It seems that Latin Hooters is no more. The sign over the establishment now reads “Tesoro Latino,” which translates to “Latin Treasure.” According to Florida Department of State records, the new business was formed on March 10, 2009.
Latin Hooters – UPDATE
Well, as predicted, the Applicant for “LatinHooter’s” failed to respond to the Office Action in time, and the application was declared abandoned on March 24, 2009.
Will Latin Hooters stay afloat with its common law mark, or will the great winged owl swoop down to deflate this local hotspot? We’ll keep you abreast of the latest developments.
Floridians 3rd Most Active in Trademark Applications
This report came out in November ’08, but it’s worth a brief mention.
According to the USPTO’s Performance and Accountability Report for Fiscal Year 2008, Florida residents filed the third highest number of trademark applications in 2008.
California 68,039
New York 31,965
Florida 21,973
Texas 17,258
Overall, U.S. residents filed 314,510 trademark applications. Obviously, not all of these will mature into registrations, but that’s a LOT of branding!
Something smells shrimpy in the Southern District
If you remember the very first post on Florida IP Trends, you’ll know that one of the things I’m interested in tracking is how Florida courts will be handling the Egyptian Goddess decision.
It looks like we have our first contender:
INTERNATIONAL SEAWAY TRADING CORPORATION, Plaintiff,
v.
WALGREENS CORPORATION and TOUCHSPORT FOOTWEAR USA, INC., Defendants.
This is a recent Southern District case that granted a defendant’s motion for summary judgment concerning the validity of several design patents. A more thorough analysis of the case is forthcoming, but the basic facts are that the Defendant, Walgreens Corporation, was sued for design patent infringement by the owner of several design patents relating to sandals similar to those squishy ones that Chef Mario Batali wears. Love ’em or hate ’em, we’re talking about Crocs. And it’s actually Crocs that bit the Plaintiff as prior art which invalidated its patents, thus Defendant’s Crocs knockoffs couldn’t infringe Plaintiff’s Crocs knockoffs.
But – the reason for this post is different. In its analysis of which features of the designs should be compared, the court used the widely-cited case of Contessa Food Products v. Conagra, Inc. Contessa is often cited for the proposition that when comparing a patented design to an accused design for purposes of similarity, only those features that are visible during normal use should be considered. Features that are concealed during use should not be considered.
Now, as the name of the case hints, “Contessa Foods” had something to do with food. In fact, the design at issue was a shrimp platter. We’ve all seen them at the grocery store – the round plastic container with a domed lid with scores of shrimp lined up and waiting for some cocktail sauce.
Contessa is a well-known case – cited 101 times in other cases, and 140 times in law journals, motions, and other papers. So it came as a pretty big surprise when the Southern District wrote:
Contessa Food involved a patent for cabinet doors. That court held that the interior hinge of the door was visible during the use of the product because, even though not always visible, the interior door hinges were visible when the cabinet doors were open.
Int’l Seaway Trading Corp. v. Walgreens Corp., 2009 U.S. Dist. LEXIS 6240 (S.D. Fla. Jan. 22, 2009)
Um, no it didn’t. Contessa did cite to a different case that dealt with cabinet door hinges (Keystone), but Contessa Food most certainly did not “involve[] a patent for cabinet doors.” I might just be being picky over a little mistake, but that seems like a pretty big “oops” to me.
In addition to that technicality(?), I think the court missed the overall point of Contessa. The court used Contessa to justify excluding the insoles of the sandals from the comparison of the designs. The reasoning was that “when a shoe is in use, it’s[sic] insole is, obviously, hidden by the user’s foot…[a]s such, this Court will not consider any aspects of the insoles of the shoes, but will consider the sole of the shoes as those are visible during use.” Uh, except when someone happens to be WALKING ON THE SOLES!
The Court also stated that “the law requires a court to consider only those portions of the product that are visible during normal use, regardless of whether those portions are visible during the point of sale.” While this might be true, in the case of Crocs-like shoes, I believe that the sole and insole are both visible during normal use – INCLUDING at the point of sale. All of the Crocs and Crocs-like shoes I’ve seen for sale are
hanging on a rack without boxes, thus, all sides and features are visible. Because a feature that is more visible at the point of sale might be less visible later does not mean that the feature should be excluded. Contessa said that the analysis should include “all ornamental features visible at any time during the normal use of the product.” (emphasis added). To me, this would include when the owner has the sandals sitting next to him or her on the beach, in which case the insole would be visible.
Like I said earlier, a more thorough discussion of how this case used Egyptian Goddess for anticipation purposes is forthcoming, but I had to post about the Contessa issues early because they were bothering me.
By the way – Plaintiff has appealed, so we should have some more fun with this one later.
Latin Hooters
Last week I wrote about Florida’s love of boats. This week, it’s hooters Hooters. 
I’m sure it’s the same all over the U.S.A., but Hooters (the restaurants) are all over Florida. Just last week I went to Daytona for a car show, and Hooters was there selling wings, soda, and fun. Before I had even handed over my two dollars for a warm can of Diet Coke, an “I Love Hooters” sticker had been slapped on my chest. It reminded me of my favorite South Park episode in which Butters falls in love with his “RAISINS” waitress because she showers him with affection at the restaurant – at least until he ran out of tip money…
Florida is also the place where WingHouse spanked Hooters in a trade dress infringement case, so a Hooters post is definitely at home on Florida IP Trends.
As an IP attorney, I have a disease that has altered my brain into constantly scanning for trademarks – infringing or otherwise. While most people scan signs and billboards for information (such as STOP, YIELD, etc.), I’m looking for the registered trademark symbol. It’s ridiculous. If I see a somewhat-descriptive mark with the “circle R” symbol, I’ll turn to my wife and say “Must be on the Supplemental” to which she replies, “You’re a dork.” Point taken, but 9 times out of ten when I get back home and search the USPTO TESS database, I’m right.
So, imagine my udder utter delight when I saw this sign: LATIN HOOTERS. Oh yes – there is a LATIN HOOTERS restaurant on Lake Underhill Drive in Orlando. When I first saw it I got giddy with the possibility of a Hooters v. Latin Hooters fight. I have seen at least one (old) cease and desist letter sent by Hooters asking for the removal of a picture of a customer with some Hooters waitresses from a website. Surely LATIN HOOTERS is on the radar.
Well, this was all several months ago – in fact – it may have been a year since I took these pictures with my cell phone. I didn’t think much of it until today when I saw the sign again. So, I fired up the TESS database, and sure enough, LATIN HOOTERS filed a trademark application. Ouch. This is a surefire way to bring the wrath of the owner of a famous brand. It’s like mailing a letter to corporate counsel asking for them to check out your potentially infringing business. Most people don’t realize that companies with a valuable IP portfolio are actively monitoring trademark applications for potentially infringing marks. They have to – there can be legal penalties for failing to police or monitor your registered mark. Example: Ever thought about filing an application for a mark that contains the word “Monster?” Good Luck.
The word mark application is for “LatinHooter’s” (with an apostrophe), for “bar and restaurant services.” The application was filed on 5/10/2008, and an Office Action was mailed out 8/26/2008. No response has been made, but the (pro se) Applicant has until 4/26/2009 to respond. Predictably, the Office Action is a refusal to register “LatinHooter’s” based on a likelihood of confusion with one of many HOOTERS registrations, including this one for “restaurant and cocktail lounge services.”
My guess is that the application will either be abandoned or ultimately fail to mature into a registration. If the owner can somehow get around the Office Action and get the application published, I bet a WingHouse dinner that an opposition proceeding will be close behind.
So, aside from the PTO issues, if LATIN HOOTERS continues to use the business name, what might happen? Obviously, trademark infringement is a viable claim. As the Examining Attorney wrote in the Office Action:
HOOTERS is a well known mark for restaurants and bars. LATINHOOTERS[sic] looks like a natural expansion of the HOOTERS chain into the Latin market. Consumers would likely think the services are from the same party or related entities.
However, I’m more interested in a dilution claim. The Trademark Dilution Revision Act clarified the standard for determining whether a mark is “famous” for purposes of dilution, and the Act also clarified that the dilution standard is a likelihood of dilution and not actual dilution. My initial reaction is that Hooters would be able to prove fame and a likelihood of dilution – by blurring and possibly tarnishment. I’ll continue to watch the “LatinHooter’s” trademark application and also keep an eye out for any court filings. If something comes up, I’ll further explore the claims and write another entry.
Until then, whether you like “regular” Hooters or Latin Hooters, there’s a place for you in sunny Orlando.
Vessel Hull Design Protection Act – What the hull?
Florida is the Sunshine State, and along with all that sunshine comes an inordinate amount of love for boats. We love boats so much that our lawmakers even tried to create a law protecting the manufacturers of boats from unauthorized copying of their boat hull designs. The U.S. Supreme Court didn’t take kindly to that, and a little thing called the Supremacy Clause of the U.S. Constitution settled the matter. That case was the 1988 case of Bonito Boats v. Thunder Craft Boats, and Justice O’Connor, writing for a unanimous Court, stated that Florida’s law was in essence a competing intellectual property protection scheme to the U.S. Patent and Copyright laws. As such, it failed.
But, the case did open a can of sunshine on the issue, and Congress responded to the concerns of boat manufacturers by including the Vessel Hull Design Protection Act (“VHDPA”) within the Digital Millennium Copyright Act of 1998. As with Florida’s invalidated statute, the VHDPA intended to curb the practice of “splashing” boat hulls. Splashing occurs when a manufacturer takes a finished boat hull and dips it into some mold-making compound to produce a mold of the hull. Imagine filling a pan with modeling compound (such as Play-Doh® brand), sticking your hand into the compound to create an impression, and then filling the void with resin to create a duplicate of your hand – you have just “splashed” your hand.
Although the VHDPA protects designs, it is administered by the U.S. Copyright Office and codified at 17 U.S.C. § 1301, et. al. Boat manufacturers now have a trifecta of protection for the design of hulls: 1) design patent protection under the Patent Act, 2) trade dress protection under the Lanham Act, and 3) “original design” protection under the Copyright Act. (While this article is not intended to weigh the pros and cons of the different protection mechanisms, it is interesting to note the hybrid nature of VHDPA protection.)
Is My Design Eligible?
In order for your boat design to qualify for VHDPA registration, you must seek registration within 2 years of the date the design was first made public. A design is made public “when an existing useful article embodying the design is anywhere publicly exhibited, publicly distributed, or offered for sale or sold to the public by the owner of the design or with the owner’s consent.” 17 U.S.C. § 1310.
The design must also be original, not a staple or commonplace design, and ornamental (i.e. not utilitarian). The issuance of a design patent will also cancel and/or prevent registration under the VHDPA.
How Does it Work?
Assuming your design is eligible, the VHDPA gives protection to “the design of a vessel hull, deck, or combination of a hull and deck, including a plug or mold…” “Hull” is defined as “the exterior frame or body of a vessel, exclusive of the deck, superstructure, masts, sails, yards, rigging, hardware, fixtures, and other attachments,” and a “deck” is defined as “the horizontal surface of a vessel that covers the hull, including exterior cabin and cockpit surfaces…”
In order to receive protection, you must fill out Form D-VH, attach “deposit material” (pictures of your boat), and pay the fee (currently $200).
Once you submit the required material, the Copyright Office will examine the application and determine if the design meets the statutory standards for registration. If so, the design will be registered and published. The publication date will serve as the date of registration.
You are also required to mark the hull and/or deck in some manner to show that it has been registered. The Copyright Office requires the words “Protected Design”, the abbreviation “Prot’d Des.”, a “circle D” symbol similar to the ® for a registered trademark, or the symbol “*D*”. You must also include the year protection commenced and the name of the owner or the generally accepted alternative designation of the owner. The “generally accepted alternative designation of the owner” is interesting in that it requires the owner to record such a designation with the Copyright Office. This is all a fancy way to describe your logo. If your boat company operates under a logo, you can record the logo with the Copyright Office and use that “alternative designation” when marking the boat with the “Protected Design” designation. So, “Kevin Wimberly, *D* 2009” would satisfy the marking requirement as would “[Your logo as recorded at the C0pyright Office’, *D* 2009.”
As of today, only 11 logos/designations have been recorded with the Copyright Office. See them HERE.
What Benefit Does It Give Me?
A registered vessel hull or deck design is protected for 10 years from the earlier of the date of registration or the date the design is first made public. 17 U.S.C. § 1304. The protection gives the registrant the exclusive right to make, have made, import, sell, and/or distribute any useful article embodying the registered design.
If someone does infringe the design, assuming the design was properly marked upon receiving a registration, the registrant may recover actual damages, the infringer’s profits, attorney’s fees, and an injunction requiring the infringer to cease infringing and to destroy any molds and devices used to create infringing hulls. Note that if the registrant did NOT mark the vessel in accordance with 17 U.S.C. § 1306, the recovery of damages will only accrue from the time the registrant put the alleged infringer on notice, such as via a cease and desist letter which asserts the registration.
Why Are You Writing About It in 2009?
Good question. Late last year (October 16, 2008 to be precise), the Vessel Hull Design Protection Amendments of 2008 were approved and signed into law by President Bush. These amendments closed a loophole by which some manufacturers took advantage of loose definitions in the original VHDPA. Prior to the Amendments, the definition of “hull” included the deck, which meant that a manufacturer could splash the hull of a competitor’s boat and simply change the features of the deck and not infringe under the VHDPA. As shown above, the VHDPA now differentiates between the hull and the deck of a vessel, and both are protected individually or in combination.
Is the VHDPA For Me?
It could be. That depends on your specific circumstances, and you should consult an attorney to help you make that determination. The general concensus is that registrations under the Vessel Hull Design Protection Act are fewer than anticipated. This may be because of the aforementioned loophole. Given that the loophole was only recently closed, it may take some time for manufacturers to begin registering their designs again. The most recent design on the Copyright Office’s website is from October 8, 2008. You can view the entire library of registered vessel designs HERE.
Featured Case – Great Neck Saw Manufacturers
One of the main features of the Florida IP Trends blog is a focused look at Florida intellectual property cases. I plan to provide a weekly list of IP cases filed in the Northern, Middle, and Southern District Courts in Florida. From those cases, I’ll pick one or two per month as the Featured Case.
I’ll also provide documents and commentary related to these cases as a service to fellow attorneys and the public. The Featured Cases will contain interesting legal claims, procedural issues, or other “standout” topics that will be of interest to those tracking IP cases in Florida.
With that, here is Florida IP Trend’s first Featured Case:
Great Neck Saw Manufacturers, Inc. v. Iron Bridge Tools, Inc., et. al., Case No. 1:08-cv-23266
[Download a copy of the Complaint HERE]
Plaintiff Great Neck Saw Manufacturers (“Great Neck”) is a New York corporation and the assignee of U.S. Patent Nos. 7,040,022 (the ‘022 patent), D495,039 (the ‘039 patent), D501,782 (the ‘782 patent), D510,250 (the ‘250 patent), D526,877 (the ‘877 patent), D528,895 (the ‘895 patent), and D543,822 (the ‘822 patent) – all which are allegedly infringed by the Defendants’ knives. Great Neck also alleged trade dress infringement, false designation of origin, unfair competition, unprivileged imitation, and passing off.
Defendants Iron Bridge and Black Pearl are Florida corporations while Defendant Everpower is a Chinese corporation. Defendants allegedly infringed Great Neck’s utility and design patents for folding utility knives, including knives sold under the HUSKY brand name.
I’m tracking this case in part due to the design patent claims. There are very few reported design patent infringement cases post-Egyptian Goddess, which set out the new “familiar ordinary observer” standard. At least one of the cases interpreting the new test seems to have used the “three-way test” (in which the prior art, accused design, and patented design are simply compared against one another) despite stating that its analysis was based on the familiar ordinary observer test. See Arc’Teryx Equip., Inc. v. Westcomb Outerwear, Inc., 2008 U.S. Dist. LEXIS 90228 (D. Utah Nov. 3, 2008).
Another interesting aspect to this case is the trade dress infringement claim. In order for trade dress to be protectable, the asserted features must not be functional, rather, they must be ornamental in nature. In reciting the trade dress in the utility knives, Great Neck stated in its Complaint:
Great Neck’s trade dress consists of the non-functional features and appearance of its utility knives comprising the shapes, size and appearance of the various parts of the utility knives.
At least one court in Florida has dismissed a trade dress claim for such an ambiguous description of a product’s trade dress. In Knights Armament v. Optical Sys. Tech., the Middle District chastised the Plaintiff with:
[Plaintiff] alleges that its trade dress is not functional and is distinctive, with respect to finish, shape, and exterior design, but does not explain why it is distinctive and nonfunctional, nor what actually comprises the trade dress or how the Knights Defendants infringe on it … These sparse facts and conclusory allegations constitute a mere recitation of the elements of the cause of action for trade dress infringement, which is insufficient to survive a motion to dismiss. Twombly, 127 S. Ct. at 1965. Thus, the Court holds that OSTI’s claim of trade dress infringement is dismissed without prejudice.
– Knights Armament Co. v. Optical Sys. Tech., 568 F. Supp. 2d 1369, 1376-1377 (M.D. Fla. 2008)
I’ll update this post as new developments occur, and I look forward to seeing how Florida courts begin to interpret the recent Egyptian Goddess decision.
Posted by: Kevin Wimberly
BWSMM Associates Speak at OCBA IP Committee
I recently gave a presentation with my colleague Amber Neilson at the Orange County Bar Association’s IP Committee luncheon. The name of the presentation was “Design Patent Infringement Gets a Manicure” and covered the recent Egyptian Goddess design patent case.
You can download a PDF copy of the presentation HERE.
Florida IP Trends 