"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.
Agree completely about the ability of drinkers on various levels to discern what's what, but on the retail level, and even for promotions in bars and restaurants, these products share advertising space, and they are, to some degree, competing for the same "share of stomach". That would suggest they are related goods. Channels of trade is an element that will be consider, along with the sophistication of the user.
Yeah, I agree. The original is a pretty unique tune, and the second sounded like a copy to my ear from the moment I heard it.
I get the idea that everything is copied and nothing is original, riffs get borrowed, producers want to capture a "feel". If Robert Johnson were around he'd have beef with a full half of the British invasion. But this isn't just a riff, to me the new song sounds pretty much like a copy of the whole old song, complete with 'woo's.
It's surprising it came out of the studio like that without someone catching it. Some remixing might have blurred the lines between the two songs enough to keep it out of court.
Or they could have just done what Sam Smith did with Tom Petty...http://www.rollingstone.com/music/news/tom-petty-on-sam-smith-settlement-no-hard-feelings-th ese-things-happen-20150129
Trademark protection is limited to specific product categories in most cases, but in cases where a "famous" mark is involved there is the claim of "dilution" which can reach across product classes. One of the aspects in judging of a dilution claim is duration of use and consumer recognition, and these old brands have both of those things in spades.
And I would agree that if Macy's had used the old store brands as house brands they would probably be in a better position to defend the names broadly, assuming they used them prominently and consistantly. If they had been used, even minimally, it's likely the brand recyclers would just pass them over until the brands finally kick it for good.
That said, Macy's is flailing. They're putting up as many road blocks and causing as much delay as they can, but they will lose if it goes all they way.
These marks are not only merely dead, they really, most sincerely dead.
This seems to be an attempt to "keep the register clean", which is a classic corporate IP strategy that is all about quantity and not quality. A big pocket company will oppose, threaten to oppose, or send C&Ds to any and every new applicant using certain words, in hopes that most applicants will just withdraw. After a time this means there are fewer and fewer people using those words, thus making it easier for the big pocket company to stake out their claim around that word, and then using that as ammunition to go after yet more new applicants. It becomes self fulfilling, as more the sophisticated applicants recognize the pattern and avoid those words, the less knowledgeable applicants fold quickly.