There have been some significant trademark disputes hitting the headlines in the last twelve months. In April 2019, lawyers for Erik Brunetti, owner of the popular brand FUCT, challenged the provisions of federal law that allows for “immoral or scandalous matter” to be refused trademark protection. Mr Brunetti believes his First Amendment rights are being infringed. And given the decision in Matel v Tam 582 U.S. ___ (2017) he may have a strong chance of success.
Other trademark infringement cases provide valuable precedents and lessons in trademark law despite not grabbing the headlines. Below are the summaries of two cases from the UK and two from America, which demonstrate both the importance of correct trademark searches and doing your homework before making a trademark application.
Luen Fat Metal and Plastic Manufactory Limited v Jacobs & Turner Limited t/a Trespass  EWHC 118
Luen Fat Metal was the proprietor of UK trademarks for FUNTIME, FUN TIME and FUN-TIME and an EU mark for FUNTIME, all registered in respect of games, toys and electronic games in class 28. Jacobs & Turner had used a logo containing three stars and the words FUN TIME TOYS on its goods, together with its own TRESPASS sign.
Leun Fat Metal, a Hong Kong-based entity, contended that Jacobs Turner had infringed the Trade Marks Act 1994 s.10(2)(b) and Regulation 2017/1001 art.9(2)(b) by using FUN TIME in relation to goods identical to those for which the marks were registered, thereby giving rise to a likelihood of confusion. The Claimant also stated that the Defendant's use of FUN TIME, without due cause, took advantage of, or was detrimental to, the marks' reputation contrary to s.10(3). Jacobs & Turner denied trademark infringement, asserting that the presence of its TRESPASS sign on the same goods prevented any likelihood of confusion. It argued that the marks should be declared invalid because they were devoid of distinctive character, contrary to s.3(1)(b), and/or descriptive, contrary to s.3(1)(c).
The Court disagreed with Jacob & Turner’s assertions and found for the Claimant. The Recorder, Mr Douglas Campbell QC ruled Luen Fat Metal’s ‘FUNTIME’ brand had inherent distinctiveness and that Trespass’ use of ‘FUNTIME’ would be regarded as a trademark by an average customer. He noted that the brand on the Trespass toy packaging “is presented to the consumer in much the same way as TRESPASS is presented, i.e. as being something other than the name of the product … and as being an indication as to who supplies it.”
This case illustrates that the addition of an extra word or symbol is unlikely to refute an objection if a similar mark is used on identical goods for which a mark has already been registered.
Mariage Frères Sa v TWG Tea Company PTE Ltd
Mariage Frères Sa tried to register SAKURA SAKURA! as a UK trademark for goods in class 29 (preserves) and class 30 (teas, non-medicinal infusions, other beverages and foodstuffs).
This was opposed by TWG on the basis that "sakura" was understood to refer to cherry blossom tea. The hearing officer at the UKIPO acknowledged that "sakura" meant cherry blossom, but considered that the duplication and exclamation present in SAKURA SAKURA! provided some distinctive character over and above merely being a phrase or word that designated a characteristic of the goods. Therefore, the mark was not excluded from registration under s.3(1)(b) or s.3(1)(c) of the Trade Marks Act 1994 (the Act). He found a lack of evidence demonstrating the contested mark SAKURA SAKURA! was customary in the current language, or in the bona fide and established practices of the trade to designate the goods applied, so as to exclude it from registration under s.3(1)(d) of the Act.
The hearing officer considered that there was a sufficiently serious risk that the public, because of a legitimate expectation that the goods were flavoured with and/or contained cherry blossom, would be deceived were SAKURA SAKURA! to be registered and used in relation to tea, tea-based beverages and non-medicinal infusions within the meaning of s.3(3)(b), but that this objection could be overcome by inserting into the class 30 designation that the goods were "all being made or flavoured with, or containing cherry blossom". Mariage Frères Sa was permitted to make that amendment. The hearing officer, having found that the respondent had been largely successful in defending TWG’s opposition, and ordered TWG to pay £2,000 towards the Mariage Frères Sa costs.
On appeal, the opposition to the trademark SAKURA SAKURA! was upheld. It was deemed unusual that the hearing officer, having established that the word "sakura" was used in trade to describe a particular characteristic of tea and tea infusions, concluded that repetition of the word was sufficient to take the mark outside s.3(1)(c). A mark had to be assessed overall both in visual and aural use, and the exclamation mark may be lost in the future, removing some of the mark’s distinctiveness.
Regarding whether the mark SAKURA SAKURA! was distinctive for the purpose of s.3(1)(b), it was ruled applicants should consider whether the mark would be understood by the relevant public as origin neutral or origin specific in relation to the products concerned. The hearing officer had not asked himself that question, instead rejecting the s.3(1)(b) objection on what he perceived to be continuations of the appellant's arguments under s.3(1)(c). In fact, s.3(1)(b) should be assessed separately as it constituted a wider ground for objection to a mark.
The hearing officer should also have held that, since SAKURA SAKURA! would be perceived by the average consumer in relation to tea and tea infusions as emphasising the word "sakura" in a non-origin specific manner, it only provided information as to their nature, and not as an indication of origin. The mark was objectionable for those products under s.3(1)(b) if there was no distinction via the use of the product.
When conducting a trademark search, these factors need to be considered to avoid objections.
In May 2018, the Fifth Circuit ruled that a proposed "Krusty Krab" restaurant — the same name as a fictional burger restaurant in the Nickelodeon cartoon "SpongeBob Squarepants" — would violate Viacom's trademark rights.
The Court dismissed IJR Capital Investments proposal that "Krusty Krab" was "just a cartoon restaurant."
"The record clearly shows that The Krusty Krab is a focal point in the 'SpongeBob SquarePants' television series and films, The Krusty Krab has continually been depicted in the advertising and promotion of the franchise over the past 18 years, and it is used in the sale of products."
This is an unusual case as it deals with trademarks which are generated from a fictional world. The Court referred to other protected marks of this type such as “The Daily Planet” (Superman) and “General Lee” (Dukes of Hazard). It was ruled that protecting such marks was key in the entertainment industry. Therefore, it pays to extend trademark searches of this type into the ‘fictional’ realm.
Real Foods Pty Ltd. v. Frito-Lay North Am., Inc., Case Nos. 17-1959, -2009 (Fed. Cir. Oct. 4, 2018) (Wallach)
In October 2018, a Court ruled the terms "Corn Thins" and "Rice Thins" were too descriptive to be registered as federal trademarks.
Terms “that are merely descriptive cannot be registered on the principal register unless they acquire distinctiveness”, which is “secondary meaning” under 15 U.S.C. § 1052(f).
How can you avoid having your trademark application rejected by the USPTO because it is too descriptive? Ask yourself, “does the word/s describe the product or service”. If the answer is yes, it is probably descriptive. One of the reasons the Court upheld the rejection in this case was because the word “thins” “describes physical characteristics of the corn and rice cakes”.
And in Case you Missed it:
It has been revealed in the last few days that superstar band Guns N’ Roses has filed a lawsuit in California against Oskar Blues Brewery, part of the Canarchy Craft Brewing Collective. The brewery has branded one of its beers Guns ‘N’ Rosé.
The complaint argues that the band’s brand has thus had “irreparable damage” done to it by the craft beer and has “suffered and continues to suffer and/or is likely to suffer damage to their trademarks, business reputation, and goodwill”.
It argues that the brewery “should not be entitled to continue to sell infringing products and intentionally trade on the GNR’s goodwill, prestige, and fame without GNR’s approval, license, or consent”.
Oskar Blues Brewery has not yet responded to the lawsuit. The company’s previous attempt to trademark the Guns N’ Rosé name was abandoned due to opposition from the group.
We will update you as this case develops.