Category Archives: USPTO

Red Bull Facing Criticism for Trademark Opposition Against “Old Ox Brewery” Marks

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A short while ago I posted a piece on the power of social media with respect to certain IP disputes.  There is a new dispute that might serve as a powerful footnote on this issue.

On January 28, 2015, Red Bull GmbH filed a Notice of Opposition in the USPTO against applications for the OLD OX BREWERY and the OX Logo marks, as shown above.  Red Bull alleges that its famous energy drinks and other beverages will be confused with the beverages sold by Old Ox Brewery under the foregoing marks.  In particular, Red Bull alleges that:

An “ox” and a “bull” both fall within the same class of “bovine” animals and are virtually indistinguishable to most consumers. In addition, an ox is a castrated bull.

Applicant intends to use its name and logos on other Class 32 beverages,namely soft drinks for non-beer drinkers….

The Class 32 goods on which Applicant claims it has an intent to use in conjunction with Applicant’s OLD OX Marks include and are closely related to, used for the same or similar purposes, and/or are or will be advertised and promoted to and directed at the same trade channels, the same purchasers, and are or will be used in the same environment as Opposer Red Bull’s products and related goods and services.

Simultaneous use of Applicant’s OLD OX Marks on the Class 32 goods … and Opposer Red Bull’s RED BULL and Bull Logo Marks on its goods and related services … is likely to cause confusion, mistake or deception among purchasers, users and the public, thereby damaging Red Bull.

The critical allegations are thus that consumers will confuse or conflate the terms “Bull” and “Ox” and that the relevant beverages are related or overlap.

In a response posted to its website and social media on February 8th, Old Ox Brewery posted a public letter to Red Bull which stated as follows, in relevant part:

We are a small startup brewery in Ashburn, Virginia. We’re family-run, we love beer, and we love our community. For reasons that we cannot understand, you have attempted to strong arm us into changing our identity for the last 10 months because you believe folks might mistake Old Ox beer for Red Bull energy drinks. We respectfully disagree. The only similarity between our two products is that they are both liquids. You make non-alcoholic (but very extreme) energy drinks. We make delicious (but laid-back) beer. Our consumers are looking for two distinctly different experiences from our respective products.

Basically you are holding us hostage with a list of demands that, if agreed to, would severely limit our ability to use our brand. Demands like, never use the color red, silver or blue; never use red with any bovine term or image; and never produce soft drinks. Do you own the color red? What about fuchsia, scarlet, crimson, or mauve? Are you planting your flag in the color wheel and claiming those shades for Red Bull? Do you claim exclusive rights to all things bovine? Do you plan to herd all heifers, cows, yaks, buffalo, bison, and steer into your intellectual property corral, too?

When we refused to succumb to your demands, you responded by filing a formal opposition to not just our trademark but to the very name Old Ox Brewery. Way to step on our American dream. You say you are protecting your intellectual property rights, but your claim, in our opinion, is Red Bulls**t.

…. Can you honestly look at our brand and say, “this is a threat to my image?” We don’t think you can. Given that, we repeat our offer: We agree NEVER to produce energy drinks. In exchange, we are asking for one simple thing: Leave us alone. Drop this trademark dispute.

In addition, Old Ox has recently started a change.org petition that has so far collected over 1,600 supporters.

The broader news media has picked up on this dispute and, so far, they are generally siding with Old Ox.  For example, the Washington Post’s article is titled “Red Bull Wants to Rename an Ashburn Brewery, Because an Ox Looks Like a Bull.”  Whether Red Bull persists with the opposition or decides to moderate its demands, remains to be seen.

Dunkin’ Donuts and the “Best Coffee in America” Trademark

Dunkin’ Donuts application to register the mark BEST COFFEE IN AMERICA has been initially rejected by the USPTO because it “is merely laudatory and descriptive of the alleged merit of applicant’s services and the goods featured therein.”  Moreover, Dunkin’ Donuts’ “slogan is nothing more than a claim of superiority and is so highly laudatory and descriptive of the quality of the coffee featured in applicant’s restaurants, cafes and snack bars that applicant’s claim of acquired distinctiveness, based on five years’ use of the mark in commerce, is insufficient and unpersuasive.”  On this point, the USPTO cited In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999) which held that the mark THE BEST BEER IN AMERICA was “so highly laudatory and descriptive as applied to beer and ale that it is incapable of acquiring distinctiveness.”

Notably, the examining attorney’s comments relate to the fact that this mark had previously been rejected in 2005, at which time Dunkin’ Donuts amended its application and obtained registration for this mark on the Supplemental Registry in 2007.  Presumably, Dunkin’ Donuts sought to use the mark’s five years on the Supplemental Registry as a means to bolster the argument that this slogan had acquired distinctiveness through extensive use and association with Dunkin’ Donuts.  For the moment, the USPTO is not buying that argument.  That said, this was an initial rejection and it will be interesting to see what arguments Dunkin’ Donuts brings to bear in its efforts to overcome this hurdle.

Trademarks: Why “Havana Club” Rum is Okay But “Old Havana” Rum is Not.

A recent USPTO decision highlights a curious distinction between two rum brands that reference “Havana” in their names.  Both rums are made outside of Cuba but only one was allowed to have a registered trademark that includes “Havana.”

On February 9, 2011, the U.S. Court of Appeals for the Third Circuit had the final word on the lengthy dispute between Pernod Ricard USA, LLC and Bacardi U.S.A., Inc. over use of “Havana Club” to sell rum in the United States.   “Havana Club” was the name of a popular rum from Cuba produced by the Arechabala family that was exported to the U.S.   In 1960, after the Communist revolution, the Cuban government expropriated their family business without compensation.  Ultimately, the Cuban government sold certain U.S. trademark rights in the “Havana Club” name to Pernod notwithstanding the U.S. trade embargo on Cuban goods.  In 1997, however, the government agency that oversees the trade embargo retroactively revoked its permission for the transfer and the U.S. trademark registration subsequently expired.  Notably, Pernod was selling, and continues to sell, “Havana Club” rum outside the United States.

During this same time period, Bacardi purchased from the Arechabala family any remaining rights they might have had to the “Havana Club” mark and the related goodwill of the business, along with any rum business assets the family owned.   In August 2006, just days after the old trademark registration for “Havana Club” expired, Bacardi began selling rum in Florida under the “Havana Club” brand name. The rum was distilled in Puerto Rico and was made using the Arechabala family recipe.

Shortly thereafter, Pernod filed a false advertising suit under Section 43(a)(1)(B) of the Lanham Act, asserting that the labeling of Bacardi’s bottle, particularly the use of the words “Havana Club,” misleads consumers to believe that the rum is produced in Cuba.   Ultimately, the Third Circuit rejected those allegations: “[W]e conclude … that the Havana Club label, taken as a whole, could not mislead any reasonable consumer about where Bacardi’s rum is made” because “[t]he label clearly states on the front that the liquor is “Puerto Rican Rum.”   Use of the word “Havana” was thus not geographically misdescriptive according to the Third Circuit which further stressed that this “was not a trademark case, and certainly not one addressing trademark registration, no matter how much Pernod may wish it were.”   Accordingly, Bacardi continues to sell “Havana Club” rum in the U.S. that is made in Puerto Rico, although it has yet to seek federal trademark registration for that mark.   See the complete opinion here.

Given the unique facts of the “Havana Club” case and the law under which it was brought, a ruling by the Trademark Trial and Appeal Board (TTAB) on  March 3, 2012 — holding that the mark “Old Havana” for rum was geographically misdescriptive because it was not produced in Cuba — is not that surprising.  The trademark application argued that “Old Havana” was not primarily geographic in meaning, and thus qualified for registration, because (1) it suggests a certain special method for producing rum, and (2) it “possesses a certain prestige, evoking a place in time or a historical era, rather than a geographic city.”

The TTAB rejected those arguments, noting that “Havana is the focal point of Cuban commerce, with rum distilleries among its principal industries” and the “addition of ‘OLD’ to ‘HAVANA’ does not diminish the primary geographic significance when the mark OLD HAVANA is considered as a whole.”

Applicant also argued that its labeling (above) included the word “brand” after “Old Havana” to indicate that this term is a trademark and not a geographic indicator, along with the phrases “Cuban style rum” and “Product of USA.”  The Board was not swayed, however, because it was solely concerned with the “Old Havana” mark in isolation.  See complete ruling here.

These cases highlight two key points.  First, that using a geographic term in a brand name for a product produced outside that region creates a signficant risk that the product will be attacked as being “geographically deceptively misdescriptive.”  Second, that there is a significant distinction between the mark-specific and less robust proceedings of the USPTO and fact intensive litigation that focuses on consumers’ overall perception of a product.

CRÈME BRULEE ALMONDS® – Squirrel Brand v. Walgreens

On March 2nd, Squirrel Brand Holdings, L.P. filed a suit for trademark infringement in the Eastern District of Texas accusing Walgreens of selling, under its private label NICE! brand, “Creme Brûlée Almonds” that infringe on Squirrel Brand’s federally-registered trademark for that term.

According to Squirrel Brand’s website, “creme brûlée almonds” are “bite-sized substitutes for the famous dessert … made by toasting the finest California almonds and adding a luscious sweet creme flavor” and then “[f]inished with a thin layer of caramelized sugar.”  Squirrel Brand’s mark will no doubt be attacked as being descriptive even though it was registered on the principal register (as of 2/21/2012) pursuant to section 2(f) as having acquired distinctiveness by having been in exclusive and continuous use for more than five years.  This will be an interesting example of whether a clearly descriptive trademark that has only just been registered under section 2(f) can withstand heightened scrutiny in federal court.

Battle of the “Bowl” Chips: Frito-Lay v. Ralcorp

On February 10th, Frito-Lay filed suit in the Eastern District of Texas against private-label specialist Ralcorp and accused it of infringing Frito-Lay’s federally-registered trademark for bowl-shaped tortilla chips (below) by manufacturing, on behalf of Wal-Mart, MEDALLION BOWLZ tortilla chips.

In this regard, Frito-Lay contends that its design mark (U.S. Reg. No. 2,766,278)  is embodied in its TOSTITOS SCOOP! tortilla chips (on left) and that the MEDALLION BOWLZ chips (on right) are confusingly similar.

Frito-Lay further alleges, “on information and belief,” that Ralcorp infringed three utility patents relating to the manufacture of such chips.

On the same day Frito-Lay filed its suit, Ralcorp counter-sued in the Eastern District of Arkansas for declaratory judgment of non-infringement and cancellation of Frito-Lay’s design mark based on assertions that (a) the “bowl-shaped configuration” of the chip is “functional” by allowing the user to use the chip as a bowl for salsa, dip, etc., and thus not allowed as a trademark, and (b) the design mark has been abandoned because TOSTITOS SCOOP! chips do not, according to Ralcorp, incorporate the particular aspects of the mark.  Not surprisingly, the parties are presently engaged in motion practice with regard to the proper forum for the litigation.

Ralcorp’s attacks on Frito-Lay’s design mark — especially the “functional” claim — have some heft.  That said, if Frito-Lay obtains evidence of actual consumer confusion then its claims will gain strength.  All in all, this will be an interesting case to follow and epitomizes the battle between established, national brands and private label / house brands that have increased since the 2008  economic downturn.

Frito-Lay v. Pretzel Crisps

In an article titled Trademarks Take on New Importance in the Internet Era, the New York Times highlights a dispute in which Frito-Lay is contesting  registration of the mark PRETZEL CRISPS with the USPTO’s Trademark Trial and Appeal Board (TTAB).   As noted in the article:

Frito-Lay contends that Pretzel Crisps cannot be registered as a trademark because it is a generic term. “Like ‘milk chocolate bar,’ the combination of ‘pretzel’ and ‘crisp’ gains no meaning as a phrase over and above the generic meaning of its constituent terms,” the company wrote in a 2010 motion.

The dispute will ultimately come down to whether the public views this term as being “generic” or as having trademark significance, i.e., as identifying the source of the goods.  Notably, PRETZEL CRISPS have been on sale since 2004 and it appears there is evidence supporting each side’s position.

See full article here.