San Diego Trademark Attorney - San Diego Trademark Lawyer

San Diego - In February of this year Under Armour, Inc. filed a complaint against Nike, Inc. claiming that Nike was infringing on Under Armour's "I Will" trademark. In response, on Monday Nike filed a response which seeks a declaratory judgment that "I Will" does not function as a trademark, that Nike's use of the phrase is fair use, and otherwise that Nike's use will not cause any consumer confusion.

Under Armour is a sporting apparel company most well-known for its breathable t-shirts. It is claiming that its customers are being confused by Nike's use of the same "I Will" slogan. Under Armour also believes the trademark will become diluted should Nike be allowed to continue using "I Will" in its advertising.

According to Nike, it has been using the two-word sentence to promote its sporting gear since as early as 1995 which is a year before Under Armour even existed. Further, Nike believes the phrase does not serve as a trademark and is not known to the general public as being associated with Under Armour.

Under Armour Inc. was started by Kevin Plank, who played college football for the University of Maryland. The company began with an idea for an athletic undershirt that would keep the wearer warm in cold weather, and cool and dry in hot weather by coordinating with the body to "regulate temperature and enhance performance."

In the Baltimore federal court action, Under Armour is seeking a permanent injunction, compensation for profits arising from infringing use, and destruction of all uses of "I will" on products and advertising material. The complaint details the infringement by showing several phrases using "I Will" in various Nike advertisements. Although the Nike ads contain additional wording such as "I will do it for my team" and "I will finish what I started," Under Armour feels the two words "I Will" is the "cornerstone symbol" of its company.

Nike, which has been in the business of selling sporting gear since 1972, claims to have used not just "I will" but other similar short noun + verb sayings like "Just do it" all since before Under Armour existed.

Although the I WILL trademark U.S. Reg. No. 2409096 has been around for over 12 years, it was originally owned by Wells Investments, Inc. (formerly Wells Ingram, Inc.) who didn't take the necessary steps to prevent use by infringers, according to Nike. The lack of policing the trademark, according to Nike, has led to the loss of trademark rights.

The U.S. Patent & Trademark Office currently lists over 10 I WILL trademarks including an application filed by PepsiCo for beverages, and Reg. No. 3,336,747 for educational services owned by The Susan G. Komen Cancer Foundation, Inc.

San Diego - Couristan Inc., a carpeting and rug manufacturer based in New Jersey, was sued in Nebraska federal court last week by Mutual of Omaha Insurance Company. The lawsuit involves a recently released line of faux animal skin carpets under the "Wild Kingdom" moniker which Mutual of Omaha believes is likely to cause confusion with its TV series of the same name.

Mutual of Omaha is the owner of U.S. Trademark Registrations for WILD KINGDOM (stylized) for "Entertainment services-namely, a television program dealing with conservation of wildlife" and WILD KINGDOM for "DVDs featuring television show episodes." The program and the DVDs feature the well-known television program which originally aired between January 6, 1963 and 1986, but was picked up again more recently by Animal Planet in 2002. The popular show brought viewers into the natural habitats of wild animals, worked to protect animal rights, and advocated wildlife conservation.

Mutual of Omaha also owns U.S. trademark registrations for WILD KINGDOM for use in relation to t-shirts, stuffed animals, posters and other promotional items.

Mutual of Omaha believes Couristan is infringing on its trademarks and good name and does not want consumers to believe it is associated with Couristan's line of rugs. Consistent with its advocacy to promote wildlife conservation, Mutual of Omaha does not want to "... contribute to the trend of using actual or faux animal skins for purposes of home décor." It has requested that all carpets and rugs bearing the name "Wild Kingdom" be immediately destroyed.

When Mutual of Omaha learned of the line of rugs it sent a cease and desist letter to Couristan but the parties apparently were not able to come to a resolution. Mutual of Omaha believes its reputation will be harmed should Couristan continue to sell and distribute the "Wild Kingdom" line.

In the complaint, Mutual of Omaha accuses Couristan of unfair competition, trademark infringement, dilution of its trademark, and violation of the Nebraska Uniform Deceptive Trade Practices Act. Mutual of Omaha also requests damages due to the alleged infringement including damages for dilution, and recovery of any profits that Couristan has obtained from sales in the U.S. and abroad.

San Diego - A 3-way dispute over the rights to use TINKERBELL as a trademark for cosmetics ended when a panel of three judges determined that Icebox-Scoops, Inc., a Dutch company, could not maintain a lawsuit against Walt Disney Co.

Icebox-Scoops licensed the TINKERBELL trademark in 2005 from Finanz St. HonoreBV, a Netherlands based company. Finanz filed a U.S. Trademark for the TINKERBELL trademark in 1982 for "Children's Cosmetics-Namely, Cologne, Bath Oil, Body Lotion, Body Powder, Bubble Bath, Skin Cream and Sachet" and the trademark registered in 1983.

In 2000, Finanz's rights to the TINKERBELL trademark were affirmed in litigation with Disney. Disney had tried to obtain the trademark due to the well-known character from its "Peter Pan" movie. Disney did not prevail in that case which ended with the two companies entering into a Settlement Agreement.

Thereafter, Finanz entered into the licensing agreement with Icebox-Scoops to create TINKERBELL merchandise. Specifically, Icebox-Scoops was to distribute a TINKERBELL line of beauty products geared toward young women.

However, shortly after entering into the license agreement with Icebox-Scoops, Franz decided to sell the trademark to Disney which cut off Icebox-Scoops's right to use the trademark well before the 5 year license had ended.

As a result of the termination of the license, Icebox-Scoops sued Disney for unjust enrichment and tortious interference. Icebox-Scoops believed that Disney should not have bought the TINKERBELL trademark from Finanz if Disney knew that the license agreement was in place at the time of the purchase. Unfortunately for Icebox-Scoops, Disney disagreed, and so apparently did the 2nd Circuit Court.

The 2nd Circuit held that Icebox-Scoops did nothing to enrich Disney and also did nothing for Disney's benefit and therefore the 2nd Circuit affirmed the dismissal of the unjust enrichment claim. As for the tortious interference claim, the 2nd Circuit held that it was made after the statute of limitations was up and so it also could not be maintained.

Though the case against Disney has been dismissed, Icebox-Scoops' case against Finanz is ongoing. Thus far the two have not been able to reach a settlement.

San Diego - Timelines, Inc. argued in an opposition filed Wednesday that the company's TIMELINES trademark is not too generic to deserve protection and that Facebook, Inc.'s timeline feature on its popular networking site infringes the trademark.

The company filed the opposition in response to Facebook's motion for summary judgment requesting that the lawsuit be dismissed. The trademark infringement lawsuit began when Timelines sued Facebook one week after it learned the social media website had launched a new feature that allows users of the website to create virtual timelines with photos, videos, and other media devices.

As Timelines' website Timelines.com provides users a relatively similar online service, the company filed the lawsuit against Facebook alleging trademark infringement and claiming that Facebook's new feature would drive Timelines out of business.

In its motion for summary judgment, Facebook argued that though Timelines has three U.S. trademark registrations for the word TIMELINES in conjunction with software services provided over the internet, the term is generic and does not warrant protection. The January 31st motion claimed that since the term is defined as "an arrangement of events or other information in chronological order," and Timelines provides a service that allows users to record and connect events in a specific order, the trademark is merely descriptive of its services.

Timelines countered that genericness should be determined by a jury, rather than in a motion for summary judgment, due to the fact-intensive nature of the process. Timelines also countered Facebook's claims that the term's genericness is evidenced by its appearance in numerous dictionaries.

"Facebook forgets that its very name comes from the 'generic' name that was given to certain college picture books known as 'face books,'" Timelines said. "Moreover, Facebook's own trademark history demonstrates that it seeks trademark protection for terms that appear in dictionaries, including 14 trademark applications for the term 'like' alone, almost all of which concern Facebook's 'Like' button, which its users click on when they ... like something."

Timelines is seeking damages and a permanent injunction prohibiting Facebook from using TIMELINES or any similar version of the trademark. Facebook is requesting a declaratory judgment that the website's timeline feature does not infringe Timelines' trademarks in addition to cancellation of those trademarks.

San Diego - "FarmVille" owner Zynga Inc. filed a lawsuit against Imagenesis Corp. claiming that the company's soon-to-be-released "MafiaVille" game infringes its VILLE trademarks.

Zynga filed the lawsuit in Maryland federal court on Tuesday, alleging Imagenesis' use of the name MafiaVille will infringe several trademarks Zynga owns in connection to its social media games such as "CityVille," "PetVille," "FrontierVille" and "FarmVille."
Zynga claimed that over 65 million people play its "Ville" games each month on various platforms including Facebook and mobile phone apps and that consumers have associated the VILLE trademarks with Zynga long before Imagenesis even thought of the name MafiaVille.

In December 2010, Zynga discovered that Imagenesis had registered the domain name MafiaVille.com and was using the website to promote the "MafiaVille" game. Zynga sent Imagenesis a cease and desist letter to notify Imagenesis of its trademark rights and to demand that it stop using the name.

Imagenesis chose to continue use of the name and filed a trademark application for MAFIAVILLE with the U.S. Patent and Trademark Office. Imagenesis also filed for a declaratory judgment in Maryland federal court asking for a ruling that the name MafiaVille does not infringe or dilute Zynga's trademarks. However, Imagenesis failed to have counsel appear on its behalf and the action was dismissed.

In the complaint, Zynga alleged that not only did Imagenesis know of Zynga's success with its various Ville games in the social gaming sphere before naming its game "MafiaVille," but also that Imagenesis actually chose the name in order to benefit from Zynga's success with its "Ville" games and its game "Mafia Wars."

The company alleged that the name MafiaVille is likely to cause confusion and deceive players into thinking that the game is either made by Zynga or is in some way connected with it. Zynga also claimed that as Imagenesis is aware of Zynga's VILLE trademarks, Imagenesis is willfully infringing its trademarks and is attempting to take advantage of the goodwill Zynga has spent years developing.

Zynga is alleging trademark infringement, dilution, false designation of origin and unfair competition. The company is seeking to block the MAFIAVILLE trademark, an injunction preventing Imagenesis from using the name, damages, Imagenesis' profits earned from using the name and treble damages.

San Diego - Shaw Industries Group Inc., a carpet manufacturer owned by Berkshire Hathaway Inc, filed a complaint for declaratory relief requesting that a Georgia federal court issue a judgment that the carpet color it calls "Chocolate Kiss" does not infringe The Hershey Co.'s "Kisses" and "Hershey's Kisses" trademarks.

In the complaint, Shaw claims that Hershey has threatened it with a lawsuit over the name, despite the fact that Shaw has used the name for over two decades without any indication of confusion between the products or the companies.

"Declaratory relief is proper in this case because it will clarify and settle the actual, present dispute between the parties as to whether the plaintiffs use of the 'Chocolate Kiss' name violates defendant's rights in its Kiss trademarks," the complaint said. "It will allow Shaw to continue its regular business without fear of incurring further loss, as well as the uncertainty, insecurity and controversy giving rise to this action."

On December 19, 2012, counsel for Hershey sent a cease and desist letter to Shaw demanding that it cease use of the name, claiming that the carpet color name constitutes infringement and dilutes the KISS trademarks owned by Hershey.

Though Shaw introduced the color in January of 1993 and used the name to describe the color for over 200 styles of flooring distributed worldwide, Shaw claims it had never been made aware of any consumer confusion between the name of the carpet color and chocolate Hershey's Kisses. It also alleges that Hershey had never requested it cease using the name before the December cease and desist letter.

Shaw claims it responded to the letter and informed Hershey it had already planned to phase out the "Chocolate Kiss" carpet color and would no longer be using the name by June of this year. The company also claimed in its response that Hershey had in no way shown there was any confusion between the two products.

Hershey responded with another cease and desist letter on January 24th requesting a signed agreement from Shaw that it would cease using the "Chocolate Kiss" name immediately and demanding that it surrender all infringing goods by February 8.
Shaw is requesting that the court issue a declaratory judgment that it is not infringing or diluting Hershey's trademarks and that Hershey essentially agreed to its use of the name by not challenging it for twenty years.

San Diego - A magistrate judge ordered Amazon.com Inc. and Apple Inc. to attend settlement conferences in an attempt to get the companies to resolve their differences before the upcoming trial over Apple's claim that Amazon is infringing its APP STORE trademark.

On Tuesday, U.S. Magistrate Judge Elizabeth D. Laporte of the Northern District of California ordered the opposing companies into talks to be attended by attorneys or executives with full power to negotiate and settle the case. The settlement talks are scheduled for March 21st in San Francisco.

Judge Laporte instructed both sides to prepare to discuss their settlement objectives, obstacles that may prevent settlement, and to think of creative resolutions to the dispute. Judge Laporte said both sides should be prepared for a long and candid discussion.

"It is not unusual for conferences to last several hours or at times, all day," Judge Laporte's order reads. "No participant in the settlement conference will be permitted to leave the settlement conference before it is concluded without the permission of the settlement conference judge."

Amazon's Appstore was officially launched in March 2011 and offers app downloads for smartphones that run on Google Inc.'s Android platform. That same month, Apple filed a lawsuit against Amazon claiming trademark infringement and unfair competition. In November 2011, it amended the complaint to add a false advertising claim. The complaint alleges that Amazon's use of APP STORE is deferring profits from Apple to Amazon and is diluting Apple's trademark because Amazon offers substandard products under a confusingly similar name.

Apple's false advertising claim was dismissed on January 2 when U.S. District Judge Phyllis Hamilton ruled that Apple did not provide consumer research, market studies or any other data that proves that Amazon had in any way tried to deceive consumers by calling their online app service Appstore.

Judge Hamilton also struck down Apple's argument that Amazon was attempting to impress upon consumers that its apps are the same as Apple's. The judge said that no reasonable customer would link Amazon and Apple's app products, considering apps from the two sources cannot be downloaded onto the same device.

Apple is still attempting to have a permanent injunction entered against Amazon prohibiting it from using APP STORE and the company is seeking damages, profits allegedly derived from using the trademark, costs and attorney's fees.

If the two companies are unable to reach a settlement, the case is scheduled to go to trial in San Francisco on August 19th.

San Diego - Neil Young has filed two trademark applications in order to promote his impending music service Pono. Pono will offer digital-to-analog music downloads along with portable music players.

Young has long looked down upon the quality of music available for MP3 players and the big businesses that he claims do not know what good music should sound like. According to his new memoir, Waging Heavy Peace, Young is attempting to "rescue recorded sound so people can feel music again."

Pono, which is Hawaiian for righteous, will attempt to provide music that is "the best it can be". He wants the music to have all of the nuance and clarity of the original work and Young will have each song certified by the artist or record company that owns the rights to the work before it will be offered on Pono.

Young has begun testing the Pono sound by playing his digital-to-analog tracks in a 1978 Cadillac Eldorado for big names in music, such as Kid Rock, Beastie Boys' Mike D, members of the Red Hot Chili Peppers, and Tom Petty. He recorded the various artists' reaction to the music to use in marketing campaigns.

Young filed trademark applications for PONO PROMISE and 21ST CENTURY DIGITAL near the beginning of December, both of which he is already using on his website, mypono.com. Young registered the trademarks for both online and retail store services along with MP3 players and other devices used to listen to music and music cases.

Investor Gigi Brisson, who registered the mypono.com domain name and is listed in a recent U.S. Securities and Exchange Commission filing as a director of one of Young's companies Ivanhoe Inc., said that it is too early to say much about Pono. He said that the company is still in its infancy and anything could happen, as there are still too many variables involved.

Young, however, has put Pono on Facebook and Twitter and has been trying to spread word about the project. According to tweets by Young, Pono's web-based music library will be in place by summer 2013 and he expects to have digital-to-analog portable players ready for purchase around the same time.

San Diego - Government officials seized 132 websites yesterday in the third annual Cyber Monday crackdown.

The Immigration and Customs Enforcement (ICE) section of the U.S. Department of Homeland Security began Operation in Our Sites in June of 2010 to target websites that attempt to sell counterfeit and pirated goods to unaware consumers.

"The sale of counterfeit U.S. brands on the Internet steals the creative work of others, costs our economy jobs and revenue and can threaten the health and safety of American consumers," said ICE Director John Morton. "We are dedicated to protecting the jobs, the income and the tax revenue that disappear when counterfeit goods are trafficked."

The seizures include sites that sell clothing, jewelry, sporting goods, luxury goods such as designer shoes handbags and sunglasses and pirated goods, including DVDs, music and software.

Operation in Our Sites operates year round, but it has made Cyber Monday, the biggest online shopping day of the year, the largest seizure day of the year. ICE was joined in the crackdown this year by Europol and European law enforcement agencies in Belgium, Denmark, France, Romania and the United Kingdom.

The seizures are made after the government receives verification from owners of trademarks and copyrights that a specific website is selling goods that infringe upon their rights.

Once the government has shut down the infringing site, consumers attempting to visit the site will only see a banner notifying the consumer of the seizure. The banner also provides information on the infringement for the consumer.

Among this year's seizures was a San Diego based company, Staxxs on Deck. On its website at www.23isking.com the company sells counterfeit Nike footwear. According to the affidavit, the website had made $1.5 million in fake goods.

This years crackdown resulted in one arrest and more than $175,000 in PayPal account seizures. Despite this, the government has a hard time prosecuting the operators of most infringing sites since they are generally located overseas, mainly in China.

When the website is seized, owners can file a petition for a return of their domain name. If the owners choose not to file the petition or it is unsuccessful, the domain name is forfeited to the government.

San Diego - Tim Tebow's "Tebowing" slogan is now one-step closer to trademark registration. "Tebowing" became a widespread phenomenon when the second year player now with the New York Jets was photographed bowing in prayer in the end zone. His pose, head bowed, down on one knee, with a clenched fist against his forehead quickly became a sports fan favorite.

Not long after the pose became popular, Jared Kleinstein, a Denver-born Broncos fan, started a website, www.tebowing.com, and began using Tebow as a verb. At that time, Tebow approved of the growing phenomenon, even going as far as to say he loved the hype over "Tebowing" on his twitter account. Later that year, Kleinstein filed an application to trademark the slogan "Tebowing" and began to sell items of clothing with the phrase on it.

However, as the Kleinstein application moved forward, XV Enterprises, a marketing and consulting firm owned by Tim Tebow, protested the application. Through his trademark attorney, Tebow argued that consumers would incorrectly think the Kleinstein goods were connected to Tebow or his charity the Tim Tebow Foundation. XV Enterprises hopes to register the trademark on Tebow's behalf for use on such items as clothing, pencil sharpeners, and holiday ornaments.

Because of XV Enterprises' opposition, the trademark office issued a refusal of registration to Kleinstein in February saying the material "includes matter which falsely suggests a connection with Tim Tebow. Accordingly, registration is refused under Trademark Act Section 2(a)." U.S. Patent and Trademark Office records show that there have been a number of applications for Tebow related trademarks in the last year. Most of the applications have already been rejected. After Kleinstein's recent application for "Tebowing" was rejected, Tebow's company immediately filed an application to claim the trademark.

In early October, the trademark "Tebowing" was published for opposition. As such, the trademark will be published and anyone who wants to oppose the registration has 30 days to provide adequate reasoning why the registration should not move forward. If no one opposes the registration, or the opposition is ruled to be unsubstantiated, then Tim Tebow's company will officially own the trademark for "Tebowing".

San Diego - Google Inc. cannot slip away from Cybersitter LLC's claims that it aided and abetted a competitor in misusing Cybersitter's trademarked name in advertisements drawing traffic away from Cybersitter's business, a Los Angeles federal judge ruled Wednesday.

Cybersitter, which developed, markets and sells an Internet content-filtering program, sued Google and ContentWatch Inc. over ContentWatch's marketing of its own Internet content-filtering software, Net Nanny, and its use of Google's AdWords paid advertising program.

A portion of Google's revenue comes from displaying sponsors' paid advertisements on its search engine and other websites. In response to keyword searches on Google's search engine, sponsors' paid advertising results, which it calls "sponsored links" are displayed with other search results.

The AdWords program specifically allows ad sponsors to purchase certain keywords that trigger the sponsor's ad whenever a Google user conducts a search through its search engine.

Earlier this year, Cybersitter learned that ContentWatch was running paid ads for Net Nanny through AdWords that included the Cybersitter trademark. When an Internet user would search on Google for Cybersitter or similar terms, ContentWatch's ads with the trademark would be displayed, often as the first result in the user's search, according to the court.

Google has violated federal and California laws by selling the right to use the Cybersitter trademark to ContentWatch, which in turn illegally uses the trademark in its online ads through the AdWords program, Cybersitter alleges. It has also wrongly permitted and encouraged ContentWatch's use of the trademark in its online ads, Cybersitter claims.

Judge Ronald S.W. Lew denied Google's motion to transfer the case to Santa Clara federal court, as well as its motion to dismiss Cybersitter's claims, saying Cybersitter had adequately pled and provided sufficient facts to support its trademark infringement claims.

"In sum, for the state law claims of trademark infringement, contributory infringement, and unfair competition, plaintiff has sufficiently pled the facts necessary to establish defendant's acts as independent torts that are not barred by [Communications Decency Act] immunity," Judge Lew said.

The judge did, however, grant Google's motion to dismiss Cybersitter's claim for unjust enrichment.

San Diego - A seller of officially licensed National Football League merchandise filed a putative trademark infringement class action against Facebook Inc. on Monday over its alleged complicity in publishing online advertisements for fake NFL apparel, accessories and more.

Inkies Sports Inc., which does business as Krystal's NFL Shoppe, is seeking to represent a class of retailers and wholesalers of officially licensed NFL apparel who have been harmed in their business by purveyors of counterfeit goods advertised on websites like Facebook, according to its complaint in New Mexico federal court.

As of 2011, ads for counterfeit NFL merchandise started showing up in sponsored ads on Facebook with increasing frequency, offering jerseys and other items for cut-rate prices alongside "pictures of what appears to any reasonable person to be authentic, officially licensed NFL merchandise," the complaint says.

"There is no way for a Facebook user to determine from the pictures and the text which accompanies the counterfeiters' ads whether the merchandise is authentic or not," it says.

Inkies says it began paying for sponsored ads on Facebook in February, but quickly discovered that its own marketing efforts were being overshadowed by those of the counterfeiters.

"Ads for counterfeit goods are regularly displayed on Krystal's Facebook page, leading even loyal customers to question whether these ads are supported, or even sponsored, by Krystal's," the complaint says. "Krystal's has inadvertently been placed in the untenable position of actually lending credence to the counterfeit ads, by virtue of Facebook's display of those advertisements on Krystal's page."

Inkies has lodged multiple complaints with Facebook about the ads to no response, according to the company.

The economic impact of the fraudulent ads on Inkies and other class members will probably run into millions of dollars, given the cut-throat nature of the world of low price internet retail, Inkies asserts.

Once a consumer clicks on one of the counterfeiters' ads and places and order, the merchandise arrives postmarked from China, and it immediately becomes apparent that the merchandise is substandard, Inkies says. Since the Chinese government blocks access to Facebook, counterfeiters in China need an intermediary, Inkies claims, such as the advertising firm AdSage, which is also named as a defendant in the complaint.

San Diego - The makers of a parody line of clothing named "The Butt Face" have been held in contempt for violating a 2010 injunction barring them from any use of The North Face Apparel Corp.'s trademarks or similar names, according to a consent judgment filed Tuesday.

A Missouri district court ordered James A. Winkelmann Sr., James A. Winkelmann Jr. and their company Why Climb Mountains LLC to stop using The Butt Face trademarks or any other reproduction, counterfeit, copy or imitation, specifically including parody, of The North Face's trademarks. The clothing makers must also cease any communications of any kind about The North Face or their now-defunct clothing lines The South Butt and The Butt Face.

The Winkelmanns are enjoined from passing off any product as somehow related to The North Face or using any name likely to dilute, confuse or deceive. They must also turn over all domain names and Twitter accounts that violate the prior injunction or the current order, the court said.

The defendants must turn over any goods bearing The Butt Face trademark for destruction, and disgorge payments of $65,000 The North Face previously made to them.

The 2010 consent injunction came as part of a settlement agreement, under which the Winkelmanns agreed not to use The South Butt trademark or any other similar names that might be confused with The North Face. The North Face first brought its infringement claims against the Winkelmanns in 2009.

Since the entry of that consent injunction, the Winklemanns created Why Climb Mountains and knowingly and intentionally engaged in conduct in direct violation and reckless disregard of the injunction, with the intent to trade on The North Face's fame, goodwill and trademarks, The North Face's contempt motion, filed in August, said.

"The Winkelmanns used the original lawsuit as a lucrative marketing device to promote sales of their infringing products through a media blitz," the motion said. "We assume they will attempt to same here. Thus the sooner this matter is heard and resolved, the better."

San Diego - The Fifth Circuit on Thursday ruled that Mexican food company Gruma Corp. has valid claims for trademark infringement against the Texas fast food chain Mission Burrito, reversing a Texas district court's dismissal of Gruma's case.

Gruma, which markets its products nationwide under the Mission trademark, sued Mission Burrito owner Mexican Restaurants Inc. in September 2009 for infringement and dilution. The district court ruled that there was no likelihood of confusion between the two trademarks and no dilution, and tossed Gruma's complaint.

The district court erred in its legal analysis of the claims, and proper application of the relevant factors favors Gruma, the appeals court ruled.

Gruma's Mission products include tortillas, tortilla chips, taco shells, guacamole dip, and salsa. The company has obtained 29 federally registered trademarks for the Mission brand since 1982. The Mission logo includes the word under a Spanish-style bell tower with a rounded top, usually in red, orange and white.

Mexican Restaurants, meanwhile, owns several different Mexican concept restaurants in Texas and elsewhere, including the Houston-based Mission Burrito restaurants, which first started in 1995 and obtained a Texas trademark in 1997. The restaurants are considered fast-casual and serve tortilla chips, dips and salsa, and fresh tortilla- based Mexican food items such as burritos, tacos, and quesadillas.

The Mission burrito logo is the top of a Spanish mission style church topped by a cross in black and white. Mexican Restaurants obtained a federal trademark for the logo and name in 2008.

The district court correctly found that four of the relevant factors favored Gruma, but misapplied the law relating to two others and erred in not fully analyzing two more which should be at least neutral, if not in Gruma's favor, the company argued on appeal.

The appeals court agreed, noting the visual similarities between the two trademarks.

"We find it inescapable that both are clearly employing the device of a mission-style tower associated with Mexico and South Texas to draw an association with the name Mission and the Mexican food each party sells," the Fifth Circuit said.

The restaurant business could also be a natural area of expansion for Gruma, thus increasing the likelihood of confusion, the appeals court ruled, in contradiction to the district court's finding.

San Diego - The U.S. Patent and Trademark Office's Trademark Trial and Appeal Board has affirmed a PTO examiner's refusal to register the trademark "Verde" to Verde Power Supply Inc., saying the proposed trademark as used in connection with the company's goods is only descriptive.

Verde Power Supply refused to provide the examiner with information she requested during the registration process about the company's business operations, on the grounds that doing so would reveal its trade secrets, the TTAB said. TTABlog first reported the board's ruling on Wednesday.

The company applied to register the trademark in January 2010 for electrical and electronic devices for power supply technology, including power supply units, current-voltage converters, DC converters and electronic power supply circuitry.

After the company declined to divulge its claimed trade secrets, the examining attorney asked whether the goods are energy efficient or environmentally friendly. Verde Power Supply did not acknowledge the questions or provide any information regarding the goods, and did not mention them on appeal either, the TTAB said.

"Applicant did not contest the revised request on the ground that it would require applicant to divulge trade secrets, or that it was not legitimate; applicant did not make any response to this request whatsoever," the board said.

The examiner's questions regarding energy efficiency and environmental friendliness were proper to ask, as they concern facts that pertain to the descriptiveness refusal, the TTAB said.

Noncompliance with a legitimate requirement for information or materials can, in and of itself, be a valid basis for denying registration, according to the board.
"We make the presumption that the answers to the examining attorney's questions would be unfavorable to applicant, and that applicant's goods are both environmentally friendly and energy efficient," it said.

The trademark "Verde" would directly and immediately convey to the purchasers of electrical and electronic devices that the equipment in question is environmentally friendly, the board said.

TTAB Judge Ellen Seeherman dissented from the majority ruling, saying that the PTO has failed to prove that "Verde" is merely descriptive.

The office has not shown that Spanish-speaking purchasers of Verde Power Supply's goods would understand "Verde" as having the meaning of energy efficient or environmentally friendly, or that those purchasers would immediately understand from the trademark athat the goods have those qualities, she said.