Sure Fit Home Products v. Maytex Mills, 21 Civ. 2169 (LGS) (SDNY <ay 26, 2021)

Plaintiff and defendant make shower curtains. Plaintiff owns utility patents that allow shower curtains to be installed on a rod while the rod is fixed in place. This magic is accomplished by placing holes hear the edge of the curtain, with a horizontal slit between holes. Voila:


Plaintiff also obtained a design patent. Its new, original, and ornamental design looks like this:



Plaintiff also claims trade dress, comprised of:

a shower curtain wherein the curtain lacks any hooks protruding above the upper edge of the curtain, so that Plaintiffs’ shower curtain provides the visual appearance of an essentially “neat” and “orderly” upper edge;

 and wherein the shower curtain has a row of rings along the upper portion of the shower curtain, those rings being attached to the material of the shower curtain such that the bottom surface of each ring (on one or both sides of the shower curtain) is essentially co planar with the material of the shower curtain, also providing an essentially “neat” and “orderly” appearance;
wherein each ring includes a slit or gap in the ring;
and wherein the shower curtain’s rings or pairs of rings, and the associated slits or gaps, are each fixed in place on the shower curtain and provide an organized and symmetrical repeating visual pattern along the top width of the shower curtain.
Plaintiff sells its curtains under the HOOKLESS trademark (registration obtained under 2(f)).
Defendant sells competitive shower curtains. Plaintiff alleges design patent and trade dress infringement, and moves for a preliminary injunction.
As to the design patent, the court noted that defendant’s curtains look like this:
The court then consulted the Egyptian Goddess of Design Patents (543 F.3d 665 (Fed Cir 2008), noted the bevels and hooks on defendant’s rings, and held that plainitff had not shown that it was likely to prevail.
Turning to plaintiff’s unregistered trade dress (which has no presumption of protectability), the court noted the similarity between plaintiff’s utility patent and its description of the trade dress.
Because of the overlap in features between the utility patent and the claim trade dress, the plaintiff failed to meet its burden of establishing non-functionaltiy (and therefore the court does not need to address whether the claimed trade dress had achieved distinctiveness.
Prelim denied (but see footnote 3, which indicates that parallel litigation in the SDNY have turned out differently).
Text of Sure Fit v. Maytex Mills: sdny sure fit functionality

IPKAT: Let not the Cancellation Division see your black and deep desires: (another) Banksy mark cancelled by EUIPO due to bad faith. Let not the Cancellation Division see your black and deep desires: (another) Banksy mark cancelled by EUIPO due to bad faith

Excerpt: The anonymous graffiti artist known as Banksy is no stranger to trade mark wrangling, with this week’s cancellation decision by the European Union Intellectual Property Office’s Cancellation Division following hot on the heels of similar proceedings last September, concerning the work ‘Flower Thrower’

Ed. note: Neither the failure-to-function argument nor the anonymity problem makes sense to a U.S. lawyer.

The Role of Consumer Uncertainty in Trademark Law: An Experimental and Theoretical Investigation

Barton, Germano, Roy, and Sprigman.

From the abstract:

Nearly every important issue in trademark litigation turns on the question of what consumers in the marketplace subjectively believe to be true. To address this question, litigants frequently present consumer survey evidence, which can play a decisive role in driving the outcomes of disputes. But trademark survey evidence has proven to be highly controversial, not least because it is notoriously prone to expert manipulation. In this Article, we identify and present empirical evidence of a related, but more fundamental problem with trademark survey evidence: while all the leading survey formats in trademark law test for whether consumers hold a particular belief, they do not test for the strength or the varying degrees of certainty with which consumers hold that belief.

Beebe, Barton and Germano, Roy and Sprigman, Christopher Jon and Steckel, Joel, The Role of Consumer Uncertainty in Trademark Law: An Experimental and Theoretical Investigation (May 27, 2021). Available at SSRN


CAFC: Pure & Simple Concepts v. 1 H W Management (Finchley Group), 2020-1211 (May 24, 2021)

BLUE INDUSTRY not confusingly similar to INDUSTRY, both for clothing. “BLUE” was held to be the dominant term, and thus distinguishes INDUSTRY (which was diluted somewhat by third-party use).

Patently-O analysis here.

TTABlog discussion here.

My take is that BLUE INDUSTRY is distinctive in its totality as an “INDUSTRY” is not something that can ordinarily be described with a color. The mark is a juxtaposition and I’m not sure there is a dominant term in a juxtaposition.

Text of CAFC decision: cafc blue industry dominance








Welcome to the revamped Trademark Blog. The Trademark Blog started in May, 2002. The world was different then – people guessed URLs by typing trademarks into browser bars. AOL was a valuable brand. Presidents were younger than your grandparents.

This fast-paced world of flying cars, teleportation, and jet packs,  calls for a new blog design, and email subscriptions, which feature I will activate when I get around to it.

Thank you to the hard working folk at LexBlog for migrating all 5,400 posts from the original vellum version.

Stay tuned.


Hanesbrands v Keds, LLC and SR Holdings, 1:20-cv-11354-IT (D Mass May 21, 2021)

Hanes, successor to Champion, has been licensing the CHAMPION brand in relation to shoes, from Keds, for decades.  Keds has been selling KEDS CHAMPION in the U.S,. and several other jurisdictions. Hanes was free to use in non-U.S. jurisdictions where Keds had not acquired superior rights. The licensing agreement had included a moratorium during which Hanes could not contest Keds’ “historic use” of the CHAMPION mark in non-U.S. jurisdictions. Hanes alleges that Keds exploited the moratorium by deliberately expanding into various jurisdictions such as Taiwan, Austria, and Korea.  I guess it depends on what the meaning of historic” is.

In addition to various contract causes, Hanes sues Keds on trademark, relying on the extraterritorial effect of the Lanham Act.

The court reviews all the old extraterritorial favorites: Person’s, Steele v. Bulova, Vanity Fair, and Cecil McBee. and concludes:

Text of Hanes v Keds:

hanes v keds us ma extra decision

McGowen Precision Barrels v Proof Research, TTAB can no. 92067618 (precedential).

Petitioner seeks cancellation of Respondent’s registration for a configuration trademark:

a gun barrel trade dress registration described as:

The “mottled” appearance was created by wrapping carbon fiber around a gun barrel, “curing” the fiber, grinding it and polishing it. As carbon fiber is substituted for steel on barrels to decrease weight and provide other functional benefits, and this pattern is the resulting appearance of a particularly advantageous method of wrapping fiber on a barrel (and was patented as such), the pattern is functional and thus unregistrable as a trademark.

TTABlog discussion here.

Text of TTAB decision in McGowen v Proof Research




Plaintiff alleges ownership of SUNCOO trademark for disposable face masks, which masks it sells on Amazon. Various defendants allegedly sold counterfeit SUNCOO masks. Amazon purchased a shipment of SUNCOO-branded masks that were in fact counterfeit, Amazon sold such masks under plaintiff’s ASIN, inadvertently, and has indicated to plaintiff that it was cooperating with regard to preventing the sale of counterfeit product. However, Amazon “lapsed” and sold the counterfeit product on two additional occasions. Plaintiff brought a prelim motion, which was granted.

Text of Kinsley Technology v Ya Ya Creations, 1:2020cv4310, DKt 147 (CD Cal 2021)