trademark law

Federal illegality dooms KIVA cannabis trademark senior user defense

Kevin WimberlyLeave a comment

Interesting ruling from the Northern District of California this past Friday.  With cannabis goods and services typically illegal under federal law despite various state laws allowing for such goods and services, there has been interest in whether or not a federal court could or would protect a common law trademark owner under federal trademark law using the mark in association with federally-prohibited goods and services.

That answer was No.  Citing many of the TTAB cases that have served as the foundation of cannabis-related trademark prosecution (i.e. In re Morgan Brown, JJ206), the court concluded that since the cannabis-related goods were illegal at the federal level, the parties were was not entitled to injunctive relief; and, the defendant’s counterclaims were dismissed under the same reasoning:

…and:

Full Order is HERE.

Kiva Health Brands Inc. v. Kiva Brands Inc.

Several other issues to note in this case (ie. the nunc pro tunc assignment issue).

 

 

 

 

 

Scouts Honor? Binary Branding Gone Bad.

Kevin WimberlyLeave a comment

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.

 

 

Amazon’s Brand Registry – Logos Need Not Apply

Kevin Wimberly1 Comment

You may have heard of Amazon’s “Brand Registry.”  If not, it is a way for a brand owner to register and claim a brand name so that the claimant can better monitor for counterfeit goods, rogue sellers, and other issues on Amazon.

In a trademark application, there is an area for filling out “Correspondent” information.  This is typically where a lawyer’s information goes if a lawyer filed the application.  It’s also where Amazon looks to see where Amazon should send Brand Registry emails.  For example, if my client is ACME Anvils, and my client owns a registered trademark for “ACME Anvils,” then I am likely the “Correspondent” for that registration.  Thus, when ACME Anvils decides to list its anvils on Amazon and also wants to claim the ACME Anvils brand as its own, Amazon will send me, as the Correspondent, an email such as the following:

Hello,

We write to validate the identity of an individual seeking to enroll brand: “ACME Anvils” in Amazon Brand Registry. You are listed as the contact for the registered trademark for brand: “ACME Anvils”.

We are unable to provide you with the name of the applicant and have directed the applicant to contact you. In order to give the applicant approval to enroll brand: “ACME Anvils” in Amazon’s Brand Registry, provide the verification code listed below to the applicant. If you decline, do not provide the code.

Verification code:  [redacted]

Thank you in advance for your assistance, Amazon Brand Registry Support

Best regards,

Karthik

Amazon Brand Registry Support

When we receive such emails, we simply forward them to the client, and the client ultimately claims the brand on Amazon.

Sounds easy, right?  It is, but there is a MAJOR caveat:

AmazonBrand

That’s right – if you only have a logo-version of your mark registered with the USPTO, you cannot claim the brand via Amazon’s Brand Registry.  You must have a registration for the plain-text version of your mark.

(In case the graphic doesn’t show up, the highlighted portion says that to enroll in the Brand Registry, the brand name must be “a live registered trademark, which is a word mark and NOT a stylized, illustration, or design mark.”)

This is a very important reason to seek protection for the plain-text version of your mark in conjunction with, or prior to, seeking protection for your logo.  We often see clients who are adamant about only filing a trademark application for their logo.  This is understandable.  The logo was probably the product of much debate, love, and cash.  People seem more wedded to their logos than their simple textual brand names.  But, we typically advise clients to begin with the plain text version of the mark as it can be seen as providing “broader” protection because there are no claims to specific colors or symbols – it’s just the name of the mark regardless of how it’s presented.   However, if you sell goods that you would like to ultimately list on Amazon, at least under the current policy, you should consider registering the plaint-text version of your mark.