Category: Non-AI Trademark

Trademarks and trademark law | News and commentary from Cokato, Minnesota lawyer Tom James (also known as Thomas James or Thomas B James). This category includes general trademark principles such as the requirements for a valid trademark, registration, infringement, and dilution

Balancing the First Amendment on Whiskey and Dog Toys

The US Supreme Court has heard oral arguments and will soon decide the fate of the “Bad Spaniels” dog toy.

The United States Supreme Court has weighed First Amendment rights in the balance against many things: privacy, national security, the desire to protect children from hearing a bad word on the radio, to name a few. Now the Court will need to balance them against trademark interests. The Court heard oral arguments in Jack Daniel’s Props. v. VIP Prods., No. 22-148, on March 22, 2023.

I’ve written about this case before. (See Court Agrees to Hear Parody Goods Case.) To summarize, it is a dispute between whiskey manufacturer Jack Daniel’s and dog-toy maker VIP Products. The dog toy in question is shaped like a bottle of Jack Daniel’s whiskey and has a label that looks like the famous whiskey label. Instead of “Jack Daniel’s,” though, the dog toy is called “Bad Spaniels.” Instead of “Old No. 7 Brand Tennessee sour mash whiskey,” the dog toy label reads, “Old No. 2 on your Tennessee carpet.”

VIP sued for a declaratory judgment to the effect that this does not amount to trademark infringement or dilution. Jack Daniel’s filed a counterclaim alleging that it does. The trial court ruled in favor of the whiskey maker, finding a likelihood of consumer confusion existed. The Ninth Circuit Court of Appeals, however, reversed. The appeals court held that the dog toys came within the “noncommercial use” exception to dilution liability. Regarding the infringement claim, the court held, basically, that the First Amendment trumps private trademark interests. A petition for U.S. Supreme Court review followed.

Rogers v. Grimaldi

Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) is a leading case on collisions of trademark and First Amendment rights. In that case, Ginger Rogers, Fred Astaire’s famous dance partner, brought suit against the makers of a movie called “Ginger and Fred.” She claimed that the title created the false impression that the movie was about her or that she sponsored, endorsed or was affiliated with it in some way. The Second Circuit affirmed the trial court’s ruling against her, on the basis that the title of the movie was artistic expression, protected by the First Amendment as such.

Jack Daniels whiskey bottle and Bad Spaniels dog toy - parody goods trademark infringement

When the medium is the message

Some commentators have suggested that the balance struck in favor of the First Amendment in Rogers v. Grimaldi should only apply in cases involving traditional conveyors of expressive content, i.e., books, movies, drawings, and the like. They would say that when the product involved has a primarily non-expressive purpose (such as an object for a dog to chew), traditional trademark analysis focused on likelihood of confusion should apply sans a First Amendment override.

Does this distinction hold water, though? True, commercial speech receives a lower level of protection than artistic or political speech does, but both dog toys and movies are packaged and marketed commercially. Books, movies, music, artwork, video games, software, and many other items containing expressive content are packaged and marketed commercially. Moreover, if a banana taped to a wall is a medium of artistic expression, on what basis can we logically differentiate a case where a dog toy is used as the medium of expression?

A decision is expected in June.

 

Is Jazz Confusingly Similar to Music?

Is jazz confusingly similar to music? No, that wasn’t the issue in this case. It was a contest between APPLE JAZZ and APPLE MUSIC involving tacking.

The first question that popped into my head, of course, was whether a consumer would really be likely to confuse jazz with music. I mean, come on.

Sadly, however, that was not the legal issue in this case. The legal issue was whether, and in what circumstances, priority of use can be established by “tacking” a new trademark registration onto an earlier one for a mark in a different category of goods or services.

The Opposition Proceeding

Apple applied to register APPLE MUSIC as a trademark in several categories of services in IC 41, including the production and distribution of sound recordings, and organizing and presenting live musical performances. Bertini, a professional jazz musician, filed a notice of opposition to Apple’s application, on the basis that he has used the mark APPLE JAZZ in connection with live performances since 1985. In the mid-1990s, Bertini began using APPLE JAZZ to issue and distribute sound recordings. Bertini opposed Apple’s registration of APPLE MUSIC on the ground that it would likely cause confusion with Bertini’s common law trademark APPLE JAZZ.

The Trademark Trials and Appeals Board (TTAB) dismissed the opposition. Bertini appealed to the Federal Circuit Court of Appeals.

The Appeal

On appeal, the parties did not dispute that there was a likelihood consumers would confuse Bertini’s use of APPLE JAZZ and Apple’s use of APPLE MUSIC. The only dispute on appeal was priority of use.

Apple, Inc. began using APPLE MUSIC in 2015, when it launched its music streaming service, nearly thirty years after Bertini had begun using APPLE JAZZ. Apple, however, argued that it was entitled to an earlier priority dating back to a 1968 registration of the mark APPLE for “Gramophone records featuring music” and “audio compact discs featuring music.” (The company had purchased the registration from Apple Corps, the Beatles’ record company.)

The TTAB agreed with Apple’s argument, holding that Apple was entitled to tack its 2015 use of APPLE MUSIC onto Apple Corp’s 1968 use of APPLE and therefore had priority over Bertini’s APPLE JAZZ.

The appellate court reversed, holding that Apple cannot tack its use of APPLE MUSIC for live musical performances onto Apple Corps’ use of APPLE for gramophone records, and that its application to register APPLE MUSIC must therefore be denied.

 

19th century painting of an apple sliced in half

New TM Office Action Deadlines

The deadline for responding to US Trademark Office Actions has been shortened to three months, in many cases. Attorney Thomas B. James shares the details.

USPTO building housing the Trademark Center

Historically, applicants for the registration of trademarks in the United States have had 6 months to respond to an Office Action. Beginning December 3, 2022 the time limit has been shortened to 3 months.

Applications subject to the new rule

The new, shorter deadline applies to most kinds of trademark applications, including:

  • Section 1(a) applications (application based on use in commerce)
  • Section 1(b) applications (application based on intent to use)
  • Section 44(e) applications (foreign application)
  • Section 44(d) applications (foreign application)

Applications not subject to the new rule

The new deadline does not apply to:

  • Section 66(a) applications (Madrid Protocol)
  • Office actions issued before December 3, 2022
  • Office actions issued after registration (But note that the new deadline will apply to post-registration Office Actions beginning October 7, 2023)
  • Office actions issued by a work unit other than the law offices, such as the Intent-to-Use Unit or the Examination and Support Workload and Production Unit
  • Office actions that do not require a response (such as an examiner’s amendment)
  • Office actions that do not specify a 3-month response period (e.g., a denial of a request for reconsideration, or a 30-day letter).

Extensions

For a $125 fee, you can request one three-month extension of the time to respond to an Office Action. You will need to file the request for an extension within three months from the “issue date” of the Office Action and before filing your response. If your extension request is granted, then you will have six months from the original “issue date” to file your response.

Use the Trademark Office’s Request for Extension of Time to File a Response form to request an extension. The Trademark Office has issued a warning that it will not process requests that do not use this form.

The form cannot be used to request an extension of time to respond to an Office Action that was issued for a Madrid Protocol section 66(a) application, an Office Action that was issued before December 3, 2022, or to an Office Action to which the new deadline does not apply.

Consequences

Failing to meet the new three-month deadline will have the same consequences as failing to meet the old six-month deadline did. Your application will be deemed abandoned if you do not respond to the Office Action or request an extension on or before the three-month deadline. Similarly, your application will be deemed abandoned if you you are granted an extension but fail to file a response on or before the six-month deadline.

The Trademark Office does not refund registration filing fees for abandoned applications.

As before, in some limited circumstances, you might be able to revive an abandoned application by filing a petition and paying a fee. Otherwise, you will need to start the application process all over again.

Contact attorney Thomas James

Need help with trademark registration? Contact Thomas B. James, Minnesota attorney.