Category Archives: Trademarks and Brands

Can a single color serve as a trademark in the fashion industry?  According to a recent court decision, the answer is “yes” if certain conditions apply.

In Christian Louboutin S.A. v. Yves Saint Laurent America Holding, Inc., the U.S. Court of Appeals for the Second Circuit overturned a lower court’s holding that single colors cannot be protected in the fashion industry.  The case revolved around Louboutin’s federal trademark registration for the color red in the form of a lacquered red sole on footwear.  After Yves Saint-Laurent (YSL) launched a line of monochromatic shoes, Louboutin sued, asserting that YSL’s red shoe infringed Louboutin’s mark because the YSL shoe included a lacquered red sole.  The lower court held that Louboutin’s trademark registration was inherently functional and thus likely invalid, and it denied Louboutin’s motion to enjoin YSL’s sales of the monochromatic shoe. Continue reading →

Alcohol packaging and trademark/trade dress law have intersected quite a few times in the news this month.  First, as Daniel Corbett recently reported, the maker’s of Daily’s cocktails sued Captain Morgan producer Diageo North America Inc. in a suit alleging that Diageo’s single-serve cocktail pouches infringed the plaintiff’s design patents and trade dress.

Last week a client contacted me and explained that many of its marketing materials refer to the company by its acronym rather than its full name.  The client asked me about the pros and cons of registering the acronym as a trademark.

Almost on cue, after the call my email inbox received a message about a new article by my colleague Seth Kramer entitled “Use of Acronyms as Trademarks and Domain Names.”  The article, published in the May 8, 2012 edition of the Legal Intelligencer, includes some important factors for companies to consider before registering an acronym as a trademark:

For starters, the company must actually use the acronym to distinguish its goods or services from those provided by others and indicate their source.  Moreover, the acronym itself must have sufficient distinctiveness.

In addition, the article notes that “[i]n the context of acronyms, it is important to note that a trademark’s strength is determined not by the acronym itself, but by the term it signifies.”

The article is available on the Legal Intelligencer website, linked here.  (Subscription may be required for the full article.)

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.