Copyright & Trademark Matters

Insights and Developments in Copyright and Trademark Law

U.S. Supreme Court Allows Pom Wonderful to Pursue Lanham Act Claims against Coca-Cola

Posted in Lanham Act, Litigation, Section 43(a), Trademark

Written By: Susan Neuberger Weller

Further to our April 23 post on the Pom Wonderful-Coca-Cola U.S. Supreme Court case, the  Court on Thursday June 12 issued an unanimous decision (with Justice Breyer taking no part in the consideration or decision of the case) reversing the Ninth Circuit  and holding that competitors may bring Lanham Act claims, like those brought by Pom, challenging food and beverage labels regulated by the FDCA. Continue Reading

Hershey Is Not So Sweet on Maryland Senator’s HERSHEY Campaign Logo

Posted in Color, Copyright, Copyright Infringement, Fair Use, Trademark, Trademark Infringement

Written by: Susan Neuberger Weller

When you think of The Hershey Company, you think of delicious chocolate candy bars, chocolate kisses, and a fabulous amusement park in Hershey, Pennsylvania. The company’s brown candy bar wrappers with the HERSHEY’S trademark prominently displayed on the front have been in use since, at least, 1905, and the company owns numerous US trademark registrations for this version of this mark for candy and other products. However, Hershey is not so sweet on a Maryland State Senator Steve Hershey’s chocolate-colored campaign signs which, it claims, bear a striking resemblance to its famous trademark and trade dress, and has filed suit against the Senator for trademark infringement and related claims. A side-by-side comparison of the Hershey trademark and Senator Hershey’s chocolate-colored campaign signs are displayed in the Complaint and in connection with an article in The Baltimore Sun newspaper. Continue Reading

OOHRAH! A Few Good Trademarks: The U.S. Military’s Trademark Campaign

Posted in Trademark, Trademark Infringement, Trademark Trial and Appeal Board

Written by: Susan Neuberger Weller

Recently, there was an interesting article in the The New York Times discussing the current state of military trademarks. Many people might think that federal and state government entities and agencies cannot, do not, or should not own exclusive rights in trademarks used in connection with commercialized products and services. However, unless there is a statutory prohibition against ownership of trademark rights in government insignia  (as there are for certain government seals ), government entities have just as much right to own trademarks as does any private citizen. Continue Reading

Counterfeit Certification Marks: How to Certify that the “Certified” is Certified

Posted in Certification Marks, Counterfeits, Trademark, Trademark Infringement

Written by: Susan Neuberger Weller

We have all seen or heard about them without, perhaps, knowing what they were or for what they stand: the GOOD HOUSEKEEPING seal of approval, UL certified, ENERGY STAR rated, GROWN IN IDAHO potatoes,  HARRIS TWEED, and many, many more. They are called certification marks and they fall within the province of trademark law. Certification marks are words, slogans and/or logos licensed by their owners to be used on products or in connection with the advertising of services offered by third parties which meet standards set by the certification mark owner. Their purpose is to inform the public that the products or services certified meet certain minimum quality standards established by the owner/certifier, to ensure a higher level of consumer protection and safety.

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Pom Wonderful and Coke in a Juicy Battle at the U.S. Supreme Court

Posted in Section 43(a), Trademark

Written by: Susan Neuberger Weller

On Monday April 21, Pom Wonderful LLC, the maker of a line of POM WONDERFUL® pomegranate juice products,, and The Coca-Cola Company, which sells MINUTE MAID® juice products,, battled it out before the U.S. Supreme Court on the issue of whether a private party can bring a claim under  Section 43(a) of the Lanham Act challenging a product label that is regulated under the Food, Drug, and Cosmetic Act. US Supreme Court Case  No. 12-761. In the proceedings below, the Ninth Circuit unanimously affirmed the district court’s grant of partial summary judgment to Coca-Cola ruling that Pom’s Lanham Act claim was barred by FDA regulations to the extent it challenged Coca-Cola’s’s label on its MINUTE MAID® Pomegranate Blueberry Flavored Blend of 5 Juices beverage product.

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Houston, We Have a Problem: City Petitions the US Supreme Court to Register Its Official Seal as a Trademark

Posted in Color, Emoticon, Legislation, Product Configuration, Section 2(b), Trademark, Trademark Prosecution, Trademark Trial and Appeal Board

Written by: Susan Neuberger Weller

The City of Houston, Texas has filed a Petition For Writ Of Certiorari with the Supreme Court of the United States asking the Court to interpret Section 2(b) of the Lanham Act to determine whether it prohibits a government entity from federally registering its own flag or coat of arms or other insignia as a mark with the US Patent and Trademark Office.  The City of Houston v. Acting Director, U. S. Patent and Trademark Office, 13-784 (S.Ct. December 30, 2013). As was noted in our previous post on emoticons, US trademark law prohibits the registration of marks which fall into many different categories, including any mark which “consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof.”  The original Examining Attorney for Houston’s application for registration, and the US Trademark Trial and Appeal Board and the US Court of Appeals for the Federal Circuit in subsequent appeals, all agreed that the “plain meaning” of the statutory language prohibited such registration. Does this make sense?

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Can an Emoticon be Protected as a Trademark?

Posted in 15 U.S.C. 1051(b), Emoticon, Trademark, Trademark Infringement

Written by: Susan Neuberger Weller

Gap Inc. and Diane Von Furstenberg’s company DVF Studio have asked the federal court in the Southern District of New York to rule on whether the heart emoticon <3 can be protected as a trademark. Their declaratory judgment complaint filed against VeryMeri Creative Media Inc., 13 civ 8943 (December 17, 2013),  contends that VeryMeri cannot claim intellectual property rights in its stylized heart logo, which consists of or incorporates the <3 emoticon, since that logo/emoticon is “widely used in connection with apparel and related products,” since the stylized heart logo “is nothing more than a commonly used and well-known ‘emoticon’ or metacommunicative pictorial representation of a heart design,” and because “no one entity can be said to have the exclusive right over all forms of this [emoticon heart] design.” Continue Reading

Sarah Palin and North Jersey Media Group Battle Over “Fair Use” of Famous 9/11 Photo

Posted in Copyright, Fair Use

Written by: Susan Neuberger Weller

The iconic “Raising the Flag at Ground Zero” photo of firemen raising an American flag on September 11, 2001, which appeared on the cover of The Record newspaper and other newspapers on September 12, is at the heart of a lawsuit filed in Federal District Court in New York. The Complaint, filed by the owner of the copyright in the photograph, claims copyright infringement and false designation of origin for the unauthorized reproduction of portions of the photograph on the website for Sarah Palin’s federally registered political action committee,,  and on her Facebook page, Continue Reading

Willful Infringement of Copyright in Haitian Earthquake Photographs Cost AFP and Getty $1.2 Million

Posted in Copyright, Copyright Infringement, Damages, Digital Millenium Copyright Act, Safe Harbor, Statutory Damages

Written by: Susan Neuberger Weller

A federal jury in New York has found Agence France-Presse and Getty Images Inc. willful in their infringement of Daniel Morel’s copyrights in eight photographs of the 2010 Haiti earthquake, and ordered them to pay damages of $1.2 million. The court had already found AFP  liable for direct copyright infringement on summary judgment, but sent to the jury for disposition the issue of whether Getty’s affirmative defenses vitiated any liability for infringement. The jury was also asked to decide whether any infringement by either Defendant was willful. In addition, the jury awarded Morel $20,000 after finding that the two Defendants also violated the Digital Millennium Copyright Act.

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How Much “Intent” is Enough to Support an “Intent to Use” Trademark Application?

Posted in 15 U.S.C. 1051(b), Intent-To-Use Applications, Trademark Prosecution, Trademark Trial and Appeal Board

Written by: Susan Neuberger Weller

For many years now, the US Trademark Office has accepted trademark applications based upon a “bona fide intent to use” the applied-for mark on all the goods and/or to provide all of the services listed in the application at the time of filing.  Unlike in many other countries, a US application based on “intent to use” will not mature to registration until proof of use of the mark on all the goods and to provide all the services in the application has been filed with and accepted by the Trademark Office. The legislative history behind these statutory requirements makes clear that Congress wanted to prevent the warehousing of marks that no one had any real plans to use.

When an application is filed, the applicant must have an authorized representative sign, under penalty of criminal perjury, a declaration attesting to the fact that it has a “bona fide” intent to use the mark. The Trademark Office does not require proof of this intent at any point during the prosecution of the application. However, an application can be opposed by a third party with standing to do so on grounds that there was no “bona fide” intent to use the mark at the time the application was filed, rendering the application void. This is precisely what PRL USA Holdings, owner of the RALPH LAUREN POLO marks, did successfully in opposing two applications owned by Rich C. Young to register marks which PRL believed were confusingly similar to marks the company owned.

In these non-precedential opinions, the Trademark Trial and Appeal Board made clear that the “bona fide intent” required under the Trademark Act “must reflect an intention that is firm, though it may be contingent on the outcome of an event (that is, market research or product testing).”  Citing to prior case law, Section 45 of the Trademark Act, and the Senate Judiciary Committee Report for the relevant statutory provisions, the Board stated that there must be an intention to use the mark “in the ordinary course of trade” and not “merely to reserve a right in the mark.” Such an objective determination to be is made based upon all of the circumstances of each individual case.

The Board stated that one way of proving a lack of a bona fide intent is to demonstrate that an applicant has no documentary evidence, such as business plans, marketing or promotional activities, or evidence of discussions with manufacturers or licensees, to substantiate its allegations of intent.  Applicant Young’s responded to PRL’s discovery requests for evidence of activities involving the mark, that he was “in an intention to use status,” “did not have any business planning yet,” and  “did not have business activities yet.” In noting that it had “repeatedly found a lack of bona fide intent to use a mark by individuals who lack the demonstrated capacity to produce the goods identified in the application,” the Board held that the evidence in the cases demonstrated that Applicant only intended to “reserve a right in the mark” in case it was later approved for registration by the Trademark Office and that Applicant Young would only “at some unspecified future time begin developing a business.” Thus, PRL’s oppositions were sustained and both applications were refused registration.

So what is the take away here? First, coming up with a clever mark for a product or service that does not yet exist in any form other than in the imagination of an individual is not a proper candidate for an intent to use application. Thus, all applicants and their attorneys should ensure that there has been some demonstrated business efforts involving a mark before filing an application. For those applicants who might intend to use the mark only through a licensee, there should be some evidence to support this claim. Although the lack of intent will only surface if an application is challenged by a third party, the opposer need not have grounds to allege a lack of bona fide intent at the time the opposition is filed if it can, as PRL did, amend its application after discovery has uncovered no evidence to support claimed intent. Moreover, applications filed under Section 44 based upon a foreign registration are not immune from these requirements since all such applicants must also allege and declare under penalty of criminal perjury a bona fide intent to use the applied-for mark in US commerce despite the fact that proof of use need not be filed in order for the registration to issue.

Accordingly, although dreams can come true, be sure that clever ideas for a mark are backed up by evidence of plans to use the mark before filing an application.