that is descriptive.

 

So now let's look at the registration and benefits of registration. It is possible to have a trademark without registering it with the United States Patent and Trademark Office. This is known as a common law trademark, typically signified by a TM placed after the mark. However, there are several advantages to registration. First, nationwide protection. If you can show that your mark has been used across state lines, i.e. in interstate commerce, then you can register and be able to enforce your mark in all states. Regardless whether you have used the mark in all states. Registration also provides a constructive notice of right to use. It puts others on notice of a company's rights to use the mark and stop others from using. Also with respect to the refusal of later filed applications that are confusingly similar, this relates to the constructive notice of right to use. Because later filed applications that are similar and cover similar goods and services will not be allowed registration.

 

Registration also gives you the ability to use the registered symbol, or the R with the circle around it. This is another aspect of notice. Using this symbol is only permitted when a mark has actually been registered. Further, you can obtain registration in a foreign country. You may be able to use your US trademark registration as a priority document for later registrations in other countries. Also statutory damages and attorney's fees may be available in federal litigation relating to infringement, if you have a federal trademark registration. So now let's look a little bit deeper at the trademark registration process. As noted on this slide, there are three parts to the process. The searching step, the filing step and the maintaining step. And we'll go into each of those in a little bit more detail here.

 

First in the search, there are a couple of different types of searches that can be done. I will note that there's not a requirement that you do a trademark search prior to filing for a trademark. But it is definitely a helpful thing to do. The most common to type of search is a knockout search. This is usually performed prior to filing an application, to exclude any existing marks that are identical or confusingly similar to the proposed mark. And to assist in the determination if the proposed mark may be generic or descriptive. You can use the TEST system, which is the Trademark Electronic Search System, which is available on the uspto.gov website. This will allow you to do simple searches for marks that are registered or already applied for. You can focus the search to different classes of goods and services as well. There are some other services, such as Trademarkia or Trademark Engine, and as well as some additional services that may be free services. As well as some that are paid services that you can use for knockout searches. However, you can also consider doing an extensive search. If you were going to build your business around a certain mark, then you may want to have more of a human powered search. This may involve using a search service, such as Core Search or Thomson CompuMark. And then in some cases, you may consider having an attorney opinion. Attorneys often utilize these search services and then will provide a written opinion as to the likelihood of registration or infringement, depending on the needs of the business.

 

So before you file a trademark application, there are number of considerations to take into account. First, the type of mark that you want to register. Is it going to be a wordmark, a design mark, a logo? Are you going to use color? Is it a combination of words, as well as a design? Different things like that. Also a trademark application requires an accurate identification of the goods or services to be associated with the trademark. The trademark office provides a list of pre-approved descriptions for the goods and services. And this is in the trademark ID Manual that you can find online. Trademark attorneys are trained to consult this list and identify the proper goods and services to be associated with the trademark. And when these pre-approved descriptions may not entirely align with the trademark, the attorney can and rely on his or her experience with the trademark office to suggest descriptions that are likely to be approved. The most common problems arise when the applicant includes an improper description of the goods and services to be associated with the mark.

 

This may lead to one or more rejections, thereby increasing the cost to obtain registration. You also have to consider whether it's going to be a use-based versus intent to use application. If the mark has been used across state lines already, then it can be filed as a use-based application. If it is, you will need to provide specimens or evidence showing use of the mark in connection with the goods and services. Otherwise, you'll file as an intent to use and will need to make a statement in the application confirming a bonafide intent to use the mark. If the applicant has not yet used the trademark but plans to do so in the future, you can do this based on the bonafide intention to use the mark. The applicant does not have to use the trademark before filing the federal trademark application.

 

Later in the application process, if the trademark is approved, the applicant will need to file proof of using the trademark in interstate commerce. A total of five extensions, each lasting six months, may be granted before proof of use in interstate commerce is required. Each extension incurs additional filing fees. In general to show use, the trademark must appear on the goods, the container for the goods or displays associated with the goods. And the goods must be sold or transported in interstate commerce. Once the application has been filed, an examining attorney is assigned. And the application may then be examined in accordance with the Trademark Manual of Examining Procedure, or the TMEP, which is available online. There could be a rejection that takes place, based on one or more bases for a rejection. And that is often referred to as an office action. And in response, the applicant may make amendments such as amendments to clarify the goods or services to be associated with the mark. Or reasons why the mark would not be confused with other marks that may already be before the trademark office. If the trademark is approved, then it is published in the Trademark Official Gazette for a opposition period of 30 days. Where anyone who thinks that they may be harmed by the mark being registered can express their intent to oppose. And then if an appeal were needed, such as if the mark were not approved by the trademark examiner, an appeal may be made to the Trademark Trial and Appeal Board. Also known as the TTAB. Once the trade mark is allowed, the applicant will receive a certificate of registration if it is a use-based application. In the case of an intent to use application, the applicant will receive a notice of allowance. And the applicant must file a statement of use or an extension request, before the certificate of registration will be issued. It's not enough to just get the mark registered, it's necessary to maintain it. And it's very important to check the Trademark Status and Document Retrieval, or the TSDR website, periodically to ensure that contact information is up to date in case some issue arises. A trademark registration issued by the US Patent and Trademark Office is generally valid for 10 years after the date of registration. Provided that a Section 8, and possibly Section 15, affidavit is filed between the fifth and sixth years after registration. Further validating that the mark is in use at that time. Failing to file the Section 8 affidavit will result in cancellation of the trademark application before the 10 year period is up. Between the ninth and 10th year after registration, a renewal is required to maintain the mark. And that will require showing further evidence that the mark is continuing to be used, and that is required to maintain the mark. Then the renewals are filed every 10 years afterwards. There are courtesy electronic reminders that are generally sent out on the first day of the filing period for maintenance. But I do not recommend just relying on those courtesy reminders. And you need to have them docketed yourself or your attorney does, if you have an attorney that's managing the application. There are various helpful tutorials that are out there. I've identified one area on the US Patent and Trademark Office website that provides an online tutorial. If you're looking for information about basic facts about trademarks.

 

If you do need general information about the registration process or assistance with status inquiries, there are two phone numbers that are shown on the slide. As well as an email address that you can use during the weekdays to get such assistance. So let's look at some possible pitfalls that can come in the trademark. I guess, through the search, up through the maintenance aspects of the trademark process. One of the possible pitfalls is the failure to adequately select an enforceable trademark. A trademark is more likely to be enforceable when it is distinctive and serves to distinguish the goods or services that are associated with the mark, from those goods or services that are being provided by others. A pitfall of failing to adequately select an enforceable trademark is that when the trademark office performs a search during examination, they may identify an existing mark that could present a potential bar to registration because of likelihood of confusion. In this type of scenario, the mark may not be protectable. And in fact, may be infringing. Thereby causing the client to have to rebrand a business or a product.

 

The best way to identify such products or problems is to carry out a good search prior to filing. The search may determine the availability of the mark for use and registration. Conducting a search may disclose marks that are identical or similar to the proposed mark. If the proposed mark is identical or sufficiently similar to an existing mark, and used for goods and/or services that are the same or similar to the proposed goods and services, there could be a risk of likelihood of confusion between these marks. Such a likelihood of confusion could cause the denial of a registration of the proposed mark, or expose the client to liability for trademark infringement if it uses the proposed mark. Unfortunately there are no bright line rules as to whether there is a risk of likelihood of confusion, or the degree of such risk. It is a question of fact, depending on an assessment of each mark and the degree of similarity of the relevant goods and/or services. Doing this search can be a good financial investment as it can potentially help to avoid major legal and other business costs down the road. Particularly if it helps avoid a rebranding campaign.

 

Another possible pitfall relates to the failure to meet trademark office requirements. Some of the most common mistakes arise with respect to identifying the proper owner of the trademark. Knowing when to file an intent to use application, as opposed to a use-based application. And accurately describing the goods and services associated with the mark. A trademark application must state who owns the trademark rights. If a company is identified as the owner of the trademark, the company should be legally formed and registered. Otherwise there may be an argument that the trademark registration was issued to a non-existent party, making the trade mark potentially unenforceable. If the trademark applicant is not yet using the trademark in connection with the goods or services in interstate commerce, but still wants to proceed with protecting the trademark, an intent to use applications should be filed. Upon allowance, this type of application may protect the mark while giving the owner time to get the mark associated with the goods and services and out into the marketplace.

 

However, for example, in a do it yourself trademark application context, an applicant may not appreciate the difference in the types of filings. In such a scenario, the applicant may end up having to refile the trademark application. Such as to make it an intent to use application. This can raise the cost of securing protection, as another filing fee would need to be paid. There's also a risk of intervening rights. If another party secures rights in the same or similar mark in the interim, thereby eliminating or at least reducing the protection that the client may be able to obtain. Another pitfall that arises with respect to preparing a description of goods and services is exaggeration of the goods and services allegedly associated with the trademark. The goods and services section of a trademark application should describe how the mark is or will be used in commerce. Applicants sometimes tend to list every potential product or service they can think of being associated with the mark. If the mark is registered for goods and services that are not actually associated with the mark, the applicant may be viewed as having committed fraud on the trademark office. And it could lead to nullification of the trademark registration in its entirety. Trademark attorneys are trained to scrub the description of goods and services and to drop any goods and services that are not being associated with the mark, prior to registration, to minimize the likelihood of fraud on the trademark office. Or potential unenforceability of the trademark in the future.

 

On the other hand, applicants sometimes omit goods and services being used in commerce or those where there may be a legitimate intent to use. Applicants may not be aware that the description of goods and services in an application cannot be expanded beyond what was presented in the initial filing. While applicants can file additional applications to cover additional goods and services, careful consideration of the description of goods and services before the initial filing may save time and money. The bottom line is taking time to confirm the use or potential use of each item identified in the description may ensure the survival of the trademark registration.

 

Another pitfall is the failure to adhere to the less is more principle. Many applicants make the mistake of filing for protection on the most detailed version of their trademark, such as a full color logo with business name and slogan. It is possible that applicants do so, believing that the detailed version is most likely to be approved for registration. Or it may be a cost issue, such as maximizing the filing fee. However, protecting the most detailed version of the trademark without separately protecting other aspects such as the logo or the slogan, may dramatically limit the breadth of the registration. This may then affect the applicant's ability to enforce the trademark later. For example, to prove infringement, the client may have to show that the competitor used a confusingly similar name and logo and slogan. While this may be possible to prove, it is less likely that a competitor would use all three components together. On the other hand, if the applicant protects the business name alone with no particular claim to font or color, the applicant may be in a better position to show a competitor is using a confusingly similar name. Even if the competitor uses a drastically different logo.

 

Another pitfall relates to the failure to complete or maintain trademark registration. Many applicants are not aware of what is required to actually have a trademark application proceed to registration. And online services do not always provide the information sufficient for applicants to ensure compliance. There are other scenarios where they may believe that they may have a trade registered trademark just by filing a trademark application. Having this belief, if the trademark office issues a rejection of the application, they may not respond to the rejection within the time limit. And this may result in the abandonment of the application. But even once the trademark has been registered, some trademark owners may not appreciate the requirements that must be met to maintain a trademark registration. As I mentioned earlier, a trademark registration never expires until the owner fails to show continuous use in commerce or the owner fails to renew the trademark. Trademarks in the United States are renewed every 10 years. But if it's not renewed, it will be canceled. If you don't file every 10th year, then you will not maintain the registration enforced. The most common pitfall will with many trademark owners concerns the failure to maintain a trademark registration.

 

If a trademark owner works with an attorney to obtain and maintain trademark registrations, these deadlines would likely be docketed. And the trademark owner would likely receive reminders from the attorney, in advance of the deadlines, to take action. While there are some online services that will provide trademark owners with unsolicited reminders of renewal deadlines, these reminders are not always accurate. And also sometimes look like advertisements, and may charge more than even an attorney may charge for providing these services. But when they do look like advertisements, sometimes trademark owners tend to disregard them. Failure to renew a trademark registration when there has been continuous uses in commerce may not be fatal. But like the other pitfalls previously described, it can prove costly as a new trademark application may need to be filed. Thereby restarting the application process when it would not have otherwise been necessary to do so. There are many other pitfalls that have not been addressed here including oppositions following trademark publication, changes in ownership following registration. And submission of proper specimens with the trademark application. The cost of consulting and attorney to file and/or maintain a trademark can be minimal in comparison to the costs that may arise in attempting to salvage an application that contains serious errors. Reviving an application that has lapsed, or fighting an infringement suit.

 

So now we're gonna look at some examples of some things that come up related to trademarks. And then we'll touch on some specific cases in the last part of the presentation. So one thing that comes up when we look at trademarks is whether it is possible to use another company's trademarks in your advertisements. Advertisements are supposed to inform a consumer and not unfairly attack a competitor. If a competitor's trademark is going to be used in an ad, and it is protected through a trademark, then it's important to mark the competitor's trademarks with a trademark symbol. Either the TM, or the registered symbol as appropriate. Ultimately if you're using another's trademarks in ads, you cannot suggest that a competitor endorses or sponsors the product that's being advertised. And you cannot take unfair advantage of reputation of the competitor's trademark to promote your own business. This leads to another question related to advertising, and that comes into comparing products in ads. Like with the using another's trademarks, of course, no derogatory or defamatory comparisons are allowed. You cannot take unfair advantage of the reputation of the competitor's trademark to promote your own business. If you are making a comparison or claims of comparison, you need to be prepared to be able to substantiate those. They must be completely true and accurate. If opinions are being made within the ads, then those opinions, of course, should never be expressed as facts. And then ultimately, you cannot compare and cause confusion with the competitor's products.

 

So let's look at some things that have come up, kind of in the advertising context. And the first case deals with false advertising and infant formulas. In this situation a federal court ruled that the maker of the baby formula Enfamil, it was Mead Johnson Nutrition, had to pay $13.5 million in damages to their competitor PBM Products, for misleading consumers with a comparative ad campaign. This award was one of the largest to date for a false advertising case. At issue were promotional materials Mead Johnson ran that stated things such as quote, "there are plenty of other ways to save on baby expenses without cutting back on nutrition," close quote. And quote, "it may be tempting to try a less expensive store brand, but only Enfamil Lipil is clinically proven to improve brain and eye development," close quote. Also an issue was a direct mailer that went out to more than 1 million people, showing a blurry vision picture of a cartoon duck juxtaposed with a clear picture of the same image. To get across the idea that products not containing Enfamil's blend of ingredients were inferior and could cause poor eye and brain development. The court order in this case required Mead Johnson to pull any of the ads or promotional materials making claims about PBM's infant formula. And Mead Johnson was enjoined from marketing in the future in a way that suggested that PBM's infant formula was inferior.

 

So now we'll look at yogurts and you've probably seen a lot of the ads over the years related to Activia and probiotics. So for years, Dannon has been touting Activia and DanActive yogurt products as clinically and scientifically proven to regulate digestion and boost immune systems. The company even launched a glossy TV ad campaign featuring actress Jamie Lee Curtis, who calls the yogurt tasty. The judge in this case ordered Dannon to pay consumers up to $45 million in damages, under the terms of a class action settlement that were reached in federal court. The agreement in that case also called for Dannon to change its health claims for Activia and DanActive. In this case, both of the yogurts that were at issue sell at a 30% premium over other brands because they claim special bacterial ingredients that the company advertised as clinically proven to help strengthen immune systems and regulate digestion. Under the terms of the settlement, Dannon was required to remove the words clinically and scientifically proven from product labels and advertisements of Activia yogurt in reference to claims that the product helps to regulate the digestive system. In their place, the words clinical studies show or something similar could be substituted. Dannon was also required to note that Activia and DanActive yogurts are food, not treatments or cures for any medical disorder or disease. Also DanActive was required to remove the word immunity from DanActive labels and ads. As well as include a qualifier to claim the yogurt helps strengthen your body's defenses, or helps support the immune system.

 

Now that we've looked at yogurts, now we'll look at sugars and artificial sugars. So Merisant company, which makes Equal, they accused the makers of Splenda of confusing consumers into thinking its product was healthier and more natural than other artificial sweeteners. Splenda's marketer, McNeil Nutritionals, countered that it simply has a better product backed by superior advertising. The active ingredient in Splenda starts as pure cane sugar, but is chemically altered to create a compound that contains no calories. According to McNeil, the final product contains no sugar. Because the manufacturing of Splenda begins with sugar, McNeil can accurately claim that Splenda is made from sugar according to its attornies. But in response or as part of this complaint, McNeil's own consultants said its slogan's confused potential customers. Some of whom thought Splenda was sugar without the calories. And this was what Equal's attorney said. McNeil rejected a plan to add the phrase, does not contain sugar, to the front of Splenda's yellow box which might have cleared up the confusion. So that was a case that has kind of moved on from time, but it was just interesting to think about the different ways that products are made and how they are characterized. Another such case related to sugar, which was corn sugar or high fructose corn syrup. And this was dealing with the industry that was wishing to refer to it as such.

 

 Back in 2012, the Food and Drug Administration ruled that the ubiquitous high fructose corn syrup that sweetens many candy, sodas and snacks could not be called corn sugar. The FDA, which does decide what food labels can say, ruled that consumers would be too confused by the name change. High fructose corn syrup is cheaper than regular sugar and had become a popular choice for food companies decades ago. But during the last several years, their reputation had taken a beating. In a petition to the FDA, the companies argued that high fructose corn syrup is pretty much the same as sugar. And chemically, they are right. Both sweeteners are a mix of glucose and fructose and our bodies handle them in similar ways. But the FDA defines sugar as a solid, dried and crystallized item. And syrup as an aqueous solution or a liquid food. The FDA's approach is consistent with the common understanding of sugar and syrup as referenced in a dictionary. In English, that means that consumers might be more confused than they already are about sweeteners. Also, there's already something else in the market called corn sugar. It's the name for the sweetener, Dextrose, and has been used by people who have trouble tolerating regular sugar for 30 years.

 

So now we'll touch on another case study related to water. On the one side you had Nestle, which owned the Ozarka brand of waters in addition to other brands. Eureka Water Company is the biggest distributor in Oklahoma for Ozarka. But there's actually two types of Ozarka. Drinking water profits stay in Oklahoma and spring water profits go to Nestle. This is because Eureka has an exclusive license to distribute purified water in Oklahoma. But Nestle owns the trademark and can provide its spring water in Oklahoma as well. This led to confusion about who actually owns the water and who can use the name, particularly in certain states. So that is an ongoing dispute that we see.

 

Now we'll look at a couple of other more recent cases that have come up, as it relates to different product and features. First case we'll look at is the Ezaki Glico Kabushiki Kaisha versus Lotte International American Corporation. This was a Third Circuit case from 2021. And as noted on the slide, this dealt with a functionality analysis related to a trademark. And whether a particular shape or form chosen is useful, and not whether the product or feature as a whole is useful. The first sentence of this opinion if you go and read it, says, "this is a tale of more than just desserts." So the plaintiff or the company, in this case the Ezaki company, is a Japanese confectionary company. And they began producing stick shaped cookies called Pocky, which you may have seen in the store back in 1978. The cookies were coated with chocolate and other coatings. And one quarter of the cookie was left uncoated, to serve as a handle. Ezaki registered two Pocky product configurations as trade dress. In addition, they owned a utility patent for a stick shaped snack and method for producing the same claiming methods for making the stick shaped cookies. Lotte International America Corp and Lotte Confectionary Company Limited, collectively Lotte, they began selling a similar looking cookie called Pepero in 1983. And Ezaki sent a series of cease and desist letters over a course of three years, between 1993 and 1995. But didn't take any action for the next two decades.

 

Fast forward to 2015, when Ezaki brought an action against Lotte alleging trademark infringement and unfair competition based on the allegedly confusingly similar product configuration used by Lotte. The district court held that Pocky's product configuration was functional and not protectable as trade dress. On the appeal, the Third Circuit reasoned that functionality should be analyzed not at the level of the entire product or type of feature, but at the level of the particular design chosen for the feature. Said differently, the question is whether the particular shape or form chosen is useful. Not whether the product or feature as a whole is useful. As applied, the court reasoned that every feature of Pocky's registration relates to the functions of holding, eating, or transporting the snack. Even more, the Third Circuit reason, Ezaki frequently promoted this convenient or useful design in its marketing materials. The court found that the presence of alternative designs were not dispositive and that Ezaki utility patent was altogether irrelevant to the decision. Accordingly because they found that the product configuration was functional, they affirmed the decision of the district court that Pocky's product configuration was not protectable as a trade dress.

 

Now we'll look at another case, it actually relates to mayonnaise and ketchup. And in some cases, mustard. And this is Perry versus H.J. Heinz brands LLC. So this case dealt with METCHUP, one of the parts dealt with METCHUP. Which is considered to be a blend of mayonnaise and ketchup, sometimes mustard. The plaintiff in the case, Perry, sells METCHUP under the METCHUP mark from the lobby of the Star Motel adjacent to Perry's Used Car Dealership in Louisiana. He owns a US registration covering the METCHUP mark in connection with ketchup, mayonnaise, and mustard, with a priority date of June 15th, 2007. His total sales under the mark, as reported by the Fifth Circuit, were around $170. MAYOCHUP is also a blend of mayonnaise and ketchup. The defendants, Heinz Company Brand and Kraft Heinz Food Company, together Kraft, began selling MAYOCHUP in the Middle East in 2016. In connection with their US launch in 2018, Heinz asked the public to propose names for the mixtures coming to the market. Such as ketchup and ranch, being KRANCH, mayonnaise and mustard being Mayomust. Mayonnaise and barbecue sauce being Mayocue. And, of course, mayonnaise and ketchup.

 

In connection with the promotion, a contestant submitted the name METCHUP to Heinz. And Heinz included on its website, a bottle bearing the name METCHUP along with several other mock-up bottles. Heinz reportedly never sold a product bearing the name METCHUP. Perry brought an action against Heinz for trademark infringement, counterfeiting, false designation of origin and violation of several Louisiana trademark laws. Finding no likelihood of confusion between MAYOCHUP and METCHUP and no likelihood of confusion created by Heinz's brief use of METCHUP in advertising, the district court dismissed Perry's claim on summary judgment. And found that Perry's mark was abandoned. The district court reasoned that Perry abandoned his mark because he failed to produce evidence of sales of METCHUP branded products outside of Louisiana, or to non-Louisiana residents.

 

The Fifth Circuit reversed as to abandonment. The Fifth Circuit reasoned that just as one need not direct goods across state lines for Congress to regulate activity under the Commerce Code, there is no cross-border requirement to satisfy the Lanham Act's use in commerce requirement. In addition in dicta, the Fifth Circuit noted specifically that cases like legalion concerning de minimus use should be caven to situations involving a trademark maintenance program or a defensive trademark use. This was not the case here. Although Perry's use was relatively minor, it was good faith use sufficient to sustain the registration.

 

So now we'll turn to the Cola wars, if you will. Not our typical Pepsi, Coke type debate. This one was between Royal Crown Company and the Coca-Cola Company. And this is a federal circuit case from August of 2020. The federal circuit recently brought and end to a 15 year dispute between Royal Crown Company, or RC, and the Coca-Cola Company. When it's dismissed an appeal from the Trademark Trial and Appeal Board's 2019 decision dismissing RC's consolidated opposition to 16 trademarks containing the term zero. The issues before the federal circuit were, one, whether the TTAB's granting of the Coca-Cola Company's motion to amend its applications to add disclaimers of zero was procedurally improper. Two, whether the TTAB was required by the Administrative Procedure Act or the APA to render a reason decision on the merits. And three, whether the disclaimers rendered the appeal moot. In the underlying opposition, RC contended that the various zero formative marks should be denied registration absent the entry of a disclaimer of the term zero. When the case was remanded to the TTAB in 2018 for the board to apply the correct standard for genericness, the Coca-Cola company filed a motion without RC's consent to amend each application to add a disclaimer of zero. Which motion the board granted.

 

On this appeal, the federal circuit ruled that the TTAB did not abuse its discretion in granting the motion. That entry of the disclaimers rendered the appeal moot, and that the TTAB is not required to issue an advisory opinion in such a case. As some background, in the original opposition the TTAB addressed whether zero is either generic for zero calorie soft drinks. Or descriptive, without acquired distinctiveness. Although the Coca-Cola company claimed acquired distinctiveness for all of their zero formative marks that were asserted. If it was generic or descriptive, would this require a disclaimer of the Coca-Cola Company's exclusive right in the term for registration? RC appealed the board's determinations on genericness and acquired distinctiveness. And the federal circuit issued a decision vacating and remanding the board's decision. Holding that the board applied the incorrect legal standing in assessing whether the Coca-Cola Company's zero marks were generic, and vacating the board's acquired distinctiveness determination. The court found that the board's approach was erroneous. The court found that the board asked the wrong question in determining the genericness of the zero term. Specifically, the board failed to consider that a term can be generic for a genus of goods or services if the relevant public understands the terms to refer to a key aspect of that genus.

 

The federal circuit also said that if the public understands zero when used in combination with a designated beverage name, to refer to a subgroup or type of beverage that carries specific characteristics. That would be enough to render the term generic. Following that reasoning, the court held that the board failed to consider whether the relevant consuming public would consider the zero term to be generic for a subcategory of the claimed genus of beverages. For example, the subcategory of the claimed beverages encompassing the specialty beverage categories of drinks with few or zero calories.

 

Therefore, on remand the court directed the board to consider whether zero is generic because it refers to a key aspect of at least a subgroup or type of the claimer beverage goods. The board, however, never addressed the degree of descriptiveness conveyed by zero. The court also vacated the board's finding of acquired distinctiveness, holding that the board must make an express finding regarding the degree of the mark's descriptiveness on the scale from generic to merely descriptive. And must explain how its assessment of the evidentiary record reflects that finding. It was at this point that the Coca-Cola Company filed a motion to amend each application to add a disclaimer of zero. Which was granted by the TTAB, resulting in the appeal that the federal circuit was addressing here. RC contended that because the Coca-Cola Company did not concede whether zero is generic or merely descriptive, Coca-Cola may apply for other zero marks. The court observed, however, that RC obtained what it requests in its opposition. Namely a disclaimer of zero in each of the trademark applications at issue. Consequently, there is no case or controversy for the court to decide and the appeal was dismissed.

 

So now we'll move on from cola products to breweries. And we'll look at the case of Schlafly versus St. Louis Brewery, which is a federal circuit case from 2018. And in this case, the federal circuit addressed whether the Schlafly trademark filed by the St. Louis Brewery in 2011, had acquired secondary meaning. And met the requirements for registration. The St. Louis Brewery is a craft brewery that was founded in 1989. And had sold millions of units of Schlafly Beer since 1991. Its Schlafly wordmark application for beer and ale was opposed by two relatives of Thomas Schlafly, co-founder of the St. Louis Brewery and subsequently appealed after the TTAB denied the opposition. The opposers argued that the TTAB did not recognize the mark as primarily merely a surname. And improperly recognized the mark as having acquired secondary meaning without the support of survey evidence.

 

One of the opposers, Phyllis Schlafly, is a known public figure and conservative icon who argued that the Schlafly surname is primarily associated with her in the minds of the public. The other opposer, Dr. Bruce Schlafly, is a doctor that's used his name and associated with his medical practice since 1986. The TTAB originally ruled in favor of the St. Louis Brewery, stating that it did not need to consider whether the mark is primarily merely a surname because St. Louis Brewery had successfully proven acquired distinctiveness. The St. Louis brewery had provided significant evidence, including long continuous use of the mark, large sales volume, substantial marketing expenditures, prominent media coverage and awards. Further, the TTAB relied on the fact that there was no evidence of market proximity between the St. Louis Brewery's goods and the opposers' activities. And they also rejected the opposers' argument that the St. Louis Brewery required to submit survey evidence of secondary meaning.

 

The federal circuit looked at the entire record to determine whether based on that record, there was substantial evidence to support the determination. The court recognized the significant evidence provided by the St. Louis Brewery. And rejected the opposers argument that the board should have determined whether the mark was primarily merely a surname. And the opposers proposed new change in significance test. The court held that the board correctly determined that the trademark statute provides that words that are merely primarily used as a surname can be registered trademarks if they've acquired secondary meaning in trademark use. After quickly addressing the opposers' failed constitutional arguments, the court affirmed the board's decision that Schlafly had met the requirements for registration for use in association with beer.

 

So now we'll move on from beer into chocolates. And we'll see, there was a question from... These are some of the opinions that have come from the TTAB more recently. And we have first, the question of Le Chocolat Des Iles and Island Chocolates, confusable for chocolate candy. And in this case, you'll see the design for the proposed mark, Les Chocolat Des Isles and design for various chocolate products. The word chocolat was disclaimed, including chocolate candy and chocolate covered nuts. Registration was refused because they found that confusion was likely with the registered mark Island Chocolates for chocolate candies and chocolate covered nuts, with the word chocolate disclaimed. The goods overlap, but how about the marks? Are the marks actually confusable?

 

The applicant, Goojha, translated the literal portion of the proposed mark as the chocolate of the islands. But contended that the mark is dissimilar in appearance, sound, connotation, and commercial impression from the cited mark. The applicant also insisted that the words in each mark are spelled differently, pronounced differently and have different meanings. The applicant asserted that the color gold in the mark reflects the upscale and fancy product that's being offered. The applicant maintained that the doctrine of foreign equivalence is not an absolute rule, and the ordinary American consumer could not translate his mark. The French translation would not be applied or understood by the average American consumer. The examiner presented evidence showing that French brands are commonly sold in the United States. And some 1.25 million individuals speak French in the United States.

 

The board found that French qualifies as a common, modern language spoken by an appreciable segment of the population. It took judicial notice that Iles, in French is for island. And chocolat is French for chocolate. And there are no other meanings for these terms. Under the doctrine of foreign equivalence, foreign words from common language are translated into English to determine the similarity of connotation with English wordmarks. As the applicant pointed out, the doctrine of foreign equivalence is a guideline and not an absolute rule. Rather, the doctrine is applied when it's likely that the ordinary American purchaser would stop and translate the term into its English equivalent.

 

For the purpose of the doctrine of foreign equivalence, the ordinary American purchaser refers to the ordinary American purchaser who is knowledgeable in English, as well as the pertinent foreign language. As we said, the translation of the French translated over to the chocolate of the islands. The evidence clearly showed that this was the only meaning of the phrase, and this is how the phrase would be recognized and understood by the French speaking American public. The board found that the doctrine of foreign equivalence was applicable. Applicant's mark was the foreign equivalent and synonymous with island chocolates.

 

Moreover, the board noted even if the doctrine of foreign equivalents did not apply, a significant number of American purchasers who are not familiar with the French language, upon encountering the term, would guess its translation is chocolate of isles if not chocolate islands. Turning to the marks, although they differ in appearance and sound, the design element in applicant's mark reinforces the word island. The board found that the equivalency in meaning outweighs any differences in how the marks look and sound. The board noted that the cited registration contains a geographic restriction statement to Hawaii and Guam. But the board must presume that the applicant is marketing his services in registrant's trading area, because applicant is seeking an unrestricted registration. Accordingly, the board affirmed the refusal.

 

As one of the final cases that we look at here today, we look at an Eastern District of Virginia district court case that uphold the TTAB decision finding gruyere to be generic for cheese. Eastern District of Virginia upheld the board's decision and found that this was unregisterable as a certification mark. On the Dairy Export Counsel's motion for summary judgment, the court found that the undisputed evidence makes it clear that the primary significance of the term gruyere, as understood by the relevant purchasing public in the United States, is a generic term for a type of cheese. And does not refer to cheese from a specific geographic region. In a civil action for review of a TTAB decision, the parties may supplement the TTAB record with additional evidence. And if they do, the district court makes de novo factual findings that take into account the new evidence and the administrative record. But the TTAB's decision would not be given deference in that case.

 

Whether a proposed mark is generic is a question of fact. And the central issue in this case was whether the term gruyere has become generic for a certain type of cheese and is no longer understood to refer only to cheese which comes from the Gruyere region of Switzerland and France. A term which was once non-generic and conveyed the quality or origins of goods can become generic over time through a process called genericide. Which occurs when a generic term ceases to identify, in the public's mind, the particular source of a product or service. But rather, identifies a class of product or service regardless of source. The federal circuit has stated that the relevant public's perception is the primary consideration in determining whether a term is generic. The court found that evidence was overwhelming, that although the term gruyere may once have been understood to indicate an area of cheese production. The record makes it abundantly clear that the term has now, over time, become generic to cheese purchasers in the United States.

 

The record included evidence including existing US regulations permitting the term used, to be used on cheese regardless of origin. Commercial and government data showing the widespread sale and import of gruyere cheese produced outside of the region in Switzerland and France. And evidence showing that the term is commonly used in dictionaries, media communications and cheese industry events, without regard to where the cheese is produced. They noted that decades of importation, production and sale of cheese labeled gruyere produced outside the region of Switzerland and France, have eroded the meaning of the term and reduced it to generic. And so the court granted defendant Dairy Export Counsel's motion for summary judgment.

 

I hope today that you've learned about some of the ways that trademarks can be protected, maintained, and enforced. And some of the recent case law that has come up related to trademarks in certain industries. Feel free to contact me if you do have any questions, thank you.


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