A Bengali potato-chip maker’s application to register a design mark has drawn opposition from Frito-Lay, which argues the mark is too similar to the one it has used since 1995. Frito-Lay N. Am. v. Putul Distribs., No. 91235606 (T.T.A.B., notice of opposition filed July 17, 2017). The notice asserts that Putul’s proposed design mark for its fish, pickles and potato chips—a green and red circle bisected by a wide red and black ribbon—is likely to be confused with Frito-Lay’s, which is a “round sun or globe bisected by a banner or ribbon.” In addition to the alleged potential confusion between the marks on potato-chip products, Frito-Lay also asserts that fish and pickles are “food products that may be complementary or consumed with Frito-Lay’s goods.” Claiming priority, likelihood of confusion and dilution by blurring, Frito-Lay seeks a denial of Putul's registration application. Issue 643
Category Archives Patent and Trademark Office
MastJagermeister SE has filed an opposition to a trademark application by apparel company Offseason Outdoors for a logo featuring a deer’s head. MastJagermeister SE v. Offseason Outdoors, No. 91234087 (T.T.A.B., opposition filed April 19, 2017). Jagermeister, which marks its alcohol products with deer head images, filed its notice of opposition to Offseason’s trademark application, claiming Jagermeister has owned deer head marks since 1968. Issue 632
The Trademark Trial and Appeal Board (TTAB) has affirmed a refusal by the U.S. Patent and Trademark Office (USPTO) to register a trademark for La Finca wines on the grounds that the winemaker failed to show evidence that the brand has acquired distinctiveness. In re Finca La Celia, S.A., No. 86130560 (opinion issued March 31, 2017). Argentina-based winemaker Finca La Celia, which sells its La Finca wines in Trader Joe’s stores, applied for registration of the mark in 2013 and appealed after a second reconsideration was denied. TTAB reversed USPTO’s refusal to register the mark on the ground that it was generic, holding that even though the term “la finca,” which means “the estate” in Spanish, is “merely descriptive,” the term is “not perceived by the relevant public as a generic name for a type of wine.” TTAB affirmed the USPTO ruling that the maker had failed to show La…
Warner Brothers, the film studio that owns the rights to the Willy Wonka movies, has asked the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office to stop a Georgia craft brewer’s use of “Golden Ticket” as the name for a chocolate stout beer, claiming that the name could lead some to believe the filmmaker is promoting underage drinking. Warner Bros. Entm’t Inc. v. S. Sky Brewing Co., No. 91233169 (T.T.A.B., filed March 1, 2017). In the Willy Wonka movies, children who found golden tickets tucked inside chocolate-bar packaging won a tour of the chocolate factory and a chance to win a grand prize. Warner Brothers claims the name “Golden Ticket” is an “intent to capitalize” on the popularity of the films, alleging that Southern Sky’s beer is advertised as “reminiscent of a chocolate hazelnut candy bar and as creamy as chocolate milk,” reinforcing the “mental association”…
Rangers Baseball LLC filed then suspended an opposition to Bacardi & Co.’s application to register a trademark for a logo featuring the letter “T,” stylized to feature points extruding from the middle of the character. Opposition No. 91229825 (USPTO, suspended September 2, 2016). The Texas Major League Baseball team filed its notice of opposition on August 31, 2016, arguing a likelihood of confusion, and then two days later filed a stipulation to suspend pending settlement negotiations. The Bacardi application seeks to trademark the stylized “T” as well as “Tang” for use on alcohol beverages for its spirit produced from tea leaves. The product is currently available only in China. Issue 616
One day after U.K. citizens voted to leave the European Union, Samuel Adams® brewer Boston Beer Co. filed an application with the U.S. Patent and Trademark Office to register “Brexit” for use on hard cider products. U.S. Trademark Application Serial No. 87083390 (filed June 24, 2016). Two other applications for Brexit marks were filed the same day in the categories of dietary supplements and clothing. A Boston Beer Co. spokesperson reportedly declined to detail the company’s plans for its Brexit mark. See The Wall Street Journal, June 29, 2016. Issue 610
Siding with the owners of the Empire State Building, the Trademark Trial and Appeal Board has refused to register a logo for “NYC Beer” featuring a drawing of the building. ESRT Empire State Bldg. v. Liang, No. 91204122 (T.T.A.B., order entered June 17, 2016). Claiming ownership of a trademark in a line drawing featuring the building, ESRT Empire State Building filed an opposition to Michael Liang’s application to register a black-and-white image resembling the Empire State Building circled by a black ring and the words “NYC Beer.” TTAB found that the image was likely to dilute ESRT’s mark, finding that Liang’s description in his application of “a building resembling the Empire State Building” belied his argument that the design could be a different building. Accordingly, the board refused to grant the trademark. Issue 609
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…
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
