Parties at odds over the use of the same or similar trademarks sometimes enter into Settlement or Consent Agreements with each other, rather than litigate in court or the like. One recognized case that focused on the validity and enforceability of such agreements was T&T Manufacturing Co. v. A.T. Cross Co., U.S.C.A., 1st Cir., 587 F.2d 533 (1978).
In reaching its decision, the Court "evaluated the competing interests of contract enforcement with any harm the public might experience due to confusion arising between the products..." As a result of this analysis, the Court ruled that any harm to the public was not significant, and, therefore, the "policy of holding a party to its contractual obligations become dominant.
---
Comment: Litigation is not the only tool or remedy when there is an allegation of confusion or deception. Trademark owners should also evaluate whether there is a contractual resolution available.
x-ref:
The TTABlog® by John L. Welch
Precedential No. 50: TTAB Says Consent and License from Registrant Require Reversal of 2(d) Refusal of WACKER NEUSON over NEUSON for Machinery
http://thettablog.blogspot.com/2011/01/precedential-no-50-ttab-says-consent.html
--- --- ---
Respectfully submitted,
William E. Maguire
LAW OFFICES OF WILLIAM E. MAGUIRE
www.TrademarkEsq.com
*** *** ***
Thursday, July 26, 2012
Wednesday, July 25, 2012
"Lessons In Trademarks: Loss of Rights"
Shredded Wheat: Protectable Trademark or Generic Term?
This question was resolved by the U.S. Supreme Court... in 1938 ! (Kellogg Co. v. National Biscuit Co., U.S. Supreme Court, 305 U.S. 111 (1938)) (hereinafter, Kellogg). In Kellogg, the plaintiff National Biscuit Co. (NBC) claimed the exclusive right to the trade name "Shredded Wheat" for pillow shaped shredded wheat biscuits.
The Supremes renounced this claim very clearly, however, when they stated: "The plaintiff has no exclusive right to the use of the term "Shredded Wheat" as a trade name. For that is the generic term of the article, which describes it with a fair degree of accuracy; and is the term by which the biscuit in pillow-shaped form is generally known by the public. Since the term is generic, the original maker of the product acquired no exclusive right to use it. As Kellogg Company had the right to make the article, it had, also, the right to use the term by which the public knows it."
In their notes on generic mark, the authors of the legal treatise, Trademarks, by Pattishall and Hilliard (Copyr. 1987), on page 115 state: "(1) A term is generic when its principal significance to the public is to indicate the product or service itself, rather than its source."
Comment: A brand name and trademark, while achieving name recognition and commercial success, must work diligently not to become the generic term for its product or service. For this reason, organizations such as the International Trademark Association (INTA), as well as many brand owners, are careful to use their marks as adjectives, rather than as nouns or verbs. There are additional measures that a trademark owner can take to avoid the generic death sentence, including not limited to, using the ® registration symbol and distinctively highlighting the trademark using CAPITAL LETTERS or in Bold, etc.
Contemporary examples of competitive "Shredded Wheat" breakfast cereals:
(Source: Google image search)
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For more information and articles about trademarks, the reader is invited to visit our website at:
http://www.TrademarkEsq.com
Respectfully submitted,
William E. Maguire, Esq.
Los Angeles, Calif.
www.TrademarkEsq.com
 |
| Source: Kellogg v. National Biscuit Co.; and http://museumofintellectualproperty.org/g/all.html |
This question was resolved by the U.S. Supreme Court... in 1938 ! (Kellogg Co. v. National Biscuit Co., U.S. Supreme Court, 305 U.S. 111 (1938)) (hereinafter, Kellogg). In Kellogg, the plaintiff National Biscuit Co. (NBC) claimed the exclusive right to the trade name "Shredded Wheat" for pillow shaped shredded wheat biscuits.
The Supremes renounced this claim very clearly, however, when they stated: "The plaintiff has no exclusive right to the use of the term "Shredded Wheat" as a trade name. For that is the generic term of the article, which describes it with a fair degree of accuracy; and is the term by which the biscuit in pillow-shaped form is generally known by the public. Since the term is generic, the original maker of the product acquired no exclusive right to use it. As Kellogg Company had the right to make the article, it had, also, the right to use the term by which the public knows it."
In their notes on generic mark, the authors of the legal treatise, Trademarks, by Pattishall and Hilliard (Copyr. 1987), on page 115 state: "(1) A term is generic when its principal significance to the public is to indicate the product or service itself, rather than its source."
Comment: A brand name and trademark, while achieving name recognition and commercial success, must work diligently not to become the generic term for its product or service. For this reason, organizations such as the International Trademark Association (INTA), as well as many brand owners, are careful to use their marks as adjectives, rather than as nouns or verbs. There are additional measures that a trademark owner can take to avoid the generic death sentence, including not limited to, using the ® registration symbol and distinctively highlighting the trademark using CAPITAL LETTERS or in Bold, etc.
Contemporary examples of competitive "Shredded Wheat" breakfast cereals:
(Source: Google image search)
---
For more information and articles about trademarks, the reader is invited to visit our website at:
http://www.TrademarkEsq.com
Respectfully submitted,
William E. Maguire, Esq.
Los Angeles, Calif.
www.TrademarkEsq.com
Tuesday, July 24, 2012
Lessons In Trademarks: The Sunkist Case
Prelude: In the Fall of 1990, while a student in the LL.M, Intellectual Property program at The John Marshall Law School in Chicago, Illinois, I was enrolled in Trademark 101 taught by Adjunct Professors (and Attorneys) Ray Geraldson and Mark Partridge. Our class text book was "Trademarks", by Beverly W. Pattishall and David C. Hilliard (Copyr. 1987). One of my favorite cases and the subject of this blog post was:
California Fruit Growers Exchange v. Sunkist Baking Co., (U.S.C.A., 7th Cir. 166 F. 2d 971 (1947)).
Principles/Findings: The Plaintiff Calif. Fruit Growers Exchange ("Exchange") marketed and sold citrus fruits throughout the U.S. and overseas under the trademark, SUNKIST. Joining in as a co-plaintiff was a N.Y. corporation that sold canned and dried fruits, vegetables, butter and other goods under the trademark, SUN-KIST. A co-existence agreement was executed before these proceedings by these two plaintiff's.
The Defendant, Sunkist Baking Co., "engaged in baking and selling bread and buns." The District Court found there to be a likelihood of confusion and found for the plaintiff's. On appeal, however, the 7th Circuit reversed and found there to be no likelihood of confusion between the plaintiffs' fruits and vegetables and the defendant's bread.
Comments: The result would likely be very different today given the current state of dilution law and the recent enactment of the Trademark Dilution Revision Act of 2006. At the time of this case, however, the Appellate Court was not enamored with the contractual "hocus-pocus" of the plaintiff's and what the court understood to be an inconsistent stance, e.g., how can the plaintiff's claim there is no confusion between themselves when they sell the same goods and still claim confusion with the defendant who does not sell the same goods. Another topic for another day will cover co-existence agreements which are still employed today by parties seeking resolution vs. litigation.
---
x-ref:
• Trademark Dilution Revision Act; Official Summary
http://www.govtrack.us/congress/bills/109/hr683
-----
Respectfully submitted,
William E. Maguire
www.TrademarkEsq.com
*** *** ***
California Fruit Growers Exchange v. Sunkist Baking Co., (U.S.C.A., 7th Cir. 166 F. 2d 971 (1947)).
Principles/Findings: The Plaintiff Calif. Fruit Growers Exchange ("Exchange") marketed and sold citrus fruits throughout the U.S. and overseas under the trademark, SUNKIST. Joining in as a co-plaintiff was a N.Y. corporation that sold canned and dried fruits, vegetables, butter and other goods under the trademark, SUN-KIST. A co-existence agreement was executed before these proceedings by these two plaintiff's.
The Defendant, Sunkist Baking Co., "engaged in baking and selling bread and buns." The District Court found there to be a likelihood of confusion and found for the plaintiff's. On appeal, however, the 7th Circuit reversed and found there to be no likelihood of confusion between the plaintiffs' fruits and vegetables and the defendant's bread.
Comments: The result would likely be very different today given the current state of dilution law and the recent enactment of the Trademark Dilution Revision Act of 2006. At the time of this case, however, the Appellate Court was not enamored with the contractual "hocus-pocus" of the plaintiff's and what the court understood to be an inconsistent stance, e.g., how can the plaintiff's claim there is no confusion between themselves when they sell the same goods and still claim confusion with the defendant who does not sell the same goods. Another topic for another day will cover co-existence agreements which are still employed today by parties seeking resolution vs. litigation.
---
x-ref:
• Trademark Dilution Revision Act; Official Summary
http://www.govtrack.us/congress/bills/109/hr683
• Trademark Dilution Revision Act of 2006 Goes to President for Signature
http://thettablog.blogspot.com/2006/09/trademark-dilution-revision-act-of.html-----
Respectfully submitted,
William E. Maguire
www.TrademarkEsq.com
*** *** ***
Tuesday, July 03, 2012
Chocolate Wars: Hershey v. Trader Joe's
Configure this !?...
Hershey recently won a reversal of a USPTO refusal of its product configuration trademark application for it chocolate bar configuration (see below).
x-ref: In re Hershey Chocolate and Confectionary Corporation, Serial No. 77809223 (June 28, 2012) [not precedential].
This reversal was comprehensively discussed by our colleague, John L. Welch, on his TTABlog today, at the following link:
http://thettablog.blogspot.com/2012/07/ttab-reverses-refusal-to-register.html
Have a look at the Trader Joe's Chocolate bar configuration, however, and you will see it has the same rectangular configuration, including the same 3 x 4 design (see below).
Hershey recently won a reversal of a USPTO refusal of its product configuration trademark application for it chocolate bar configuration (see below).
x-ref: In re Hershey Chocolate and Confectionary Corporation, Serial No. 77809223 (June 28, 2012) [not precedential].
This reversal was comprehensively discussed by our colleague, John L. Welch, on his TTABlog today, at the following link:
http://thettablog.blogspot.com/2012/07/ttab-reverses-refusal-to-register.html
Have a look at the Trader Joe's Chocolate bar configuration, however, and you will see it has the same rectangular configuration, including the same 3 x 4 design (see below).
You gotta wonder if the USPTO did any research in the marketplace since there was no evidence offered as to third party use of this same configuration. Don't they shop at Trader Joe's?!... :-)
On this point, the TTAB stated, in part: "Furthermore, while the record shows an extensive variety of shapes and decorative designs for candy bars, there is no evidence that this particular combination of recessed rectangles with a raised border is used by other candy makers or that the overall design is in any way functional." (emphasis added). We do not imagine that Hershey is unaware of the Trader Joe's configuration since it is their business to know their competition. Yet, there is no evidence of this knowledge.
Time will tell if these two companies duke it out or let sleeping dogs lie...
William E. Maguire
LAW OFFICES OF WILLIAM E. MAGUIRE
Los Angeles, Calif.
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