Likelihood of Confusion

Trademark Infringement and Genericide

A generic trademark is the name of a product/service/brand name which is the actual name for the product/service/brand name. Examples include: APPLE for apples, or LAW FIRM for a law firm. A generic term that could even obtain secondary meaning will not help that term become eligible for trademark protection. The rationale behind this prohibition is that to allow a single business, entrepreneur or inventor, the exclusive right to the generic term would give them a monopoly and an unfair competitive advantage over other businesses. Imagine the first person to register APPLE being able to prevent all other apple pickers or fruit stands from using the term APPLE to sell apples.

Registered trademarks can become generic. This is a process called trademark genericide. Genericide occurs when the meaning of a registered trademark becomes associated with the category, or “genus,” of the product. As a result, the trademark can no longer identify and distinguish the source of the product that bears the now generic term. Some examples of genericide include: THERMOS, ASPIRIN and VELCRO.

In September, out of the U.S. District Court of the Southern District of New York, a federal judge ruled on a lawsuit brought by Tiffany & Co. against Costco Wholesale Corporation. Costco was using the terms TIFFANY and TIFFANY SETTING, as a description when selling some of their engagement rings. Tiffany & Co. owns multiple trademark registrations for these terms and brought suit on the basis of trademark infringement, unfair competition, trademark dilution, among other multiple claims. Costco responded by filing a counterclaim, arguing that TIFFANY and TIFFANY SETTING has become generic for a ring setting with six prongs. Thus, the public now associates the term TIFFANY simply as a six pronged solitaire diamond ring, and not […]

A Likelihood of Confusion Cease and Desist Order

Many people get their coffee, or latte, or expresso from Starbucks every morning or around 2:00pm each day. But Starbucks does not only serve coffee, the company is also active in enforcing the benefits of a its federal trademark registration and protecting itself from potential trademark infringement.

Starbucks, the massive Seattle based coffee company worth about $16.447 billion in 2014, sent the owner of a small town brewery outside of St. Louis, Missouri, a cease and desist letter to prevent them from infringing a Starbucks trademark. The trademark in question, FRAPPUCCINO.

The owner of a Pub and Brewery, combined the flavors of two beers, and one customer posted to a beer website that it taste like a “Frappicino.” Starbucks took notice of this and sent the brewery owner a letter telling him that his “Frappicino” beer would cause confusion among consumers in regards to Starbucks’ FRAPPUCCINO trademark. Starbucks’ attorney argued that while the beer’ name sounds phonetically identically to the Starbucks mark, even though it was misspelled by one letter. Because of this, Starbucks requested the brewery owner to stop all use of “Frappicino,” notify the beer owner to remove the website post containing “Frappicino,” and to agree to not use any Starbucks trademarks in the future and to agree to not use any trademarks that would cause confusion or dilution with Starbucks’ trademarks. This is a very helpful example of multiple topics that can arise during the trademark selection process.

First, the benefits of federal trademark registration. With the federal registration of FRAPPUCCINO, Starbucks has several trademark benefits that arise solely through their registration. Starbucks has a nationwide priority to use FRAPPUCCINO as of the date of the initial application, the right to prevent a subsequent user from using a confusingly similar trademark. If a trademark dilution or infringement lawsuit were […]

Likelihood of Confusion – Brewery Trademark Battle in Texas

In March 2014, the makers of Alamo Beer filed a lawsuit for trademark infringement in the Western District of Texas. Alamo Beer Company alleged that a competitor was using a confusingly similar trade dress (likelihood of confusion), including a similar design depicting a silhouette of the Alamo.  In this case, the State of Texas, owner of the actual Alamo (historical venue and associated trademarks), intervened with permission of the Court in order to protect the state owned ALAMO trademarks.

Since 1997, when the Alamo Beer Company started selling beer under its Alamo brand, it employed a silhouette of the Alamo as a part of its logo. Alamo Beer Company uses the Alamo and other typical Texas imagery like stars, cannons to form the look and feel of its Alamo logo and trade dress. Alamo Beer Company never registered its logo (design trademark); but did register the word mark ALAMO. Sometime between 2011 or 2012, Texian Brewing Company, also located in the state of Texas, began using a similar logo featuring a silhouette of the Alamo. Texian’s tap handles also feature silhouette of the Alamo, a cannon, star, and other Texas imagery. Alamo Beer Company placed Texian on notice of its possible trademark infringement of the Alamo Beer Company’s trademarks. Texian did not respond to Alamo Beer Company but instead proceeded to file a trademark application to register its trademarks. Soon thereafter, Alamo Beer Company filed a trademark infringement suit against Texian claiming likelihood of confusion and similarity of the trademarks.

The Alamo Beer Company may have avoided litigation altogether if it had registered its logo when it first started using it in commerce. Arguably, Alamo Beer Company has grounds to cancel Texian’s trademark registration because technically it […]

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