DJ Actions: When Someone Threatens You, Get It In Writing

Defendant HALO FARM, a dairy company, filed 11 oppositions in the TTAB against 11 applications of HALO-variant marks filed by Halo Fresh, an energy drink vendor. Plaintiff sought a declaration of non-infringement in civil court. Defendant moved to dismiss, arguing that its oppositions were a mere prelude to obtaining a coexistence agreement, and that plaintiff had not made out an actual case or controversy. In support of its complaint, plaintiff alleged that, in addition to filing the 11 oppositions, defendant’s president had, during a phone call with plaintiff’s CEO, implicitly made clear that she intended to pursue plaintiff in court, and in so doing, made a point of referring to a prior trademark litigation defendant had filed.

Held: First, it is well settled (t least in the Second Circuit) that TTAB oppositions, apparently even eleven of them, will not, without more, give rise to a ‘substantial controversy’ sufficient to justify standing in a DJ action. Second, the court did not credit plaintiff’s CEO’s characterizations of his phone call with defendant, noting the lack of word-for-quotes and the lack of other specifics. No case or controversy – complaint dismissed.

Practice Pointer: When someone threatens you, get it in writing.


“Changed Circumstances” Prelim Denied in WDNY: But Do People Drive 40 Minutes For Ice Cream?

A motion for preliminary injunctive relief that would otherwise be deemed to be untimely, may be viable if there have been recent material changes to the circumstances. For example, plaintiff, which had been tolerating a geographically remote third-party, may contest that party’s recent expansion into plaintiff’s geographic market.

Here, in a dispute between two upstate New York business over the mark LAKE EFFECT for ice cream, plaintiff’s motion for urgent relief was denied, as it failed to establish that ‘changed circumstances’ offset its excessive delay in protesting defendant’s somewhat lengthy use.

Defendant had been selling ice cream in a location 40 minutes from plaintiff. Plaintiff began business discussions with defendant in 2013, coinciding with defendant’s expansion of distribution into a third party shop from 2012 until 2014. Defendant opened an ice cream store under its own mark in 2017. Plaintiff resumed negotiations, then protested, and then filed for a preliminary injunction in February 2019. It argues that:

(1) defendant’s original store was too far away for it to take action;

(2) plaintiff wasn’t aware of the 2012 location (even though the location was near its own store, and plaintiff had been negotiating with defendant during this time); and

(3) plaintiff had protested promptly after learning of the 2017 location.

Held: (1) plaintiff failed to establish that defendant’s original location was in fact outside of plaintiff’s market (but do people really drive 40 minutes for ice cream?);

(2) plaintiff’s claim of ignorance of the 2012 usage was not plausible; and

(3) even if plaintiff had not been aware of the 2012 usage, it still had waited too long to protest the 2017 location.

199 Delaware Avenue v. Lake Effect Artisan Ice Cream et. al., 1:19-cv-00224 eaw (WDNY April 18, 2019)



Traveltime v Commute Time (Easy Spirit v Skechers re trade dress)


Configuration / Shape / Failure to Function

The mark consists of a two-dimensional design of a light gray, generally rectangular body with rounded ends. The top of the body features a light gray rectangle on each side. The left side of the body features a dark gray cross within a circle. The dark gray cross features a triangle on each arm of the cross and a central circle. The center of the body features two dark gray rounded rectangles. The right side of the body features two light gray rounded rectangles within a dark gray circle. One of the light gray rounded rectangles contains two light purple circles and the other light gray rounded rectangle contains two dark purple circles.


OA 2/6/19: Failure to function:
The applied-for mark, as shown on the specimen, does not function as a trademark because it is merely a drawing of the actual goods.  Additionally, as shown in the specimen, the mark appears on the packaging of the goods as a picture of the goods itself to show consumers what the goods look like.  Consumers would not likely view the mark as it appears on the box as source-identifying mark/brand name.


Fed Circ Rejects Webpage As Specimen of Trademark Use

Webpage promoting textile didn’t provide means of completing a sale and thus is not a ‘point of purchase’ display (see webpage in decision below). I agree with TTABlog – maybe the Board needs to be more flexible in the era of the Internet.

TTAblog discussion here.


Texts of Documents in MillerCoors v. Anheuser-Busch (the Super Bowl corn syrup ads)

MillerCoors alleges that Anheuser-Busch tv ads (which debuted on the Super Bowl) deceive consumers into believing that MILLER LITE or COORS LIGHT contain corn syrup (specifically, high-fructose corn syrup). Attached below are MillerCoors’ brief in support of its motion for a preliminary injunction, and the report of its expert, discussing his study that concludes that the commercials trigger negative sentiment as to MillerCoors and to corn syrup.


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RXD Media v IP Application Development – EDVA Decision Affirms TTAB Decision re IPAD Trademark


SDNY: No Trade Dress In Advertising Lay-out (Laurel Road v Commonbond)

Plaintiff Laurel Road, a bank, ran an advertising campaign. A typical ad looked like this:

A competitor, Commonbond, ran ads, one of which looked like this:

Both banks ran outdoor display ads, sometimes in similar locales, such as the suburban rail-line, MTA North.

Plaintiff brought a trade dress claim, alleging a trade dress that consists of:

  1. a color palette with a dark background;
  2. a statement in large, light-colored, sans serif font at the top of the advertisement;
  3. a “hierarchical” typography with smaller, sans serif font under the large typeface sentences;
  4. center or left-side alignment; and
  5. a colored line under a sub-set of words in the large typeface sentences.

Plaintiff brought a motion for a preliminary injunction.

Held: All of plaintiff’s claimed elements, ‘defined at a high level of generality’, can be readily found in other advertisements. In fact, Defendant showed that it had used most if not all of the claimed elements, prior to plaintiff. “Because the Trade Dress is composed exclusively of commonly used elements, which have all been used in combination previously, the Trade Dress is likely generic . . .” Alternately, the alleged Trade Dress is functional, as it consists of features useful to advertising or educating consumers about the product.

Comment: The ‘look and feel’ of an advertising campaign is potentially protectable. Philip Morris successfully asserted rights in the Marlboro man ‘motif’ of a cowboy on a horse. Harlequin established rights in the layout of the covers of its romances. However, Haagen-Dazs was unsuccessful in preventing Frusen Glade from also pretending to be Scandanavian.


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