Plaintiff has been suing various wristwatch companies over the use of the term RED GOLD. Here, Breitling’s dismissal of plaintiff’s suit at summary judgment provides a road map as to how to make descriptive fair use of even an incontestable mark (and even when there were (allegedly) alternative descriptive terms available to defendant).

From the decision: “Left untouched, pure gold is yellow. With the addition of silver, gold takes on a whiter tone; copper creates a reddish or pinkish color . . . Throughout the
twentieth century, many newspapers, advertisements, magazines, textbooks, and
other reference materials used the term “red gold” to describe the gold-copper
combination. Though the term “rose gold” is commonly used today, references to
“red gold” continue; from 2001 to 2017, the Wristwatch Annual included more than
1,300 references to “red gold” by fifty-three different watchmakers.”

Plaintiff alleged that it has used the mark RED GOLD on watches since 1989. It filed to register the mark in 2001 and in 2009, RED GOLD® achieved incontestable status

Breitling began using the term in 2010 to describe the color of its watches, indicating, for example, that the watch was available in stainless steel and 18k Red Gold:

Breitling also used the hashtag #redgold as one of various hashtags (many of them also descriptive) in social media (see below).

Breitling argued that the term was generic (as it was barred from arguing that the term was descriptive, due to the registration’s incontestable status). Alternatively, it argued that it was making fair use of the term,

Held: Breitling satisfied the three prong test of descriptive fair use as (1) it did not make trademark use of the term; (2) it used the term solely to describe as aspect of the product; and (3 ) there was no evidence that it did not act in good faith.

Practice pointer: You can show the illustrations of Breitling’s use of the term in various promotional materials to clients and say “here, you can do this.”

The court notes that Breitling did not use the term to describe any product that is
not made from gold with a red/pink hue, The term was always accompanied by Breitling’s own trademarks. The term was used in smaller print, near other descriptive terms. Breitling’s “#redgold” tag was buried in a long list of other terms, most of which are descriptive.

The decision is also notable for clarifying an argument that never seems to disappear from fair use analysis. Plaintiff’s often argue that defendant’s use was not fair because it had descriptive alternatives (in this case, plaintiff alleged that Breitling could have used ROSE GOLD – which is disputed by Breitling because ROSE GOLD tends to refer to a lighter color than RED GOLD). Here, the circuit court noted that when a term is inherently descriptive, defendant descriptive use of the term is not evidence of bad faith without more, regardless of whether it could have used other terms (the dissent had a problem with this holding).

Text of Solid 21 v Breitling, 22-366 (2d Cir March 14, 2024).

From Stobbs summary: Recent Court of Appeal decision (Iconix v Dream Pairs, involving the Umbro ‘double diamond’ logo on footwear) which has clarified the need to take account of the potential for post-sale confusion when assessing likelihood of confusion between two marks. This case could present opportunities for brands to revisit confusion-based claims in the context of lookalikes which has been a challenge for many years, given that the assessment must take account of people seeing the lookalike post sale, not just at the time of purchase in the Aldi or Lidl store.

Text of decision in [2024] EWCA Civ 29,Iconix v Dream Pairs

A Champion Spark plug re-conditioned goods case involving ROLEX watch parts. From the Fifth Circuit decision:

This is a trademark infringement dispute involving allegations of counterfeit and infringing use of Rolex’s marks by BeckerTime. Rolex is a luxury watch seller with a legally protectable interest in numerous trademarks. BeckerTime sells primarily decades-old preowned watches containing Rolex branded parts. The at-issue watches in this case are watches sold by BeckerTime that are identified as “Genuine Rolex,” but contain both Rolex and non-Rolex parts. The watches specifically considered by the district court contained additional diamonds, which were added “as hour markers to the refinished dials by drilling holes in the dials and placing aftermarket diamonds or other stones and settings in the holes.” To refinish dials, BeckerTime “strips the dial down to bare metal, then, after the refurbishing process is complete, reapplies Rolex’s trademarks.” These “modifications” are not performed or authorized by Rolex. BeckerTime lists the retail prices of their modified watches with comparison prices to new Rolex watches, but for the watches considered, the district court found that “Rolex has never sold a watch matching the description” provided by BeckerTime.The at-issue watches contain “at least one Rolex trademark” and “aftermarket bezels (not made or endorsed by Rolex) . . . including bezels with added diamonds.” BeckerTime further applies “aftermarket bands or straps (not made or endorsed by Rolex)” that “sometimes include a genuine Rolex clasp or buckle displaying Rolex’s trademarks.” The parts BeckerTime adds to the at-issue watches “do not bear any markings indicating BeckerTime is the source.” Further, the district court found that the parts replaced, such as the bezel, dials, and bracelets, “are integral and necessary to the at-issue watches.”

Text of decision in Rolex v BeckerTime, 5th Circuit, Jan 26 2024

SDNY: For purposes of a MtD, Defendant’s affirmative defenses (e.g. fair use) must be evident from the face of the complaint. Here, while defendant’s own mark prominently appeared alongside plaintiff’s mark on its packaging, whether this was fair use could not be determined at the 12b6 stage.

text of decision in Global Brand v Rae Dunn Design, 23-CV-1644 (DEH) January 9, 2024



This could be an important story for brand professionals. County star Luke Combs won a $250K copyright judgment against an ailing fan. Now, the fan says she didn’t know about the suit (sic), and he says he didn’t know about the suit (sic)

If you’ve been following U.S. TM and copyright litigation trends, then you guessed correctly that this was a SAD (for Schedule A Defendant) lawsuit – called that because so many defendants are lumped together (often over a hundred), that they are not individually identified in the caption, but are instead listed in a schedule attached to the complaint (and the suit is referred to as, for example, Luke Comb vs. Schedule A Defendants).

The significance of SAD suits are severalfold. First, they’re efficient and cost-effective for plaintiffs, allowing them to knock out numerous bad guys in a single suit (sometimes seizing significant amounts of illegal proceeds in the process).

However, speaking generally, these suits take some procedural short cuts. If plaintiff establishes that the bad guys will flee the jurisdiction (or more accurately, will likely withdraw funds from its U.S. accounts), then the plaintiff may be allowed to freeze the defendants’ U.S. assets on an ex parte basis. I

If the plaintiff can establish that normal service of process is not possible (because, for example, defendant operates under a fake persona) the plaintiff may be allowed to serve process via email.

Also, joinder requirements seem to be, uh, relaxed. The plaintiff alleges that all the defendants are related, and that seems to be that.

Taken as a whole, these short-cuts add up to a boon for plaintiffs, but also poses enough due process questions that it seems very few courts allow them. An overwhelming majority are brought in only two federal judicial districts – those in Chicago and Miami. For more info on SAD suits, see Professor Goldman’s paper “A SAD Scheme.”

Which brings us to Luke Combs. He is “heart sick” that he sued an ailing fan who sold $380 worth of alleged infringing merchandise. He says he didn’t know about the suit (brought in his name). His management company takes care of these things. Defendant says that the service email went to her spam folder. He says he will raise funds for her. The judgment, however, has already been “rendered.” (raised eyebrow emoji).

SAD suits have been going on for ten years or so but their existence has percolated into main-steam awareness slowly. To the extent that there have been any due process corners cut – the victims tend to be non-U.S. infringers (who don’t tend to have good U.S. PR help).

However, if there are more sad SAD stories like this one, involving U.S. defendants (and U.S. plaintiffs who have been “victimized” by their cold and unfeeling brand protection counsel) then we may see heightened scrutiny of these suits.

https://lnkd.in/eJQs6xDc (-tumblers-1235836617/

NASHVILLE, TENNESSEE - JUNE 08: Luke Combs performs on stage during day one of CMA Fest 2023 at Nissan Stadium on June 08, 2023 in Nashville, Tennessee. (Photo by Jason Kempin/Getty Images)

Luke Combs ‘Sick to My Stomach’ to Learn He Won $250K Judgment Against Convalescing Fan Who Made Tumblers; Says He Will Raise Funds for Her

variety.com • 4 min read

From the decision:

The main issues in this appeal are governed by the United States Supreme Court’s recent decision in Jack Daniel’s Properties, Inc. v. VIP Products LLC, 599 U.S. 140 (2023). Applying Jack Daniel’s, we conclude that Vans is likely to prevail in arguing that MSCHF’s Wavy Baby shoes used Vans’ marks and trade dress as source identifiers, and thus no special First Amendment protections apply to protect MSCHF against Vans’ trademark infringement claim. As such, the district court did not err in concluding that Vans is likely to prevail on the merits of its trademark infringement claim in light of the likelihood of confusion as to the source of the Wavy Baby shoes. We further conclude that the district court did not err in requiring MSCHF to escrow its revenues from Wavy Baby sales, and that the district court was not required to make a bond.

Text of Decision in Van v MSCHF, 2d Cir Dec 5 2023

Question presented:

Whether a seller whose products ship nationwide is
subject to personal jurisdiction in every forum into which
even one of its products is shipped.

Factual background from petition:

Respondent is a Delaware corporation with its principal
place of business in Arizona and is in the business of
selling health and wellness products. Alleging that
Petitioners unlawfully sold Respondent’s products through
online storefronts on Amazon.com, Respondent brought
suit against Petitioners for trademark infringement and
related claims. citations omitted.

TEXT OF CERT PETITION IN PHOTOPLAZA v HERBAL BRANDS

TEXT OF NINTH CIRCUIT DECISION IN PHOTOPLAZA v HERBAL BRANDS

Link to Reuters article on cert petition: Amazon resellers ask Supreme Court to clarify where online businesses can be sued

Text of in rem complaint Latham & Watkins vs LW-IUF.COM et. al., 1:23-cv-01486-CMH-LRV (EDVA October 31, 2023).

From the complaint:

An unknown scammer has maliciously used the Abusive Domain Names in violation of Latham’s trademark rights to unlawfully, and in bad faith, derive a profit by defrauding members of the public. In the emails that Latham is aware of, the scammer has used the Abusive Domain Names to email members of the public and Latham’s clients purporting to be a Latham partner in Latham’s Paris office. It is possible that the scammer has impersonated different Latham attorneys or staff in other instances of which Latham is presently unaware. In the emails, the scammer attempts to collect payment for a purportedly pending invoice. By registering and using the Abusive Domain Names and impersonating Latham personnel, the scammer has not only attempted to defraud Latham’s clients and other members of the public, the scammer has violated and harmed Latham’s longstanding trademark rights and damaged Latham’s outstanding reputation and goodwill. This conduct constitutes cyberpiracy in violation of the ACPA, and Latham accordingly seeks an order transferring the Abusive Domain Names to Latham to halt this scam.

The Anti-cybersquatting consumer protection act (section 43(d) of the Lanham Act) allows for in rem jurisdiction over a domain name if, despite diligent efforts, the plaintiff cannot identify the person who registered or used the abusive domain name. In rem jurisdiction is appropriate in the forum of the registrar or registry. Verisign, administrator of the .com gTLD registry, resides in Virginia, and thus this suit has been filed in the EDVA.

Reuters coverage here.