RECENT DEVELOPMENTS IN TRADEMARK LAW

1. RECENT DEVELOPMENTS IN TRADEMARK LAW UTAH IP SUMMIT FEBRUARY 22, 2019

2. TRADEMARK FAIR USE • SAZERAC BRANDS V. PERISTYLE LLC • 892 F.3d 853 (6th Cir. 2018)

3. THE PRODUCTS OLD TAYLOR CASTLE & KEY

4. THE DISTILLERY

5. ELEMENTS OF FAIR USE DEFENSE • Defendant must use mark in a descriptive or geographic sense, and • Defendant must do so fairly

6. FAIR USE TO IDENTIFY GEOGRAPHIC LOCATION • "[Peristyle] plans to put up a Castle & Key sign next to the historic signs before the company opens the yet-to-be-finished distillery to the public," "Once they do, visitors will know they are at the historic Old Taylor distiller, where Castle & Key distills its own bourbon. Trademark law demands no more."

7. LIKELIHOOD OF CONFUSION • Beyonce Knowles-Carter v. Andre Maurice et al. • Case 1:16-cv-02532 (S.D.N.Y. 2018)

8. The Products Knowles-Carter Feyonce Inc.

9. Issue of Fact

10. SUMMARY JUDGMENT DENIED • “There can be no dispute that in marketing to fiancépurchasers, defendants chose the formation ‘Feyoncé' in order to capitalize off of the exceedingly famous ‘Beyoncé’ mark . . . But that alone does not establish likelihood of confusion.”“A rational jury might or might not conclude that the pun here is sufficient to dispel any confusion among the purchasing public . . . Thus, there is a genuine dispute of material fact that requires denial of the motion for summary judgment.”

11. SECONDARY MEANING • SCHLAFLY v. Saint Louis Brewery • Case number 17-1468 (Fed. Cir. 2018)

12. The Names SCHLAFLY Beer Phyllis Schlafly

13. The Evidence • (1) Ownership of prior registration(s). • (2) Five years substantially exclusive and continuous use in commerce. • (3) Other evidence. Verified statements, depositions, or other appropriate evidence showing duration, extent, and nature of the use in commerce and advertising expenditures in connection therewith

14. Proposed New Test • The Opposers argue that SCHLAFLY is significant to the public primarily as the surname of Phyllis Schlafly. . . And urge the court to adopt a new test called a “change in significance” test, whereby a surname cannot be registered as a trademark without showing a change in significance to the public, from a surname to an identifying mark for specified goods

15. First and Fifth Amendment Arguments • Opposers did not adequately explain how registration improperly impinges on their First Amendment rights. • The Fifth Amendment claim likewise fails, as trademark registration is not a taking for government use. • Due Process rights were not violated because the trademark opposition procedure provides appropriate process of law

16. GENERICNESS DESCRIPTIVENESS • Royal Crown Company, Inc. v. The Coca Cola Company • (Fed. Cir. 2018) No. 2016 - 2375

17. THE PRODUCTS Coca Cola Zero Dr. Pepper Zero

18. The Genericness Inquiry • The Board . . . failed to examine whether ZERO identified a key aspect of the genus at issue, and it failed to examine how the relevant public understood the brand name at issue when used with the descriptive term ZERO.

19. Key Aspect of Genus • “a term can be generic for a genus of goods or services if the relevant public . . . understands the term to refer to a key aspect of that genus.” • ZERO need not be equated by the general public with the entire broad genus TCCC claims in order for the term to be generic.

20. Level of Distinctiveness • Highly Descriptive Marks Require a Greater Showing of Acquired Distinctiveness • “the applicant’s burden of showing acquired distinctiveness increases with the level of descriptiveness; a more descriptive term requires more evidence of secondary meaning.”

21. TRADEMARK RIGHTS DERIVED FROM MOTION PICTURES • Viacom International Inc. v. IJR Capital • Fifth Circuit No. 17-20334

22. VIACOM’S MARKS Sponge Bob Square Pants Krusty Krab Restaurant

23. Licensed Products

24. Infringing Restaurant Design

25. TRADEMARDKS FROM EXPRESSIVE Works - Viral Videos • . Gordon v. Drape Creative • (9th Circuit 2018) No. 16-56715

26. The Products The Video The Book

27. The Rogers Test – Defendant’s Burden • The defendant must make a threshold legal showing that its allegedly infringing use is part of an expressive work protected by the First Amendment

28. Rogers Test – Plaintiff’s Burden • when the defendant demonstrates that First Amendment interests are at stake, the plaintiff claiming infringement must show not only: • (1) that it has a valid, protectable trademark, and • (2) that the defendant’s use of the mark is likely to cause confusion, but also • (3) that the mark is either not artistically relevant to the underlying work or explicitly misleads consumers as to the source or content of the work.

29. Artistic Relevance • the “artistic relevance” inquiry does not ask only whether a mark is relevant to the rest of the work; it also asks whether the mark is relevant to the defendant’s own artistry. The use of a mark is artistically relevant if the defendant uses it for artistic reasons. Conversely, the use of a mark is not artistically relevant if the defendant uses it merely to appropriate the goodwill inhering in the mark or for no reason at all.

30. Crying Artist Not Enough • But it cannot be that defendants can simply copy a trademark into their greeting cards without adding their own artistic expression or elements and claim the same First Amendment protection as the original artist. Cf. Parks, 329 F.3d at 447 (“[T]he First Amendment cannot permit anyone who cries ‘artist’ to have carte blanche when it comes to naming and advertising his or her works, art though it may be.”).

31. IRREPARABLE HARM • Adidas America, Inc. v. Skechers USA, Inc. (9th Cir. 2018) No. 16-35204

32. The Products

33. The Products ADIDAS STAN SMITH SKECHERS CROSS COURT

34. Ruling on Onyx Shoe • The district court did not abuse its discretion in issuing the preliminary injunction as to adidas’s claim the Skechers’s Onix shoe infringed on adidas’s unregistered trade dress of its Stan Smith shoe. The panel concluded that adidas was likely to succeed on the merits of this claim because the trade dress was nonfunctional, the trade dress had acquired secondary meaning, and there was a substantial likelihood of confusion between the parties’ products. In addition, the district court did not clearly err in finding a likelihood of irreparable harm to the Stan Smith.

35. Ruling on Cross Court Shoe • The district court did not err in finding that Adidas showed a likelihood of success on its trademark infringement and trademark dilution claims. Nonetheless, the district court abused its discretion in issuing the preliminary injunction because Adidas did not show that it would be irreparably harmed from sale of the Cross Court.