The Lanham Act grants the “holder of a trademark used in commerce” the proper to apply for registration of its trademark up~ the body the Principal Register. 15 U.S.C. § 1051. The Lanham Act prohibits, nevertheless, the registration of marks on the Principal Register that are solely descriptive, unless the mark has adorn distinctive of the registrant’s goods in commerce. 15 U.S.C. §§ 1052(e)- (f). In determining whether a note has acquired distinctiveness, i.e., subordinate meaning, “the chief inquiry is whether in the consumer’s regard with submission the mark has become associated by a particular source.” Co–Rect Prods., Inc. v. Marvy! Advertising Photography, Inc., 780 F.2d 1324, 1332–33 (8th Cir.1985).
Under § 2(f), “[t]he Director may accept as prima facie evidence that the regard has become distinctive, as used up~ or in connection with the applicant’s commodities in commerce, proof of substantially fastidious and continuous use thereof as a re~ by the applicant in commerce concerning five years before the date up~ which the claim of distinctiveness is made.” 15 U.S.C. § 1052(f). A importance registered on the Principal Register is presumed to exist valid, 15 U.S.C. § 1057(b), and “the ground for believing of validity is a strong undivided,” Zobmondo Entm’t, LLC v. Falls Media, LLC, 602 F.3d 1108, 1115 (9th Cir.2010). The presumptuousness of validity that attaches to a § 2(f) registry includes a presumption that the registered trace has acquired distinctiveness, or secondary explanation, at the time of its enrolment. Aromatique, Inc. v. Gold Seal, Inc., 28 F.3d 863, 870 (8th Cir.1994).
The Lanham Act provides that a registration issued under the Act “shall have existence prima facie evidence of … [a] registrant’s cliquish right to use the registered eminent position in commerce.” 15 U.S.C. § 1115(a). However, the Act provides brace avenues of affirmative defense to a set charged with infringement of a registered heed. First, the alleged infringer may prove “any legal or equitable defense or break fealty … which might have been asserted granting that such mark had not been registered.” 15 U.S.C. § 1115(a). Second, the alleged infringer may strive cancellation of the registrant’s trademark registration either as a counterclaim in the breaking suit or as a separate and absolute action. Keebler Co. v. Rovira Biscuit Corp., 624 F.2d 366 (1st Cir .1980); look also 15 U.S.C. § 1064. If the cancellation gesture is filed within five years of the enrolment of the mark sought to be canceled, as it was here, “[a]ny land that would have prevented registration in the leading place qualifies as a valid set for cancellation.” Cunningham v. Laser Golf Corp., 222 F.3d 943, 946 (Fed.Cir.2000); diocese also 15 U.S.C. § 1064. When a single out is registered under § 2(f), be wanting of acquired distinctiveness at the time of enrolment is a valid ground for cancellation. Neapco, Inc. v. Dana Corp., 12 U.S.P.Q.2d 1746, 1989 WL 274388, at *1 (T.T.A.B. Aug. 30, 1989).
The one seeking to cancel a registration has the overlay of persuasion to rebut the trademark’s probability of validity by a preponderance of the ground of belief. Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 1356 (Fed.Cir.2009); Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 1579 n. 9 (Fed.Cir.1988)). In a § 2(f) matter of inquiry, this means that the party seeking cancellation sourness establish a prima facie case of none acquired distinctiveness. Id. If the participant seeking cancellation establishes a prima facie showing of fallacy, “[t]he burden of producing superadded evidence or argument in defense of registry … shifts to the registrant.” Id. The court in that case must “decide whether the participator seeking cancellation has satisfied its eventuate burden of persuasion, based on totality the evidence made of record for the time of prosecution and any additional evidence introduced in the cancellation measure.” Id.
Lovely Skin, Inc. sells cosmeceutical skin care products, that are cosmetics with pharmaceutical benefits. Lovely Skin carries the one and the other dermatologist-recommended, third-party skin care products and its confess products under the brand name “Lovely Skin.”
In 1999, the body filed applications to register its marks, LOVELYSKIN and LOVELYSKIN.COM. The PTO refused to schedule either of the marks on the Principal Register as it determined that both marks were “barely descriptive.” The marks were at another time placed on the Supplemental Register. In 2004, Lovely Skin applied to roll the mark LOVELYSKIN on the Principal Register pursuant to § 2(f) of the Lanham Act, which permits merely descriptive marks to exist registered if they have acquired distinctiveness. See 15 U.S.C. § 1052(f). The PTO registered the trademark LOVELYSKIN and placed it adhering the Principal Register on September 20, 2005. In 2006, Lovely Skin applied to make a record of LOVELYSKIN.COM, and in January 2007, ~y amendment was made to that turning upon particulars to add a claim that LOVELYSKIN.COM had acquired distinctiveness based on Lovely Skin’s ownership of the registration for LOVELYSKIN. The PTO also registered LOVELYSKIN.COM and placed it up~ the Principal Register on June 19, 2007.
In March 2006, Lovely Skin became conscious of the website registered www.livelyskin.com, motion by Ishtar Skin Care Products, LLC, which sells many of the same products that Lovely Skin sells end its website. Lovely Skin ultimately filed a four-estimate lawsuit against Ishtar, alleging trademark infringement and false designation of origin ~ the load of the Lanham Act, and common order unfair competition and injury to transaction reputation in violation of Nebraska statute. Ishtar counterclaimed, seeking cancellation of the registrations of Lovely Skin’s couple trademarks. After a bench trial, the quarter court canceled the registrations and entered discrimination for Ishtar on all four counts of Lovely Skin’s wail. Lovely Skin appeals. The Eighth Circuit has it being so that reversed the district court’s good sense canceling Lovely Skin’s trademark registrations yet otherwise affirmed the judgment in regard with ~ of Ishtar. Lovely Skin, Inc. v. Ishtar Skin Care Products, LLC, — F.3d —-, 2014 WL 960991
(8th Cir. March 13, 2014).
The province court canceled Lovely Skin’s trademark registrations for it found that Ishtar had demonstrated that they lacked acquired distinctiveness at the time they were registered. The court of appeals began ~ dint of. noting that Lovely Skin’s trademarks LOVELYSKIN and LOVELYSKIN.COM were registered pursuant to § 2(f), and the PTO accepted Lovely Skin’s declarations because prima facie evidence of acquired distinctiveness and registered the marks. See 15 U.S.C. § 1052(f). Thus, Lovely Skin’s trademarks are entitled to a intoxicating presumption of validity that includes a belief that its trademarks had secondary design at the time of their registrations. Ishtar, in the same manner with the party seeking cancellation, had the couple the initial burden to establish a prima facie suit that Lovely Skin’s trademarks had not acquired distinctiveness at the time of their registrations and the most remote burden of persuasion to prove that Lovely Skin’s trademarks were weakly by a preponderance of the evince.
In concluding that Ishtar had established a prima facie trial that Lovely Skin’s trademarks had not acquired distinctiveness at the time of their registrations, the region court relied on evidence of treaty trademark registrations and state business essence registrations of third parties whose marks or function names contained the terms “lovely” or “love” in confederacy with “skin.” However, Ishtar did not at hand any evidence regarding how these third part parties had used the marks, whether at all, in the five years near the front of Lovely Skin’s trademarks were registered. Nor did it essay evidence of how, or even granting that, the third parties promoted or advertised these marks for the time of those years or whether the general recognized these third party marks. Therefore, the court of appeals concluded that the manifest of three third parties that registered one and the other trademarks or business names similar to Lovely Skin’s trademarks was not enough to prevail the strong presumption of validity and make stable a prima facie case that Lovely Skin’s marks had not acquired distinctiveness at the time of their registrations end substantially exclusive use for the five antecedent years.
The Eighth Circuit also ground that evidence regarding Lovely Skin’s failure to end whether the marks were indeed “distinctive” at the time of registration could not be used to congregate Ishtar’s own burden of examination to show that the marks were not distinguishing. Thus, Ishtar did not demonstrate that Lovely Skin’s trademarks were not registrable since they lacked acquired distinctiveness at the time of their registrations. Accordingly, the court of appeals reversed the tract court’s judgment canceling the registrations of LOVELYSKIN and LOVELYSKIN.COM.
However, the court of appeals affirmed the ballast in favor of Ishtar on Lovely Skin’s claims of trademark infringement, false designation of origin, unfair competition, and deceptive trade practices. In method to succeed on each of these four claims, Lovely Skin was required to show, among other things, that a verisimilitude of confusion exists between Lovely Skin’s trademarks and livelyskin.com.
To exhibit a likelihood of confusion, Lovely Skin was required to make known a probability of confusion, not entirely a possibility. Determining whether a probability of confusion exists requires consideration of six factors: (1) the stay of the owner’s mark; (2) the correspondence between the owner’s mark and the alleged infringer’s single out; (3) the degree to which the products enter the lists with each other; (4) the alleged infringer’s resolutely bent to pass off its goods viewed like those of the trademark owner; (5) incidents of positive confusion; and (6) the type of product, its costs and conditions of buy. The relative weight of the factors depends adhering the facts of the individual contingency
The only evidence admitted at heartache of actual confusion was an indicate in which a consumer addressed some email to cathy@livelyskin.com, rather than cathy @lovelyskin.com, and ~y unsubstantiated statement by Lovely Skin’s proprietor that since 2009 Lovely Skin was “perception quite a bit of instances both orally and a couple written instances of confusion” betwixt LovelySkin.com and Ishtar’s website. In striking difference, Ishtar presented testimony that it had not experienced a single instance of chaos. The district court concluded that the email did not show actual confusion because the customer clearly knew that she was contacting Lovely Skin and simply made a typographical error. The court of appeals mould that the exhibit supports the territory court’s conclusion; the customer was replying to a corroboration email that Lovely Skin sent her respecting her order and merely made ~y error in the email address of the somebody she was copying. Thus, the Eighth Circuit mould that the district court did not lay clear error by finding that there was minimal evidence of actual mortification.
The court of appeals concluded that the tract court properly considered all of the apt factors in determining that no verisimilitude of confusion exists between Lovely Skin’s trademarks and Ishtar’s website. The Eighth Circuit held the territory court’s determination was a lawful view of the evidence and thence not “clear error.” Because everything four counts of Lovely Skin’s indisposition required a finding of a likelihood of confusion to succeed, the court of appeals affirmed the territory court’s judgment for Ishtar adhering all of Lovely Skin’s claims.
Intellectual Property Law and Our Law Firm
At Heygood, Orr & Pearson, our attorneys be obliged handled hundreds of commercial litigation cases ranging in estimation from tens of thousands of dollars to tens of millions. We be delivered of successfully represented businesses of all sizes, from scanty “mom and pop” businesses to some of the largest corporations in the nature.
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Our attorneys are capable of litigating apparent infringement claims throughout the country. In adding, firm attorney John “Jay” Pate is licensed to persevere in patents before the U.S. Patent and Trademark Office.
Beyond our especial experience in the field of intellectual property, our ability to prosecute indisputable infringement action is aided by our wide trial experience in general. While technical information and familiarity with patent rules is a mould for attorneys handling patent infringement claims, there is no substitute for courtroom experience. At Heygood, Orr & Pearson, our seasoned litigators have the experience to take even the ut~ complex patent case and explain it in conditions a jury can understand. We receive a track record of proven luck representing businesses large and small. Several of our grief lawyers are board certified and many of them have been selected as Super Lawyers in the State of Texas with a view to several years in a row. Our sturdy is AV rated, the highest legitimate and ethical ranking available from the leasing ordinance firm ranking service, Martindale-Hubbell.
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Posted March 28, 2014
by John Chapman
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