Cooperstown Bat is using PRO DIAMOND to identify a brand of bat. DIAMOND may be descriptive, more likely suggestive, of the products sold by DIAMOND Sports, but DIAMOND Sport's years of use of the trademark has created secondary meaning in the brand for those people who purchase sports equipment, thus serving as an identifier of source and entitled to protection as a brand.
This might help. DIAMOND would be generic for jewelry, descriptive for equipment used to line or maintain baseball fields, suggestive for baseball equipment like bats, balls and uniforms, and arbitrary for something like smartphones or auto parts.
Generic: SMARTPHONE - for mobile communication devices LAPTOP - for small computers CLOCK - for timepieces GRIDIRON - for metal grills
Descriptive: CHAPSTICK - for lip balm FRESH ROAST - for coffee COLD AND CREAMY - for ice cream COPPERTONE - for sun block TASTY - for bread SHARP - for televisions
Suggestive: Greyhound - for transportation Rent-A-Wreck - for car rental AIRBUS - for airplanes GRIDIRON - for football helmets Chicken of the Sea - for tuna
Arbitrary: CAMEL - for cigarettes APPLE - for computers, etc.
"Can you name any of the products or services that use the name Hobbit? Don't trademark owners actually have to use those names commercially to retain the mark?"
Superb question. The US requires proof of use to gain and maintain a registration, unless the basis of the app was a registration from another country, which still requires proof of continued use after five years. The evidence submitted as proof of use is available on the USPTO website.
The US record shows evidence of use for HOBBIT on food products and bar and restaurant services (looks like a place in Ocean City Maryland called The Hobbit). I suspect that these registrations arise as part of settlements made after someone started using the name w/o license and Middle Earth challenged them, and then parties came to an agreement, but that's a guess.
The UK does not require proof of use for registration or renewal, but trademarks can be cancelled after three years of continuous non-use, which is a rule in many countries, including the USA.
The origin of the word is interesting, and debatable. Usage in England may be different, but to say that the word is generic seems a stretch.
A quick search of the UK trademark database shows about 40 active marks with "HOBBIT". Besides the contested marks, Zaentz own all but two, one for legal services from 2007 and one owned by a German company for plants dating to 1997.
USA is similar, with 50+ marks, all but one owned by Zaentz, and that one has been refused based on the Zaentz marks, as likely to confuse.
Further, the HOBBIT registrations in both countries cover a very wide range of goods and services, including alcoholic beverages, various food products, and "services for providing food and drink; bar services; cafes; restaurants".
The HOBBIT trademark is clearly ownable and protectable and used on a range of products and services by the same owner, and the owner has a long and successful history of enforcing their trademarks. The wine folks are going to have a very tough fight, and it's pretty clear they will not prevail.
I know little about the current video game scene but I agree that there should be no confusion, as there are a number of games using the word, and a quick search of the USPTO database finds a number of registered marks in class 9 (software) with the word "game or games" in the goods claim. It would seem ID is not exclusive with the word RAGE.
That said, I'm seeing several RAGE trademarks owned by ID that date back to 2011 and 2012, and nothing that became registered in 2015, so I'm wondering if the statement in the original article and repeated here that "id Software trademarked the word “Rage” on January 12, 2015" is in fact accurate.
It seems you may be mixing apples and oranges, or trademarks and copyrights.
There are probably lots of people using the image of a moose for their trademarks in Canada, and there are certainly other trademarks using the word "moose" in Canada, (just as surely as there are MOUSE and DUCK trademarks), but the people at MOOSEHEAD seem to be the only people using, and registering trademarks, for "MOOSE" for beer for many years, and they have protected their well known mark and prevented others form using the MOOSE trademark for beer.
"Beyond that word, nearly everything else to do with the packaging and trade dress is different..." Right. But the word MOOSE is the real issue, so what does that matter? MOOSEHEAD has a strong case and would win in court if it goes that far, but it won't. It's not like there are lots of beers with MOOSE in the name being sold in Canada. As far as I can tell, there's one, and it's quite famous. And MOOSE is not at all descriptive of the product and would be considered a strong trademark. The spelling difference of "moose" as "müs" is meaningless. It is phonetically the same, and that is how a court would see it. They should have picked a different name.
"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.