Ollie on Trademarks: What Else Would You Call A Rooster-Shaped Lollipop?

I’m Ollie, animal trademark correspondent.

Applicant filed for COCK SUCKER for rooster-shaped lollipops. Clearly generic. But applicant instead received a scandalous objection, affirmed by TTAB and yesterday, by the CAFC.

I’m told that there is a human sex act for which COCK SUCKER was once a secondary connotation. I say ‘once’ because it’s my understanding that the term is rarely used literally, and its primary connotation today is merely a strong insult. As an aside, you may want to go to YouTube and search ‘Swearengen and Wu.’

The CAFC makes a point of noting that it is merely barring registration, not banning use. It simply is preventing applicant from calling upon the resources of the federal government to enforce its mark. Well, that might not be the case if some government entity were to attempt to restrict applicant’s use, and the First Amendment came into play.

From my perspective as a dog, I think that you humans give too much power to certain words by proscribing them. Banality, rather than bans, might be the more effective cure for that which is ‘scandalous.’

TTABlog analysis here.

in re fox


New PTO Examination Guide For Webpages As Specimens

“This examination guide addresses webpage specimens as displays associated with goods. Specifically, the guide describes the elements of an acceptable webpage display specimen, discusses the analytical framework for determining the acceptability of a webpage display, identifies the appropriate potential refusals, and provides examples.”

pto examination guide webpages


BLOCKBUSTER v Toys R Us re Use of BLOCKBUSTER (and Yellow and Blue) on DVD Kiosks

The term BLOCKBUSTER was coined to denote a successful movie (the ticket line for which would go around the block) (according to this site at least). BLOCKBUSTER Video now sues Toys R Us for using the term BLOCKBUSTER and a yellow and blue color scheme on its DVD kiosks. If you run across a photo of the Toys R Us kiosks, please send it along.

blockbuster v toys r us


Abraham (Paddle Tramps) v Alpha Chi Omega, 5th Cir on Unclean Hands

Justia summary:

Plaintiff, doing business as Paddle Tramps, appealed the district court’s order granting a partial preliminary injunction against his use of trademarks belonging to 32 Greek Organizations. The Greek Organizations cross-appealed. The court held that the district court did not abuse its discretion in instructing the jury that to prove unclean hands, the Greek Organizations had to show that plaintiff knowingly and intentionally infringed upon the marks with the bad faith intent to benefit from or capitalize on the Greek Organization’s goodwill by confusing or deceiving buyers; the evidence was legally sufficient to allow a jury to find for plaintiff on the unclean hands issue because it supported a showing of plaintiff’s lack of bad faith; the district court did not abuse its discretion in its instruction to the jury on the lack-of-excuse element of laches and on undue prejudice; and the jury’s finding of undue prejudice was supported by the evidence. Therefore, the district court correctly denied the Greek Organization’s motion for judgment as a matter of law. The court also held that the district court properly balanced the equities in resolving this dispute and did not abuse its discretion in fashioning injunctive relief. Accordingly, the court affirmed the judgment.


Georgia-Pacific Consumer Prods v Four-U-Packaging (6th Cir) – Issue Preclusion

Justia.com summary:

Georgia-Pacific sued Four-U-Packaging, alleging that Four-U’s supply of off-brand paper towels for use in Georgia-Pacific paper-towel dispensers infringed on its trademarks. Four-U distributes paper and janitorial supplies; it does not manufacturer commercial paper systems. Four-U argued that the claims were barred by the ruling in a similar case brought by Georgia-Pacific in Arkansas against a different distributor of generic paper towels. The district court granted summary judgment to Four-U. The Sixth Circuit affirmed. All of the elements of issue preclusion are met and applying the doctrine poses no risk of creating inconsistent rulings.


How Long Do You Think A Hand Dryer Takes To Dry Your Hands?

Dyson claimed that its hand dryer was ‘greener’ than that of plaintiff’s. Plaintiff alleged that Dyson based that claim on a study where Dyson incorrectly claimed that while the Dyson dryer dries hands in 12 seconds, plaintiff’s took 20 seconds, when in fact it also takes 12 seconds.

xcelerator v dyson


Create Your Own Pun Here Regarding Fruit and Ripeness (1-800-Flowers v Edible Arrangements)

1-800-FLOWERS adopted its “Fruit Bouquet” marks in July 2011 and was making seemingly widespread use by December 2011. It filed applications and Edible Arrangements filed notices of opposition in February 2012. It apparently DID NOT send any communication to Flowers other than the Notices. Counsel for Flowers calls counsel for Edible Arrangements March 1 2012. Flowers says that Edible said in that call that it was protesting use of the marks, in addition to merely opposing the applications. Edible disputes that characterization of the conversation. Flowers brings a declaratory judgement. Edible moves to dismiss.

Ok. First, the standard is “whether the facts alleged, under all the circumstances, show that there is a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.” MedImmune v Genentech, 549 U.S. 118, 127 (2007) (rejecting the ‘reasonable-apprehension-of-suit’ standard).

Now, its well-settled that the mere filing of a TTAB proceeding doesn’t by itself meet the standard. However, here, Flowers alleged that Edible had exceeded the language necessary in a properly-pled notice, and had included allegations that Edible would be harmed by Flowers’ use of the marks. Furthermore, Edible’s attorney had allegedly indicated in the phone call that Edible was protesting Flowers’ use.

The Court discussed prior cases where there had been a substantial controversy warranting a DJ. In two cases, defendant had sent demand letters. In the third, it had telephoned plaintiff and said “we have causes of action against you.” Here, there had been no affirmative demand on the party of Edible. The Court downplayed the phone call, in part because the conversation had been initiated by Flowers. Also, the ‘excessive language’ argument was rejected (perhaps because it would, in practice, swallow up the TTAB DJ exception).

DJ action dismissed.

1-800-Flowers.com v Edible Arrangements, 12 CV 1483 (DRH) (ARL) (EDNY Nov. 28, 2012)

800 flwoers v edible arrangement


Randazza v Cox (Bizarre)

“Lawyer Marc Randazza sues detractor in bizarre case” says it all.

randazza v cox


13 Records Or Tapes For $1



TREK bikes sues Subaru over CROSSTREK car.

trek v crosstrek