Entries from July 1, 2013 - July 31, 2013

Providing the "Date" of the Trademark When Filing a New Trademark Lawsuit

Every party filing a new trademark lawsuit must complete “Form AO 120,” titled, “Report on the Filing or Determination of an Action Regarding a Patent or Trademark.”

The form asks the plaintiff to provide information about the trademark at issue in the suit, including its “date.”

I’ve gotten a couple questions about what date this refers to. The form doesn’t say.

However, the form’s existence springs out of 15 U.S.C. § 1116(c), which states:

“It shall be the duty of the clerks of such courts within one month after the filing of any action, suit, or proceeding involving a mark registered under the provisions of this chapter to give notice thereof in writing to the Director setting forth in order so far as known the names and addresses of the litigants and the designating number or numbers of the registration or registrations upon which the action, suit, or proceeding has been brought…”

This suggests the date the form asks for is the date the mark was registered.

So what if the mark isn’t registered? The clerk of court will probably require the plaintiff to fill out Form AO 120 anyway. In that case, I think the best practice would be to provide the date any application to register the mark was filed.  Or, if the plaintiff has not filed such an application, to provide the mark’s first-use date. Neither are strictly required by the statute, but providing such dates should satisfy the clerk and appraise the PTO of the pending action.

Court Finds "The Fitchuation" Parodies "The Situation," so No Infringement

Abercrombie & Fitch beat the rap.

It made fun of Jersey Shore star Michael “The Situation” Sorrentino by selling shirts that used the phrase “The Fitchuation.”

Sorrentino and his company, MPS Entertainment, sued Abercrombie for trademark infringement. Abercrombie responded that its t-shirts were not likely to cause confusion with MPS’ alleged trademark because they constituted parody.

Legally, a parody must simultaneously do two things: it must conjure up the original; and it must communicate that it is not the original. If it succeeds in doing both, it will avoid a likelihood of consumer confusion.

The U.S. District Court for the Southern District of Florida found Abercrombie met this test. It wrote: ”The undersigned agrees that A&F’s ‘The Fitchuation’ t-shirt constitutes a parody that is a play on words of a public figure — Sorrentino’s nickname, ‘The Situation,’ and ‘Fitch’… The shirt contains the defendants’ mark, ‘Fitch’ and bears the A&F brand label.” These facts, the court found, pointed against a likelihood of confusion.

The court similarly found Abercrombie wasn’t trying to profit from consumer confusion. “The target of A&F’s parody is ‘The Situation.’ The t-shirt expresses ‘The Fitchuation’ visually and phonetically different than ‘The Situation.’ There is no evidence of A&F ‘palming off’ its t-shirt as that of the plaintiffs where, as here, the t-shirt has the A&F inside label and prominently uses A&F’s own famous trademark ‘Fitch’ as part of the parody.”

Given these findings, it’s not surprising the court granted Abercrombie’s motion for summary judgment dismissing the plaintiffs’ claim for trademark infringement.

News coverage here.

In Yale (University) vs. Yale (Academy), the University Wins

Again from the New York Times, a good look at trademark infringement lawsuits involving Ivy League schools.

The article features a lawsuit Yale University recently filed against Yale Academy, a SAT test prep school. Yale Academy said it chose its name by combining the names of its owners, Mr. Yang and Ms. Lee. Oh, and the academy also used Yale University’s blue-and-white color scheme because, as Mr. Yang explained, blue was his favorite color. 

The academy will soon be known as Y2 Academy.

The article quotes a Harvard University spokesman who said the university “actively protects its name and trademarks from unauthorized use around the world, especially in those areas most important to, and most identifiable with, Harvard, such as education research.”

The reporter thought that meant Harvard Maintenance was in the clear, since its janitorial services are sufficiently different from the educational services that Harvard University provides. But not Korea’s Harvard Academy or India’s Harvard International School of Management, both of which received cease-and-desist letters from the university and agreed to change their names.

Interestingly, the article points out that no one trademark owner can have a monopoly over geographically descriptive trademarks, which limits what Princeton University (located in Princeton, New Jersey) or Columbia University (which shares its name with many cities) can do to enforce their rights.

The takeaways? If you develop a unique brand — one that points back to you alone — you can broadly assert your trademark rights against third parties that mimic your brand and your offerings. However, pick a weaker brand — like one that is descriptive — and your efforts to enforce your trademark will be much more limited.

In other words, be Yale or Harvard, not Princeton or Columbia.