Category Archives: Trademarks and Brands

The U.S. District Court for the Southern District of New York recently issued an opinion and order in which it dismissed charges of trademark infringement and dilution involving the NAKED COWBOY trademark.  In the suit, the New York City street performer known as the “Naked Cowboy” sued CBS after an episode of the soap opera The Bold and the Beautiful featured a character who “for several seconds, appeared only in his briefs, boots, and a cowboy hat, while singing and playing the guitar.”  In the suit, the Naked Cowboy charged CBS with trademark infringement, trademark dilution, unfair competition, and various state law claims.

CBS moved to dismiss the claim, and the court granted CBS’ request.  The court noted that the soap opera episode never used the phrase “naked cowboy”, that the character’s costume did not include any logos or phrases that the plaintiff uses, and that there was no actual or likelihood of confusion between the soap opera and the plaintiff’s goods and services.  The plainitiff also tried to bring a claim for violation of his right to privacy, but the court noted that the right of privacy “does not extend to fictitious characters.”

The case is Naked Cowboy Enterprises v. CBS, Inc. (SDNY Feb. 23, 2012)

Last month’s news that Anheuser-Busch Inc. has applied for sixteen USPTO trademark registrations covering major city area codes not only suggests that the company has plans to market “local” brews , it also sheds light on the topic of geographic descriptiveness in trademark law.

In May 2011, A-B filed USPTO applications to register sixteen 3-digit number combinations as trademarks for use in connection with beer.  The combinations correspond to the area codes of sixteen U.S. cities: Charlotte (704), Cleveland (216), Dallas (214), Denver (303), Houston (713), Las Vegas (702), Miami (305), Nashville (615), Philadelphia (215), Phoenix (602), Pittsburgh (412), San Diego (619), San Francisco (415), St. Louis (314), and Washington, D.C. (202).

The USPTO’s Trademark Manual of Examining Procedure states that “a mark is primarily geographic if it identifies a real and significant geographic location, and the primary meaning of the mark is the geographic meaning.”   If so, the USPTO may reject the mark as geographically descriptive, or the applicant may opt to register the mark on the USPTO’s supplemental register, rather than the principal register.  However, the USPTO has not issued specific guidance on when (or even if) an area code is considered “primarily geographic.”

If successful, A-B would not be the first brewer to use an area code as a beer name.  However, it appears that A-B would be the first to secure rights to the area code alone, without other words or numbers in the mark.   Continue reading →

A recent court opinion from the Eastern District of Pennsylvania concluded that a gift basket vendor could not claim exclusive rights to the phrase “A Taste of Philadelphia,” despite holding a federal trademark registration covering the phrase.

In R.J. Ants LLC v. Marinelli Enterprises, Inc., two Philly rivals squared off in a dispute over which party could use the phrase “A Taste Of . . .” to promote local treats such as pretzels, Tastykakes, Bookbinder’s soup, and Frank’s Black Cherry Wishniak soda.  R.J. Ants uses the mark “A Taste of Philadelphia” to sell a variety of products in gift baskets.  Marinelli Enterprises operates and franchises retail storefronts under the name “A Taste of Philly Hand Twisted Soft Pretzel Bakery.”  When attempts to negotiate a coexistence agreement failed, the parties found themselves in court to resolve the dispute.

The court considered the Third Circuit’s ten factors for finding a likelihood of confusion from its 1983 Interpace Corp. v. Lapp Inc. decision, and the court concluded that both parties could continue using their marks.  

In particular, despite the plaintiff’s federal trademark registration, the court found the plaintiff’s mark to be weak because (i) it was geographically descriptive, (ii) several others used variations of “Taste of Philadelphia” to sell food products, (iii) the plaintiff spent very little to advertise with the mark, and (iv) the plaintiff had not earned a profit using the mark for several years. 

The court also noted that each party targeted different customers (gift basket buyers v. walk up bakery customers), with different products having different price points (e.g., $5 pretzels vs. $50 -$300 gift baskets) and different marketing channels.