Trademarks Archives - Page 2 of 2 - Omni Legal Group Blog

Can 3M use a trademark infringement lawsuit to mitigate price inflation of N95 respirator masks during the global COVID-19 pandemic?

Earlier this month, 3M filed a lawsuit alleging trademark infringement against Performance Supply, LLC, an N95 respirator distributor in the District Court for the Southern District of New York. 3M alleges Performance Supply has been offering for sale counterfeit 3M-brand N95 respirators to unwitting consumers, including government agencies. In addition to addressing Performance Supply’s infringement of 3M’s eponymous trademark, the goal of the lawsuit is to eliminate “a false and deceptive price-gouging scheme” by this unauthorized supplier of 3M respirators.

Since 1902, when 3M began as a small-scale mining venture, it has become a provider of scientific, medical, household, and other products to consumers internationally. According to the Complaint, 3M is “an industry-leading provider of scientific, technical, and marketing innovations throughout the world,” including a portfolio of more than 60,000 goods and services. As it relates to this lawsuit, 3M offers a wide variety of medical devices, supplies, and personal protective equipment (PPE), including the N95 respirator.

For the past century, 3M has been using its trademarks, such as “ACE,” “POST-IT,” “SCOTCH,” “NEXCARE,” the slogan “3M Science. Applied to Life,” as well as others. However, 3M claims to be most widely recognized by its eponymous brand, including its standard character “3M” and the inset 3M design mark. 3M has been using its standard-character 3M mark as applied to respirators since at least 1960 and its design 3M mark on respirators since at least 1990. 3M claims that its 3M trademark is famous and distinctive.

Famous trademarks are those that have an immediate connection in the minds of the consumer with a particular product or service and the source of that product or service. Famous marks enjoy a broader scope of protection. Trademarks may become distinctive after five years of substantially exclusive and continuous use of the mark in commerce. Because 3M has been using its 3M marks on N95 respirators for more than 30 years, there can be little doubt 3M’s marks are distinctive.

During this global pandemic, 3M has doubled its production of 3M-brand, Model 8210 respirators, many of which are provided to healthcare workers. Indeed, 3M’s anticipated annual production is 1.1 billion respirators. These N95 respirators reduce exposure to airborne biological particles and liquid contaminants, which is especially crucial during the outbreak of the coronavirus. Despite investing capital and resources to increase its production of these essential N95 respirators, 3M has not increased its prices.

In addition to not increasing its prices, 3M has also taken an active role in counteracting price-gauging by third parties who seek to exploit the exponentially increased demand for 3M-brand N95 respirators. Not only have these third parties increased their prices, some sell counterfeit, lesser-quality versions of the masks and others even accept money for the respirators despite not having the product nor ever intending to deliver the product. 3M’s goal is also to protect the reputation and goodwill of its brand. In so doing, 3M has worked with law enforcement, retail partners, and even consumers to stop the unlawful practices related to 3M’s respirators.

Around the end of March, at a time when New York City was reporting record numbers of COVID-19 positive tests and deaths, Performance Supply emailed a “Formal Quote” to the New York City’s Office of Citywide Procurement. Therein, Performance Supply offered to sell the Office 2 million 3M-brand N95 Model 8210 and Model 1860 respirators at prices 500-600% over 3M’s suggested list price. Within the Formal Quote prepared by Performance Supply, 3M’s design and standard character marks were used nine times.

Due to Performance Supply’s “rampant use” of the 3M trademarks, as well as, the New York City officials’ mistaken identification of Performance Supply as an authorized vendor of 3M-brand, N95 respirators, the Procurement Office actually purchased $45 million-worth of purported 3M-brand N95 respirators. However, 3M claims to have no association with Performance Supply, nor is Performance Supply an authorized distributor of 3M products. As a result of this conduct, 3M filed claims for federal and state trademark infringement, unfair competition, false association, false endorsement, false designation of origin, trademark dilution, false advertising, and deceptive acts and business practices.

Tiger King

Netflix’s “Tiger King” has become a mainstay in many American households during this period of quarantine. Indeed, in the first few days following the hit, true-crime documentary miniseries’ March 20^th debut, more than thirty-four million viewers tuned in to follow the demise of Joe Exotic. Exotic is a self-proclaimed “gay, gun-carrying redneck with a mullet” who owns a big cat roadside zoo and animal park in Oklahoma. Moreover, those who watched learned that Joe Exotic’s intellectual property infringement was the first step in a series of negative events that eventually led to his conviction and prison sentence.

While much of “Tiger King” tracks Exotic’s bitter, decades-long discord with animal conservationist Carol Baskin, one particular episode focuses on trademark and copyright disputes between the pair. Baskin is the owner of Big Cat Rescue, which takes in large felines and allows them to live out their days in caged conditions. Baskin’s purported goal is to make the selling of exotic cats in the United States illegal. Baskin trademarked her logo, which includes the words “Big Cat Rescue.” Later, in the heat of the pair’s bad blood, Joe Exotic named his traveling venture “Big Cat Rescue Entertainment,” with a logo that looks uncannily similar to Baskin’s.

Notably, prior to Exotic’s use of “Big Cat Rescue Entertainment,” Baskin did not own a trademark for the phrase “Big Cat Rescue.” Instead, she merely owned a design mark for a logo that incorporated “Big Cat Rescue.” However, during prosecution of Baskin’s design mark, the trademark office required a disclaimer of “big cat rescue.” A disclaimer does not remove the disclaimed matter from the mark but is simply a statement that the trademark applicant does not claim exclusive rights in the disclaimed wording apart from the mark as shown in the drawing. In addition, just because Baskin failed to secure registration of the words by themselves, she may have nonetheless been entitled to common law protection due to her extensive prior use of the same. Thus, absent the consent judgment, Exotic may potentially have been able to prevail on his use of “Big Cat Rescue Entertainment.” That being said, due to the highly similar nature of the respective logos, as well as, the nearly identical services, Exotic likely would have lost on the design mark claim.

Later, between 2011 and 2012, a second lawsuit was filed against Joe Exotic by Carol Baskin and her husband alleging copyright violations. This litigation arose due to Exotic’s misappropriation and posting online of various photographs to which Baskin owned copyrights. During depositions, Exotic admitted to posting the pictures but still asserted that Baskin was not the original owner of the photos. Such an argument is irrelevant in copyright law and as such, Exotic was forced to pay Big Cat Rescue Corp. damages totaling $75,000. However, as a result of the consent judgment in the trademark dispute, Exotic owed more than $950,000 in damages, for a total of over a million dollars in judgments against him. As a result, Exotic became bankrupt.

Meanwhile, since the series’ release, multiple individuals or entities have filed trademark applications for marks including “TIGER KING” and “JOE EXOTIC.” For instance, one application for “JOE EXOTIC” is for hats, sweatshirts, and t-shirts, and was filed by a California company that presumptively has no connection to the Oklahoma-based flamboyant feline lover. By way of further example, applications for “TIGER KING” include for plush toys, clothing, bean bag chairs, decorative seasonal stockings, Halloween costumes, and multimedia goods. While these entities may believe they have gotten ahead of the curve by cashing in early on the series’ sudden popularity, their changes of security registration are most likely slim to none.

In particular, unlike the patent system, under which the first inventor to file an application is entitled to rights (assuming the other requirements of patentability are satisfied), trademarks are not awarded based solely on a first-to-file system. Rather, for trademarks, it is the first entity that uses the mark in commerce that matters. Moreover, unless the applicants get Joe Exotic to consent to the use of his name, the Trademark Act, which bars federal registration of a mark that consists of or comprises matter which falsely suggests a connection with a famous person, will likely block these applications from registering.

Can a pharmaceutical company continue making statements such as “#1 Brand for Dry Mouth” in advertising its products?

The U.S. District Court for the Southern District of New York issued its final consent judgment to the settlement agreement between GSK and Laclede, Inc. on Friday, May 24, 2019. By issuing its final consent judgment, the U.S. District Court for the Southern District of New York agreed to the settlement agreement between GSK and Laclede concluding the trademark infringement action over the BIOTENE trademarks.

Multinational pharmaceutical company, GSK, filed intellectual property claims against Laclede, a pharmaceutical company that researches, develops, and manufactures a variety of over-the-counter and prescription medications, after a $170 million dollar purchase of Laclede’s intellectual property that included various BIOTENE trademarks relating to eighteen products of Laclede’s “BIOTENE” dental product line used for treating dry mouth. The BIOTENE dental product line consists of over-the counter products including mouthwashes and toothpastes used for treating dry mouth. After purchasing the rights to the BIOTENE dental product line, GSK invested in advertising and promoting the BIOTENE product line. In 2017, GSK spent over $20 million advertising and promoting the BIOTENE product line. In addition to investing in advertisements and promotion for the BIOTENE product line, GSK also reformulated the BIOTENE dental product line.

Three years after transferring all of the intellectual property rights including the “BIOTENE” trademark, Laclede introduced its SALIVEA dental product line. The SALIVEA dental product line was a direct competitor with the BIOTENE dental product line, and included products such as mouthwash and toothpaste used for treating dry mouth. Court documents indicate that Laclede sent “approximately 100,000 mailers…to healthcare professionals and others” and advertised the SALIVEA product line through its website. Laclede’s advertisements listed trademarked phrases such as “#1 brand for dry mouth”, “ORIGINAL Biotene Formula” and featured trademarked logos such as the “blue-and-red BIOTENE logo” and the “BIOTENE droplet”. On June 4, 2018, GSK filed its trademark infringement claims against Laclede and its shareholders, Michael Pellico and Stephen Pellico, for using various BIOTENE trademarks.

A trademark is any word, name, symbol, and or device used by a trademark holder to identify and distinguish the trademark holder’s products from products manufactured and sold by others. In order for a trademark holder to register a trademark, a trademark must distinguish the trademark holder’s products from the products of others. Once a trademark holder registers a trademark with the Patent and Trademark Office, a trademark holder holds rights to the trademark in the U.S. if the trademark holder uses the trademark in commerce. A trademark holder maintains its rights in its trademark as long as the trademark holder uses the trademark to designate the origin of a product.

Trademark infringement refers to the unauthorized use of a trademark in connection with the sale, offering for sale, distribution, or advertising of any goods where such use is likely to cause confusion. A trademark holder may seek remedies in federal court for infringement under Section 32 of the Lanham Act. The Lanham Act is a federal statute that protects registered trademarks and that allows a trademark holder to file a civil action against an infringer for trademark infringement. In order to prevail in a trademark infringement action under Section 32 of the Lanham Act, a trademark holder, “must establish that the trademark holder possesses a valid, legally protectable trademark, and that the infringer’s subsequent use of a similar mark is likely to create confusion as to the origin of the product at issue.” Whether the infringer’s subsequent use of a similar mark is likely to create confusion as to the origin of the product at issue is guided by an eight factor balancing test first articulated by . The eight factors include: (1) the strength of the trademark; (2) the similarity of the marks; (3) the proximity of the productions and their competitiveness with one another; (4) evidence that the senior user may “bridge the gap” by developing a product for sale in the market of the alleged infringer’s product; (5) evidence of actual consumer confusion; (6) evidence that the imitative mark was adopted in bad faith; (7) the respective quality of the products; and (8) the sophistication (or lack thereof) of consumers in the relevant market.

In its January 23, 2019 Opinion and Order issued by United States District Judge Jesse M. Furman, the Court determined that GSK met the burden of showing that consumers are likely to be confused. The Court found that the first factor weighed in GSK’s favor, stating that there was no dispute that the BIOTENE trademark and BIOTENE droplet were both strong trademarks. The Court also found that the second factor favored GSK because Laclede conceded that its BIOTENE marks used in their advertising materials were identical to GSK’s trademarks. Since the SALIVEA product line is a direct competitor to the BIOTENE product line, the Court found this factor also favored GSK. The Court determined that the fifth factor weighed only slightly in favor of GSK, explaining that even though only twenty reported cases of actual confusion by healthcare professionals were reported, the relatively small number of declarations revealed actual consumer confusion. The Court also determined that Laclede acted in bad faith because some advertisements mentioned BIOTENE more frequently than they mentioned SALIVEA and because the advertisements created the impression that SALIVEA was an improved version of BIOTENE. With respect to the seventh factor, the Court concluded that it favored neither GSK nor Laclede because the quality of SALIVEA would neither create confusion, nor that such confusion would harm GSK’s reputation. Finally, the Court determined that the eighth factor favored Laclede indicating that both the ultimate consumer and healthcare professionals are sophisticated and familiar with the dental product market.

The Court ordered Laclede to refrain from using: the blue-and-red BIOTENE logo and confusingly similar variations; images of the packaging; and from advertising SALIVEA as a replacement for BIOTENE. Several months following the January 23, 2019 Opinion and Order, GSK and Laclede entered into a settlement agreement. The settlement agreement prohibits Laclede from making statements such as “#1 Brand for Dry Mouth” in connection with advertising and packaging its products.

Can a rock band prevent a brewery from selling beer by a confusingly similar name?

Guns N’ Roses was initially founded in 1984 by Tracii Guns and Axl Rose when they combined the names of their respective bands, “LA Guns” and “Hollywood Rose,” to form “Guns N’ Roses.” Since its inception, the metal band has achieved national and international renown as one of the greatest, and most commercially and critically successful, bands of all time. In particular, the band has sold millions of records, received billions of views of its music videos on YouTube, and experienced sold-out tours. As one example, the band’s debut album, Appetite for Destruction, is the best-selling debut album of all time in the United States.

As is common with musicians and other artists, Guns N’ Roses has also branded merchandise, including t-shirts, hats, patches, stickers, buttons, bandannas, wine glasses, shot glasses, beer “koozies” and pint glasses. To protect this merchandise and the band’s brand, Guns N’ Roses is the owner of three incontestable federal trademark registrations of the mark GUNS N’ ROSES. These marks are in International Class 9 for “prerecorded video and audio tapes, prerecorded phonograph records and prerecorded compact discs all featuring music,” International Class 41 for “entertainment services; namely, performances by a musical group,” and International Class 25 for “clothing, namely, t-shirts, shirts, hats, caps, bandannas, sweatpants, and thermal shirts.”

Upon discovering that Oskar Blues Brewery had begun offering for sale and selling craft beer under the mark GUNS ‘N’ ROSE in canned and keg form, as well as, various merchandise bearing the same, including hats, t-shirts, pint glasses, stickers, buttons, and bandannas, the business manager of Guns N’ Roses reached out to the beer company. Despite the manager’s offer to resolve the dispute short of escalating the matter to legal counsel, the brewing company rejected the band’s claims. Following this discussion, a formal letter was sent on behalf of the band, again requesting that Oskar Blues cease its unauthorized use of the Guns ‘N’ Rosé mark and abandon its trademark application for the same. Multiple letters were transmitted between the parties and ultimately, the brewery indicated its intention to continue selling and marketing the Guns ‘N’ Rosé beer, clothing, and other products through March 2020. As such, Guns N’ Roses initiated the present lawsuit against Oskar Blues, claiming trademark infringement, false designation of origin, trademark dilution, unfair competition, and misappropriation of right of publicity.

To be successful on its trademark infringement claims, Guns N’ Roses will need to demonstrate that it has valid and subsisting trademark rights in and to “Guns N’ Roses” and that Oskar Blues Brewery is utilizing a mark that is confusingly similar thereto. More specifically, Oskar Blues’ use of “Guns ‘N’ Rosé” must be in a manner that is likely to cause confusion with respect to the source and origin of its rosé ale and is likely to cause confusion or mistake and to deceive purchasers as to the band’s affiliation, connection, or association with, or approval or sponsorship of, Oskar Blues, its business, and/or the disputed rosé ale.

In addition to its manufacturing and offering for sale of the accused beer, the brewery filed an application to register “Guns ‘N’ Rosé” as a trademark last August. In response, the band filed an opposition proceeding with the Trademark Trial and Appeal Board in March of this year. An opposition proceeding involves the United States Patent and Trademark Office, and not the courts, with the ultimate goal of defeating registration of a mark. Indeed, oppositions challenge pending trademark applications.

Prior to answering the notice of opposition, Oskar Blues Brewery withdrew its application for registration of “Guns ‘N’ Rosé.” Per trademark rules, since Oskar Blues Brewery filed this abandonment without the written consent of the band, judgment necessarily had to be entered against it, thereby sustaining the opposition and refusing registration of “Guns ‘N’ Rosé.” Typically, a refusal in this way is “with prejudice,” that is, the beer company cannot later attempt to gain registration of its “Guns ‘N’ Rosé” mark.

Despite the brewing company’s abandonment of its trademark application, in its district court lawsuit, the band is still requesting that it stop making and selling the pink ale, and deliver to them for destruction any merchandise or promotional material bearing the mark. The rationale is that merely because Oskar Blues abandoned the trademark application, it has not agreed to cease sales and marketing of the infringing beer. Of course, the band also seeks compensatory and punitive damages.

Amazon News

Amazon is back at it again and this time they seem to have their sights set on Blue Apron. Amazon has filed an intent to use trademark application for prepared food kits with the phrase “We do the prep. You be the chef.” Earlier this year, the online giant purchased Whole Foods for $13.7 billion but their involvement in this space dates back to 2013 with Amazon Fresh grocery delivery. The company also trademarked the phrase “Some eat to live. We live to eat” on their Wickedly Prime snack foods released earlier this year. #Trademarks #OmniLegalGroup #Intellectualpropertylaw

What You Need To Know About Trademarks For Your Business

Highly acclaimed musicians Beyoncé and Jay-Z have recently filed trademark applications in the names of their newborn twins, Rumi and Sir Carter. Both applications were filed on June 26, 2017, around the same time as when the entire family returned home from the hospital. As we reported after the birth of their first child, they took the same precautions for the name of their eldest daughter, Blue Ivy. This month we discuss the importance of registering one’s intellectual property interest in a name by filing for trademark registration. The following is some important information business owners should know about trademark law.

Trademarks let consumers know where the goods and services they are purchasing originate. They also prevent third parties from free-riding off of the goodwill another company has generated by copying their name. In other words, trademarks help the consumer identify or recognize your company. Trademark registration can be used to protect not just your name, but your logos, emblems, colors, and characters.

When filing a trademark application you must identify what your specific mark is and what specific goods or services you provide under that mark. The scope of protection will be limited accordingly. For instance, a company who registers the name of GREEN MUSHROOM to use with the jewelry they sell would not be able to prevent another party from using the name GREEN MUSHROOM Pizza Parlor for their restaurant because they are in a completely different category and therefore not likely to cause consumers to be confused about the source of the goods they are purchasing
There are numerous benefits to trademark registration. Some of the benefits of registering your trademarks include nationwide as opposed to regional protection of your mark, proof that the mark is yours via a Registration Certificate from the United States Patent and Trademark Office (USPTO), in a situation where the owner wants to license the mark (such as with a franchise) registration can provide others with proof that you are the owner of the mark.

Business owners should begin by conducting a clearance search before they invest too much into a mark. This can help make sure they don’t receive cease and desist letters from other parties who already registered that mark. Once you receive the search results, you can file an intent-t0-use trademark application even before you begin using the mark in commerce. The trademark registration process can take a while (often over 6 months), so it is best to start early.

Because of the intricacies and nuances inherent to trademark law, it is generally advisable to use a lawyer to register your trademark. A lawyer can research in depth and advise you on how to avoid potential pitfalls that can lead to costly lawsuits. Choosing the right lawyer can be crucial. For more information on selecting the right counsel see our blog article entitled HOW DO YOU CHOOSE THE RIGHT ATTORNEY FOR YOU? By using the following link: https://omnilegalgroup.com/blog/choosetherightattorney/.

Learning more about how trademarks can add value to your company and protect your company’s goodwill in the long run. Familiarizing yourself with some of this crucial information will help mitigate the risk that someone else will use your hard-earned trademarks and mislead your customers.

DID YOU KNOW?

During the 16th century a Dutch shipmaker used heat to concentrate wine to make it easier to transport, his idea was to reconstitute it with water when he arrived at his destination. What he ultimately discovered, was that the heated wine tasted very good. The concentrated wine was called burnt wine or brandewijn in Dutch. Today, Brandy is enjoyed around the world.

Trademarks: USC v. USC… USC wins

By refusing to hear the University of South Carolina’s appeal, the Supreme Court ended a 13-year-old dispute over interlocking letters “SC”. Prior to this appeal, the Federal Circuit held the University of Southern California and not South Carolina is the proprietor of intellectual property rights in the mark. Their ruling stands.

Trademark law protects identifiers of origin. Put more simply, the reason you know shoes bearing the “swoosh” emblem are Nikes and not something else is because of trademark law. Nike has registered the “swoosh” with the United States Patent and Trademark Office limiting other company’s ability to fool buyers by placing it on their products.

Consumer confusion is what Trademark Law was meant to defend against. This week, the U.S. Supreme Court refused to hear South Carolina’s appeal. The lower court concluded although diehard fans could tell the difference between the South Carolina “SC” and Southern California “SC,” casual fans could get confused. The fact that one school used block letters and the other curved was not enough to prevent this from happening.

For more questions on this or other Intellectual Property matters, please contact our office.

Trademarks

Category: Trademarks