David Lilenfeld Blog The intellectual property blog of David Lilenfeld


HAMMER for Skateboard Gear Confusingly Similar with HAMMER Jackets & Hats

The USPTO refused to register the trademark HAMMER for “Skateboarding clothing, headwear and footwear, namely, beanies; belts; footwear; hats; jackets and socks; pants; shirts; sweatshirts; [and] t-shirts” on the grounds that the trademark is likely to cause confusion under Section 2 (d) of the Trademark Act, 15 U.S.C. § 1052 (d) with the registered trademark HAMMER & Design for jackets and hats. Applicant asserted that the registrant’s goods are specific to the sport of bowling and furthermore that they are associated with the professional skateboarder, Jim Greco.

The Board conducted a likelihood of confusion analysis focusing on the similarities between the trademarks and the relatedness of the goods. The test used in In re E.I. du Pont de Nemours & C0., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) evaluates not whether the trademarks can be distinguished in a side-by-side comparison, but rather whether as a whole their commercial impressions are so similar that confusion is likely. The Board found the trademarks to be quite similar visually because they share a similar commercial impression and are phonetically identical.

Then the Board determined whether the degree of relatedness rises to the level that would mistakenly lead consumers to believe the goods come from the same source. The applicant’s goods, which include jackets and hats, overlap with the goods already registered; and even narrowing the applicant’s goods to skateboarding clothes they still fall within the scope of the registered goods. Applicant argued that its focus on skateboarding differentiates its goods from those of the registration, which are bowling clothes. The Board rejected this argument because there are no limitations in the registration so the goods are presumed to travel in all normal channels of trade to all customers. Accordingly, the Board found the goods and trade channels overlap, which lead to a likelihood of confusion.

Finally, applicant asserted the clothing industry has many HAMMER trademarks. Therefore, applicant’s trademark should be permitted to join the industry. Applicant cited five third-party registrations but nevertheless the Board found these five registered trademarks contain other matter that distinguishes them from the cited trademark. Applicant’s trademark does not include any of this other matter. The Board found this du Pont factor to be neutral because these five third-party registrations do not establish confusion among consumers.

In light of the similarity of the trademarks and the overlap and relatedness of the goods and overlapping trade channels, the Board finds in favor of likelihood of confusion. Therefore, the Board affirmed the refusal to register applicant’s trademark under Section 2 (d).



Trademark Office: PRINCESS KATE and ROYAL KATE Unregistrable

Nieves & Nieves LLC, Applicant, filed an intent-to-use application to register the trademarks PRINCESS KATE and ROYAL KATE. The Trademark Trial and Appeal Board refused to register the trademarks PRINCESS KATE and ROYAL KATE for clothing, jewelry, handbags, and bedding on the grounds that the trademarks falsely suggest a connection with the Duchess of Cambridge, Kate Middleton. The Trademark Trial and Appeal Board found the trademarks to violate Section 2(a) and furthermore violated Section 2(c) because the trademarks include a name of a living person, Kate Middleton, without her consent.

Kate Middleton

Photo courtesy of Ricky Wilson

The Examining Attorney submitted evidence from foreign news sources, which had probative value because this case concerns perception of the United States public regarding the identity of a celebrity.

The Trademark Trial and Appeal Board determined the trademarks PRINCESS KATE and ROYAL KATE falsely suggested a connection between the Applicant and Kate Middleton by applying a four-part test:

(1) whether the trademarks are the same as or a close approximation of Kate Middleton's previously used name or identity;

(2) whether the trademarks would be recognized as such by purchasers, in that it points uniquely and unmistakably to Kate Middleton;

(3) whether she is not connected with the activities performed by the applicant under the trademarks; and

(4) whether Kate Middleton's name is of sufficient fame or reputation that when the trademarks are used with applicant’s goods, a connection with her would be presumed.

The Applicant argued that the trademarks PRINCESS KATE and ROYAL KATE are not similar to Kate Middleton’s name because she is a duchess and not a princess. However, a term can be considered the identity of a person even if her name is not used.

Various media sources have referred to Kate Middleton as “Princess Kate” and “Royal Kate” thus making the trademarks close approximations of the identity of Kate Middleton. The trademarks PRINCESS KATE and ROYAL KATE unmistakably refer to Kate Middleton because she was known as a fashion trendsetter.

The Trademark Trial and Appeal Board found that both the trademarks falsely suggested a connection with Kate Middleton and affirmed the Section 2 (a) refusal. The Board refused registration of the trademarks on the grounds that Kate Middleton, as a member of the British Royal Family, was the subject of public interest. Her identity was of sufficient fame that when the trademarks are used it is likely that people will connect them to her.

Section 2(c) bars registration of a trademark that has a name identifying a living person except by his or her written consent. Consent is required only if the person named in the trademark will be associated with the trademark either because:  (1) the person is so well known that the public would reasonably assume a connection between the person and the goods or services; or (2) the individual is publicly connected with the business in which the mark is used. It is important to note, however, that when the person is famous it is not necessary to show a connection between the goods and the person.

The Trademark Trial and Appeal Board held that the trademarks PRINCESS KATE and ROYAL KATE consisted of the name of a living person and because Kate Middleton has not consented to the use and registration of the names the TTAB refused to register the trademarks.


Oscar Owner Alleges Trademark Infringement Over Gift Bags

The Academy of Motion Picture Arts and Sciences filed a trademark infringement lawsuit against the marketing firm who created the $200,000 gift bag for 2016 Oscar nominees.

Nominees would be given luxury goods at the Oscar ceremony, along with some provocative offerings like Vampire Breast Lifts, marijuana tobacco vaporizers, condoms and laser skin-tightening procedures. The Academy’s lawyers wrote a letter to the marketing firm, Distinctive Assets, after becoming concerned about the confusion that the gift bags have nothing to do with the Academy. 

The Academy is a non-profit organization dedicated to encouraging excellence in motion picture filmmaking. Every year the Academy presents the Academy Awards of Merit known as the Oscars or Academy Awards to recognize outstanding achievements in the film industry. The Academy owns trademark registration for OSCAR, OSCARS, ACADEMY AWARD, and ACADEMY AWARDS and ensures those trademarks are only used in connection with the award ceremony.

Distinctive Assets is a specialty marketing business that focuses in celebrity placement by promoting products of third parties through gift bags to celebrities who attend or are nominated for award shows. The Academy has no connection with Distinctive Assets, does not endorse its products, and has not granted Distinctive Assets permission to use the Academy’s trademarks to raise the profile of its gift bags.

Nevertheless, Distinctive Assets has referred to its gift bags in tweets as “Everyone Wins At The Oscars®! Nominee Gift Bags,” and “Everyone Wins Nominee Gift Bags in Honor of the Oscars ®.” A variety of news outlets have discussed the Oscars in connection with Distinctive Assets gift bags. For example, Glamour magazine said “the 2016 Oscars might be the Academy of Motion Picture Arts and Sciences’ swankiest ceremony to date if this year’s gift bag has anything to say about it.” These mistaken impressions are passed onto the public rapidly expanding the confusion Distinctive Assets has created among Oscar goers. Distinctive Assets’ confusing promotion of the infringing gift bags unmistakably infringes upon the Academy’s trademarks and is likely to dilute the Academy’s trademarks.

The Academy asserts it is entitled to three times the profits made by Distinctive Assets from the trademarks used on the gift bags. Also, the Academy is demanding a permanent injunction against Distinctive Assets “in connection with the sale, offering for sale, distribution or advertising of goods or services, or in any manner likely to cause confusion or mistake or to deceive the trade or public as to the source or origin of defendants’ products.”


Trademark Office: FAVAZZA’S Is Confusingly Similar to LAVAZZA

Favazza’s, Inc. seeks registration on the trademark FAVAZZA’S for bar, catering, and restaurant services. Luigi Lavazza S.p.A. opposed registration of Favazza’s trademark on the ground of likelihood of confusion with the registered trademark LAVAZZA for coffee shops, bars, restaurants, cafeterias, pubs and catering services. 

The main argument made by the applicant is that because LAVAZZA is a family name and registered under Section 2 (f) it is “not entitled to the broad scope of protection reserved for arbitrary and fanciful marks.” Just because LAVAZZA could be a surname does not automatically weaken or narrow the scope of protection for opposer’s LAVAZZA trademark. The Trademark Trial Appeal Board recognized that opposer’s trademark was registered under Section 2 (f) but noted that the trademark is still “entitled to the same trademark protection as any other validly registered trademark.”

Applicant agreed that the services provided by the trademark FAVAZZA’S and the trademark LAVAZZA are identical and are in the same channels of trade to the same classes of consumers who exercise merely ordinary care in their buying decisions. These factors weigh heavily in favor of a finding of likelihood of confusion.

The factors set out in In re E. I. du Pont, 177 USPQ at 567 provide a framework for analyzing likelihood of confusion. The first du Pont factor is similarity or dissimilarity of the trademarks. Applicant argued that customers would know the trademark as Italian surnames that can easily be differentiated. The Trademark Trial Appeal Board, however, disagreed and held the trademarks to be “visually similar because they both contain AVAZZA and there is little, if any, trademark significance in the addition of the apostrophe and letter “S” in applicant’s trademark.” When the trademarks are compared as a whole, they are very similar in both appearance and sound. The slight differences are not enough to distinguish the trademarks from one another.

Regarding connotation, it is unclear whether customers would give meaning to the trademarks or view the trademarks as invented Italian words or surnames. The Trademark Trial Appeal Board found it unlikely that customers would regard one trademark as a surname and the other trademark as an invented Italian word. Hence, the Trademark Trial Appeal Board found the trademarks similar in sound, appearance, connotation and commercial impression. 

Opposer argued that its LAVAZZA trademark is famous but failed to provide sufficient evidence to support this claim.  It failed to prove what portion of its sales figures were attributable to restaurant services or what portion of its sales figures related to sales under the trademark LAVAZZA alone.

The last few du Pont factors are the nature and extent of any actual confusion and the length of time during and conditions under which there has been concurrent use without evidence of actual confusion. Applicant noted a lack of actual confusion of the trademarks despite coexisting with each other for between 30 and 35 years. However, because of the lack of evidence supporting opposer’s use of the LAVAZZA trademark, the Trademark Trial Appeal Board was unable to decipher whether there had been a meaningful opportunity for actual confusion.

In light of the relevant du Pont factors, the Trademark Trial Appeal Board found confusion likely and sustained the opposition to the trademark FAVAZZA’S.


TENNIS INDUSTRY ASSOCIATION is Generic and Therefore Not a Trademark, Says TTAB

Tennis Industry Association applied to register TENNIS INDUSTRY ASSOCIATION as a trademark for informational services related to tennis. On administrative appeal, the applicant argued the Trademark Office failed to provide clear and convincing evidence needed to support its genericness refusal.

The Trademark Trial and Appeal Board disagreed with the applicant, expressing concern consumers would perceive the trademark as a generic name for tennis services.  Trademark Trial and Appeal Board also found a lack of support for applicant’s assertion that Tennis Industry Association had acquired distinctiveness.

A trademark is generic if it merely refers to a category of goods or services in which it is used. Initially, the Trademark Trial and Appeal Board found the genus of services to be adequately defined by applicant’s explanation of services: “association services, namely, promoting the interests of tennis facilities, tennis manufacturers, tennis retailers and tennis court contractors; providing market research services to track the economic vitality of the tennis industry.”

Then the TTAB looked to determine whether the phrase TENNIS INDUSTRY ASSOCIATION is understood by relevant consumers to refer to that genus of services. The phrase should be examined under the American Fertility approach. This approach deems the dictionary definition of words not sufficient to support a finding of genericness. Rather, the phrase as a whole must be used to refer to the genus of services.

The examining attorney found five examples from the Lexis/Nexis database and Internet websites, using the term "tennis industry association" in lower case letters in a way that did not appear to indicate source in any particular entity. The Trademark Trial and Appeal Board found that the PTO failed to meet its burden of establishing by clear evidence that the phrase TENNIS INDUSTRY ASSOCIATION as a whole is generic.

Applicant purported that TENNIS INDUSTRY ASSOCIATION is not generic but rather has acquired distinctiveness under Section 2 (f). The Trademark Trial and Appeal Board recognized that a highly descriptive trademark is less likely to be perceived as a trademark and thus will require more substantial evidence to establish its distinctiveness. Applicant relied upon use of the trademark TENNIS INDUSTRY ASSOCIATION since 1974, a 2009 press release, a 2008 annual report and 499 Westlaw articles. The Trademark Trial and Appeal Board found the Westlaw articles not to be compelling for a variety of reasons. The record contained little direct evidence that relevant consumers view the phrase TENNIS INDUSTRY ASSOCIATION as a source indicator.

The Trademark Trial and Appeal Board reversed the refusal under Section 2 (e) (1) on the ground that the trademark is so highly descriptive as to be generic. However, the PTO affirmed the refusal under Section 2 (e) (1) because the trademark is merely descriptive since the applicant failed to show the trademark has acquired distinctiveness.


Kendall Jenner Sues for Unauthorized Use of Her Likeness

Without her permission, skincare product company Cutera appears to have used the likeness of well-known television personality and fashion model Kendall Jenner for commercial gain. There is not enough ointment in the world to get Cutera out of this one. Jenner filed a lawsuit in the Central District of California asserts claims for infringement of the KENDALL JENNER trademark, False Association or End

Kendall Jenner

Kendall Jenner's image used by Cutera

orsement under the Lanham Act and violation of Right of Publicity under California law. California has some of the most beneficial laws for celebrities to employ to protect their image and likeness. Looks like Cutera has an uphill battle here.


Burberry v. J.C. Penney — Complaint in the Southern District of New York

Here is the full Complaint Burberry filed against J.C. Penney on February 9, 2016 in the Southern District of New York alleging trademark infringement, trademark dilution, unfair competition and deceptive trade practices under federal and New York law. Burberry seeks money damages, injunctive relief and attorney fees.


Luxury Goods Maker Burberry Sues J.C. Penney for Trademark Infringement

Luxury goods maker Burberry has sued value-retailer J.C. Penney for trademark infringement and trademark dilution in the Southern District of New York. The suit alleges J.C. Penney is selling scarves and jackets which “exactly copy” the well-known “Burberry Check," for which Burberry has a number of federal trademark registrations.

In addition to trademark infringement and dilution claims, the Complaint alleges unfair competition and deceptive trade practices under federal and New York law and seeks damages, injunctive relief and attorney fees.


Lilenfeld PCLilenfeld PC Burberry Check

J.C. Penney accused scarfLilenfeld PC






Nike Sues Skechers for Trademark Infringement

Nike is suing Skechers for patent infringement arising under Patent Laws of the United States, 35 U.S.C. § 101 et seq because Skechers copied sneaker designs from Nike. In the lawsuit, Nike claims Skechers is selling sneakers that infringe on eight Nike design patents issued to the company. The Burst, Flex Appeal and Flex Advantage are the alleged patented designs owned by Nike that Skechers used without Nike’s permission. Without Nike’s authorization, Skechers made, used, sold, and imported sneakers having designs that violate the Nike patents. This lawsuit precipitates less than four months after Adidas sued Skechers for trademark infringement.

Nike's design

Nike's design

Skecher's allegedly trademark infringing shoe

Skecher's allegedly infringing version

On January 4th in Oregon’s U.S. District Court, Nike claimed Skechers used designs that were too similar to Nike’s shoes for the Burst, Women’s Flex Appeal, Men’s Flex Advantage, Girl’s Skech Appeal and Boy’s Flex Advantage Shoes. Nike owns the exclusive rights in the ornamental designs of the named sneakers. Thus, it has the right to sue and recover for past, present and future infringement of each of the Nike patented sneaker designs from the date each patent duly and legally was issued to Nike. The company is asking for a permanent injunction to prevent Skechers from further manufacturing shoes with the infringing designs. Nike is also seeking damages from the sale of Skechers’ shoes. Nike has and will continue to suffer irreparable harm by Skechers’ infringement of the Nike patents.

The spokeswoman for Skechers, Jennifer Gray, has said that no court date has been set for this case. Skechers has declined to comment further on the matter. It is worthy to note, this is the second lawsuit Nike has filed against Skechers. In 2014, the Nike-owned brand, Converse said its Chuck Taylor design was infringed upon by Skechers. In 2015, the Skechers stock was up 150% surpassing top brands such as Nike and Adidas. Skechers argues it created its own niche in the sneaker industry. Instead of targeting professional athletes like LeBron James or James Harden, Skechers sought to target pop singers like Demi Lovato or Meghan Trainor as endorsers. Furthermore, the Skechers sneakers focused on style and comfort as opposed to athletic performance, which was Nike and Adidas goal.

Even though the brands used different model names, the overall appearance of the designs of the Nike patents and the designs of the Skecher’s infringing shoes are substantially similar. It would appear that these designs are likely to cause confusion to ordinary consumers.


Trademark fight: NC State and KeukaCollege Battle Over WOLFPACK

Was @PackAthletics right to force @KeukaCollege to drop WOLFPACK as its nickname/trademark?

According to its website, North Carolina State University adopted the WOLFPACK nickname for their sports teams in 1921.  Fast forward to 2016 and apparently North Carolina State University thought it was time to act.  NC State “lawyered up” and compelled the small, upstate New York liberal arts college to drop WOLFPACK. Feeling cornered by the Big Bad Wolf, the college acquiesced and is now known as the Wolves. The colleges will not change its logo, which depicts a threatening canis lupus.

I used my Twitter account (David Lilenfeld Twitter post) to take an informal poll. An overwhelmingly 87 people voted that NC State overstepped, while only 12 people thought NC State did the right thing. My next idea is for the two to settle this on the basketball court – winner gets the name, loser rebrands. Game on!

David Lilenfeld

Twitter Poll Results -- Overwhelming

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