Experience Hendrix has filed a trademark infringement lawsuit against Tiger Paw Distributors, Private Label Distillery and Leon Hendrix, Jimi’s brother, for selling an alcohol product called “Purple Haze Liqueur.” Experience Hendrix v. Tiger Paw Distrib., No. 16-0642 (N.D. Ga., filed February 29, 2016). Experience Hendrix, established by Jimi’s father and now owned by Jimi’s sister and cousin, alleges that Leon and his company are selling Purple Haze Liqueur and promoting it with Jimi’s image, which Experience Hendrix owns. According to the complaint, Leon was previously enjoined from selling Jimi Hendrix Electric Vodka, sold in a purple bottle, after 2007 trademark litigation. The company argues that it hold copyright protection for several of Jimi’s songs, including “Purple Haze” and “Voodoo Child (Slight Return).” In addition, the U.S. Patent and Trademark Office previously refused to grant trademark rights to Tiger Paw for marks related to Jimi Hendrix because they suggested a false connection to…
Category Archives Federal Circuit
Bacardi Ltd. has reportedly filed a Freedom of Information Act request seeking information on the renewal of a trademark registration for “Havana Club” granted to Empresa Cubana Exportadora de Alimentos y Productos Varios (“Cubaexport”), a Cuban government-owned entity. Cubaexport had filed for a renewal in 2006, but the U.S. Treasury Department’s Office of Foreign Assets Control (OFAC) refused to grant the license required to renew the trademark. Cubaexport sold its rum recipe and the rights to “Havana Club” to Bacardi in 1994, 30 years after the United States prohibited the import of Cuban goods. Bacardi sold rum under the “Havana Club” name while disputing the rights to the mark with Pernod Ricard, which owns the rights to sell Havana Club worldwide. In January 2016, Cubaexport sought to renew its trademark in “Havana Club,” arguing that it had obtained the necessary license from OFAC, and the U.S. Patent and Trademark Office…
The U.S. Court of Appeals for the Federal Circuit has affirmed a Patent Trial and Appeal Board ruling that a method of enzymatic hydrolysis of soy fiber for use in creating food additives is not patentable because it would have been obvious in light of previous inventions. In re Urbanski, No. 15-1272 (Fed. Cir., order entered January 8, 2016). The plaintiffs challenged the U.S. Patent and Trademark Office’s denial of a patent for their technique of creating food additives from soy fiber, which the examiner found to be “readily combinable” from two prior inventions. The Federal Circuit agreed with the examiner’s and appeals board’s determinations that a person of ordinary skill would have expected that adjusting the process as the plaintiffs did would have yielded the results they reached. Accordingly, the court affirmed the prior dismissal. Issue 590
Jim Beam Brands Co. has filed a notice of opposition against an application filed by Brown-Forman Corp., maker of Jack Daniels®, to trademark Woodford Reserve Double Oaked, a bourbon product aged in two charred-oak barrels. Jim Beam Brands Co. v. Brown-Forman Corp., Serial No. 86/450,636 (T.T.A.B., notice of opposition filed October 19, 2015). Jim Beam argues that the “Double Oaked” portion of the proposed trademark is generic—or at least descriptive—because it “refers to a process of aging alcoholic beverages in a second oak barrel, which is common in the industry.” The notice cites descriptions on Brown-Forman’s website using the terms “double” and “double oaked” to describe the process of making the product. Jim Beam does not object to the registration of Woodford Reserve but requests that Brown-Forman disclaim trademark control of “Double Oaked.” Issue 583
Sazerac Co., maker of Fireball® cinnamon whiskey, has filed a trademark infringement action against Stout Brewing Co. alleging that the brewer’s Fire Flask displays trademarks and trade dress designed to look like Fireball®. Sazerac Co., Inc. v. Stout Brewing Co., No. 15-0107 (W.D. Ky., filed August 14, 2015). Fire Flask is a malt beer product sold in clear bottles with a red cap and a front label featuring an illustration of a “demon-man with flames emanating from his head” in an “orange-yellow, red, and black” color scheme. The Fire Flask mark “is likely to give rise to confusion among consumers as to the source or sponsorship of Defendant’s products,” the complaint asserts. Sazerac seeks an injunction, corrective advertising, product recalls, an accounting, treble damages, and mark invalidation by the U.S. Patent and Trademark Office. Issue 576
Franciscan Vineyards has filed an opposition against Home Box Office, Inc.’s (HBO’s) 2014 trademark application for “Three-Eyed Raven,” a beer collaboration between HBO and Ommegang Brewery based on the network’s “Game of Thrones” series. U.S. Trademark Application Serial No. 86309080 (notice of opposition filed May 11, 2015). Franciscan owns trademarks used by Ravenswood Winery, including “Ravens,” “Ravenswood” and a drawing of three black ravens forming a circle. The winery asserts that consumers are likely to be confused and challenged HBO’s intention to use the “Three-Eyed Raven,” alleging that the company had no intention to use the mark and, further, had committed fraud when it told the U.S. Patent and Trademark Office that it did. Ommegang began selling Three-Eyed Raven, its fifth collaboration with HBO, in April 2015. Issue 566
H.J. Heinz Co. has filed a lawsuit against Boulder Brands USA seeking to vacate and reverse a Trademark Trial and Appeal Board (TTAB) decision finding that the marks representing Heinz’s Weight Watchers Smart Ones® and Boulder’s Smart Balance® are sufficiently distinct, allowing both to exist. H.J. Heinz Co. v. Boulder Brands USA, Inc., No. 15-0681 (W.D. Penn., filed May 26, 2015). In its opposition to the Smart Balance® mark, Heinz asserted that the Smart Ones® mark was famous and would be diluted by Smart Balance®, but based on insufficient evidence TTAB disagreed in its March 2015 decision. In addition to the reversal, Heinz seeks a declaration of likelihood of confusion and a declaration of dilution under the Lanham Act and asks the court to direct the U.S. Patent and Trademark Office to invalidate the Smart Balance® mark. Issue 566
The Federal Circuit has reversed and remanded a Trademark Trial and Appeal Board (TTAB) decision invalidating Snyder’s-Lance Inc.’s “Pretzel Crisp” trademark after Frito-Lay Inc. challenged the mark as generic. Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., No. 14-1517 (Fed. Cir., order entered May 15, 2015). TTAB’s decision found that “Pretzel Crisp” is a compound term and not a phrase, so it analyzed “pretzel” and “crisp” separately and found both words to be generic descriptors of Snyder-Lance’s pretzel-cracker product. The Federal Circuit disagreed with this method, holding that TTAB had conducted a “short-cut analysis” by not considering “Pretzel Crisp” as a whole phrase, because “the test for genericness is the same, regardless of whether the mark is a compound term or a phrase.” At the end of its decision, TTAB noted that “were we to analyze [‘Pretzel Crisp’] as a phrase, on this record, our conclusion would be the same, as…
Red Bull GmbH has filed a notice of opposition to Old Ox Brewery’s federal trademark application, arguing that the brewery’s marks are likely to confuse consumers because both animals “fall within the same class of ‘bovine’ animals and are virtually indistinguishable to most consumers.” In re Application No. 86/269,626 and 86/269,577 (U.S. Pat. & Trademark Office, Trademark Trial & Appeal Board, notice of opposition filed January 28, 2015). Red Bull claims that the similarities between the marks would likely cause consumers to believe that the products are affiliated with each another. The Virginia brewery responded in an open letter on its website, calling the company a “Red Bully” that is “holding us hostage with a list of demands that, if agreed to, would severely limit our ability to use our brand. Demands like, never use the color red, silver or blue; never use red with any bovine term or image; and…
Lucasfilm Ltd. has filed a notice of opposition to Walton Street Brewing Corp.’s application to the U.S. Patent and Trademark Office (USPTO) to register “Empire Strikes Bock” as a mark. Lucasfilm argues that the name will cause confusion with and dilute goods related to its 1980 film"The Empire Strikes Back," which, as Bloomberg BNA notes, is not associated with any active trademarks but may be famous enough to be protected under common law. The production company also claims that granting the “Bock” trademark will cause confusion with its existing mark—Skywalker Vineyards—in the alcohol industry. In an irreverent video response, Walton Street’s owner explains that the brewery has sold “Bock” on tap at its pub for several years and now intends to bottle it, and it never intended to cause any confusion with its “parody” beer. In the background, a person in a Stormtrooper costume appears to stir beer with a lightsaber,…
