The U.S. Trademark Trial and Appeal Board (TTAB) has denied energy drink and dietary supplements manufacturer JHO Intellectual Property Holdings LLC’s bid to register the mark PURPLE RAIN in connection with its products. NPG Records, LLC v. JHO Intellectual Property Holdings LLC, No. 91269739 (T.T.A.B., entered August 23, 2022). JHO sought to register the mark for its energy drinks, energy bars and a range of dietary and nutritional supplement products. NPG Records, LLC, which claims to own registered and common law rights in the trademark PURPLE RAIN, and Paisley Park, which owns the rights in the name, image and likeness of Prince Rogers Nelson, the musical artist commonly known as Prince, opposed the bid. Paisley Park said the mark should be denied in part because of the false suggestion of a connection with Prince. In a recent precedential ruling, TTAB agreed, granting Paisley Park’s motion for partial summary judgment. "We…
Category Archives Federal Circuit
The U.S. Trademark Trial and Appeal Board (TTAB) has determined that "gruyere" is a generic name for the type of cheese and cannot be registered as a certification mark. Int'l Dairy Foods Assn. v. Interprofession du Gruyère & Syndicat Interprofessionel du Gruyère, No. 91232427 (T.T.A.B., entered August 5, 2020). Swiss and French associations attempted to register the mark and limit its use to cheese originating from the Swiss and French region of Gruyère, but several organizations filed notices of opposition, arguing that the term is generic. TTAB agreed, finding that a large number of cheese products sold in the United States as gruyere are produced outside of the Gruyère region, and consumer understanding of the term is not tied to a specific area. Accordingly, TTAB sustained the oppositions on the grounds that "gruyere" is generic.
The U.S. Court of Appeals for the Federal Circuit has dismissed a challenge to trade dress protection granted to Al Johnson's Swedish Restaurant & Butik Inc., a Wisconsin restaurant that features grazing goats on its rooftop, brought by an attorney who found the trade dress "demeaning to goats." Bank v. Al Johnson's Swedish Restaurant & Butik Inc., No. 19-1880 (Fed. Cir., entered December 9, 2019). The attorney argued that the trade dress of the restaurant, which includes a rooftop covered in grass and several goats grazing on it, is "offensive" and "denigrates the value he places on the respect, dignity, and worth of animals." The Trademark Trial and Appeal Board found this argument insufficient to establish standing; the Federal Circuit agreed and dismissed the appeal.
The U.S. Trademark Trial and Appeal Board (TTAB) has affirmed the denial of Yarnell Ice Cream LLC's application to register a trademark on a mascot named "Scoop." In re Yarnell Ice Cream, LLC, No. 86824279 (TTAB, entered July 9, 2019). The examining attorney rejected the application, finding "scoop" to be merely descriptive, and the appeals board agreed, pointing to examples from competitors identifying their serving sizes in scoops. The board also dismissed the argument that Yarnell's "scoop" has two meanings—the ice cream serving and the breaking-news description—because the latter intended meaning only became clear within the context of Yarnell's trade dress. "The dictionary definitions, third-party uses and registrations, and webpages and articles discussed and displayed above make it clear that 'scoop' is a common portion size and measuring unit for frozen confections and ice cream," the court held. "We find that 'scoop' has little, if any, source-identifying capacity as a…
Anchor Brewing Co. has filed an opposition against D.G. Yuengling & Son Inc.'s application to register "James River Steam Brewery" as a trademark, arguing that the proposed mark will confuse consumers familiar with its product Anchor Steam. Anchor Brewing Co. v. D.G. Yuengling & Son Inc., No. 91247967 (U.S.P.T.O., opposition filed May 3, 2019). Anchor asserts that it owns the rights to use "Steam Beer," which describes "an indigenous style of beer known as California common beer." The use of "James River Steam Brewery," Anchor argues, "is likely to create the false impression that Applicant's goods are provided by, related to, endorsed by, or associated with Opposer."
Turner Entertainment Co. has filed an opposition to Sligo Mill Brewing Co.'s application to trademark "Surrender Dorothy," arguing that consumers will be misled into believing that the brewery is associated with "The Wizard of Oz." Turner Entm't Co. v. Sligo Mill Brewing Co., Opp. No. 91244715 (U.S.P.T.O., filed November 13, 2018). Turner, which owns trademark rights on several iterations of "Dorothy," asserts that "the well-known phrase 'Surrender Dorothy'" was "written in the sky by the Wicked Witch of the West and is one of the most memorable scenes in The Wizard of Oz." Turner alleges that Sligo Mill "attempted to mislead consumers into believing its mark is licensed, approved, or sponsored by or otherwise affiliated with" Turner and "The Wizard of Oz" by naming its beer after the movie scene and featuring an image of a yellow-brick road on its label. The entertainment company urges the U.S. Patent and Trademark…
The Federal Circuit has affirmed a Trademark Trial and Appeal Board (TTAB) decision refusing to grant a trademark to Real Foods Pty Ltd. for “Corn Thins” and “Rice Thins,” finding the terms to be “merely descriptive.” Real Foods Pty Ltd. v. Frito-Lay N. Am. Inc., Nos. 17-1959, 17-2009 (Fed. Cir., entered October 4, 2018). Frito-Lay North America opposed Real Foods’ trademark application, but Real Foods argued both that the terms were not descriptive and that even if they were descriptive, they had acquired distinctiveness. The Federal Circuit found significant evidence to support TTAB’s conclusion that the terms are descriptive, noting that the first part of the terms is the primary ingredient and the second is the shape. “The composite marks are ‘merely descriptive’ because they ‘immediately convey[] knowledge of a quality or characteristic of the product[s],’ specifically the products’ main ingredients and thickness,” the court held. The court also found…
The Trademark Trial and Appeal Board (TTAB) has dismissed The Wonderful Co.'s opposition to Comrade Brewing Co.'s application to register "Superpower" as a mark used in relation to beer. Wonderful Co. v. Comrade Brewing Co., No. 91230877 (T.T.A.B., entered August 2, 2018). The Wonderful Co. uses its mark "Antioxidant Superpower" to describe its POM pomegranate juice, which it alleged will be sold in the same aisle as beer in some stores. TTAB was unpersuaded, finding that consumers are not likely to view fruit juices and beer as produced by a common source under one brand's mark. TTAB also found the term "antioxidant superpower" to be "somewhat suggestive of the identified goods, and thus conceptually is somewhat weaker than an arbitrary mark."
The U.S. Court of Appeals for the Federal Circuit has vacated the Patent Trial and Appeal Board's (PTAB's) rejection of a patent application for a fruit dehydration apparatus. In re Durance, No. 2017-1486 (Fed. Cir., entered June 1, 2018). The inventors applied for a patent for a microwave dehydration container containing a rotating chamber to tumble organic materials during the drying process, but the examiner rejected it for prior art and structural identity and PTAB affirmed. The Federal Circuit found that “the Patent Office continually shifted its position” on its grounds for rejection, resulting in the applicants responding to “moving target rejections.” In addition, the court held that PTAB failed to review the applicants’ reply brief arguments, directing the board to consider them on remand and to determine whether a structural identity rejection can be used to find a prima facie case of obviousness for method claims.
A consumer has filed a putative class action alleging Trader Joe's Co. falsely advertises its Sour Gummies by failing to disclose that the product contains d-l-malic acid. Wong v. Trader Joe's Co., No. 18-0869 (S.D. Cal., removed to federal court May 4, 2018). The plaintiff asserts that under California law, "any artificial flavor must be identified on both the front-of-package label and the product ingredient list. Defendants fail to do either." According to the complaint, "Trader Joe's maintains a pervasive national marketing campaign guaranteeing that all its house-brand products are only naturally flavored," including the statement "when you see our name on a label, you can be assured that the product contains: YES quality ingredients NO artificial flavors." Alleging unfair competition, false advertising and negligent misrepresentation, the plaintiff seeks class certification, damages, corrective advertising and attorney's fees. In addition, Trader Joe's has filed a notice of opposition to an application for the…
