Scouts Honor? Binary Branding Gone Bad.

What a mess.  Kudos to the Boy Scouts of America for opening up its membership to girls, but the gender-specific nature of the branding, plus the undeniable existence of a competing group, the Girl Scouts of the USA, has created a brand battle that would be right at home on a law school exam.

Timothy Geigner at TechDirt has a good post about the mess, but the basic issue is simply that the Boy Scouts of America are rebranding as “Scouts BSA.”  Yes, the “BSA” still presumably stands for “Boy Scouts of America,” but by dropping the “BOY” portion from the mark, it has allegedly created confusion among the scouting community as a whole and is harming the Girl Scouts.

As explained in the TechDirt article, and in other articles on this issue, The Girl Scouts have sued the Boy Scouts in federal court, claiming trademark infringement, dilution, and other unfair competition.  The complaint is HERE, and it is 50 pages long – covering interesting scouting history and allegations of intentionally sowing confusion.

From the Introduction in the Complaint:

There is also corresponding activity at the USPTO’s Trademark Trial and Appeal Board.  The lawsuit was filed in the Southern District of New York on November 6, 2018.  However, prior to that, on October 16, 2018, the Girl Scouts of the USA filed a request to extend the time to oppose the Boy Scouts of America’s trademark application for “SCOUTS BSA,” which the BSA filed on May 3, 2018.  Here is the TTAB docket:

Since there is now pending district court litigation, the Girl Scouts of the USA will likely not need to pursue opposing the application at the TTAB because the district court litigation can take care of the registrability and confusion issues, and, the TTAB typically suspends its own proceedings when there is concurrent district court litigation.

The Girl Scouts of the USA likely intended to pursue this in district court from the beginning, but the Boy Scouts’ “SCOUTS BSA” trademark application was published for opposition on September 18, 2018, which meant that the Girl Scouts had to either file a notice of opposition or seek an extension of time to file a notice of opposition within 30 days of September 18, 2018, otherwise the application would proceed toward registration.  Thus, the Girl Scouts, in an abundance of caution, filed the extension request within the 30-day window to preserve the ability to oppose the mark at the TTAB regardless of the status of the district court litigation.  Again, the TTAB will likely not have to get involved if the district court litigation takes off, but this is a good example of making sure all bases are covered before kicking off a litigation strategy.

Be prepared.

Sorry, couldn’t resist.

This will be a fascinating case.  Since these marks are so old and well-known, the dilution claims should be interesting.



Medieval Times Goes Medieval on Competitor – Part I

The concept of “trade dress” is sometimes hard to grasp.  It is different, yet similar, to a design patent or copyright over expressive works.  Trade dress typically refers to the shape or configuration of a product or a product’s packaging.  However, to be protectable as trade dress, such configuration or shape must serve a source-identifying function, just like any other trademark.  That’s the distinguishing factor between a design patent and/or copyright – the source identifying role.  The classic trade dress example is the iconic shape of a Coca-Cola bottle.  When you see that curved bottle, you immediately think of the Coca-Cola company and its products.  It is an example of trade dress and product packaging.

Trade dress becomes more difficult when venturing outside of product packaging.  Some trademarks can be “inherently distinctive” due to their arbitrary nature when applied to relevant goods.  For example, “Apple” is inherently distinctive when applied to computer products because “apple” is not descriptive or suggestive of computer products.  When dealing with product packaging, trade dress can also be inherently distinctive.  However, when dealing with product design – such as the layout of a store – trade dress can not be inherently distinctive.  See Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205 (2000).  To achieve protectable trade dress for product design, you must prove secondary meaning – which means that when the consuming public sees your specific product design, they immediately make a connection to you, the brand source.  Also, trade dress cannot be “functional,” which means that you cannot take a product configuration out of the marketplace and claim it as your own if the configuration is necessary for others to compete in the market.  An example of a failed trade dress claim is the Hooters girl outfit.  See commentary HERE regarding the famous Hooters v. Wing House trade dress case.

I explain those basic trade dress principles in order to present the next Featured Case on Florida IP Trends.

Case: Medieval Times U.S.A., Inc. v. Pirate’s Dinner Adventure, Inc., et al

Medieval Times – Amended Complaint

Medieval Times – Motion To Dismiss Original Complaint

I’ll be back in the next few days to comment on the actual case, but the basic premise is that Medieval Times has sued a local competitor who also offered a dinner show “inspired by the true medieval tradition of royal families inviting guests to a festival and feast to watch knights compete on horseback.”  That quote is from the First Amended Complaint, and I have a feeling that it will come back to haunt the Plaintiff in the future…

Until Part II, enjoy some pictures from my (coincidental) recent visit to Medieval Times earlier this month:

Next post: Battle of the Medieval Dinner Shows

There are just too many signs to let this one slip by.

1) I recently went to Medieval Times with my wife and in-laws.

2) I love trade dress cases – especially ones in my home district.

3) The back of the Pepsi Max I just drank had a coupon for Medieval Times.

So, the next Featured Case will be:  Medieval Times U.S.A., Inc. v. Pirate’s Dinner Adventure, Inc., et al, filed in the Middle District.

I should have something posted in the next few days, complete with pictures from my recent trip.

Case Update: Yoga Berry Corporation v. Coco Mango, LLC – SETTLED

Well this was anticlimactic.  On August 21, 2012, after a notice of settlement was filed, the Court dismissed the case.  No additional information about the settlement is available, but Coco Mango seems like it’s still in business.

Previous coverage on Florida IP Trends.

Order Dismissing Case with Prejudice

I’ll have to dig around for a new case to feature.

It’s déjà vu all over again

Trade dress cases are fun.  Trade dress typically refers to the visual appearance of something – such as a product’s packaging or the design of the product.  The shape of a Coca-Cola bottle is an example of trade dress.  When you see that distinctive bottle shape, you immediately think of the source, Coca-Cola.

One of the more popular trade dress cases (at least in Florida) was the “Hooters v. Winghouse” case.  There, Hooters’ parent company sued the company behind the Winghouse chain of restaurants.  Hooters claimed that its trade dress was “the Hooters Girl uniform; rough-hewn rustic interior woodwork, including light colored wooden walls and floors; dining tables consisting of red wood of varying hues, surrounded by lighter pine wood, and covered with a shiny epoxy; a table-top setup consisting of a wooden vertical paper towel
spool, wood-weave plateware, and table tents; a parchment paper menu bearing the story of the restaurant on its reverse side; surfboards; wall-mounted photographs of celebrities taken with servers; pictures of girls in attractive swimwear; road signs displaying clever sayings; hula
hoops; large-bulb Christmas lights; wall-mounted sports memorabilia; bumper stickers; and “beachy” music from the ‘50s through the ‘80s.

However, the court in that case focused on the very first item in that list – the Hooters Girl uniform.  Ultimately, the court found that the Hooters uniform is “functional,” and to deny another business from being able to use waitresses in shorty-shorts and tank tops would be an “impermissible burden on competition.”  Thus, you now have two places to go get wings and see girls in tiny outfits.  You just need to choose if you prefer orange/white uniforms or black/red.

Now that you have an idea about what trade dress is, Florida IP Trends presents:

Yoga Berry Corporation v. Coco Mango, LLC [COMPLAINT]

This case got my attention because of the “Yoga Berry” plaintiff.  My first thought was that famed catcher Yogi Berra must have gotten into the health nut business or something.  But no, there does not seem to be a relationship between Yogi Berra and Yoga Berry (although I cannot confirm or deny it).  That makes this a somewhat unsympathetic plaintiff for me.  Before even reading the complaint I was thinking, “Gee, if these guys are trading on the name of the great Yogi Berra, what beef do they have with Coco Mango?

Well, the beef is in the yogurt.  [author’s attempt at a Yogiism]

Yoga Berry is suing the operator of a “Coco Mango” yogurt store.  Yoga Berry alleges that Coco Mango copied the distinctive trade dress found in the YOBE yogurt stores.

Yoga Berry has a tough hill to climb.  Just as Hooters learned that even a distinctive and well-recognized decor can ultimately fail as trade dress, Yoga Berry will have to prove that its trade dress is protectable.  The Complaint could be a little clearer in defining the trade dress, but it looks like a YOBE store has “futuristic white stools, chairs, table, and benches,” and “distinctive light fixtures” among other things.  Pictures or exhibits would have been nice in a complaint like this.  (I’m sure the judge would have appreciated them, too.)  However, since there were none, I took the opportunity to find some.  Having never been in either store, I just couldn’t picture what the Complaint was trying to show.

YOBE Store