Kane on Trademark Law a Practitioner’S Guide Sixth Edition by Siegrun D
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This is your Release #9 (June 2018) Kane on Trademark Law A Practitioner’s Guide Sixth Edition by Siegrun D. Kane (Kane Advisors LLP) In this release, Siegrun D. Kane updates the text and provides her expert analysis and practical insights regarding a wide range of crucial topics. High- lights of this release include: Product design trade dress and patent claims: In Poly-America, L.P. v. Illinois Tool Works Inc., the TTAB cancelled three trade dress registrations for colored lines at the top of plastic kitchen storage bags that plaintiff had claimed in an expired patent. The patent described the flange as being colored differently than the strips to facilitate identification of the flange and assist in separation of the strips; plaintiff later stated in advertising that the flange “immediately identifies the point of opening.” See § 3:2.1[E], at note 61, and illustration 54 at App. 18–57, depicting the bags. Grumpy cat: The licensees of trademarks related to an Internet icon were found to have violated the agreement when they started selling Grumppuccinos and other coffee products (Grumpy Cat Ltd. v. Grenade Beverage LLC). See § 5:1.7, at note 53. Trademark protection for colors: The yellow used on boxes of Cheerios was not protectable by trademark, according to the TTAB (In re General Mills IP Holdings II, LLC). See § 2:10.2[B], at note 136.1. And the protection granted to Louboutin’s red sole shoe in the United States apparently did not convince the European Court of Justice, which denied protection by holding that the red soles were not a separate entity from the shape of the high heels. See § 3:2.1[B], at note 45. Laches: In Dropbox, Inc. v. Thru Inc., the California federal district court found Thru Inc.’s failure to act from 2009 until 2014 constituted laches; the Ninth Circuit affirmed, awarding Dropbox $1.7 million in attorneys’ fees and $500,000 in costs. See § 12:2.1[A], at note 55. Disclaimers of association: A federal district court in New York rejected a defendant’s disclaimer as a means of preventing confusion where the defendant displayed plaintiff’s famous mark more prominently than the disclaimer lan- guage (Coty Inc. v. Excell Brands, LLC). See § 17:2.3, at note 28. Slogans: Informational phrases or slogans used in advertising promotions are typically not perceived as indictors of source. For example, in In re Home Dy- (continued on reverse) Practising Law Institute 1177 Avenue of the Americas New York, NY 10036 #239385 namix, LLC, the TTAB affirmed the refusal to register Designed With You In Mind for “wholesale distributorship services featuring consumer goods, namely, floor covering such as rugs and mats, flooring material such as laminates, bedding linens, animal beds, and bathroom accessories.” See § 6:2, at note 17.2. Dilution by tarnishment: In a dog chew toy case in the Arizona federal dis- trict court, whiskey maker Jack Daniel’s established tarnishment under federal and state law based on defendant’s use of Bad Spaniels with Jack Daniel’s trade dress (VIP Prods., LLC v. Jack Daniel’s Props., Inc). See § 9:6.10[E], at note 96. Online brand registries: Amazon and Facebook offer brand registry provi- sions to protect intellectual property on the Internet. The idea is to help owners police counterfeits and unauthorized uses of their marks and copyrighted con- tent. However, a “standard character” or “word mark” trademark registration is required. See § 11:3.3, at note 37.6. Cease-and-desist, politely done: The New York Times chose honey rather than vinegar when it was confronted with the slogan “All the news too lit for print” on Buzzfeed’s daily morning show, AM to DM. The Times had been using “All the News That’s Fit to Print” since 1896 and registered the mark in 1958. Instead of sending a nasty notice of infringement, the paper’s counsel initiated a friendly conversation, ending in BuzzFeed’s agreement to drop the slogan. See § 13:2.1. International service by Twitter: Service on an individual in Kuwait by Twitter was allowed as reasonably calculated to give notice and as the meth- od of service most likely to reach the individual (St. Francis Assisi v. Kuwait Finance House). See § 14:13, at note 131.3. TTAB rules—flexibility: Demonstrating its continued willingness to be flexible in applying its rules, the TTAB denied a motion to preclude the testi- mony of a named expert where notice was timely and respondent could request additional time to take discovery of the expert (Monster Energy Co. v. Martin). See § 16:8.5, at note 141. Costly marijuana madness: Iowa State University not only violated the First Amendment rights of a marijuana advocacy group that used university trademarks on T-shirts—it also ended up paying the group $150,000 in damages and $193,000 in legal bills. See § 17:4.2, at note 177.2. Termination of licensee’s rights in bankruptcy: The termination of a trademark licensee’s rights when the trademark owner goes bankrupt is a tan- gled web. Recently, the First Circuit concluded that a trademark licensee had no right to continue to use the trademark after the license was rejected. The court’s rationale was that effective trademark licensing required the owner to monitor and control the quality of the goods sold to the public. Otherwise, the result would be a “naked license” with the licensor risking the permanent loss of its trademark. The First Circuit decided that the licensor should not have that burden (Mission Product Holdings, Inc. v. Tempnology LLC (In re Tempnology LLC)). The split among the Circuits on the issue raises the possibility of Su- preme Court review. See § 20:10, at note 64. Confusion: Allstate Insurance is appealing its loss after a California court found that consumers were not likely to confuse Kia’s Drive Wise, for its line of high-tech vehicle add-ons, with Allstate’s Drivewise driver safety brand. See § 8:1.3[A], at note 19. PTO proceedings—evidence rules: The TTAB says that factual statements made on webpages are hearsay and will not be admitted without corroborat- ing testimony (WeaponX Performance Products Ltd. v. Weapon X Motorsports, Inc.). See § 19:3.1, at note 98.1. The Table of Authorities and the Index have also been updated. FILING INSTRUCTIONS Kane on Trademark Law A Practitioner’s Guide Sixth Edition Release #9 (June 2018) Remove Old Pages Insert New Pages Numbered: Numbered: ❑ Title page to xxxix ❑ Title page to xxxix ❑ 2-1 to 3-33 ❑ 2-1 to 3-33 ❑ 5-1 to 6-51 ❑ 5-1 to 6-53 ❑ 8-1 to 17-66 ❑ 8-1 to 17-66 ❑ 19-1 to 20-16 ❑ 19-1 to 20-16 ❑ App. 18-1 to App. 18-2 ❑ App. 18-1 to App. 18-2 ❑ ❑ App. 18-57 ❑ T-1 to I-60 ❑ T-1 to I-60 Practising Law Institute 1177 Avenue of the Americas New York, NY 10036 #239385 .