By Bianca Bell
November 4 -- The legal field continues to look grim for the Washington Redskins who are desperately trying to redeem the canceled “Redskins” trademark. Ever since the cancellation of the mark in July 2014, the team has sought to exhaust all federal means of appeal.
The latest and one of the more questionable strategies for the team has been to highlight other offensive and seemingly disparaging marks, like
“Slutsseeker” dating service, “Gringo Style” salsa, “Dangerous Negro” shirts and “Take Yo Panties Off” clothing. The Redskins legal team is arguing that since the U.S. Patent and Trademark Office currently protects these names then the infamous controversial name should also receive protection. The team’s counsel went on to list almost every single offensively named product that has a registered trademark.
Regardless of where you align in this heated battle, this most recent legal defense is more skillful than it appears because it forces the USPTO to explain why ownership of the “Redskins” mark is unacceptable in the midst of a whole range of offensive names that are accepted. Given the multitude of trademarks that are registered, and the unique occurrence of having one canceled for being disparaging, this draws in important free -speech principles. Needless to say, the battle between the USPTO and the Washington Redskins continues to be intense and with no side looking to back down.
By Sade Tidwell
Los Angeles – The world’s largest beer brewer, Anheuser-Busch, is gearing up for battle against a much smaller brewery over its slogan which deems itself the “The Queen of Beer.” The Budweiser manufacturer has long touted its best-selling product as the “King of Beers” and currently holds trademark registrations for the phrase from everything from the obvious beers to clothing, neon signs and sauces and marinades.
Records on file with the United States Patent and Trademark Office (USPTO) show that the St. Louis based beer giant has been using the “King of Beers” slogan since the early 1950’s. It comes as little surprise, therefore that it did not take kindly to SHE Beverage Company, a much smaller brewer out of Southern California recently seeking trademark protection of “The Queen of Beer.”
The Lancaster, California headquartered company filed its application in December of 2014 in relation to beer. Shortly after its publication in May, Anheuser-Busch filed an action to oppose the further progress of the trademark, claiming that customers are likely to be confused into thinking that the two brands are linked due to the similar catchphrases.
According to its website, SHE Beverage Company makes beverage products that are “designed to meet the nutrition needs of the female audience.” It specifically references its SHE Beer as “the first and only beer created with women in mind” and touts that its “exclusive recipes are complex and designed to meet the discriminating taste of the female consumer.”
While a spokesperson for SHE has been quick to point out that the two companies seek different target audiences, in its filing with the Trademark Trials and Appeals Board (TTAB), Anheuser-Busch claims that the two trademarks are almost identical, but for the replacement of the word King with Queen. Given the close connotation between the two words, they argue that use of both slogans in relation to beers would be confusing to the public. The opposition proceedings have just begun, but According to SHE’s co-owner, Lupe Rose, SHE has no plans to give in.
Sade’s response: This case is a close-call. Ordinarily I would be suspicious of such a large actor, like Anheuser-Busch, but their claim does have some validity. Moreover, if the infringement claim fails to pass the Court’s muster, then Busch will likely have a colorable dilution claim for blurring. In analyzing whether the marks are confusingly similar and establishing a likelihood of confusion, the Court will likely examine the marks based on the Dupont factors. Based on appearance, sound, connotation, and commercial impression, the marks are very similar. I agree with Anheuser-Busch that the two trademarks are almost identical, but for the replacement of the word King with Queen. Their overall connotation lends similar ideas—one catering to the man versus the woman. The goods are essentially the same, beer, absent the distinction of SHE Beverage Company’s focus on the female. Their trade channels, however, are in stark contrast. Busch is the world’s largest beer brewer, while SHE is a smaller brewer out of Southern California. SHE has a more regional presence, whereas Bush is known nationwide. Thus, it is less likely that consumers would confuse the local “Queen of Beer” slogan with that of Busch’s “King of Beer.” Although the condition in which sales are made semi-impulsive, the fame of Anheuser-Busch should allow a beer drinker to be able to distinguish such a prominent brewer as opposed to a local, small-time brewer. Moreover, there are several other marks on the register that sell beer with “king” or “queen” in the mark. Lastly, actual confusion will probably be set forth in the opposition proceedings. Anheuser-Busch has more of a chance with a dilution claim of blurring, because they could argue that the SHE brewer is so similar and Busch brewery has reached such a level of fame that the similarity of the marks could cause a mental association from the consumer that would result in a loss of distinctiveness of Busch’s mark. Maybe they could assert that the mere association of the two marks won’t necessarily confuse the consumer as to who the brewer really is, but will fool the consumer into thinking the two companies are affiliated. I am eager to see what the result is at the close the opposition proceedings.
By Nichole Alabi
A local Kentucky distillery called Kentucky Mist Moonshine has filed suit this month against the University of Kentucky for the use of the word Kentucky. According to Kentucky Mist Moonshine attorney Jim Francis, the University Of Kentucky (UK) threatened legal action against Kentucky Mist Moonshine for its pursuit of a federal trademark registration for the Kentucky Mist Moonshine mark for hats, hooded sweatshirts, jackets, pants, shirts, shoes and socks in international trademark Class 25 based on its registration of the Kentucky Mist mark. The suit contends that they should be allowed to register in that category and that there is no trademark dilution to UK caused by its registration. Kentucky Mist asks the court to rule that there is no infringement of the Kentucky mark by Kentucky Mist Moonshine's use of the word Kentucky.
These are the type of social justice issues that are plaguing the field of trademarks. The University of Kentucky is not only an academic powerhouse but a financial powerhouse with a $992 and licensing monies coming in from the merchandise connected to its multi-national championship winning basketball team. Kentucky Mist Moonshine on the other hand is an Eastern Kentucky moonshine distilled in the heart of the Appalachian Mountains and doesn’t even have a working website. The simple premise of the case is that the University of Kentucky thinks it owns the geographical location Kentucky precluding any small business also from the region from using the name that is also rightfully theirs.
I applaud Kentucky Mist Moonshine for making the first move and getting the ball rolling on litigation instead of waiting to be crushed underfoot. This case is garnering national attention for the small brand not only for their product but for their bravery in going up against the big guy.
By Ashley Cloud
A little over a year ago, a small team of three, who already had a business under the name, Intrepid, decided to go into the beer business and call the beer by the same name. Upon doing a trademark search and not finding any other brewers with the name “Intrepid,” for beer or breweries, the team began working on production and operating under the name Intrepid, but did not file for a trademark application immediately.
Once they were ready to file their application, they came across another much larger brewer (who was known for buying up smaller breweries and taking over) who had filed an application for beer under the same name. When Intrepid originally approached the large company, they responded to requiring Intrepid to license the name from them, to not brew an IPA, to not use the name “Intrepid” on its own, and to only sell the beer domestically. Instead of complying, the small company decided to send an opposition to the application and the company backed off. Even though Intrepid may not have had rights under the Principal Register, it did have common law rights as they had already begun operating under the mark and had actually come across the opposing company’s beer in bars where their beer was also being sold.
This just goes to show that there is always a possibility that the smaller company may have a chance of beating out the big guys. If for no other reason, the larger companies would rather spend their money on production and operations costs than on legal battles. In this case, all it took was for this small company to file an opposition to the trademark application to allow them to stand their ground and continue selling their beer under the Intrepid name. How fitting that the first beer under the name since the incident is an IPA called “Trade Mark.”
By Loreal Rock and Ivie Baker IV
October 27--Musical giant Will.I.Am will not be able to register “I Am” as a trademark for cosmetics and other goods because of its likelihood of confusion with registered mark “I Am” for perfume in International Class 3. The registered mark is owned by Danica A. Siegal of Santa Monica, California, who obtained registration of the mark in 1997.
On her website for I Am fragrance, Danica proclaims that in 1993 she began “blending essential oils as personal prayer-fumes for friends and loved ones to inspire, empower and sometimes mend a broken spirit.”
In 2010, Will.I.Am’s company, I.am.symbollic, LLC, filed an intent-to-use application with the Patent and Trademark Office to register “I Am” as a trademark for cosmetics, skin care, health, hygiene, grooming and beauty products. The application was refused registration for likelihood of confusion with Siegal’s mark, andon October 7, 2015, the Trademark Trial and Appeal Board affirmed the refusal. In re I.am.symbolic, LLC, T.T.A.B., No. 85044494, 10/7/15.
On appeal, I.am.symbollic argued that there was not a likelihood of confusion because the application contains language in the identification of the goods stating that the goods are “associated with William Adams, professionally known as ‘will.i.am.’” Such language, however, does not represent that Will.I.Am will be named, or otherwise identified, in the promotion of the goods to prevent a likelihood of confusion amongst consumers. I.am.symbollic also argued that the Siegal’s registered mark is not famous. Admirably, the TTAB held that “the purported lack of fame of Registrant’s mark...is of little consequence.”
The TTAB’s decision to refuse registration prevents an instance of reverse confusion where a less acclaimed senior user would appear to be infringing on the more acclaimed junior user, which was likely to occur in this case. In reverse confusion cases consumers may believe that the original trademark holder (“senior user”) is an unauthorized infringer, and that a subsequent user’s (“junior user”) usage of the mark may in a way injure the senior user’s reputation and impair its good will. Kelly-Brown v. Winfrey, 717 F.3d 295 (2d Cir. 2013). Reverse confusion usually occurs when a senior user of a mark seeks to protect its business identity from being overwhelmed by a larger junior user that has saturated the market with publicity and/or advertising. Visible Systems Corp. v. Unisys Corp., 551 F.3d 65 (1st Cir. 2008). Reverse confusion was the likely outcome if the TTAB failed to refuse registration to Will.I.Am.
Staying true to the DuPont factors of likelihood of confusion set forth in In re E. I. Du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973), the TTAB found that the similarity of the goods, and the identity of the trade channels and purchasers, as well as the conditions of sale, were factors weighing in favor of a likelihood of confusion.