Mini Dawn Donut Doctrine?

mini donut

DONUT and DOUGHNUT are not homonyms, homophones, homographs or heteronyms. They are alternate spellings.

Plaintiff has been using MINI DONUT FACTORY for a chain of stores in Illinois since 2008. It now has a federal registration. Defendant opened a donut store in Tampa under the name MINI DOUGHNUT FACTORY. Defendant, apparently a domainer turned donut purveyor, obtained the domain name MiniDonutFactory.com which it redirects to MiniDoughnut Factory.com. Plaintiff uses MiniDonutFactories.com.


Champion Goes After Gangstas

champion chapo

champiuon gansta


Ninth Circuit: Eat Right Foods v Whole Foods: To What Extent Can Acquiescence Defense Be Evaluated At Summary Judgment

Justia summary:

The Ninth Circuit vacated the district court’s grant of summary judgment for Whole Foods in a trademark infringement action. The panel held that the district court impermissibly resolved disputed questions of material fact in favor of the moving party regarding Whole Foods’ affirmative defenses of laches and acquiescence. Therefore, the panel vacated the district court’s reasonableness finding and remanded for further proceedings. On remand, the district court should reevaluate the evidence in the light most favorable to the non-moving party—i.e., as if ERF delayed filing suit because it was trying to settle its claims against Whole Foods. If the district court determined on remand that ERF delayed unreasonably in filing suit and this delay prejudiced Whole Foods, it must consider the extent and reasonableness of Whole Foods’ reliance on ERF’s affirmative representations before it reaches a finding on acquiescence.


The Oldest Registered Trademarks In The World

Polish attorney Mikolaj Lech, inspired by our article from 2002 on the subject, has sent us his video and links to his blog post on the oldest trademarks in the world.

He concludes that PILSNER BIER is the oldest registration in the world, dating from 1859!:

pilsner bier label

Thank you Mikolaj!


SDNY Asked To Explore Functionality of Sex Toys In Trade Dress Case

cotr plug

Plaintiff has sold the b-Vibe Rimming Plug device since the summer of 2017. It alleges that its plug, the remote control, the charger and the case are all “uniquely designed” and it claims trade dress therein (See exhibit A below). Defendant has offered for sale the XR Rimmer since January 8. Plaintiff alleges that defendant’s products infringes its trade dress in the plug, charger, remote and case (See exhibit B). Plaintiff has field for design patent protection as well.

Two points. Plaintiff refers to a beaded pattern in para. 29, which pattern seems to be copied by defendant, but not displayed in Exhibit 1.

Second – para. 38 reads “Alternative constructions perform the same adult toy product function as COTR’s trade dress. How would you edit that sentence?

Wikipedia on sex toys.


MJX Asset Manangement v MJX for Exchange Traded Cannabis Stock Fund


mjx asset managnement


Plaintiff MJX Asset Management manages ‘structured investment funds.’ Defendant ETFMG created an exchanged traded fund (ETF) specializing in stocks in the cannabis business, sold under the ticker symbol MJX and promoted at www.mjxetf.com.


Graspability of Knobs Considered In Sixth Circuit Trade Dress (Leapers v Sun Optics)

Leapers manufactures adjustable rifle scopes. A terminated manufacturing partner continued to make scopes similar in appearance to those of Leapers. Leapers sued, alleging infringement of its trade dress in the knurling (or texturing) of the knobs in its scopes. The exhibit to its complaint showing many side-by-sides is reproduced below. This is one of its scopes:

leapers scope

This is one of defendant’s scopes:

sun opitcs scope

Leapers has filed for a federal trademark registration. This is the drawing of the applied-for mark:

lepaers tm drawing

The description of the mark in the application is:

The mark consists of a three-dimensional design configuration that is applied to all relevant cylindrical adjustment surfaces (i.e. the knobs and bells) of an archery or rifle scope or sight. The design is marked by scalloped knurling that is: (1) uniform and proportional in the width of the elevations and depressions on the cylindrical adjustments; and (2) straight, unbroken and running parallel to the cylindrical adjustment surfaces. Only the scalloped design on the cylindrical adjustment surfaces, depicted in solid lines, constitutes the mark; the rest of the product design depicted in broken lines is not part of the mark and serves only to show the position of the mark on the scope or sight.

The application is suspended during the pendency of this suit.

The District Court dismissed at summary judgment, holding that plaintiff would not be able to show that the knurling design was non-functional.

The Sixth Circuit has reversed. A jury could reasonably conclude that the knurling is purely ornamental because plaintiff had introduced testimonies that plaintiff was unaware of any functional benefit to this particular knurling design, and had chosen this pattern for ornamental reasons.

Plaintiff had also shown that its competitors apply knurling that was more effective at making the knobs’ adjustment surfaces more graspable (page 9).

The Sixth Circuit held that the District Court’s discussion of knurling was over-broad, and had erroneously held that any pattern of knurling that provides graspability, must be functional. Pages 11-12

Discovery is resumed, and Plaintiff will now have to show non-functionality, secondary meaning, and the likelihood of confusion.


Delta Sues CheapFlightsFares.com for ‘Impersonation’

Delta sues discount flight aggregator CheapFlightsFares.com, alleging that defendant impersonates Delta (see para 44 of complaint).


Text of LegalForce v LegalZoom Complaint re Unauthorized Practice of Law re Trademark Filing / Doc Prep Services


legalzoom trademarks

LegalForce RAPC is a law firm that is a large filer of trademark applications. It is wholly owned by Raj Abhyanker. LegalForce Inc. is a corporation that offers the TRADEMARKIA search service. LegalZoom offers automated legal document preparation services, including trademark application and preparation and filing. It provides access to an ‘independent network of attorneys’ but it is not a law firm. What LegalZoom is, precisely, is part of the issue in this lawsuit.

LegalForce has sued Legalzoom for antitrust, unfair competition, and related state claims. The gist is that Legalzoom is providing legal services without authorization to do so.

The complaint, below, is 81 pages. Specifics as to what services LegalZoom performs in relation to trademark begins around page 18. In paragraph 51, LegalForce alleges that it placed two ‘trap filings’ with LegalZoom. LegalZoom allegedly provided legal advice ‘by selecting classification and modifying the good and services descriptions’ from LegalZoom’s online form. Furthermore, LegalZoom “provided legal advice as to which trademarks found in the search report may conflict with” the trademarks in question (para. 52, page 19).

Interestingly, LegalForce alleges in para 53 (page 19) that LegalZoom ‘surreptitiously’ does not document such modifications of the customer’s online form, presumably to avoid providing such advice in writing.

Paragraph 54 provides the blow-by-blow of the ‘trap’ filings.

In addition to all this, Paragraph 57 alleges that “LegalZoom does not refund $50 of the collected $275 government fee collected through its website if the non-lawyer staff at LegalZoom determine that the trademark qualifies as a TEAS Plus application with the lower filing fee of $225. (page 26-27). (note – if true – that sounds like a very straightforward class action suit).

ABAJournal coverage here.

Law360 coverage here.


Bill Lee, Non-Trademark Use, and Bonus Video of Eephus Pitch

bill lee sports illustrated

sporting times bill lee

Bill Lee was a left-handed pitcher, most notably for the Red Sox during the 70’s, at a time when left-handers were the target of unthinking prejudice. As a fellow-left-hander, I always had a soft spot for him after his quote that left-handers are the only one in the their right minds (brain hemisphere dominance joke).

Also – Bill Lee threw an eephus pitch which he referred to as his Leephus pitch. This history of the eephus refers to Lee but does not explain the name. (See video of greatest eephus pitches below)

In any event, Bill Lee was ‘colorful,’ which was a euphemism in those days for ‘takes drugs.’ He was known as the Spaceman and posed for Sports Illustrated wearing a spacesuit (See above).

Defendant released a biopic about Lee last year. The ‘he’s becoming famous montage’ depicts a recreation of the spacesuit photo on the cover of a fictitious magazine named SPORTING TIMES (See above). The cover appears for nine seconds in the movie and for two seconds in the trailer.

Owner of SPORTING TIMES registration protested, and defendant removed some but not all usages. Owner sues. Defendant moves to dismiss.

Held: Use of a name to denote a cover in a movie is not trademark use. To my mind there is a little muddiness in the decision in that the court states both that it is not plausible that the audience will perceive the name as a source of origin (which is a prerequisite for the confusion analysis), and that it is not plausible that the audience will perceive the name as indicating affiliation with the source of the film, which in my view, is the confusion analysis itself). Both conclusions seem true.

Also – as an alternative theory, use of the name passes the “Fred and Ginger” artistic relevance test so the use is protected First Amendment speech.

Apparently, Bill Lee lives in Vermont and ran for political office using the slogan “So Far Left, We’re Right.”