The Federal Circuit in Converse, Inc. v. ITC, ___ F.3d___, 2018 WL 6164571 (Fed. Cir. 2018), gave Converse’s trademark case against several shoe companies new life; a new “sole,” if you will. Converse has long been battling Skechers, New Balance, and others, alleging trade dress infringement of its Chuck Taylor All Star shoe shown below (“Chuck Taylor All Star Mark”) both before and after Converse’s registration of the mark in 2013. Two years ago, the International Trade Commission (“ITC”) heard the case and ruled against Converse, leaving a significant scuff on Converse’s trade dress rights. The ITC viewed Converse’s Chuck Taylor All Star Mark as two separate marks—a registered mark and a common law mark—during the alleged infringements before registration and found both marks invalid and unenforceable for not having acquired secondary meaning. Now, the Federal Circuit has vacated the ITC’s ruling, and given Converse another chance to cobble its rights in the Chuck Taylor All Star Mark.

Chuck Taylor All Star Mark

First, the Federal Circuit found the ITC’s approach of viewing Converse’s Chuck Taylor All Star Mark as two separate marks “confusing and inaccurate;” instead, the case should be viewed as concerning a single mark, with different rights arising from common law and federal registration. The court also took issue with the ITC’s assessment of secondary meaning, stating that secondary meaning must be determined as of a specific date, namely, prior to each alleged infringer’s first use. In Converse’s case, the Federal Circuit joined “the majority of circuits” in holding that Converse’s registration entitled it to a presumption that the mark is valid and has acquired secondary meaning, which thereby shifts both burdens to the other parties to prove otherwise. However, the court added a vital knot to this holding: this presumption of secondary meaning only begins as of the date of registration, not earlier. As a result, Converse cannot rely on this presumption of secondary meaning for its claims of infringement occurring before registration. On remand, Converse will have to establish that its mark acquired secondary meaning in the Chuck Taylor All Star Mark before each of the alleged infringing uses occurred.

Considering the main remaining defendants started selling their allegedly infringing shoes well before Converse’s registration of the Chuck Taylor All Star Mark, this finding may have knocked Converse back on its heels. But all hope shouldn’t be lost for Converse. Although the court’s decision may not help its case against the remaining defendants, Converse should be able to lace its arguments in any future proceedings on remand with some of the Federal Circuit’s findings that are more favorable to Converse. For example, the Federal Circuit affirmed the ITC’s finding that Converse’s Chuck Taylor All Star Mark is nonfunctional and criticized the ITC’s overreliance on the defendants’ survey evidence regarding secondary meaning. Of course, the defendants may be arguing on remand that the ITC should reassess whether the products are substantially similar to Converse’s Chuck Taylor All Star Mark. Until the proceedings resume on remand, it will be difficult to predict to which side the ITC will ultimately give the boot.

“By the time we got to Woodstock, we were half-a-million strong.” Woodstock, music and lyrics by Joni Mitchell, recorded by Crosby, Stills, Nash and Young.

 

 

The countdown has begun, with less than a year until Woodstock turns 50. Like Watergate a few years later, Woodstock occupies that rarefied world of one-word names that conjure up not just a place or an event, but a cultural watershed. Although Woodstock was not the first music festival of the Summer of Love era, it’s the one that dominates the collective memories of an entire generation, many of whom claim to have wallowed in the mud with the 500,000 souls who actually slogged their way to Yasgur’s farm to hear some of the leading rock, folk, soul, and blues acts of the day. Hendrix electrified with his searing “Star Spangled Banner,” Richie Havens strummed fervently for “Freedom,” Canned Heat celebrated the simple pleasure of “Going Up the Country,” while Country Joe and his Fish echoed the nation’s  angst with their sardonic “Fixin’ to Die Rag” (“And it’s one, two, three, what are we fighting for?) All this and more was immortalized in an Oscar® winning documentary that cemented Woodstock as the defining music festival for generations of concert goers.

Continue Reading Chill Another ‘chella? Not So Fast, Judge Tells Coachella Music Fest

The TTAB sustained Modern House of Wine LLC’s (“Petitioner”) petition to cancel (Cancellation No. 92058885) Hidden Wineries Inc.’s (“Registrant”) registration for the mark THANK YOU for wines in Class 33 on the grounds of void ab initio and abandonment. Registrant has filed an appeal to the U.S. District Court for the Northern District of California (Case No. 3:18-cv-02174), which is pending.

Continue Reading TTAB ON APPEAL: THANK YOU for Wine

Zheng Cai (“Registrant”) filed a notice of appeal before the Court of Appeals for the Federal Circuit (“Federal Circuit”) on March 12, 2018 (Case No. 2018-1688), seeking review of the Board’s final decision in Diamond Hong, Inc. v. Zheng Cai DBA Tai Chi Green Tea Inc. (Cancellation No. 92062714). In that case, the Board sustained Diamond Hong, Inc.’s (“Petitioner”) petition to cancel Registrant’s TAI CHI GREEN GEA WU DANG & Design mark shown below for “green tea; tea; tea bags,” on the ground of likelihood of confusion with Petitioner’s registered mark TAI CHI & Design shown below for “processed herbs; processed ginseng used as an herb; herbal food beverages; royal jelly for food purpose; and tea.”

Continue Reading TTAB ON APPEAL: The Fight Over TAI-CHI for Tea Before the Federal Circuit

“All the sailors with their seasick mamas, hear the sirens on the shore.” “For The Turnstiles,” music and lyrics by Neil Young.

Many songs are laden with “hooks,” musical barbs that implant themselves indelibly in the cultural consciousness, like Eric Clapton’s searing guitar riff in “Layla.” But how many hooks are tied to a trademark?

I can think of one. Neil Young’s “Hey, Hey, My, My (“Into the Black”), Neil’s masterpiece from the late ‘70s, complete with crushing guitar chords, a raw and piercing solo on Neil’s feedback-laden “Old Black” Gibson Les Paul, and the defiant refrain “Rock and Roll will never die.” Summing it all up—so much so that it became the album’s title—is the song’s urgent justification for why “It’s better to burn out than to fade away”—”Rust Never Sleeps.”

Continue Reading Profiles In Trademarks: For One Slogan, There’s More To The Picture Than Meets The Eye

“So this is the Day of The Dead” from “We All Lose One Another” by Jason Collett Trial of the Century! For most Americans, those words conjure two letters—O.J. But for the past week or so, O.J. arguably has been upstaged by an unlikely figure—Dan Aykroyd. That’s right, Dan Aykroyd–one of Saturday Night Live’s original “Not Ready For Prime Time Players” who won the fame as the staccato pitchman in SNL’s “Bass-O-Matic” infomercial parody, and who cemented his place in comedy’s pantheon with the original “Ghostbusters” and “Blues Brothers” films. That Dan Aykroyd has evolved into a trademark crusader for his real-life brand of vodka called “Crystal Head,” sold in a distinctive skull-shaped bottle:

Continue Reading Trial of the Century: Trademark Style

“I need a unit to sample and hold. But not the angry one. A new design.” Sample and Hold, music and lyrics by Neil Young

free sampleDigital sampling has become a staple of the recording industry. What’s sampling? It’s taking a snippet from one recording and splicing it into a new one. Typically, the sample is just a few bars, even a few notes. And it’s likewise typical for the producers and artists to digitally tweak those few bars or notes to alter their pitch or key and adding additional embellishments. As often or not, the listener is unaware that the “new” recording includes a “re-purposed” sample.

But is it kosher to lift a fragment from one copyrighted recording and implant into a new one?  That question has produced judicial sparring that rivals the most thorny of Talmudic conundrums.

Continue Reading Free Samples? Or Risky Riffs?

Cheer up sleepy Jean, oh what can it mean for a daydream believer?” Daydream Believer, words and music by John Stewart, originally recorded and performed by The Monkees.

The New York Times Magazine recently featured a tale ripped from the comic books of my youth. The story involved mystery, intrigue, villainy, betrayal, desperate living, a fortune won and lost.  And what rip-roaring saga would be complete without a trademark dispute?

At the center of this story are “Sea Monkeys,” the amazing critters advertised in the pages of Batman, Superman, and Archie comics. If you’re not of a certain age and don’t know what I’m talking about, here is a vintage ad for the “Monkeys of the Sea:”

Continue Reading MONKEY SEA, MONKEY SUE?

“Please Papa can I go. Down to Richmond to the traveling show. Please Papa don’t you say I can’t. I just want to see the elephant.” See The Elephant, music and lyrics by James McMurtry.

I’m not a lucky person. I’ve never won the lottery, not even a five-dollar scratch-off. And when it comes to art, I’d have better luck at a raffle drawing than drawing an object, portrait, or thing. But this past weekend, I found myself in front of a booth run by Martin Guitar being invited to enter a contest that would require both luck and artistic talent to win.

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Continue Reading Guitar Wars – Martin Fights to Save Wildlife and Its Brand