The Year in Trademark Law

The Year 

in 

Trademark Law 

Stephen R. Baird 

Chair, Trademark & Brand Management Group 

Winthrop & Weinstine, P.A. 

Suite 3500 | 225 South Sixth Street | Minneapolis, MN 55402 | Main: (612) 604-6400 | Fax: (612) 604-6800 | www.winthrop.com

TOPICS 

Here’s What 

We’ll Cover . . . 

• Res Judicata & Collateral Estoppel 

• Trademark Mutilation 

• Nominative Fair Use 

• Earth Protectors Decision 

• Section 2(a) Developments 

• Questions for Commissioner Beresford 


Res Judicata & Collateral Estoppel 

No Second Bites 

At the Apple … 

Res Judicata/Claim Preclusion bars a second 

suit when: 

a. there is identity of parties; 

b. there has been an earlier final judgment on the merits of a 

claim; and 

c. the second claim is based on the same transactional facts 

as the first. 

Collateral Estoppel/Issue Preclusion bars a 

second suit when: 

a. there is identity of an issue in a prior proceeding; 

b. the identical issue was actually litigated; 

c. determination of the issue was necessary to the judgment 

of the prior proceeding; and 

d. the defendant had full and fair opportunity to litigate the 

issue in the prior proceeding. 



Mayer/Berkshire Corp. 

v. 

Berkshire Fashions, Inc. 

424 F.3d 1229 (Fed. Cir. 2005) 

Holding: 

Mayer/Berkshire's prior unsuccessful trademark 

infringement action in federal district court did 

not bar bringing a subsequent trademark 

opposition action before the TTAB. 

Reasoning: 

Neither Res Judicata/Claim Preclusion nor 

Collateral Estoppel/Issue Preclusion applied since 

the issues and transactional facts were 

different, not identical. The “likelihood of 

confusion” test applied by the TTAB is different 

from the “likelihood of confusion” test applied in 

federal district court infringement actions. 



Jean Alexander Cosmetics 

v. 

L'Oreal USA (3d Cir. 2006) 


Jean Alexander barred from relitigating -- in a 

federal district court action -- the TTAB’s 

prior determination of no likelihood of confusion. 

Reasoning: 

Although the TTAB’s prior conclusion of no 

likelihood of confusion was an alternative 

holding, the likelihood of confusion issue was 

actually litigated and previously decided. 



Jean Alexander Cosmetics 

v. 

L'Oreal USA (3d Cir. 2006) 

Jean Alexander 

First Use in 1990 

Registered in 1993 

L’Oreal Predecessor L’Oreal 

First Use in 

1988 

First Use in 

1988 

Application Filed in 1992 


Trademark Mutilation 

When the Mark Applied for 

Doesn’t Match the Use . . . 

Dealing with Trademark Mutilation 

Refusals 

Issue: 

• Does the specimen evidencing use of the 

trademark agree with the drawing of the 

mark to be registered? 

Test: 

• The drawing must be a "substantially exact 

representation" of the mark shown in the 

specimen. Trademark Rule 2.51(b). 



In re Jordan Outdoor Enterprises 

(TTAB 2006) 

TTAB Finds No Trademark Mutilation 

Mark: REALTREE HARDWOODS GREEN HD 



In re ITT Industries, Inc. 

(TTAB 2006) 

TTAB Finds No Trademark Mutilation 

Specimen 

Drawing 



Lessons Learned … 

Strategic Trademark Registration Tips: 


Nominative Fair Use Defense 

Century 21 Real Estate Corp. 

v. 

Lending Tree, Inc. 

425 F.3d 211 (3d Cir. 2005) 

Significance 

• Modified likelihood of confusion test is 

appropriate when a nominative fair use defense 

is asserted. 

• Similarity of marks and strength of senior 

mark factors do not apply 

• Most important likelihood of confusion factors: 

– Price of goods 

– Duration of use without actual confusion 

– Intent 

– Actual confusion 


Earth Protectors Decision 

Davis v. Walt Disney Co., 430 F.3d 901 

(8th Cir. 2005), cert. denied, 126 S.Ct. 

2303, No. 05-1281 (May 22, 2006) 

Issue: 


Whether Disney's use of the designation "Earth 

Protectors" to identify an evil fictional company 

portrayed in a children's movie is likely to cause 

confusion as to the source, affiliation, 

sponsorship or connection with Davis' EARTH 

PROTECTOR and EARTH PROTECTOR 

SHOW marks used in connection with books, 

pamphlets, educational materials, t-shirts, and 

occasional broadcasts of a local cable access 

program. 

Summary judgment in favor of Disney 

affirmed because no reasonable jury could 

find a likelihood of confusion. 


Section 2(a) Developments 

“No trademark … shall 

be refused registration … 

on account of its nature 

unless it – (a) Consists of 

or comprises immoral … 

or scandalous matter; or 

matter which may 

disparage … persons … 

or bring them into 

contempt, or disrepute 

…” 

• In re Mexico 69 SRL (TTAB 2006) (DE PUTA MADRE 

scandalous or immoral for clothing). 

• In re Red Bull GmbH, 78 USPQ2d 1375 (TTAB 2006) 

(BULLSHIT scandalous or immoral for variety of 

goods/services including alcoholic and non-alcoholic 

beverages and restaurant services). 

• In re Squaw Valley Development Company (TTAB 2006) 

(SQUAW for clothing and retail store services may disparage 

American Indians or bring them into contempt or disrepute). 

• McDermott v. San Francisco Women's Motorcycle Contingent 

(TTAB 2006) (dismissing opposition against DYKES ON 

BIKES for educational and entertainment services). 

• Blackhorse et al v. Pro-Football, Inc. (new challenge to 

REDSKINS registrations filed in TTAB last month). 


Some Excellent Trademark 

Related Blogs … 

Highly Recommended Reading: 

and 

THE TRADEMARK BLOG 

(www.schwimmerlegal.com) 


Questions for Commissioner 

Beresford 

Comments? 

Trademark 

Piranha? 


THANK YOU! 

Winthrop & Weinstine 

Attorneys & Counselors at Law

The Year in Trademark Law

You also want an ePaper? Increase the reach of your titles

Delete template?

Save as template?