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TRADEMARK NEWS


Matthew D. Marquardt, Editor

Articles:

No Acquired Distinctiveness in Swiss Army Knife Color
Mattel Sues Record Company over Danish Rock Band's Song
Intent-to-Use Rights Strengthed
Lawn Furniture not Protectable Without Showing of Specific Source-Indicating Features
Canadian Rights of US Mark Owners Clarified
Race Track Portrait on T-Shirts Not Protectable
First Decisions Support New Alternative for Trademark Protection




No Acquired Distinctiveness in Swiss Army Knife Color

The United States Court of Appeals for the Second Circuit, which oversees cases arising in the New York area, ruled September 4 that the color red, particularly as used on the handle of "Swiss Army" knives, has acquired no distinctiveness in the minds of consumers. In so doing, the court upheld a district court finding under section 43(a) of the Lanham Act that because several competitors have made "Swiss Army" knives and other "multifunction pocket knives" with red handles for nearly as long as plaintiff Forschner Group, Inc., no shade of red is entitled to protection when used on a knife handle. The appeals court also overturned a district court finding that the term "Swiss Army knife" has any geographic or qualitatively descriptive qualities, finding that it lacks distinctiveness also.

Although the court found as an alternative that the handles were theoretically protectable under New York state unfair competition law, it found no likelihood of confusion and affirmed the district court's refusal to modify a previously-entered order denying the plaintiff an injunction.

Source: BNA's Patent, Trademark & Copyright Journal, 9/18/97



Mattel Sues Record Company over Danish Rock Band's Song

Toy manufacturer Mattel Inc. sued record distributor MCA on September 12 in U.S. District Court in Los Angeles, claiming trademark infringement by Danish rock group "Aqua"'s song "Barbie Girl." MCA claims the song was distributed with a disclaimer stating that the song is intended as social commentary and was made without the toymaker's approval. Mattel sought immediate withdrawal of all copies of CD's and videos containing the song, a stoppage of Internet promotional activities, and unspecified monetary damages. The rock band was not named because the toymaker allegedly believed the damage to have been caused by MCA.

The precise legal theory of the complaint was not immediately clear.

Source: National Law Journal, 10/6/97



Intent-to-Use Rights Strengthed

Rights of trademark applicants filing intent-to-use (ITU) applications to reserve future rights in marks they have not yet begun to use have recently been strengthened by both the courts and the Trademark Office's Trial and Appeals Board. It has long been established that once use of the mark is been "perfected" through use, many of the rights associated with the mark relate back to the fiing date of the ITU application. Substantial uncertainty has lingered, however, about the status of ITU rights during prosecution of the application. For example, once a mark covered by an ITU applicaiton has actually been put to use and the mark has been registered, the priority date of the mark becomes the filing date of the application, and not the date of first use. But it has not been clear whether an ITU applicant could use its filing date to defend its application in an opposition proceeding by users who adopted marks after the filing date of the applicant's application, or whether the applicant could use its ITU application offensively in an opposition proceeding of its own. Each of these questions now appears to have been answered in the affirmative by the Trademark Trial and Appeals Board. In addition, the defensive use of an ITU application to stop an injunction attempt by a plaintiff who took up use of the mark after the the ITU applicant's filing date has recently been approved by the Second Circuit court of appeals.

It has also been suggested by some observers that the Second Circuit may be ready to approve the offensive use of ITU applications to enjoin use of a mark adopted subsequent to the filing of an ITU application, contingent upon actual use and registration.

Source: National Law Journal, 5/12/97.



Lawn Furniture not Protectable Without Showing of Specific Source-Indicating Features

The Federal Second Circuit Court of Appeals, based in New York City, on May 16 vacated a preliminary injunction preventing a lawn furniture maker from selling or advertising furniture it copied from another lawn furniture maker on grounds that the complaint upon which the injunction request was based failed to "focus on the specific features... the company claims as trade dress" and which serve to indicate the source of the product. The court, which recently decided that product packaging should be reviewed, in trade dress cases, as a whole to determine the intent of the product packager in distinguishing the source of its products, acknowledged that it is moving toward separate tests for product packaging and product configuration cases. The difference is based on the distinction that "packaging is usually indicative of a product's source, while the design or configuration is not usually so." Other circuits, including notably the third and eighth, have differed with the second in their opinions in this area. Some observers have seen these questions, which arise from a disagreement over interpretation of the Supreme Court decision in Two Pesos v. Taco Cabana, Inc., 505 US 763 (1992), as ripe for Supreme Court review.

Sources: BNA's Patent, Trademark & Copyright Journal, 5/22/97; National Law Journal, 5/12/97; Landscape Farsm v. Columbia Cascade, No. 96-9465.



Canadian Rights of US Mark Owners Clarified

The Federal Court of Canada recently found, in Enterprise Rent-A-Car v. Singer, that it is not necessary for a mark to be famous in order to merit protection there, even where the mark is neither registered nor used by its owner in Canada. The court stated that where a mark enjoys goodwill among Canadians, a misrepresentation has been made in Canada, and damage is likely to result from the misrepresentation, no additional "fame" need be asserted in order to obtain relief.

Source: National Law Journal, 5/12/97.



Race Track Portrait on T-Shirts Not Protectable

The United States District Court for Southern New York ruled April 9 that pictures of the Saratoga race track placed on t-shirts and other souvenirs do not amount to and are not protectable as trade dress. In doing so, the court complied with the second circuit distinction between product configuration and packaging (discussed above), finding that for t-shirt designs the test of inherent distinctiveness is whether the alleged trade dress is likely to serve primarily as an indicator of source. The court further found that in the case of paintings placed on t-shirts the First Amendment interest in artistic expression might outweigh and defeat the confusion-defeating purposes of the Lanham federal trademark act. Plaintiffs in the case, owners of the Saratoga track, sued a publishing company for selling t-shirts bearing original paintings of the race track. Reconsideration at the request of the plaintiffs was denied; however, the court certified the case for interlocutory appeal.

Sources: BNA's Patent, Trademark & Copyright Journal, 5/22/97; New York Racing Assoc. v. Perlmutter Publishing.



First Decisions Support New Alternative for Trademark Protection

The first decisions interpreting the Federal Trademark Dilution Act of 1995 (15 USC 1125(c)), which took effect January 16, 1996, are being handed down. The Dilution Act provided a new Federal statutory cause of action for the dilution of famous trademarks. Previously such statutes had been in effect in several states; they were -- and continue to be -- useful in specialized circumstances; but the new Federal law substantially strengthed mark owners' rights against both traditional forms of dilution: bluring (in which a mark is used in such manner as to raise the possibility that the mark will lose its ability to serve as a unique indentifier of the owner's goods or services) and tarnishment (use of a mark in connection with shoddy or unwholesome goods).

Some of the decisions are troubling. Although the Act specifically provides that protection is to be available regardless of the presence or absence of competition between the owner of the mark and others, or of the liklihood of confusion, mistake or deception, several of the decisions look for proof of factors closely associated with traditional "likelihood of confusion" tests. This has especially been true in blurring cases. For example, Ringling Brothers lost in its attempts to use a blurring theory in enjoining the use by a bar of the phrase "The Greatest Bar on Earth," and to stop the State of Utah from using "The Greatest Snow on Earth" to advetise its ski areas. Similarly, American Express was unable to stop the use of "Don't Leave Home Without My Pocket Address Book." Success in tarnishment cases has been better. For example, Anheiser Busch was successful in stopping the sale of "Buttwiser" t-shirts.

Source: National Law Journal, 5/12/97.



The Editor

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