by Dennis Crouch
In a brief order, the Federal Circuit has put what appears to be the final nail in the coffin of Steve Elster's attempt to register "TRUMP TOO SMALL" as a trademark.
Tag Archives: Trademark
Dewberry Group: Structuring the Firm to Avoid Trademark Liability
by Dennis Crouch
The U.S. Supreme Court has granted certiorari in Dewberry Group, Inc. v. Dewberry Engineers Inc., a trademark damages case focused on how corporate separateness principles apply to disgorgement remedies under the Lanham Act, 15 U.S.C. § 1117(a). The Fourth Circuit's decision affirmed a $43 million disgorgement award against petitioner Dewberry Group (DG) for trademark infringement, an amount that included profits earned by DG's "legally separate" corporate affiliates. Apparently, the affiliates were “single-purpose entities,” also privately owned by John Dewberry, whose sole function was to own commercial properties serviced by DG.
Pierce the Veil: In its literal sense, a veil is a delicate fabric that separates the visible from the concealed, a barrier that can be easily lifted or parted. However, the phrase has a history of extending beyond the material world, with a veil often serving as a boundary between the physical and spiritual realms in our universe. Many of us go through life, only occasionally glimpsing beyond this veil into the hidden spiritual dimensions that, according to story tellers, lie alongside our own. In the corporate world, the veil of corporate personhood serves to shield the owners from personal liability, creating a legal fiction that separates the actions of the company from those of its shareholders. This veil of protection is not impenetrable, however, and can be pierced by the courts in cases of serious misconduct or wrongdoing, exposing the owners to personal responsibility. Although the truth of owner identity may already be known, piercing the corporate veil removes the protection against responsibility by attempting to holding accountable those who would misuse its protections. But, the legal doctrine of corporate separateness is quite strong and I might venture that it is easier to pierce the veil of our spiritual realms than the corporate analogue.
Celebrity Names and Trademark Claims: Insights from the Hobbs Winery Case
by Dennis Crouch
The Federal Circuit's recent decision involving Paul Hobbs and Hobbs Winery raises a number of important issues for anyone investing in celebrities or influencers. In the case, early investors in Hobbs Winery were unable to prevent Mr. Hobbs from using his name in other wine ventures, even though a registered mark on PAUL HOBBS was owned by Hobbs Winery. This case was decided on statutory grounds - with a holding that minority owners in a company are not authorized to bring a TM cancellation to protect a mark held by the company. This is an important decision because it prevents the TTAB from being used to settle internal corporate management issues.
Cycling Towards Confusion: Is there room for iFIT Fitness Services and iFIT Safety Glasses?
by Dennis Crouch
In its initial decision, the TTAB dismissed iFIT's opposition to ERB's I-FIT FLEX registration -- finding no likelihood of confusion because the goods were in separate markets. iFIT is a major manufacturer of exercise equipment like treadmills and stationary bikes and holds several trademark registrations for IFIT marks covering fitness machines, online fitness training services and content, software, and some ancillary products like apparel. ERB Industries applied to register I-FIT FLEX for protective and safety eyewear sold at hardware stores such as Home Depot. Although the two brands are at-times sold in the same online store (Amazon.com and Walmart.com) this type of overlap was not sufficient for the TTAB. In its decision, the TTAB rejected iFIT's relatedness argument using an analogy to racecar drivers and chemists. The TTAB reasoned that while some racecar drivers and chemists may use safety glasses, that doesn't mean safety glasses are related to racecars or to chemicals like ammonia.
iFIT appealed the Federal Circuit, and most recently Federal Circuit granted
Federal Circuit Untangles Trademark Dispute
by Dennis Crouch
Araujo v. Framboise Holdings Inc., No. 23-1142 (Fed. Cir. Apr. 30, 2024).
In this appeal, the Federal Circuit affirmed a Trademark Trial and Appeal Board (TTAB) decision sustaining an opposition proceeding and refusing registration of the standard character mark #TODECACHO for hair combs. Procedural and Substantive: the Federal Circuit held that the TTAB properly allowed Framboise to extend its trial period; and that substantial evidence supported the TTAB's finding that Framboise established prior use. Opinion by Judge Lourie, joined by Judges Linn and Stoll.
In Brazilian Portuguese the colloquial phrase - "to de cacho" - is often used to mean "I am angry." In the context of this case, however, it references difficult to control curly hair.
Trademark Influencers and Aspen Mountain
The Battle Over Domicile Disclosure by Trademark Applicants
by Dennis Crouch
In the pending appeal of In re Chestek, PLLC, No. 22-1843, a trademark applicant is opposing the USPTO requirement that all applicants must disclose their domicile address. This requirement, referred to as the “domicile address rule,” has been controversial since the USPTO adopted it in a 2019 rulemaking. For individuals, this rule requires an actual residential address. See Requirement of U.S. Licensed Attorney for Foreign Trademark Applicants and Registrants, Final Rule, 84 Fed. Reg. 31498 (July 2, 2019). The outcome could have significant implications for privacy and transparency in the trademark registration system. For a variety of reasons, many people do not publicly disclose their place of residence. In the US, the most common reasons stem from domestic violence and stalking. Although the USPTO is attempting to offer a mechanism to protect domestic residence from public view, it also recently had a major data loss of that information -- and effectively all domestic residence information is available in various sources online. A decision favoring the petitioner would also be seen as bolstering the Administrative Procedure Act’s notice and comment requirements.
The best place to begin any analysis is probably with the statute.