"So the side discussion of this spat could revolve around the logos of the companies (which are somewhat dissimilar)..."
Somewhat dissimilar? Meaning what? They are essentially the same but somewhat dissimilar? Mostly the same but somewhat dissimilar? Either one sounds like a grudging admission that they do indeed have similarities.
And the fact that they are similar designs is certainly not a "side discussion", it's front and center.
The trademark office has rules and the courts have found that they are not impermissibly vague. There's no evidence here of selective enforcement. None of the other marks mentioned have been challenged, and if they were they would go through the same process.
FWIW you are mixing copyrights and trademarks. Two different critters, and two different governmental offices.
I wonder if we'll see any challenges to some of these marks now that they're in the spotlight. "Dago" really ranks right up there with "Redskin" on the offensive scale, but the others are more debatable.
I'm not comfortable with the idea that approval of a trademark is a form of government speech but I'm also not comfortable with the idea that the US government can be impelled to endorse or display speech which has been deemed vulgar and offensive. Regardless, I don't see the courts coming around to the idea that this is a first amendment issue and the Lanham Act is not going away, but this is not the end.
Really though, the presence of those other marks on the register does not matter much, since they've never been challenged. If they were, some would surely be cancelled, especially the marks that employ seemingly racist language. No doubt confusingly similar marks, and descriptive marks, and offensive marks, make it on to the register, but that's why there are provisions for opposition and cancelations.
And even after cancelation, there is nothing preventing the use of the REDSKINS trademark under common law, which also undermines the first amendment argument.
It's a damn shame. Congress is avoiding difficult decisions and forcing the LoC to do it for them, putting the LoC into a decision making role that is subject to political pressure and the requisite criticism.
"EarPods was a barely-variant version of a trademark registered by another company" - not to be ticky tacky but neither party has been granted a registration yet.
Direct Sound filed first their app first (9/8/12), but Apple was able to claim the "priority" date of an application Apple filed in Jamaica (7/17/12) a few months earlier, which put Apple ahead of Direct Sound in line for review at the PTO. Apple's app was approved first and published, while Direct Sound's app was suspended pending Apple's app becoming a registration. But Direct Sound opposed the Apple app, and they claim an earlier "first use date" of 6/28/12, so they should prevail and eventually get the registration, assuming that date is correct and Direct Sound has the evidence to back up that date. If Apple produces evidence of their use that predates Direct Sound use then they could conceivably prevail. It might seem like a slam dunk for Direct Sound but you never know.
I couldn't find it, but a comment on the source article says that Direct Sound's Motion for Summary Judgement was denied, which is interesting and may be a small victory for Apple, at least initially.
Look for the usual "make it go away" settlement from Apple, a la iPad.
"First, the word is descriptive in nature. Second, the mark is in use by many other companies already, including Carlton & United, and doesn't serve as a source identifier." - I think you just wrote the court opinion.
Good comments SirWired. You have a firm grasp of the issues.
Manufacturers and grocery do occasionally have disputes over house brands and stuff like this, but they tend to settle it quietly and quickly, as they have a vested interest in working with each other.
Yeah, I agree with the previous comments. CRUNCH is used on other similar products, both descriptively and as a trademark (and there are many registrations for candy and chocolate products not owned by Nestle) but the choice to use essentially the same color scheme, the same shape, on the same or similar kind of product, seems questionable.
I also note the use of the word "identical" in this story. The packages don't need to be identical for there to be infringement, but more to the selected wording, I don't see where the claim is made that they are identical. Not sure what the suit says, but Nestle above says "remarkably similar" and "confusingly similar", which seems accurate, and says the other product "copied every key element of Nestle's CRUNCH Trade Dress" which is debatable, but no one but the author uses the term "identical". Why employ such a word when it's not the issue or the bar that needs to be reached?
Similarly, the author notes that both packages have the word "CRUNCH" and the color blue, but fails to note the use of red for "CRUNCH", or any of the other apparent similiarities spotted by the commenters here.
When certain key elements of the story are overlooked or glossed over, but others are discussed in detail, it seems disingenuous and self-serving.
"given that AB has admitted its run into this situation in the past, it's a bit surprising that the company hasn't even attempted to get a trademark on "the queen of beers" to avoid this very thing in the present."
It's not surprising really, because AB knows that they have a famous mark and that they have the legal means to protect their tagline without filing applications for every possible iteration of their mark. Why should AB have to file "The Prince of Beers" or "The Duke of Beers" just to protect their mark? They don't, because they understand, and courts understand, how language works.
The other reason they don't file such marks is because that would be fraud in the eyes of the trademark office. When you file a trademark application for a mark that is not yet used, but based on your intent to use it in the future, you must attest, under penalty of law, that the applicant intends to use the mark. In the eyes of the law, if AB doesn't intend to use the slogan "The Queen of Beers", any new application would be considered fraudulent. That's not to say it doesn't happen all the time, but it's not a sound method of protecting one's trademarks.
"King of Beers" is a well known slogan, and most folks know the Budweiser tagline. I'm actually surprised that they didn't get an outright rejection from the trademark examiner to begin with. Any application for a tagline for a beer using "(insert any royal title) of Beers" will get AB's attention and if it goes to court AB will win in a heartbeat. It is most certainly confusingly similar and it would easily mislead consumers as to the source of the product.
Again, ask yourself this question - would party B have chosen the name/brand/trademark that they did if it were not for the existence of the name/brand/trademark of party A. If the answer is no, then there's a good chance that party B is trading off the goodwill, the notoriety, the fame of party A.
The Doobie Brothers seem to own the only registered trademark that includes the word DOOBIE for entertainment services (there is another recently filed application for DOOBIE DEMOLITION but it's a good bet it get's rejected based on the existing reg), but whether the Doobie Brothers will be successful or not in this suit may indeed depend on whether they have been defending the name consistently in the past. If there are a slew of other "DOOBIE" named bands making music and they have been allowed to perform without challenge for a long period of time it will be very hard for the DB to put that genie back in the bottle. However, if the DBs have a been enforcing the DOOBIE BROTHERS trademark consistently and taking action against other "DOOBIE" named bands in the past then they will most likely prevail.
In these situations I always ask this question: would party B have chosen the name/brand/trademark that they did if it were not for the existence of the name/brand/trademark of party A. If the answer is no, then there's a good chance that party B is trading off the goodwill, the notoriety, the fame of party A.
"The other day I went to a restaurant and asked for a Coke. The crazy waiter man said, "We have Pepsi."
I think the scenario is more like…I walked into the restaurant and before I sat down I asked the hostess seating me "Do you have Coke?" She says "we have an extensive beverage menu". Then, I ask the waiter for a Coke he comes back with the beverage menu. After looking up and down a few times at the menu to see where the Coke was I ask "do you have Coke?" The waiter asks if I want a Pepsi. I say "I don’t like Pepsi, I’d like a Coke". The waiter queries, "Would you like a Fanta or one of our other refreshing beverages?". "Do you not have Coke?". "These are the beverages we offer" says the waiter, again presenting the beverage menu. "Whatever", I say. Not wanting to leave and find another restaurant, I say, "Just give me a glass of water", and you stay and have dinner anyway.
My mom used to call that a “lie by omission”. The lie got you in the door, rather than move on to the place next door. Then the continued lie kept you looking at other items on their extensive menu, and the lie was not discovered until you were well invested in having dinner and getting hungier by the minute. If they were honest and told you they didn’t have Coke right up front you would then have the informed option of moving on right away, or choosing one of their other options.
Amazon wants to string you along because the longer they can get you to stay the better the chances you will make some kind of purchase from their extensive menu.
Uber does seem to pick and choose which laws it wants to follow and which it chooses to ignore, and where. Either that or things are just moving so fast that they're making it up as they go along. Risky either way with those kinda semolians involved.
As with so many of these stories here, one should ask this question - would party #2 have selected the trademark they did if it were not for the fame of trademark #1. If the answer is no, then you have to wonder if company #2 is trading on the fame of company #1.
Looking at the first view it's pretty clear that the chocolate folks were playing off Channel mark. They probably thought it was cute. But that's risky, and even after they made changes they are now on Channel's radar.
The headline should really reflect that the issue is not with ownership of the number "5" but a slightly more distinct "No 5" where the "o" is of a certain style, the use of which conjures up Channel's brand.