In re Innovative Technologies Corp. of America, Inc., Serial No. 78691831 (September 15, 2008)

In this recent decision, the Board held that the mark HAIR OF THE DOG for clothing was not likely to be confused with the registered mark LES CHEVEUX DU CHIEN for “custom manufacture of clothing, personal accessories in the nature of jewelry, stoles, scarves, linens, and home décor items.”

The Board found that, while the cited mark, LES CHEVEUX DU CHIEN, translated to “hair of the dog” in English, the marks were “clearly different in appearance and pronunciation,” and did not have “the same idiomatic meaning.” Indeed, the idiom “hair of the dog” in English refers to a hangover cure. This idiomatic meaning, the Board found, was the “predominant meaning” and the “most likely commercial impression” of applicant’s mark HAIR OF THE DOG. On the other hand, the Board noted, a French speaker would “likely see the mark LES CHEVEUX DU CHIEN and perceive it literally as a statement about a dog’s hair.”

The marks, considered as a whole, did not mean the same thing, and, therefore, were not foreign equivalents. The Board further noted that, unlike MARCHE NOIR and BLACK MARKET, the marks HAIR OF THE DOG and its “literal” translation in French LES CHEVEUX DU CHIEN did not have the same idiomatic meaning in both languages. Accordingly, the Board reversed the refusal to register HAIR OF THE DOG.

Comment:

This author is a native French speaker. While in agreement that these two marks are not likely to be confused (if only because of the distinctions between the goods, channels of trade and consumers), she has a très petit bone to pick with the TTAB.

Yes, the marks have different meanings; but not (just) because “hair of the dog” is an idiom and “les cheveux du chien” is not. While the French word “chien” does mean “dog,” the word “cheveux” in LES CHEVEUX DU CHIEN simply does not translate to dog hair in French–or any animal hair for that matter; it means human hair (as in the hair growing on a person’s head). So, when seeing the mark LES CHEVEUX DU CHIEN, a French speaker would not, as the Board stated, “perceive it literally as a statement about a dog’s hair;” a French speaker may, however, perceive it as a statement about a dog wearing a wig (the correct literal French translation for “hair of the dog,” by the way, is “les poils du chien”). Who knew the French had two words for “hair”? Not the applicant apparently; they did not raise this argument in their appeal brief.

Would the Board’s analysis have been different if applicant had presented expert testimony that “les cheveux du chien” did not mean “hair of the dog,” not only idiomatically, but literally? It’s hard to tell. For example, in the recent TTAB decision applying the doctrine of foreign equivalents, In re La Peregrina Limited, 86 USPQ2d 1645 (TTAB 2008) the Board held that the mark LA PEREGRINA was confusingly similar with PILGRIM for jewelry and found that declarations from bilingual individuals, asserting that they would not translate LA PEREGRINA into its English equivalent, were insufficient to rebut the PTO’s evidence.

Practice Pointer:

When responding to a likelihood of confusion refusal based on the doctrine of foreign equivalents, this case reminds us that: 1) if applicant’s mark has any idiomatic meaning, this defense should be raised; and 2) that applicant or applicant’s attorney should try to check with a native speaker whether the marks really mean the same thing in both languages. Dictionaries are helpful, but as this case illustrates, they are not foolproof. While a bilingual expert may or may not sway the Board, knowing whether the words are literal equivalents may at least be helpful in mounting additional arguments against the refusal.

Last Wednesday, the Eastern Division of the Central District Court of California issued a series of extraordinarily sweeping injunctions in favor of Mattel, in the four-year legal dispute between the toy giant and the makers of the popular BRATZ dolls, MGA Entertainment.

Unless you don’t have any tween girls in your entourage, you may know that the BRATZ dolls are saucy, sexy versions of the BARBIE dolls. They came on the market in 2001 and were an instant sensation with young girls, resulting in a billion-dollar franchise, including over 40 characters, video games, and a whole host of ancillary products, accessories and related toys, like BRATZ BOYZ or BRATZ PETZ; even a movie.

Last July, Mattel won a $100 million jury award against MGA for breach of contract and copyright infringement. The jury found that the creator of the BRATZ dolls, Carter Bryant, came up with the idea and design while still under an exclusive contract with Mattel and that MGA had interfered with that contractual relationship. The jury also found that Mattel’s copyright had been infringed by the BRATZ dolls.

One of the post-trial disputes between Mattel and MGA was centered on whether the jury found that only the first generation BRATZ dolls created by Bryant while he worked at Mattel (Yasmine, Chloe, Sasha and Jade) infringed on Mattel’s copyright, or whether the entire line of BRATZ products was in violation. In this latest series of orders, issued on December 3, 2008, the District Court found the entire line to be infringing and issued the following rulings:

- MGA must cease manufacturing, marketing and selling the BRATZ line and any ancillary products;
- MGA must deliver, at its own expense, all infringing dolls and products to Mattel for impoundment; and
- Mattel is granted a constructive trust in the BRATZ and JADE trademarks and related domain names.

These unusually broad injunctions, once in place, would essentially shut down MGA’s business. It may not be the end of the Bratz quite yet, however (no matter what some parents may hope!). The District Court stayed the orders until February 2009 and MGA issued a statement that it will file an appeal to the 9th Circuit and request a stay.

Practice Pointer:

While ideas and concepts are not copyrightable, the expression of ideas and concepts is. Here, the employee crossed a line by re-using more than just intangible ideas and by taking with him actual trademarks and designs created at his former job. This case reminds us of the very real and very costly copyright risk that exists when a company hires an employee or independent contractor who has worked for a competitor. Ideally, you want your new employee to create something new and original every time but, practically speaking, that is not always possible. One prudent practice is to institute in-house policies for clear and clean copyright and content hygiene. Such policies, for example, specify which materials employees may or may not re-use in the scope of employment; and may also set forth a clearance process for “prior art” and open source materials employees are allowed to use from time to time.

Plastwood SRL v. Rose Art Industries (Case No. c07-0458LJR, W.D. Wash. Dec. 5, 2008).

District Court Judge James Robart granted the Motion for Summary Judgment filed by Rose Art, finding that its packaging did not contain literally false statements.

At issue in this case was Rose Art’s line of MAGNEXT toys, plastic and magnetic construction sets that compete directly with Plaintiff Plastwood’s SUPERMAG construction sets. In its complaint, Plaintiff alleged false advertising under Section 43(a) of the Lanham Act for claims made on the packaging. In particular, Plaintiff contended that while Defendant’s packaging makes the claim that “500 designs” can be made from the contents in the box, many of the structures described collapse under their own weight and/or cannot be made by kids.

During discovery, Defendant provided an adult expert who was able to construct all of the structures claimed on the box. Plaintiff complained that even if the expert was able to construct each of the structures, the toy was intended for children, not expert toy builders. Accordingly, the advertising was literally false as to its intended audience. In dismissing Plaintiff’s contention, the court noted that Defendant’s box had an age range of 3 to 100. Thus the court, while acknowledging that the question of whether a statement is false is a question of fact to be decided by a jury, found that Plaintiff had failed to “establish any genuine issue of material fact in support of its assertion that the structures cannot be built,” and further noted that Plaintiff provided no evidence that consumers were actually misled. According to the decision, in fact Plaintiff did show that at least three of the structures could not be built and that many more could be built, but not in the manner shown by the instructions. Nevertheless, the court found that there was no material issue of fact with regard to the truth of Defedant’s statement and granted its motion.

Comment: The decision is an interesting one. Plaintiff brought its case on a theory literal falsity of Defendant’s statements. Under the Lanham Act, if a statement is “literally false,” then a Plaintiff does not have to provide evidence that consumers were actually deceived; rather, if a statement is found to be literally false, the court must assume consumers were misled (Rosco, Inc. v. Saks Fifth Ave., 284 F.3d 302, 311 (1st Cir. 2002) ). Thus, it seems in part, the court may have been using the test for whether a statement, though true, is false by necessary implication, to find for Defendant.

Had the Plaintiff alleged implied false advertising or, in the alternative, “false by necessary implication” (literally true, but misleading), it would have had to provide evidence that consumers were misled. On the other hand, by bringing such a claim, Plaintiff could have made a credible showing that the box indication of “ages 3-100” does not really reflect the toy’s intended audience. Evidence of where the toy was sold (and who bought the toy) could have narrowed the range and survey evidence might have shown that in fact, parents who bought the toy assumed the product designs could be constructed by their child.

Practice Pointer: Appropriate disclaimers should be included on a box (or, if online, at the point of purchase) to notify the purchaser of product limitations. In this case, a claim that the box’s contents make 500 different structures might have been followed by a simple statement that “expert skill may be required to make some structures.” Such a statement would have been unlikely to change the buying habits of a parent interested in the toy, and would likely have alleviated the need to defend against the claim brought.

For the holidays, Lucky Brand has issued what it believes to be the first User-Generated coupon, where your discount depends upon your level of skill. A unique way to drive users directly to its online presence, the company asks you to “Buck Your Way To Holiday Savings” by playing a game in which users control Santa’s bucking reindeer. The more items he bucks off (get it?), the bigger a users discount will be. If you like, you can even upload a picture of yourself so you can buck your own way to savings.

This particular concept meets a number of marketing goals. First, it drives customers directly to the website, where they can view the products for sale. Second, it creates stickiness on the site, which makes users more likely to buy over time. The uniqueness of the promotion suggests users will send the webpage to a friend, encouraging viral marketing.

Practice Pointers:

1. Although not legally required, a good rule of thumb for a promotion such as this is to allow users to play repeatedly until they receive the maximum discount. Such a provision creates goodwill and keeps customers on the site longer.
2. As with any discount promotion, make certain to post restrictions including time for use, maximum amount, number of coupons available per person, and whether or not the coupon can be combined with other discounts.

Today, according to the U.S. Department of Justice, Juan Luis Llamas was sentenced to prison for his role in what is being called a massive sweepstakes fraud scheme that bilked U.S. citizens out of millions. Llamas was sentenced to 11 years in prison and ordered to pay restitution of over $4 million, jointly with his co-conspirators.

Llamas, who pleaded guilty in late 2007, was charged with conspiring to defraud U.S. residents, mostly seniors, of millions of dollars. According to the indictments, Llamas and his co-conspirators made calls to U.S. residents from Costa Rica (using VoIP technology to disguise the call’s origin). Victims were told they had won a “sweepstakes contest” and were being contacted by the “Sweepstakes Security Commission” to ensure the safety of the award. The bogus calls requested the victims wire thousands of dollars as a “refundable insurance fee.” In many cases, victims were asked to wire additional money.

Practice Pointer: The United States does not have a Sweepstakes Security Commission, or any other government entity tasked with awarding money to individuals. In addition, legitimate prize providers will not request an actual winner wire funds to insure a safe transfer of a prize. Finally, if you didn’t enter a sweepstakes, and someone wants to award you money, it’s likely a scam.

Winter 2009. Reebok, in conjunction with the National Hockey League, is hoping consumer recognition of its brand will translate to money in the bank. Reebok will run a “Find the Lost Logo” promotion during the NHL Winter Classic, where it will ask fans to find the hockey player who is not displaying the Reebok logo on his jersey.

Entrants can play by watching the Classic on television and submitting their answer via text message or online; or attendees of the game can submit their answers via text message. All answers submitted will have an opportunity to win four tickets to the Stanley Cup final game. The winner will be announced at the 3rd period.

Practice Pointers:

1. The law is still not clear regarding whether a proper alternate method of entry for a text-messaging sweepstakes can be an online entry. Currently, the matter is being litigated in California courts.
2. This sort of promotion is categorized as a “treasure hunt” and is generally considered a sweepstakes, not a contest.

In re Hudson Fairfax Group LLC, Serial No. 76662560 (November 21, 2008)

In this non-precedential decision, the TTAB found that that a web page displaying the words “India Continuum Fund” (shown below) was acceptable to show use of the applied-for mark CONTINUUM for financial investment services.

The Board held that, because the word “India” was geographically descriptive (as the location of the investments) and the word “fund” was generic, the word CONTINUUM was not “a mutilation of applicant’s mark,” even though the words “India” and “fund” appeared in the same size and font type as the mark CONTINUUM on the specimen page. In short, the Board found that CONTINUUM and INDIA CONTINUUM FUND created a similar commercial impression.

To say that this is a surprising result is an understatement!

The TMEP is clear that “the drawing of the mark must be a substantially exact representation of the mark . . . as shown by the specimen.” TMEP § 807.12(a) citing 37 C.F.R. §2.51(a), emphasis added. In addition, the mark on the drawing must be a complete mark, as shown on the specimen of use. When the representation on a drawing is missing an essential and integral portion, it is sometimes referred to as “mutilation,” which was ground for refusal of CONTINUUM in this case. The determinative factor is “whether or not the subject matter in question makes a separate and distinct commercial impression apart from the other element(s).” TMEP § 807.12(a).

In the specimen submitted by applicant in this case, the word CONTINUUM did not stand out in any way from the words “India” and “fund” (same font, size, color, etc.), which, arguably, creates a unitary mark (INDIA CONTINUUM FUND) that has a distinctive commercial impression from the mark CONTINUUM by itself. Longstanding TTAB case law supports this position. For example in In re Semans, 193 USPQ 727 (TTAB 1976), the Board found that the term “KRAZY,” displayed on the specimen on the same line and in the same script as the expression “MIXED-UP” did not in itself function as a registrable trademark apart from the unitary phrase “KRAZY MIXED-UP.” The recent case In re Yale Sportswear Corp., 88 USPQ2d 1121 (TTAB 2008) is also instructive: the mark UPPER 90 for clothing was refused registration because the specimen of use did not match the drawing. The specimen was a hangtag that included a degree symbol after “90,” a difference that “substantially change[d] the overall impression of the mark.”

If a degree symbol is sufficient to create a distinct commercial impression of the mark, why aren’t the words INDIA and FUND?

Practice Pointer: Regardless of this odd decision, make sure your clients submit specimens of use that are substantially exact representations of their marks, as filed. Small variations are generally fine (like punctuation; although an exclamation point has been held to change the commercial impression of a mark). Whenever possible, the mark should stand out from the words surrounding it, i.e. using a different font, size and/or color. For example, in In re Servel, Inc., 181 F.2d 192 (C.C.P.A. 1950) the Board reversed the refusal to register the term SERVEL as a mutilation of the mark SERVEL INKLINGS, where the specimen displayed an insignia between the words “SERVEL“ and “INKLINGS,“ and “INKLINGS” was printed in a large and different kind of type.

A little something from Doug:

I received a last minute call the other day from a boyhood friend inviting me to see the band AC/DC in concert at the Oracle Arena in Oakland, CA. Needless to say, I jumped at the opportunity. Why? On one hand, I’ve never seen AC/DC live. Say what you will, but any band that can sell out two shows at a modern basketball arena, some 35 years after their founding, must be doing something right. Indeed, since forming in 1973, AC/DC has achieved global sales totaling more than 150 million albums. Moreover, AC/DC is Sony BMG Music’s best-selling catalog act worldwide, selling nearly 70 million albums in the U.S. alone. On the other hand, I was also interested in AC/DC the “brand.” Would my interest have been as piqued if our seats were in, say, section 213, rather than in a catered club level luxury suite with preferred parking?? Does Angus Young wear corduroy shorts???

Arriving at the Arena parking lot the first thing I noticed was the T-shirts. Everyone seemed to have a unique AC/DC concert shirt. A badge of honor amongst concert veterans. Consistent, however, in these t-shirts was the prominent placement of the the recognizable AC/DC logo. Seeing that prominent AC/DC logo got me thinking about, and looking at, all of the band’s merchandise for sale, emblazoned with its unique logo.

It is evident that AC/DC understands the power of its logo and the goodwill associated therewith. In addition to T-shirts (designs for men, women, and children), on sale at the venue were: AC/DC posters and stickers, AC/DC jackets and outerwear, AC/DC hats, AC/DC magnets and key chains, AC/DC 2009 wall calendars, and AC/DC tour programs. Interestingly, AC/DC currently maintains U.S. trademark registrations in only International Classes 016, 025, and 026. These registrations are for the AC/DC Logo design mark, and not the standard word mark. While these registrations provide the band significant protection, and the band certainly has significant common law protection, there are some categories of goods and services the band could consider.

For example, AC/DC maintains a fairly elaborate website, yet does not maintain a U.S. registration in Class 041. The website offers streaming audio and video, but the band is not registered in Class 038. Of course, as their bread and butter, AC/DC sells CD, DVDs, and video game cartridges and discs, yet the band has no registration in Class 009. The band sells tote bags, luggage tags, and doggie sweaters in Class 18, and ashtrays in Class 034, all without U.S. trademark registrations. Big deal, you say . . . who’s gonna rip off AC/DC’s trademark? There’s an old saying, “an ounce of prevention is worth a pound of cure.” One need only look at AC/DC’s metal brethren METALLICA, and its numerous trademark registrations, to see what a few ounces of prevention is worth.

“Angus, baby, call me . . . we’ll do lunch. Have you thought about AC/DC air fresheners in Class 005?”

Note from Tsan: Except as related to information pertaining to the practice of trademark law and expansion of brand protection, the views expressed herein (including without limitation the reference to the band as legendary) do not necessarily reflect the position of Cobalt or Doug’s colleagues.

On December 5, 2008, The Children’s Advertising Review Unit (”CARU,”) a division of the Better Business Bureau, issue a press release admonishing advertisers to make clear disclosure about the need for adult supervision with certain toys, particularly when those toys are advertised directly to children.

CARU highlighted a new product from Wham-O, called the Slip ‘N’ Slide Mega Shark, a water toy for children’s play. The toy was advertised on Nickelodeon during a time when children are the primary viewing audience.

CARU questioned whether a small graphic disclosure on the screen was sufficient to inform children that no one over 5’ tall or weighing over 110 pounds should use the toy. Moreover, CARU expressed concern that because the disclosure was not properly made, the toy might be misused by children.

The lack of adequate disclosure was only one of the concerns CARU expressed. CARU also worried that the commercial should have shown adequate adult supervision, noting there was only a brief showing of a woman watching the children play on the slide. Overall, CARU found, the commercial did not meet CARU’s voluntary requirements.

Case law supports CARU’s contention that more precautions should be taken. In particular, with water sliding devices, the weight and height requirement is important, as spinal cord injuries, rendering users unable to walk, have been reported, and numerous law suits have dealt with this issue.

Practice Note: In an era of childhood obesity, it is not unusual for children to weight over 110 pounds. Clients CARU is self-regulatory and speaks softly, but carries a big stick. In cases where an advertiser refuses to alter its ad campaign, CARU can (and will) refer matters directly to the Federal Trade Commission for prosecution. Moreover, CARU can alert the CPSC if it believes the product or its advertising present a problem.

Welsh v. The Big Ten Conference, Inc., (Case. No 08 C 1342, ND Illinois 11/21/08)

Perhaps an easy lay-up to a seasoned trademark professional, this case presents some interesting facts surrounding confidentiality agreements, ideas, and trademarks. In the case, Welsh, a supporter of Big Ten Athletics approached the Big Ten Conference (“Big Ten”) with a business plan that included an idea for a “Big Ten Network,” a cable station that would provide coverage of Big Ten athletic events, including commentary, talk shows, and game broadcasts. Big Ten reviewed the materials, pursuant to a confidentiality agreement, and subsequently determined to punt on the business relationship with Welsh.

Many years alter, Big Ten created the Big Ten Network, which included a number of ideas from those set forth in Welsh’s business plan. Welch sued for violation of Section 38 of the Lanham Act, and sued under the Illinois Trade Secrets Act, and for breach of contract. Big Ten moved to dismiss the complaint, citing Keane v. Fox Television Stations, Inc., 297 F.Supp. 2d 921 (S.D. Tex 2004), which held that an idea for a television show (“American Idol”) cannot be protected under trademark law.

In his pleadings, the Plaintiff argued that while he had not yet made use of the mark BIG TEN NETWORK; and neither had he filed an application for the mark, his BIG TEN NEWORK was protected under trade secret law. The court disagreed and sided with Big Ten.

The court found that Plaintiff had made an overly broad reading of the Lanham Act and found that Welsh could not assert a trademark right in his idea for a name of or content of BIG TEN NETWORK. Moreover, citing a nearly 100 year old Supreme Court case, United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918), the district court found that “use” of a trademark is not made when it is presented as a idea, and not alongside a product or services as a distinguishing mark.

The court finally noted that misappropriation of trade secrets, which is a state claim, and, without a federal Lanham Act cause of action, the state claims were dismissed for lack of subject matter jurisdiction.

Practice Note: Notwithstanding what trade secret claims a plaintiff may have in the above fact pattern, clients should proceed carefully in third party solicitations of business relationships. Most importantly, it has no ownership rights in any catchy trademarks and phrases, particularly those that embody a third party’s existing trademark.

Like a quarterback sacked by his own team, a U.S. district court in Alabama granted Auburn University’s motion for a preliminary injunction against alumni, Mike Moody, and his website sixfingeryear.com in the case of Auburn University v. Mike Moody and Sixfingeryear.com (Civil Act. No. 3:08cv796-CSC November 4, 2008). There the court found that the defendants’ six finger foam hand novelty souvenirs bearing the marks AUBURN and WAR EAGLE likely infringed on Auburn’s registered trademarks.

Auburn University owned incontestable federally registered trademarks for the marks AUBURN, WAR EAGLE, AUBURN UNIVERSITY, and AUBURN TIGERS. Moody created and sold, through his website sixfingersyear.com, orange six finger foam hand novelty souvenirs designed to commemorate Auburn’s six game winning streak over the University of Alabama in the Iron Bowl. Each finger represented one of the teams’ victories, and each hand bore the words “Auburn” and “War Eagle” in blue.

Auburn called foul. It filed a motion for preliminary injunction and sued Moody for trademark infringement, unfair competition, dilution, false designation and misrepresentation of origin. Stepping in to referee the dispute, the court entered an order restraining Moody from producing, manufacturing, marketing, distributing, selling or offering to sale, the six finger foam hands bearing the marks AUBURN and/or WAR EAGLE and/or any other foam hand novelty product that contained any of Auburn University’s marks.

Playing zone defense, Woody offered several unsuccessful arguments, including a claim that he was not profiting from the sale of the hands and that he had not intended to use the marks in retail commerce. All he wanted, he claimed, was to have “fun to celebrate and hopefully make enough money to pay for the costs and buy some beer” from his “lemonade stand type project.” As the court signaled from the sideline, it was not necessary that Moody profit but only that he intended to benefit from the use of Auburn’s mark.

Perhaps his greatest fumble, however, was in selling one of his foam hands containing the words AUBURN and WAR EAGLE to an employee of the Auburn’s Trademark Management and Licensing Office after receiving a cease and desist letter from Auburn’s licensing agent.

The court easily found Moody offsides. The relevant likelihood of confusion factors, including strength of the marks, similarity of marks, similarity of goods/services, the channels of trade, defendant’s intent and actual confusion, weighed strongly in favor of Auburn. Finding it likely that Auburn would prevail on its infringement suit, the court granted a preliminary injunction.

Note: And all of this because a guy who sold 14 foam fingers to his friends for make some beer money. Perhaps Mr. Moody should have stuck to his lemonade stand.

In Williams v. Gerber Prods. Co., 523 F.3d 934 (9th Cir. Cal. 2008), a panel of the United States Court of Appeals for the Ninth Circuit (”Court” or “Court of Appeals”), in a published opinion, reversed the judgment of the District Court, and found, under California law, Plaintiffs could proceed with their case against Gerber Products Company (“Gerber”). The issue? Whether Plaintiffs (a certified class of parents) had alleged a valid legal claim that a Gerber fruit juice product, developed for toddlers, was deceptively marketed.

Gerber, “one of the most trusted names in baby food and baby care,” marketed its Fruit Juice Snacks product (”Snacks”) in a package featuring images of fruit such as oranges, peaches, strawberries and cherries. The side panel of the packaging described the product as made “with real fruit juice and other all natural ingredients.” In addition, another side panel contained a statement announcing Snacks was, “one of a variety of nutritious Gerber Graduates foods and juices.”

Thinking they purchased healthy snacks for their kids, Plaintiffs sued Gerber under, among other things, California state tort law for misrepresentation and breach of warranty, as well as claims under California’s Unfair Competition law (Bus. & Prof. Code § 17200, et seq.) and California’s Consumer Legal Remedies Act (Civil Code § 1750, et seq.). Plaintiffs’ deception claims were based, in part, upon the following allegations: (1) The product contained no fruit juice from any of the fruits pictured on the packaging; (2) The only juice contained in the product was white grape juice from concentrate; and (3) The two most prominent ingredients in the product were corn syrup and sugar.

Gerber filed a motion to dismiss and the District Court granted Gerber’s motion fining the package statements were not likely to deceive a reasonable consumer. The Court of Appeals disagreed. In reversing the District Court’s order, the Court recognized that “whether a business practice is deceptive will usually be a question of fact not appropriate for decision on demurrer.” It further found a number of Gerber’s packaging features could likely deceive a reasonable consumer. “The product is called ‘fruit juice snacks’ and the packaging pictures a number of different fruits, potentially suggesting (falsely) that those fruits are contained in the product,” stated Judge Pregerson in the Opinion of the Court. Further, the Court found the statement that the product “was made with ‘fruit juice and other all natural ingredients’ could easily be interpreted by consumers as a claim that all ingredients in the product were natural, which appears to be false.” Disagreeing with the District Court, the Court found, “reasonable consumers should [not] be expected to look beyond misleading representations on the front of the box to discover the truth from the ingredient list in small print on the side of the box.”

Finally, in a statement sure to make consumer products manufacturer’s take note (especially those marketing products for infant or toddler use), the Court added, “We do not . . . think that a busy parent walking through the aisles of a grocery store should expect to verify that the representations on the front of the box are confirmed in the ingredient list. Instead reasonable consumers expect that the ingredient list contains more detailed information about the product that confirms other representations on the packaging. We do not think the FDA requires an ingredient list so that manufacturers can mislead consumers and then rely on the ingredient list to correct those misrepresentations and provide a shield for liability for the deception.”

Practice Note: In reading the full opinion, this commentator is of the opinion the Court of Appeals, while correct on the application of the law, held Defendant Gerber to a higher standard than that of an ordinary manufacturer of consumer products. Gerber, in its own words, is “one of the most trusted names in baby food and baby care.” The Court likely took note of this when crafting its opinion. One wonders if the same standard would have been applied to a beer manufacturer or a coffee beverage manufacturer, i.e. products marketed to and primarily intended for adults.

The 9th Circuit vacated and remanded the case of Halicki Films v. Carroll Shelby Int. (CV-04-08813-SJO November 12, 2008), finding that the District Court erred in granting Defendant’s Motion for Summary Judgment for lack of standing.

In 1974, Long before Nicolas Cage and Angelina Jolie burned up the state in the remake of “Gone in 60 Seconds,” Toby Halicki produced and marketed the Original Motion Picture and subsequently, the Ford Mustang used in it, “Eleanor.” In 1995 Toby Halicki’s widow entered into an agreement with Hollywood Pictures to produce of remake of the original, but the car name used was not “Eleanor.” Instead, the car used on screen was a customized “Shelby GT 500” (a variant of the Ford Mustang), created by Carroll Shelby with Ford’s permission. The name “Eleanor” was never used in the film’s remake. Carroll Shelby met Ms. Halicki at a trade show where she was displaying the original “Eleanor” and selling merchandise under the mark.

In 2002, Carroll Shelby applied to register the name ELEANOR for automobiles and structural parts (Halicki had a registration for promotional items). Shelby also entered into an agreement with a motorcar company to use the mark ELEANOR to market Shelby vehicles and the company began producing vehicles under the ELEANOR trademark thereafter. Halicki sued Shelby for trademark infringement, false advertising, copyright infringement, and unfair competition. The district court ruled that Halicki lacked standing to sue because she had relinquished the rights to the car and to the mark ELEANOR in her agreement with Hollywood Pictures. The 9th Circuit vacated the decision.

The court determined that the plain language of the Agreement, which states that Halicki reserves the right to manufacture, sell and distribute merchandize utilizing the car known as “Eleanor” from the Original motion picture, could be reasonably interpreted by Plaintiff to mean she retained rights to exploit the mark ELEANOR. The court further found that the court erred in not allowed extrinsic evidence of the Hollywood Pictures negotiations to clarify Plaintiff’s rights in this regard, finding that “the trial court must provisionally receive any proferred extrinsic evidence which is relevant to show whether the contract is reasonably susceptible of a particular meaning.”

The court also found that the car was more like a cartoon character than a literary character, and thus, using longstanding law of the circuit, found that the car, “Eleanor”, was entitled to copyright protection.

As to whether she had standing to sue under trademark infringement, the 9th Circuit pointed out that even if Halicki did not have standing under the terms outlined in the Lanham Act, the District Court was obliged to consider Plaintiff’s argument that she was a non-owner with a commercial interest in the mark.

Of note is the admonishment by the 9th Circuit to the District Court to “take a sufficiently broad approach (to the question of trademark confusion) if and when it reaches the merits of Halicki’s claim.” This suggests that while the court acknowledged the goods sold by Defendant and Plaintiff might be sufficiently distinct to find no confusion under a straight trademark infringement analysis, the circumstances here suggest giving little weight to the similarity of the goods.