The Board has affirmed a Section 2(d) refusal to register a mark for a collection of food products on the grounds of likely confusion with another registered mark for hotel, restaurant and dining services. Click here to read the full story.
Registrant of a trademark for hotel services registered its marks based on "use in commerce," but the only use of the mark that was made at the time of filing was that the registrant had hired website and marketing consultants, made presentations at hospitality trade shows, and negotiated with a hotel company regarding possible collaboration … these activities may be use of the mark in commerce, but they ARE NOT use of the mark in commerce for hotel services. So the Board cancelled the registration on the basis of a fraudulent use in commerce claim. For more, click here.
Comment: A trademark registration can be found to be invalid if it was based on a false (or even mistaken) claimed date of first use, so it is critical that trademark applicants give due attention to the details associated with the registration of their trademarks. This vulnerability to cancellation will never disappear, and it may only be when a trademark owner tries to enforce its rights that a problem is discovered … which is obviously not a good time to find out your trademark registration is invalid.
The dripping red wax seal on a bottle of Maker’s Mark bourbon has been deemed a protectable trademark: www.nytimes.com/2010/04/03/business/03bourbon.html
Taylor's Refresher, the well-known burger joint of St. Helena, CA, is now Gott's Roadside Tray Gourmet—a very interesting result to a complicated trademark dispute with the original owners of the burger stand. (www.sfgate.com/cgi-bin/article.cgi?f=/c/a/2010/03/27/BA1M1CLPV5.DTL)
After operating and holding a trademark registration since the 1970's for Tavern on the Green (an iconic New York Central Park restaurant), the former operator of the restaurant is out, a new operator is in, and the city, as it turns out, owns the name. (www.observer.com/2010/real-estate/city-wins-battle-leroys-tavern-green)
Both of these cases point out that when it comes to trademark ownership, history and who has ultimate control of the services are of paramount importance.
Even Gallo can't get the U.S. Patent and Trademark Office to change its mind about whether beer and wine are related goods. The relatedness of beer and wine (and spirits too) is a long standing policy of the USPTO (and some federal courts) and despite the efforts of "big gun" trademark owners like Gallo, the policy still stands, see: http://thettablog.blogspot.com/2009/09/finding-wine-and-beer-related-ttab.html
What this means is that you can't register a mark for wine, if it is already registered for beer. This is a major headache for some wine, beer and spirits manufacturers that know the products are marketed very differently, and take the position that there would be no likelihood of consumer confusion even if the names are identical. That said, this continued policy may be a boon for trademark registrants because it provides strong protection across the alcoholic beverage market space. So, for now, the moral of the story is, if you have a mark that is clear of conflicts across the alcoholic beverage market space, register the mark to gain broad protection.
Changes at the US Patent and Trademark Office regarding how they handle place-name marks acknowledge that consumers in restaurants are not going to be deceived about the source of their food. This should make it easier to register place-name restaurant marks such as "Paris Cafe" located in places other than Paris.
Examination Guide NO. 2-09 Examination Procedures for §2(a) and §2(e)(3) Deceptiveness Refusals for Geographic Marks (11 May 2009)
The elements of a §2(e)(3) refusal apply to service marks as well as marks involving goods.13 However, application of the services-place association prong is more difficult to satisfy in that the mere showing that the services at issue often emanate from the place named in the mark is not sufficient.14 This is especially true for restaurant services because, having chosen a particular restaurant, a customer is aware of the geographic location of the service and is less likely to associate the services with the place named in the mark (e.g., a customer is less likely to identify restaurant services with a region of Paris when sitting in a restaurant in New York). 15
Trademark Licensors Beware: Is Your License or Distribution Agreement Really a Franchise?
In Gentis v. Safeguard Business Systems, the defendant retained commissioned sales agents to solicit orders, follow leads, and provide customer service. The agents did more than just take orders, but lacked authority to enter into binding sales contracts with customers, never took title any goods, never bought inventory, seldom made deliveries, and did not handle billing or collection. When the relationship between the agents and Safeguard soured, the agents sued Safeguard for violating California’s Franchise Investment Act, the first franchise sales law in the country and the model for both the federal and state franchise sales laws that followed. In one of the few California appellate court decisions interpreting the statute, to Safeguard’s surprise, the court found that the relationship between the sales agents and Safeguard to be a franchise. (Full article)
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