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A plaintiff seeking to prevail on a trademark infringement claim needs to establish that there is some likelihood of confusion between its mark and that of the defendant.  Generally, a plaintiff establishes that there is “forward” confusion by showing that customers believed they were doing business with plaintiff but because of a confusion in their respective marks, were actually doing business with the defendant.  Sometimes, however, a plaintiff will seek to establish “reverse confusion” in that a customer believing they were doing business with a defendant actually ends up doing business with the plaintiff.  The Ninth Circuit, in the case Marketquest Group v. BIC Corp. (decided July 7, 2017), was faced with the issue as to whether a plaintiff seeking to prevail under a theory of “reverse confusion” is required to plead that theory with specificity.

For nearly 20 years, Marketquest produced and sold promotional products utilizing its registered trademarks “All-in-One” and “The Write Choice.”  In 2009, BIC Corporation acquired a competitor in the promotional products field and began publishing promotional product catalogs featuring the phase “All-in-One” and in other advertising, using the phrase “The WRITE Pen Choice for 30 Years.”  Marketquest sued BIC for trademark infringement.  After the District Court granted summary judgment to BIC, Marketquest appealed to the Ninth Circuit.  (This article does not address the other issues decided by the Ninth Circuity other than the pleading requirement.)

In seeking to have the Ninth Circuit reject the appeal, BIC argued that Marketquest could not proceed under a “reverse confusion” theory because it had not specifically pled such a theory in its complaint. The Ninth Circuit began by recognizing that the Lanham Act allows a trademark owner to pursue a cause of action against someone who uses the trademark in commerce “when such use is likely to cause confusion.”  Given that neither party questioned the validity of Marketquest’s trademarks, the Ninth Circuit recognized that the main issue before the lower court was “whether there is a likelihood of confusion: that is, whether Defendants’ `actual practice[s were] likely to produce confusion in the minds of consumers about the origin of the goods … in question.’”  Since at least 2005, the Ninth Circuit has recognized two theories of consumer confusion: “forward confusion” and “reverse confusion”.  See Surfvivor Media, Inc. v. Survivor Prods., 406 F.32 625 (9^th Cir. 2005).  Because Marketquest was attempting to establish trademark infringement under a theory of “reverse confusion,” BIC argued that it was required to plead such a theory with specificity in its complaint and that having failed to do so, the lower court properly granted judgment against it.

The Ninth Circuit recognized that it had not addressed this issue before, but that the First Circuit, in Dorpan, S.L. v. Hotel Melia, Inc. 728 F.3d 55 (1^st Cir. 2013), had.  In that case the First Circuit ruled that “`reverse confusion’ is not a separate legal claim requiring separate pleading.  Rather, it is a descriptive term referring to certain circumstances that can give rise to a likelihood of confusion.”  The Ninth Circuit adopted this approach and ruled in Marketquest’s favor “when reverse confusion is compatible with the theory of infringement alleged in the complaint, a  Plaintiff need not specifically plead it.”

BIC argued that at least two prior Ninth Circuit cases required a different result.  BIC first cited the Ninth Circuit’s decision in Surfvivor to support its argument that strict pleading is required. However, the Ninth Circuit rejected this argument and held that the only the thing that the Surfvivor case held was that when reverse confusion is the only plausible theory in a trademark infringement complaint, a plaintiff cannot establish a viable trademark infringement claim based on “forward confusion.”

BIC also cited Murray v. Cable National Broadcasting Co., 86 F.3d 858 (9^th Cir. 1996) in support of its proposition that in order to plead a “reverse confusion” theory, “a plaintiff must allege that the defendant `saturated the market with advertising’ or alleged actual reverse confusion from customers.”  The Ninth Circuit likewise rejected this argument recognizing that its Murray decision was decided before it had even recognized a theory of infringement based on “reverse confusion.”  More importantly, the Ninth Circuit concluded that the plaintiff in Murray had not alleged any cognizable trademark infringement claim regardless of whether it was based on “forward confusion” or “reverse confusion.”

The Ninth Circuit concluded that although Marketquest did not use the words “reverse confusion” in its complaint, nor did it allege that the defendants had saturated the market, it had alleged generally that customers “were confused `as to whether some affiliation, connection or association existed’ among defendants and Marketplace and specifically alleged that there were actual instances of forward confusion (i.e., that consumers that that defendant’s goods came from Marketquest).”  Although Marketquest did not raise issues of ”reverse confusion” until its motion for preliminary injunction and later on summary judgment, the lower court’s order did recognize that Marketquest was asserting infringement based on “reverse confusion.”  Although it had not pled such a theory with specificity in its complaint, the Ninth Circuit concluded that the lower court properly allowed Marketquest to proceed under a “reverse confusion” theory and held that Marketquest was not required to plead such a theory with specificity in its complaint.

The Ninth Circuit’s opinion in Marketquest will give plaintiffs some leeway in pleading their theory of trademark infringement. However, plaintiffs will still be required to allege some likelihood of confusion between its mark and that of the defendant in order to avoid a dismissal of their infringement claim.

Because it’s summertime, I thought we should take a break from “serious” intellectual property articles.  So, instead, here are some patented inventions that you might see this summer.

A baseball with a speedometer seems like a great idea.  Although I don’t know anyone who has one, I’ve seen them in toy catalogs.  What could be more American?  We love baseball (at least many of us do) and we love competition, and this allows you to prove how fast you can throw the ball!  The patent is entitled “Baseball Having Inherent Speed-Measuring Capabilities.”  The patent covers the baseball itself, which contains a computer chip, as well as a method of determining the speed the ball is thrown.

A spray misting system for cooling people is a very useful thing.  These systems are very popular; in the last few weeks, I have seen them at a restaurant and at the State Fair.  They’re really effective.  One patent is entitled “Water Mist Cooling System.”  Apparently, there are several similar systems on the market, but most have a lot of problems, such as low water pressure due to reliance on tap water, and clogging due to small nozzle openings and high levels of dissolved solids in the water.  The invention is basically a hose with a series of nozzles, but it also has a pump and a regulator.  The pump solves the low water pressure problem and the regulator flushes the system to reduce clogging.

Corn on the cob holders – a cute idea, but no one actually seems to use them.  They come in all sorts of designs, from those with plain handles to those with decorative handles (little corn cobs, soccer balls, etc.).  Most of the patents I found were design patents and all were entitled “Corn Cob Holder.”  The designs varied in their handles (flat, cylindrical, or curved inward) and in the number of prongs (one, two, or four).  Even though these seem useful, most people seem to prefer to eat corn with their fingers.

The frisbee is a classic summertime invention.  The oldest patent I found was issued in 1967 and was called “Flying Saucer.”  Since then, there have been many patents covering improvements to what is now called a “flying disc.”  There are two types: regular saucer-shaped discs and ring-shaped ones.  The aerodynamics of the two types are completely different. I found one patent that described a “yo-yo returning disc” that uses a string and axle to create “yo-yo motion,” causing the disc to return to the user, like a boomerang.  The advantage of this invention is that a person can play frisbee all alone.  I’m not sure why anyone would want to do this, but if you did, this invention would make it much easier.

The barbecue fork with thermometer is a common subject for design patents.  These devices allow you to stab your food item as it’s being grilled to determine whether it’s done.  As a vegetarian, I don’t need this device, but I’m told it is very useful.  The patented designs vary in the location of the thermometer (an in-line thermometer in the handle of the fork or a round device sitting on top of the handle), and in the length of the fork portion.  The forks with the longer fork portion would seem to be better – so that you don’t burn your arm.

There are lots of patents for soccer shin guards.  The old shin guards were pretty simplistic, consisting of a single piece of stiff material.  The new ones have a separate foot portion that attaches with velcro at the ankle to the shin portion.  The patented shin guards all try to solve the same problem: they must be flexible enough to fit a variety of shins and yet also be stiff enough to provide protection.  Protection is critical, because the shin bone (the tibia) is a very vulnerable bone – it is long, thin, triangular, and not covered by muscle or fat.  One patent described a moisture-curable resin shin guard that can be molded to the user’s shin without heat, using only water, to form a rigid, tight-fitting guard.  This sounds like an effective way of getting a good fit.

The swim noodle is my favorite summer invention.  I have a bunch of them, and I wish I’d patented it.  The noodle is a long, open-celled, foam tube that is used as a pool floatation toy.  They come in many colors and shapes.  You can do just about anything with the noodle, depending on how many you have and how you arrange them.  You can use them to float sitting up, lying down, or something in between.  You can use them to do water exercises and to reach other pool toys floating in the pool.  Kids (and adults!) use them to whack each other or blow water out.  I couldn’t find a patent for the basic noodle, but I did find one for a noodle chair.  However, I think the noodle is best used in its purest form, by itself.

Now, enjoy the rest of our summer!

In TASER International, Inc. v. PhaZZer Electronics, Inc. et al, 6-16-cv-00366 (FLMD July 21, 2017, Order), a Florida District Court took the drastic step of entering a default judgment in favor of Plaintiff Taser, along with an award of compensatory and treble damages, an award of reasonable attorneys’ fees and costs, and injunctive relief because of Defendant Phazzer’s discovery failures and abusive litigation tactics.  According to the Court, since the outset of the litigation, Phazzer had engaged in a pattern of bad faith conduct designed and intended to delay, stall, and increase the cost of the litigation.  The Court determined no relief other than terminating sanctions would be adequate to address Phazzer’s repeated violations.  In the case, Plaintiff Taser filed a complaint against Defendant Phazzer for patent and trademark infringement, false advertising, and unfair competition.

In the order granting the terminating sanctions, the Court began by summarizing the “abusive litigation and discovery practices” it found the Defendant undertook during the litigation.  Specifically, the Court noted that after three motions to compel, and after the case had been ongoing for nearly a year, plaintiff “TASER still has not received the most basic information regarding the details and relationships between Phazzer and its manufacturer/suppliers/distributors of the accused . . .[infringing] product.”  In addition, the Court noted that while Taser had been attempting to schedule depositions for five months, Phazzer continued to assert that “[e]very one of the handful of critical witnesses associated with Phazzer, a small, closely-held company, are represented to be on vacation, out of the country, in surgery, or convalescing.”

Furthermore, after multiple failures by corporate representative for Phazzer to appear when required, the Court order that a representative of Phazzer must attend a hearing on their counsel’s request to withdraw, cautioning that “[f]ailure to comply with this Order may result in imposition of sanctions, including entry of a default or default judgment against the offending party or counsel.”  However, the Court noted that no representative from Phazzer Electronics attended the hearing in clear violation of the Court’s Order.  Moreover, in addition to the “flagrant discovery abuse and contemptuous behavior exhibited by Phazzer,” the Court also cited to numerous attempts by Phazzer to derail the litigation by repeatedly attempting to stay the proceedings, and by filing a last minute emergency motion for a protective order.

As for legal authority for its terminating and others sanctions ordered against Phazzer, the Court stated Rule 37 of the Federal Rules of Civil Procedure “allows district court judges broad discretion to fashion appropriate sanctions for the violation of discovery orders.”  The Court then noted Rule 37 “authorizes a variety of sanctions, such as, striking pleadings, rendering a default judgment, and holding the disobeying party in contempt of court.”  Furthermore, Rule 37 provides that “the court must order the disobedient party, attorney advising that party, or both to pay the reasonable expenses, including attorney’s fees, caused by the failure, unless the failure was substantially justified or other circumstances make an award of expenses unjust.”

Although the sanction of default is seen as a “last resort,” the Court reasoned a party’s “willfull or bad faith disregard” for discovery orders may call for this type of sanction when the party failed to comply with a court order compelling discovery and warning that the failure to comply might result in a default judgment.  The Court also noted bad faith may be found through “delaying or disrupting the litigation or hampering enforcement of a court order.”  The Court then found that Defendant Phazzer engaged in the above-described misconduct with the subjective intent to abuse the judicial process.  Thus, the Court found the imposition of terminating sanctions, along with compensatory and treble damages, attorneys’ fees and costs, and a permanent injunction to be “necessary to adequately punish Phazzer for its wanton and repetitive disregard of this Court’s orders and as a consequence of its willful abuse of the discovery process. The imposition of lesser sanctions would underrepresent the seriousness of the offensive conduct.”

Although an extreme example, this case is a good reminder to parties and attorneys alike that all litigation must be taken seriously and that the discovery process must be respected.  Failure to do so can lead to sanctions, up to and including terminating sanctions in particularly egregious cases.

In 2014, the Washington Redskins lost a battle before the Trademark Trial and Appeal Board (“TTAB”) where the petitioner, a group of Native American activists, sought cancellation of the “Washington Redskins” trademark, which had been used for over 80 years. Immediately after the decision, the Redskins sought recourse through the United States District Court, which is one of two appropriate venues for an appeal from the TTAB. However, the Redskins didn’t have any better luck there as Judge Gerald Bruce Lee affirmed the TTAB’s ruling in 2015, finding that the mark, and its related marks, are offensive to Native Americans and therefore ineligible for federal trademark protection under the Lanham Act, which prohibits registration of trademarks that “may disparage” or bring people into contempt. The Redskins, displeased with Judge Bruce Lee’s ruling, eventually petitioned the Supreme Court for certiorari, but the Court refused to hear the matter, finding that a similar case, In re Tam, stemming from the Federal Circuit, was preferable for review.

In In re Tam, the front man for an Asian-American rock band known as the Slants, sought registration of the band’s name through the United States Patent and Trademark Office (“USPTO”), but was denied registration on the ground that the mark is disparaging. Accordingly, Tam sought appellate review before the Federal Circuit, which is the other appropriate venue for a USPTO or TTAB appeal, claiming that the disparagement clause of the Lanham Act violates the First Amendment’s Free Speech Clause. The Federal Circuit sided with Tam and ordered the TTAB to register the mark. The TTAB, dissatisfied with the Federal Circuit’s ruling, sought Supreme Court review, which as stated above, was granted.

The matter of Matal v. Tam was argued before the Supreme Court on January 18, 2017 and the Court issued its opinion on June 19, 2017. In an 8-0 decision, with Justice Neil Gorsuch taking no part in the consideration or decision of the case, the Court affirmed the Federal Circuit’s decision. Justice Alito, delivering the opinion of the Court, stated that “The disparagement clause violates the First Amendment’s Free Speech Clause,” and “Contrary to the Government’s contention, trademarks are private, not government speech.” He further stated that:

The Commercial market is well-stocked with merchandise that disparages prominent figures and groups, and the line between commercial and non-commercial speech is not always clear, as this case illustrates. If affixing the commercial label permits the suppression of any speech that may lead to political or social “volatility,” free speech would be endangered.

Despite this favorable ruling for free speech, Justice Alito cautioned that the government still “has an interest in preventing speech expressing ideas that offend.” But he and the Court believe the disparagement clause in its current form is too broad. He stated that:

The clause reaches any trademark that disparages any person, group, or institution. It applies to trademarks like the following: “Down with racists,” “Down with sexists,” “Down with homophobes.” It is not an anti-discrimination clause; it is a happy-talk clause. In this way, it goes much further than is necessary to serve the interest asserted.

So interestingly, while the opinion is clearly a victory for Tam, the Slants, and the Redskins, Justice Alito left open the door for some form of governmental regulation of ideas that offend.

On the other hand, Justice Alito was clear that trademark registration does not constitute governmental speech, which has inferior free speech protection. So it’s reasonable to conclude that irrespective of Justice Alito’s cautionary proclamation, the Court will not allow the TTAB or USPTO to continue cancelling and rejecting trademarks it finds disparaging, irrespective of any amendment or narrowing to the disparagement clause. However, the most appropriate interpretation of the Court’s opinion is likely that the disparagement clause, in its current form, is unconstitutional and overbroad in its scope, but while the trademark registration does not constitute governmental speech, commercial speech is not without governmental regulation. As such, it is likely that Congress will amend the Lanham Act and narrow the scope of the disparagement clause, then the TTAB will cancel, or the USPTO will reject, a trademark under the revised disparagement clause. Only then will we learn exactly how far the Court is willing to go to protect free speech, but based upon Justice Alito’s remarks regarding the danger of treating commercial speech any differently, it seems likely that the Court would rule in favor of free speech again.

As you likely know, Amazon is taking the world by storm. Whether it is through its convenient offering of household goods, and pretty much anything else you can imagine, to your door, or through its expansive selection of movies and television shows provided through its Amazon Prime streaming service, Amazon is a major player in multiple industries. Recently, Amazon surprised the general public when it agreed to purchase Whole Foods Market for $13.7 billion and judging from its recently trademark application, Amazon is nowhere near done with its expansion.

On July 6, 2017, Amazon filed a trademark application for “prepared food kits composed of meat, poultry, fish, seafood, fruit and/or vegetable.” The trademark that Amazon seeks to register is WE DO THE PREP.  YOU BE THE CHEF. Does this concept sound familiar? Perhaps even a bit like Blue Apron? If so, that’s probably because it is exactly like Blue Apron. If you aren’t familiar with Blue Apron, it is a meal-kit delivery service backed by major venture capital groups, including Fidelity and Bessemer Venture Partners. It was founded in August 2012 and has enjoyed major success to date. According to the Times Herald, as of September 2016, Blue Apron had shipped 8 million meal servings. This success led to the company going public last month.

Since that time, the value of Blue Apron’s stock has declined steadily, but it recently took its hardest hit when Amazon’s trademark application hit the public sphere, resulting in more than a ten percent drop in price per share. But what does this mean? And more importantly for purposes of this article, how is it related to intellectual property? Well, although there are likely various factors involved in the further decline of Blue Apron’s stock price, such as overvaluation, the most recent drop in stock price is likely caused by Amazon’s extraordinary goodwill.

Usually, when we discuss a mark’s goodwill, it is the product of the owner building goodwill in the mark through its use in commerce. But here, we have an instance where the mark has never been used in commerce and it already has substantial goodwill. The reason is that WE DO THE PREP. YOU BE THE CHEF. is inherently imbued with Amazon’s sizable goodwill. Not to mention, in light of the pending Whole Foods buyout, the mark is likely benefitting from Whole Foods’s goodwill, as consumers likely anticipate that Amazon will utilize Whole Foods products in its food kits. Although I don’t think that has been confirmed or even mentioned by anyone in the know, it is a reasonable assumption. Either way, it is clear that the mark is riding the coattails of its parent company and its parent company’s soon-to-be acquired subsidiary to give itself a head start into the food delivery marketplace. Whether that is indicative of future success in the marketplace remains to be seen.