Trademark Law

Subscribe to Trademark Law via RSS

By: Scott Hervey

Often in trademark cases, the goods or services at issue are either exactly the same, related or complementary.  In cases where the goods are non-competitive or not related, often that will be the end of the inquiry into likelihood of confusion.  However, in the case of non-competitive goods, infringement can be found where a junior user began using a mark for such goods before the senior user where the senior user is able to show it is likely that it will enter into this market.  Courts refer to this as “bridging the gap.” Some courts examine this under the framework of the senior user’s interest in preserving avenues of expansion and entering into related fields.   Other courts look at it as a question of whether it was likely that a senior user would enter into a different product market currently occupied by a junior user.  Either way, in certain cases it can be a crucial factor in determining likelihood of confusion.

The test of trademark infringement under state, federal, and common law is whether there will be a likelihood of confusion.  In the 9th Circuit, to determine whether there is a likelihood of confusion, a court will engage in an analysis of the eight factor test set forth in the seminal case of AMF Inc. v. Sleekcraft Boats.  Those factors are the, (1) strength of the mark; (2) proximity of the goods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) type of goods and the degree of care likely to be exercised by the purchaser; (7) defendant’s intent in selecting the mark; and (8) likelihood of expansion of the product lines, sometimes also referred to as “bridging the gap.” Some Sleekcraft factors, such as the first three, tend to get more attention and are considered more important than the others.   However, in trademark cases dealing with noncompeting goods, courts will look at the “bridging the gap” factor to determine whether it is likely that that trademark owner will expand its line of trademark products to include the type of product being sold by the defendant.Continue Reading Bridging the Gap in Cases of Trademark Infringement

Jack Daniels “Old No. 7” Brand Tennessee Sour Mash Whiskey is marked with a distinctive black label including stylized white writing attached to a bottle of Tennessee’s finest sour mash whiskey.  For some, the image of a Jack Daniels bottle conjures images of drunken bar brawls, motorcycle gang members guzzling whiskey or the antics of inebriated 1980’s hard rock musicians.  But for Jack Daniels, the distinct black and white label on its Old No. 7 Brand whiskey represents valuable intellectual property which immediately identifies in the minds of consumers the distinct character and flavor of the contents of the bottle to which the label is affixed.  Because even those who do not consume Jack Daniels Sour Mash Whiskey recognize the label of this legendary intoxicating beverage, the Jack Daniels distillery actively confronts unauthorized users of its trademarked label in order to prevent its unauthorized use.

Many attorneys have written cease and desist letters on behalf of their clients, or at least have reviewed such letters after they have been received by clients.  These letters often are written in a fit of righteous indignation over the obvious theft of one’s brand, or the tarnishment and diminution of the value of a mark resulting from the use of a confusingly similar mark by another party.  More often than not, this results in a letter which is more capable of peeling paint off the walls or curling the recipient’s hair than it is able to clearly and concisely communicate the reasons why unauthorized use of a trademark can damage a trademark owner’s intellectual property.  Recently, however, a cease and desist letter written by counsel for Jack Daniels Distillery dispensed with the usual vitriol took a different approach.Continue Reading Jack Daniels Proves That You Can Catch More Flies With Whiskey

By: David Muradyan

The Ninth Circuit, like many of its sister circuits, uses the “likelihood of confusion” analysis to determine whether one mark infringes upon another mark.

For background, the Lanham Trademark Act of 1946 (“Lanham Act”), 15 U.S.C. §§ 1051, 1127, defines a trademark to mean “any word, name, symbol, or device or any combination thereof” used by any person “to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.”  Under 15 U.S.C. § 1114(1), the holder of a registered trademark can file a trademark infringement claim against any person who, without the registered trademark holder’s consent, (1) uses any reproduction, counterfeit, copy, or colorable imitation of a registered mark; (2) in commerce; (3) in connection with the sale, offering for sale, distribution, or advertising of any goods or services; (4) where such use is likely to cause confusion, or to cause mistake, or to deceive. Century 21 Real Estate Corp. v. Sandlin, 846 F.2d 1175, 1178 (9th Cir. 1988); see also 15 U.S.C. § 1125(a) (“Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which . . .  is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person . . . shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.”). 

Continue Reading Likelihood of Confusion analysis under the Lanham Act

By: Scott Hervey

Without fail, every two years I get a call from a client who wants to incorporate an element of either the Winter or Summer Olympics into a marketing scheme.  This year was no exception.  One of our clients – a fairly significant company in the wine industry – created a graphic featuring wine rings (think of wine stains made by an overly full wine glass) in the form of the Olympic rings, the London skyline in the backdrop, and the official London 2012 Olympics logo and wanted to use it in promoting wine for sale.  Although extremely creative, it certainly would have gotten our client into a jam with the United States Olympic Committee and possibly with the London Olympic Committee.

Under the Ted Stevens Olympic and Amateur Sports Act, Congress granted the USOC exclusive ownership of certain Olympic-related words and symbols, including the name “United States Olympic Committee” and the words “Olympic,” “Olympiad,” “Citius Altius Fortius,” “Pan American,” “Paralympic,” “Paralympiad,” “America Espirito Sport Fraternite” and the International Olympic Committee’s symbol of five interlocking rings. The Act also permits the USOC to authorize its contributors and suppliers to use these Olympic-related words or symbols, and allows the USOC to initiate civil-action proceedings to address unauthorized use.  Third party marks that contain the designated Olympic-related words or symbols, or any combination thereof, cannot be registered on either the Principal or Supplemental Register (nor can the matter be disclaimed) and must be refused registration on the ground that the mark is not in lawful use in commerce.Continue Reading Olympics Go For the Gold In Trademark Enforcement

By: James Kachmar

Two fans of Ayn Rand are slugging it out in federal court over each party’s use of one of Ms. Rand’s famous characters, Hank Rearden from Atlas Shrugged, in connection with their respective businesses.  The Ninth Circuit was forced to deal with the issue of whether plaintiff had produced enough evidence to show that it had used the name “in commerce” in order to state a claim for trademark infringement as well as offer sufficient evidence of the “likelihood of confusion.”

Rearden Steel, Inc. was founded in May 1999 by Steve Perlman who chose the name, in part, because it referred to the “Hank Rearden” character from Atlas Shrugged.  Rearden Steel later changed its name to Rearden Studios, Inc. and finally Rearden LLC and has several affiliated “Rearden” companies.  Plaintiff has offices in the Bay Area, employs approximately 100 employees and operates a number of websites, including their main website “rearden.com.”  These Rearden companies are “technology incubators and artistic production companies.”  Plaintiff obtained protection from the Patent and Trademark Office for the name “Rearden Studios” and later filed “intent to use” applications for several related marks such as “Rearden,” “Rearden Companies,” and “Rearden Commerce Email”. Continue Reading Atlas Shrugged – Hank Rearden and Trademark Infringement