Walmart Loses Lengthy Trademark Infringement Lawsuit

"Walmart's Backyard Grill mark at the center of trademark infringement lawsuit"

Walmart’s recent trademark infringement lawsuit loss demonstrates the importance of trademark owners understanding their branding risk tolerance during the naming stage. In this case, Walmart had a high branding risk tolerance that will likely end up costing it millions of dollars.

In about 2011, Walmart Stores went down the path of launching a new line of barbecue products. The new mark it decided to adopt was BACKYARD GRILL. According to the most recent decision from the U.S. District Court for the Eastern District of North Carolina, Walmart instructed its trademark attorneys to conduct a trademark clearance search for this new mark. It’s trademark attorneys warned Walmart of a potential conflict with a prior registered mark THE BACKYARD (in standard characters) for “retail store services in the field of lawn and garden equipment and supplies” owned by Variety Stores, Inc.

Walmart made the decision not to follow its trademark attorney’s advice and filed an intent-to-use trademark application for:

Mark Image

in connection with a variety of goods and services including “barbecues and grills” and “retail store services featuring a wide variety of consumer goods of others.” With such a broad identification of goods and services descriptions, Variety Stores’ THE BACKYARD mark should have been cited against the registration of Walmart’s pending application. Surprisingly, Walmart’s BACKYARD GRILL mark sailed through the examination phase and was published for opposition where Variety Stores promptly opposed its registration.

The dispute did not stop there, nor did it deter Walmart’s plans to use the BACKYARD GRILL mark. A little over three years after the opposition proceeding commenced, it was suspended for a lawsuit filed by Variety Stores against Walmart alleging trademark infringement.

In 2016, Walmart lost the lawsuit and was ordered to pay Variety Stores $32.5 million dollars. This amount was a disgorgement of the profit Walmart had earned on its BACKYARD GRILL products. However, this award was reversed by the Fourth Circuit Court of Appeals on the ground that the case should have gone to the jury. The case was retried in front of a jury in October 2018 and the jury found that Walmart willfully infringed Variety Stores’ THE BACKYARD trademark. Now the case moves into further proceedings to determine Variety Stores’ monetary compensation.

Consumers likely to confuse Complimentary Goods Wine and Cigars

"Alec Bradley Star Insignia cigars complimentary goods to wine"

Joseph Phelps Vineyards, LLC won its appeal before the United States Court of Appeals for the Federal Circuit, and its case was remanded to the Trademark Trial and Appeal Board. This time the Board granted Joseph Phelps Vineyards’ petition for cancellation finding that wine and cigars are complimentary goods.

Fairmont Holdings, Inc. sought to register the mark ALEC BRADLEY STAR INSIGNIA (in standard characters) for, among other goods, “cigars.” The Trademark Office approved the registration of the ALEC BRADLEY STAR INSIGNIA mark and party, including Joseph Phelps Vineyards, opposed the registration of the mark. A little over a year after the mark registered, on May 17, 2013, Joseph Phelps Vineyards petitioned to cancel the ALEC BRADLEY STAR INSIGNIA registration. The proceeding lasted almost 6 years – Yikes!

There is a lesson here for trademark owners. Getting the registration does not mean you are safe. A registration remains vulnerable to a likelihood of confusion claim for five years following the registration date.

With respect to the relatedness of the goods factor, Joseph Phelps Vineyards offered several Web pages that advertise or promote cigar bars, cigars, wine bars, wine stores, and events featuring wine and cigars. It also offered evidence of flavored cigars infused with wine. Because the evidence showed that wine and cigars are used together, the Board found they are complimentary goods. This is consistent with the Board’s prior decision finding cigars and different spirits to be complimentary goods.

Joseph Phelps Vineyards mark consists solely of the word INSIGNIA and while Fairmont Holdings mark was the composite phrase ALEC BRADLEY STAR INSIGNIA it was not limited to any particular presentation and could be depicted with the word INSIGNIA larger than the word STAR. Joseph Phelps Vineyards argued that INSIGNIA in fact appears larger than STAR on the cigar labels and Fairmont Holdings’ specimen of use confirmed this.

INSIGNIA was not descriptive, generic, or diluted. Therefore, Fairmont Holdings could not avoid a likelihood of confusion by adopting Joseph Phelps Vineyards’ entire mark and adding subordinate matter. There is another lesson for trademark searchers. Unless your search reveals that the common element among the marks at issue is diluted, it is best to steer clear of the mark.

WeWork is Expanding its Current Family of Marks

"WeWork sign on building that is part of a family of marks"

WeWork announced that a rebrand will follow the latest investment by Soft Bank in the company. Following the investment, WeWork will change its name to THE WE COMPANY. In a blog post, the company said:

“The We Company’s guiding mission will be to elevate the world’s consciousness. Living a conscious life means choosing to live proactively and with purpose. It means being a student of life, for life, where we accept that we are always growing and in a constant state of self-discovery, self-growth, and change.”

This sounds like a great mission statement although it is not entirely clear how THE WE COMPANY conveys this better than WeWork. The more likely reason for the rebrand is the company is growing its divisions and THE WE COMPANY better conveys this change in their business, which is a smart change.

THE WE COMPANY is creating a family of WE marks. WeWork operates individual and enterprise office. WeLive are residential living communities. WeGrow are early education schools. Additionally, WeBank, WeSleep, and WeSail are in the works. “A family of marks is a group of marks having a recognizable common characteristic, wherein the marks are composed and used in such a way that the public associates not only the individual marks, but the common characteristic of the family, with the trademark owner. Simply using a series of similar marks does not of itself establish the existence of a family. There must be a recognition among the purchasing public that the common characteristic is indicative of a common origin of the goods.”

Marketed the right way, a family of marks increases the conceptual strength of a trademark, which is a good thing. As trademark searchers, it is also something we need to be aware of. More often than not, it is a good idea to avoid adopting a mark that may be misconstrued as being part of another party’s family even if the goods or services appear to be unrelated to the family.

J/P HRO Nonprofit’s Rebrand to CORE

"cancer fundraising with lollipops example of a nonprofit rebrand"

Following the disaster in Haiti, Sean Penn started an organization to help the devastated country. He named his organization J/P HRO. Nine years later, J/P HRO is getting a new name: CORE. According to an article in the Hollywood Reporter, in addition to continuing to help Haiti, the organization will also focus on helping other communities facing disasters in the Caribbean.

Unlike some of the rebrand examples that made the worst list in 2018, Sean Penn’s organization decided to shed its acronym for a word that better represents the organization’s image. The move was a good one. CORE is a better name than J/P HRO, but is it available?

Protecting the service mark rights of a nonprofit that performs its actual service in a foreign country can be tricky. Because trademark rights are territorial, use of a trademark in foreign country cannot support United States trademark rights. But some activities of this type of organization occur in the United States such as fundraising. Using a service mark in the United States to raise money for the organization can be protected.

Unfortunately, CORE, by itself, may not be available for fundraising services. The Silicon Valley Common Core Initiative has registered its mark for the broad description “charitable fundraising and charitable fundraising services.” This description is broad enough to cover raising money for Haiti and other Caribbean countries and the CORE word is encompassed in its entirety in the prior registered mark.

In situations like this, it would be wise for Sean Penn to make a couple changes. First, consider adding some words to CORE. Preferably, the added words will be inherently distinctive not descriptive or generic. But even descriptive and generic words are considers when assessing the overall commercial impression of a mark.

Second, be more specific about the type of fundraising the organization is doing and the cause it is supporting. This is an important first step in avoiding a potential dispute with the prior registered mark.

Petition Started Over Disney’s HAKUNA MATATA Trademark

"Disney Hakuna Matata t-shirt"

Using a foreign word in the United States as a trademark is a common naming practice. Sometimes, the foreign word possesses a cache that its English counterpart does not. Depending on the word, this practice can have some negative consequences.

In August of 2018, we saw the outrage from Hawaii when a Chicago-based restaurant chain tried to tell a single location Hawaiian restaurant it could not use the word ALOHA as part of its business name. And as 2018 was drawing to a close, we saw the same outrage against Disney manifested in a petition posted on the Change.org website. The petition was started by Shelton Mpala and has 178,813 supporters.

The problem, as Shelton Mpala sees it, is that “Hakuna Matata” is a Swahili phrase that translates to “no trouble” in English. It is a word that has been used by most Kiswahili-speaking countries and Disney’s trademarking the word is stealing a portion of African culture.

Disney has trademarked the phrase HAKUNA MATATA for t-shirts. But Healthy Pride Supplements has trademarked the same phrase for “multi-vitamin preparations; vitamin supplements; dietary and nutritional supplements” and another company has trademarked the phrase for wedding planning.

Trademarking a foreign word does not mean the word cannot be used in any context or any purpose. What it means is that in a commercial context on certain goods and services, prospective purchasers have the right not to be confused between the goods or services being offered in the marketplace. After all, trademark law is a consumer protection law.

In the case of Disney, that does not even mean that HAKUNA MATATA can never be used on a t-shirt by anyone. A purely ornamental as opposed to a trademark use of the phrase HAKUNA MATATA is allowed despite Disney’s trademark rights.

Nevertheless, while the Chicago-based restaurant may have had a better argument regarding the use of ALOHA by another restaurant, companies choosing to adopt foreign words as their trademark in the United States need to consider the non-trademark backlash that may result because of the general misunderstanding of trademark rights.

Interworking of the Similarity of the Marks Factor

"Cartier watch and two rings are jewelry that was the subject of a case involving similarity of the marks"

A recent Trademark Trial and Appeal Board decision is a good example of how the similarity of the marks, relatedness of the goods or services, and strength factors work together. Tai Fook Jewellery Company Limited sought to register the mark T MARK (in standard characters) for, among other goods, jewelry. The Trademark Office refused registration of Chow’s trademark application on the ground that its mark was likely to cause confusion with a prior registered mark TJ MARC & Design also for jewelry. .

Chow made the same losing argument about the sophistication of the consumers claiming that jewelry is personal; therefore, consumers will exercise care when making a purchasing decision. However, the Trademark Trial and Appeal Board said what it was said numerous times before that if the restriction does not appear in the goods or service description, then it will not read a limitation in to the description. Accordingly, the Board found the goods are legally related.

When goods or services are legally related, the channels of trade and classes of consumers are deemed to overlap. Moreover, less similarity between the marks at issue is required in order for a likelihood of confusion to exist.

Chow also made the common losing argument about the strength factor. Chow introduced a table of six third-party registrations – four shy of the 10 we believe is the minimum required to establish a weak mark – and then only one third-party registration containing the letters TJ and covering jewelry. Therefore, the rights in the TJ MARC & Design were not limited to a close representation of its mark.

When it came to the similarity of the marks factor, the Board stated that marks must be considered in light of the fallibility of memory. The proper focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks.

Because the goods were legally identical, the fact that the marks began with the letter “T” and ended with the word MARK or MARC made the marks more similar than dissimilar. The crown design element and use of TJ instead of just the letter “T” were insufficient to distinguish the two marks because the TJ MARC & Design trademark was not weak, and consumer focus on the literal elements of a trademark before any design element (although this is debatable).

Rare Loss for Plaintiff in Alcoholic Beverages TTAB Case

"Thunder Road whiskey bottle wins at TTAB"

Breweries, distilleries, and wineries that are defendants in Trademark Trial and Appeal Board cases have not fared well this year. More often than not, alcoholic beverage defendants foolishly cling to overly broad goods descriptions that ultimately prove to be their downfall. The scene was set for another plaintiff victory in a recent TTAB case, but in a rare turn of events the defendant prevailed because it properly offered sufficient third-party use evidence to establish the term in common with the plaintiff’s mark was conceptually weak.

Thunder Road Brands, LLC applied to register the mark THUNDER ROAD (in standard characters) for “alcoholic beverages, namely, Tennessee sour mash whiskey and moonshine.” E. & J. Gallo Winery opposed the registration of the THUNDER ROAD mark based on its prior registered mark THUNDERBIRD for the broad description “alcoholic beverages except beers.” Thunder Road Brands did not bring a motion to narrow E. & J. Gallo Winery’s broad description to the actual THUNDERBIRD product, which is a flavored fortified wine.

Accordingly, with the goods being legally identical – thus less similarity between the marks required for a likelihood of confusion to exist – and the marks sharing the THUNDER term in the first position, things were not looking good for Thunder Road Brands. Its only hope was to convince the TTAB that the THUNDER term was so incredibly weak that the difference between ROAD and BIRD was enough to avoid a likelihood of confusion.

E. & J. knew this and offered evidence of its commercial strength:  (1) continuous use since 1957 (over 60 years); (2) sales volume and revenue from 2009-2016; (3) advertising expenses from 2009-2015; (4) two YouTube videos showing a THUNDERBIRD television advertisement; and (5) third-party publicity in two songs, one by ZZ Top and the other by The Beastie Boys. The TTAB was unpersuaded by this evidence because it was stale and showed a downward trend. Strength or fame must be determined at the time of trial.

Similarly, E. & J. relied on two stale brand awareness studies, but more importantly E. & J. failed to properly authenticate the studies. Nevertheless, while the evidence did not establish fame for likelihood of confusion purposes, the Board did find that the evidence demonstrated the THUNDERBIRD mark was entitled to broader than normal scope of protection. However, based on what happened next, “broader than normal” probably means THUNDER used with a bird name.

Thunder Road Brands offered 25 third-party registrations and 13 Internet examples of THUNDER formative marks mostly for beer. These examples were relevant because the Board found that beer, wine, and spirits are related goods. The Board held that these third-party examples were enough to outweigh the evidence of commercial strength offered by E. & J. to the degree that it concluded the THUNDER term for alcoholic beverages is overall a weak term.

What makes trademark issues deceptively simple is the interplay between the likelihood of confusion factors, which are generally overlooked by attorneys that merely dabble in trademark law. In this case, because the Board found the THUNDER term was weak, the difference between ROAD and BIRD was sufficient to distinguish the marks despite the goods being legally equivalent.

BOB’S Take on the Seattle NHL Team Name

"Welcome sign to Seattle NHL team"

The National Hockey League recently announced the addition of a new team in Seattle, WA bringing the total number of teams in the league to 32. This is an exciting time for hockey fans, but also an exciting time for namers and trademark searchers. Shortly after the announcement of the new team in Seattle, the speculation began about the new team name. It did not take long for the list of prospective names to be leaked and for Vegas to start putting odds on which team name will emerge victorious. 

Here is the list of prospective names:

Vegas believes the EMERALDS is the odd on favorite to be the name of the new hockey club. Being the inquisitive trademark searchers that we are, we want to know what BOB thinks the name should be. We used BOB’s patent pending, multiname search functionality to conduct the search. 

First, we downloaded the Sample Excel Worksheet. Next, we entered the proposed names under the “Mark” column. In the “Wild Card” column, we used the truncation symbols we believe will result in a broad enough search to uncover any potential conflicts with the proposed names.

We saved the Excel Worksheet to our desktop and went back to BOB’s website. There, we uploaded the Excel Worksheet and selected a goods and services description. 

We chose “Entertainment Services” because a hockey game is entertainment and we want to know about other entertainment services that may have names similar to the names the new Seattle franchise is interested in. It is always a good idea to use a broad description of goods or services in a trademark search. You can’t eliminate marks from the results as not being concerning if you don’t find them in the first place.  

Finally, we entered our email address – bob@trademarkbob.com – and clicked “Import.” We received a message that our list was uploaded, the 13 credits were deducted from our account, and within minutes the results were in our in-box. 

What we learned is that there is a crowded field for every mark being considered by the Seattle franchise except for TOTEMS. In other words, there are other entertainment services being offered in connection with the entire proposed name or a portion of the proposed name. And because none of these marks are for “entertainment services, namely, hockey games,” Seattle franchise should be safe to adopt anyone of them.