Wish You Were Here

In the case of In re Diane R. Gunter, Serial No. 77227513, the TTAB recently reversed a refusal to register the trademark Wish You Were Here for underwear.  The Trademark Examining Attorney had taken the position that applicant’s mark was confusingly similar with the Wish You Were Here, Love Jetsy mark:

Both marks contain the phrase “Wish You Were Here.”  The Love Jetsy postcard mark is registered for “women’s dresses, shirts, skirts and apparel.”

The Trademark Examining Attorney argued that consumers are more likely to focus on the first part of a trademark; that both marks were substantially similar as to appearance, pronunciation, meaning and commercial impression; that underwear is related to outerwear; and that both goods would be sold through the same channels of trade.  The Applicant countered that the Examining Attorney had failed to place proper emphasis on dominant design elements of the post card trademark.

In reversing the Examining Attorney, the TTAB held:  ”we cannot agree with the Trademark Examining Attorney’s position that the phrase ‘Wish you were here!’ is the dominant element of applicant’s mark. As depicted in the drawing, the words ‘Love, Jetsy’ are prominently displayed, comprising the largest element on the card. . . and [] have the effect of catching the eye and engaging the viewer before the viewer even looks at the phrase ‘Wish you were here!’ In this context, the ‘Wish you were here!’ phrase is a postcard cliché that acts merely to reinforce the design element of the postcard, and would not otherwise make an impression on the viewer.”  In a nutshell, wish you were here in the postcard sense creates a different commercial impression from Wish You Were Here in my pants.

The TTAB then declined to equate “shirts” with “t-shirts” worn as underwear, or to include underwear within the definition of apparel.  But see, Lady Gaga.  The TTAB found that the dictionary definition of apparel encompasses outer garments — not underwear.  Got it.  Underwear and apparel are not related goods.

TTAB?

“We do not suggest that underwear and items of apparel are not related goods.”

Okay, so they’re related.  They’re just not related enough.

Clearance Comes First

Here’s the scenario.  You’re a large consumer products company.  You are about to launch the latest fragrance, deep fried cheese-stuffed pizza crust, media player, or whatever.   What do you do?  After all of the brainstorming and consulting, there’s a list of possible brand names.  Which do you pick?

Well, nothing is left to chance.  The stakes are too high.  So you hire a marketing firm to conduct a survey, right?  Wrong.  You send the list to legal and ask if the names are clear for use as trademarks.   Why?  Because a knockout search costs $200-$400 dollars per name.  A marketing survey can easily cost $25,000-$30,000 to draft and administer.  Do you really want to drop that kind of money on a marketing survey without even knowing if the proposed trademarks are available for use?  It’s way more cost effective to clear the marks first than to commission a survey, only to find out later that your top two choices are not available for use, and you have to start from scratch.

So what if you’re not a large consumer products company?  What if you’re not hiring a marketing firm to do a survey?  You still need to clear your trademarks before you start using them.  It’s such a small expense in the scheme of things and it’s the right thing to do.  You don’t want to get sued for trademark infringement, and you don’t want to have to rebrand if you can help it.  And make sure that you ask your trademark attorney what you’re getting for the money. You should understand exactly what the process is and what the options are and what you’re getting and what you’re not getting.  If you pay for Trademark-o-Rama, you will get Trademark-O-Rama.  And Trademark-O-Rama is not good!!

Hard Rock Cafe Crashes Rehab Pool Party

On September 21, 2010, Hard Rock Cafe International (USA), Inc. (“Hard Rock Cafe”) filed a trademark infringement lawsuit in the U.S. District Court for the Southern District of New York against the owners and/or operators of the Hard Rock Hotel & Casino in Las Vegas, Nevada. Hard Rock Cafe contends that the Hard Rock Hotel & Casino has materially breached the terms of a 1996 trademark license agreement.  Hard Rock Cafe faults a reality television program entitled, “Rehab: Party at the Hard Rock Hotel” as giving rise to the dispute, and has also named the producers of the series and broadcaster as defendants in the suit.

Hard Rock Cafe claims that the Defendants’ actions at the Hard Rock Hotel/Casino have caused Hard Rock Café’s marks to “become associated with objectionable and offensive conduct that is at odds with the brand imagery of the HARD ROCK trademarks” and that Defendants have “failed to use their best efforts to protect the goodwill associated with” Hard Rock Café’s trademarks. According to Hard Rock Cafe, the reality show portrays “offensive and depraved conduct,” and depicts the Las Vegas Hard Rock Hotel & Casino staff as “unprofessional, incompetent, and/or physically and emotionally abusive to hotel guests and other staff.”  Hard Rock Cafe’s also asserts a claim over the registration of domain names, which incorporate the HARD ROCK marks, in violation of the License Agreement.

Isn’t offensive and depraved conduct what rock-n-roll is all about?  Biting the heads off of bats, throwing up on stage.  I don’t need to see any “licensing” agreement to make a legal determination here.  Maybe Hard Rock Café should think about changing its name to Little Girl Café.  But little girls are adorable, and that’s so not fair to little girls to compare them with the soulless autocrats who clearly have no clue what hard rock is all about.

The Bleach Boys

In a razor thin 2-1 decision, a WIPO Panel held in favor of the registrant of <Cloro.com> on a Complaint brought by Clorox.  Although the Panel found that NetEgg had made bad faith use of the domain name for over a year from October 2008 to February 2010, a majority of the Panel held that there was no evidence that NetEgg had registered <Cloro.com> in bad faith ten years earlier.  Cloro is Spanish for “chlorine” and “bleach.”  After finding that Respondent provided evidence that it had amassed a collection common Spanish language domain names, the majority held that, “[i]f Respondent did not register . . . the domain name at issue in this case, with an intent to use the Domain Name in bad faith, then he may use the Domain Name in any legitimate way he choses, including to attract Internet users to adult content sites.”  The Panel further held:  “Businesses are entitled to register domain names with generic meaning and value as an investment and decide what to do with them later. They may use them for any non-infringing use, or sell them, as they see fit.” The Clorox Company v. Domains for sale, dba Netegg, Case No. D2010-0831 (August 13, 2010).

The case also contains a biting dissent from the President Panelist who would have found in favor of Clorox, as well as a finding that there were no special circumstances to justify the Panel’s consideration of Supplemental filings in the case.  Notwithstanding the absence of any WIPO rules that would allow for the filing of supplemental papers, Clorox submitted not one, but two sets of supplemental papers.  The Panel found that if such filings “were to become frequent in UDRP disputes, the disputes would likely become significantly more resource-consuming to all actors (the parties, the dispute resolution service, and the Panel) than is currently the case, which presents an outcome that seems contrary to the original intention of the Policy and the Uniform Rules in their present form.”  All good stuff as far as I’m concerned.  Most supplemental filings are a waste of time and money.

The decision is interesting not only because we won (we represented the Respondent, NetEgg, in the proceeding), but because it presents a clear example of how the same set of facts can lead to different results depending on who the panelists are.  If NetEgg had not paid for a three member panel, would Clorox be speaking Spanish today?

Queen Bee Stung by Ruling

On August 5, 2010, the Second Circuit Court of Appeals reversed the district court’s decision granting the Defendant Queen Bee’s motion to dismiss for lack of personal jurisdiction in the trademark counterfeit case of Chloé v. Queen Bee of Beverly Hills, LLC, 571 F. Supp. 2d 518 (S.D.N.Y. 2008). The court held that the single act of shipping an item into New York, combined with substantial activity involving New York, comports with New York’s long-arm statute, N.Y. C.P.L.R. § 302(a) (McKinney 2001), and with due process. Chloe v. Queen Bee of Beverly Hills, LLC, 09-3361-cv (2d. Cir. 2010).

Chloé sells upscale leather handbags, and is the owner of a trademark registration for the word mark CHLOÉ for handbags. In 2005, Chloé was selling its leather handbags for approximately $1,600 in boutiques. Queen Bee of Beverly Hills sold counterfeit copies of the handbag on its Web site, www.queenbeebeverlyhills.com, for $1,200, plus shipping.