Fighting for Peace and Love

Juice Generation v. GS Enterprises (Fed. Cir. 2015)

PLJJuice Generation has been seeking a registration on its mark “Peace Love and Juice” for its juice bar business but has been challenged by GSE who holds a family of marks with the phrase “Peace & Love” used in the restaurant business. The question for registration is whether the Juice Bar mark creates a likelihood of confusion with the GSE marks.  The Trademark Trial & Appeal Board (TTAB) found that the marks were too similar and thus could not both be registered. On appeal, however, the Federal Circuit has vacated that decision based upon its opinion that the TTAB should more thoroughly reevaluate the strength/weakness of GSE’s marks.  In particular, the court found that the TTAB should more fully consider the extent of third-party use of the Peace & Love phrase.

The fact that a considerable number of third parties use similar marks was shown in uncontradicted testimony. In addition, “[a] real evidentiary value of third party registrations per se is to show the sense in which . . . a mark is used in ordinary parlance.” 2 McCarthy on Trademarks and Unfair Competition § 11:90 (4th ed. 2015) (emphasis added). “Third party registrations are relevant to prove that some segment of the composite marks which both contesting parties use has a normally understood and well recognized descriptive or suggestive meaning, leading to the conclusion that that segment is relatively weak.” Id.

In its decision, the Federal Circuit repeatedly emphasized that the strength or weakness of a mark is not a binary question, but rather one that fits on a spectrum of possibilities.  Although a weaker mark can be registered and protected, its penumbra of power will be much narrower than would a stronger mark. “The Board here did not conduct an analysis of all evidence relevant to where on that spectrum GS’s marks fall and the resulting effect on the overall likelihood-of-confusion determination.”

 

16 thoughts on “Fighting for Peace and Love

    1. 3.1

      Spend a little more time listening to what marketing is saying and a little less time being dogmatic about what is “best.”

      Clearly, in the realm of Trademarks, “best” is not what you think it is from your “legal perspective.”

  1. 2

    Just figured I’d leave this here to see if anyone’s interested:

    link to managingip.com

    It’s a piece that talks about a recent interview with Michelle Lee and also talks about some concerns of other folks. One thing I’d like to point out that’s apparently from the CCIA:

    “We hope that director Lee will begin to deemphasise treating patent applicants as “customers”. While patent prosecution does not need to be adversarial, there is no entitlement to a patent just for paying the fee. No patent should issue for an invention that is not actually patentable.

    We are concerned, however, with the way that examiners are being treated. After the recent inspector general’s report, we’re hearing from USPTO employees that major policy changes are being made reactively and without consulting them. For example, trade mark examiners were notified of changes to their metrics; the problem is that those changes actually discourage efficiency.

    On the patent side, we’ve heard of unwritten policy changes being handed down without notice; some of the changes are apparently contrary to official USPTO policy, but examiners are still being evaluated negatively for failing to comply with them.

    While there are problem examiners, there seems to be a sense of panic coming from management in trying to avoid another scandal. And in that panic, good examiners are becoming disgruntled and dissatisfied. We hope that Director Lee will encourage the USPTO to take a collective breath and work with examiners to find the right policies to reward high-quality work. The USPTO needs to retain the best examiners, not drive them out. It will take Director Lee’s direct involvement to ensure that policy changes are made thoughtfully and in cooperation with examiners. Otherwise, the USPTO risks losing its greatest asset: good, experienced examiners.”

    All right in one little area they all together addressed entitlements to patents and also unwritten policy changes being handed down without notice in the corps.

    Anyone have any thoughts one when the entitlement to a patent does begin? Also, any examiners on here that are having such unwritten policy changes happening to them?

    1. 2.1

      6, What scandals?

      A highly motivated workforce is always desired. Let take the army of Julius Caesar as a prototype of the very best workforce ever assembled at any time or any place. Why was that army successful? Why was it loyal? Why did it so easily sweep away all before them, from the Gauls, to Pompey, to the armies of Egypt when Caesar had only two cohorts?

      I would start with the simply idea that that army had confidence in its leader, knew who the enemy was, never gave up, and was amply rewarded for success.

      When the leader is opaque in setting goals, treats the “enemy” as clients, and does not reward achievement, what can and should one expect?

      1. 2.1.1

        6, as an example of the problem the patent office has in determining its mission, I give your Exhibit A:

        “The Public Advisory Committees for the USPTO were created by statute in the American Inventors Protection Act of 1999 to advise the Under Secretary of Commerce for Intellectual Property and Director of the USPTO on the management of the patent and the trademark operations. The Public Advisory Committees consist of citizens of the United States chosen to represent the interests of the diverse users of the USPTO. The Public Advisory Committees review the policies, goals, performance, budget, and user fees of the patent and trademark operations, respectively, and advise the director on these matters.”

        link to uspto.gov

      2. 2.1.2

        The “scandals” are the mini-scandals on teleworking and the other one about supposedly “quality”/management controlling people that happened right after.

    2. 2.2

      Where does the entitlement to a patent begin? For a reader in Munich Germany, it seems easy to answer that question.

      It is the task of the EPO to grant patents. It is the job of the Examiner to check that a patent application meets all the EPC requirements of patentability and, as soon as the application survives that check, grant a patent. So, file something that meets EPC requirements and you enjoy that “right”.

      Of course the job is less stressful for Examiners at the EPO than yours because 1) nobody gives any deference, after issue, to the work of EPO Examiners prior to issue, and 2) only the preponderance of evidence stands between a duly issued EP claim and its being found invalid. So a) Examiners at the EPO get less opprobrium if they let through to issue something that had no “right” to be granted and b) Applicants at the EPO are grateful for objections from conscientious Examiners, for that helps them to take to issue claims that will be able to withstand validity attacks after issue.

      1. 2.2.1

        Max, I suspect Germany never had the problem the English had with trade monopoly patents so freely passed out by Queen Elizabeth and James I in their effort to counter the Spanish. In England and the US, patents are viewed with disfavor and are only justified for significant advances in technology. (But of course, we also have Judge Rich to provide a balance to the notion that a significant advance in technology was necessary as he believed that neither significant, advance nor technology were necessary at all.)

        So, if we begin talking about significant advances to technology, then a patent is justifiable. But, when Judge Rich was around and granting patents to the improved price algorithm, the whole idea of a patent system becomes controversial — just as it was in the days of merry old England.

        1. 2.2.1.1

          Hard-working and clever lawyers, serving their clients, are very good at pushing the boundaries of what they can protect under a country’s IPR regime. After all, they are only doing their job.

          Most judges know this, and are alert to resist creep into areas which the statutes did not contemplate. Somebody has to provide push back (or else the system is brought into disrepute, leading to loss of confidence, even public ridicule) and who else but the judges can provide it? A bit of research and I could find the quote I want. From Robin Jacob, I think.

          I guess your Judge Rich saw no good reason to resist such creep. He therefore failed to do the job he was appointed to do.

          1. 2.2.1.1.1

            The quote from Robin Jacob is to the opposite of what you are implying – it just is NOT up to the judiciary to write patent law with this notion of “pushing back.”

          2. 2.2.1.1.2

            The requirement for a significant advance in technology was originally that of Jefferson, but the seminal U. S. case, Hotchkiss v. Greenwood, cited to Losh v. Hague, an English case for the rule as well.

            Rich, before he was a judge, was a big wheel in the patent bar and openly argued that the Supreme Court had lost its way in determining how much invention there must be to justify a patent. He was a leader behind the effort to replace the rule developed by the Supreme Court in Hotchkiss with a rule of his own device that parodied Hotchkiss, but was in fact not a rule at all in that it relied upon the opinion of one of ordinary skill in the art.

            When he was appointed to the court, his prime objective throughout his judicial career was to eliminate the former Supreme Court rules regarding invention and to replace them with the new 103, which he had a personal hand in crafting. Thus he did not simply reject the requirement for a significant advance in technology, he was categorically opposed to that rule. Judge Rich was not simply negligent, he was an advocate for particular position, a particular philosophy.

            Fortunately, the Supreme Court has restored its former rule in KSR – implicitly again requiring a significant advance in technology.

            I find it remarkable that a man like Judge Rich could so negatively influence American patent law for so long and not be recognized for what he was. In contrast, from what I have seen of Judge Robin Jacob, I think his influence is wholly positive.

            1. 2.2.1.1.2.1

              Your “align-with-me-must-be-an-Einstein” malady is shockingly transparent here Ned, as the quote attributable to Judge Robin Jacob actually aligns with Judge Rich.

              Once again, you pursue an ignoble path of attempted denigration instead of properly reflecting that it was indeed Congress that changed the law in 1952. Congress that was reacting to an objectively anti-patent Supreme Court that had made a Nose of Wax out of “gist of invention” and the prior provided, but str1pped out power of using the t001 of common law evolution to define “invention.”

              It was Congress that – in fact – did more than just merely codify with the intense reworking of what prior to 1952 was but a single paragraph.

              Let’s have some inte11ectual honesty on this historical facts please.

    3. 2.3

      Also, any examiners on here that are having such unwritten policy changes happening to them?

      I haven’t heard anything about this – I’d be interested to hear what this is about (i.e., disciplinary or work quality).

  2. 1

    Chalk one up to common sense.

    Again, inside counsel always tell the marketing folks that the best trademarks have no meaning at all so that the public instantly associates the good or services with a particular source, and where trademark infringement is easy to prove.

    1. 1.1

      You don’t do much Trademark work, do you Ned?

      “Best” is simply far more nuanced than merely picking along the strength spectrum from “generic” to “suggestive” to “arbitrary” to “fanciful.”

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