Last Wednesday, Johnson & Johnson filed suit against the Red Cross, alleging trademark infringement of J&J’s RED CROSS design by the Red Cross for products licensed by the Red Cross and sold to the public.

J&J doesn’t appear to dispute the Red Cross’ use of the mark for disaster preparedness, but claims that its use cannot extend to commercially available products, such as first aid kits, something J&J has been selling since at least as early as 1903 (and possibly 1887). J&J claims that the 1900 Charter by Congress did not give the Red Cross the right to sell commercial products. The Red Cross, on the other hand, points to language in the Charter that allowed it to register its emblem (red cross on a white background) in every class at the U.S. Patent and Trademark Office, as well as language in the Charter that allows it to carry out other activities consistent with its Charter purposes. Supplying the public with various products related to safety, the Red Cross contends, is completely within the course and scope of its mandate and the Charter. Such a position is making J&J see red.

If the Red Cross’ public information is correct and it has for 100-plus years been selling first aid kits for over 100 years openly, and with the knowledge of J&J, this writer thinks a laches defense might well carry the day. If J&J leaps that hurdle, then perhaps a showing of lack of confusion for the past 100 years is sufficient to quiet the company. Nabisco, Inc. v. PF Brands, Inc. 191 F. 3d 208 (2d Cir. 1999)Surely, the proliferation of third party “cross” marks, coupled with both entities’ longstanding histories has over time educated consumers to the distinction between the two marks’ use. Sun Banks of Fla., Inc. v. Sun Fedl. Sav. & Loan Ass’n. 651 F.2d 311 (5th Cir. 1981); Local Trademarks, Inc. v. Handy Boys, Inc., 16 U.S.P.Q.2d 1156 (TTAB 1990).

Despite the fact that the marks are identical, it’s not difficult to tell the difference when we are presented with each; much like pornography, we know which is which when we see it. What is likely making J&J see red is the potential loss of market share rather than any real concern of confusion. And here we thought trademarks were for consumer protection.

Trademark 101: two companies cannot use an identical mark for similar or related products. This is to avoid consumer confusion. The company that owns an earlier federal registration with the U.S. Patent and Trademark Office (”PTO”) generally prevails; the other must change the name of its product (with many nuances and exceptions, of course!).

Now everyone is talking about the Apple iPhone. But have you heard of the Linksys iPhone? Probably not until Cisco (Linksys’ parent company) filed a much publicized lawsuit against Apple over the mark “iPhone” two weeks ago. Cisco claims that it owns senior rights in the mark and that Apple cannot use the name.

Cisco’s complaint is available here

Cisco has owned a PTO registration for “iPhone” since 2000 (when it purchased the company Infogear). Apple owns foreign applications for the mark (in Asia, Europe and Australia). Cisco’s registration is for “computer hardware and software for providing integrated telephone communication with computerized global information networks” (Reg. No. 2,293,011). In December 2006, less than a month before the anticipated launch of the Apple Iphone, Linksys, a division of Cisco, released its iPhone handheld device.

The differences between the devices may play a role in resolving the dispute. Cisco’s iPhone products work with Voice over Internet Protocol (VoIP) services (like Skype), while the Apple iPhone is more like a conventional cell phone that uses internet connections, not to make calls, but to browse the web or check emails. The differences are subtle, but judges and the PTO have been known to allow identical marks to coexist in the telecommunications and software industries if the products have different uses and markets.

Another issue that may come up in the case is Cisco’s use of the mark since 2000. Infogear was using the mark for its line of “phone-plus-internet” products, but did Cisco use the mark in commerce before launching its own iPhone device in 2006? This is important because if a mark has not been in use for 3 consecutive years and the owner has done nothing to try to resume use of the mark, the PTO may presume that the owner has abandoned the mark. Apple may use that argument to try to invalidate Cisco’s registration.

Stay tuned for updates on the dispute…

In the meantime, bloggers are already coming up with alternate names for Apple’s iPhone: MacPhone, iTalk, iCall, iWishIHadABetterName…

On January 1, Bulgaria and Romania became the 26th and 27th members of the European Union (”EU”). Bulgaria and Romania are probably not on your radar now, but they may be in the future, as the two countries continue to grow their economies and modernize their infrastructures to meet EU standards.

In the meantime, the news is likely to affect your trademark rights if you are doing business in Europe, or if you are planning to expand your business to the Balkan states.

First, a few words about trademarks in Europe. The EU has a system, called the European Community Trademark (”CTM”), that allows companies and individuals to file a single trademark application that covers all member countries (instead of having to file individually with each country’s trademark office). When new countries join the EU, like Bulgaria and Romania did two weeks ago, they join that system automatically.

What does this mean practically?

First piece of good news for companies with pre-01/01/07 CTM applications and registrations: their trademark rights are automatically extended to the two new member countries. They can now enforce their marks in Bulgaria and Romania — even if the infringers have filed trademark applications in those countries. Of course, with the good comes some bad (and possible confusion). To help in the transition, owners of national trademarks in Bulgaria and Romania have been granted an exceptional right to oppose confusingly similar CTM marks filed between July 1 and December 31, 2006. The extension of the EU also means that the CTM office can now object to marks on the basis that they are generic or descriptive in Romanian and Bulgarian. This will not be a problem for most companies as their marks probably do not have a meaning in those languages. Nevertheless, companies looking to file trademarks in the EU may want to take these new elements into consideration when chosing a mark to be used in the European market.

For more information about what the EU enlargement means from a trademark perspective, the European Trademark Office published a circular available at:
http://oami.europa.eu/en/enlargement/enlargement2007.htm

Listening to the new “3-1-1″ airport public service announcement, the approved phrasing for the rules of what liquid/gels are allowed through security is:

“Three One One means that you can take as many separate three ounces of liquid/gels that fit in one 1 quart ZIPLOCK bag per person”

The trademark ZIPLOCK is owned and registered throughout the world by SC Johnson as applied to “disposable, re-sealable plastic bags and containers”.

But the government approved verbiage is not that the “3-1-1″ analysis will include any ‘disposable, re-sealable, plastic bags’. It states that 1 quart ZIPLOCK bags are required.

Travelling as much as I have since the liquid/gel airport security issue arose on August 10th of this year, I have not seen any resealable bags, not from SC Johnson, turned away. And there are many such nonZIPLOCK bags which are going through security every minute.

Could SC Johnson make a claim that the government use of the mark ZIPLOCK is causing genericide?

One of the chestnuts of trademark lore is that once a trademark falls into the generic, it can not be redeemed back into the more elevated status of being a trademark. The exception that proves the rule, as the idiom goes, is when the U.S. Government was accused of having caused the mark SINGER to fall into generic, and was then found to be a trademark in the case of Singer Mfg. Co. v. Briley, 207 F. 2d 519, 520-21 (5th Cir. 1953). [Compare Singer Mfg. Co. v. June Mfg. Co., 163 U.S. 169 (1896) (holding that “Singer” a generic term for sewing machines) with Singer Mfg. Co. v. Briley, 207 F.2d 519 (5th Cir. 1953) (holding that “by the constant and exclusive use of the name ‘Singer’ in designating sewing machines and other articles manufactured and sold by it and in advertising the same continuously and widely – [plaintiff] recaptured from the public domain the name ‘Singer’. . . [which] has thus become a valid trade-mark . . . and is entitled to protection as such”). If, as this Court recognized in Singer, it is possible to reclaim from the public domain even a mark held generic by the Supreme Court

Why would SC Johnson not claim that the government is emperiling the validity of that valuable mark, ZIPLOCK? And what is the statute of limitations on trademark infringement, anyway?

Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 2006 WL 3182468 (E.D. Va. Nov. 3, 2006)

Pamela Reeder is the founder of Haute Diggity Dog which is dedicated to making fun of our globalized disease of affluenza while making some of her mortgage payment. Her company is self described as a “parody, plush, pet toy company” and the images of her products are depicted below, including “Sniffany & Co,” “Chewnell No. 5″ and “Chewy Vuiton.”

When Louis Vuitton filed a trademark and dilution action in Virginia against the parodist, the court lost no time in ruling in favor of Haute Diggity Dog, saying:

“This dog of a case gave the court a great amount of facts to chew upon and applicable law to sniff out. Nonetheless, having thoroughly gnawed through the record, this Court finds that no material dispute of the fact remain.”

and:

“The name “Chewy Vuiton” is, like “Timmy Holedigger,” an obvious parody of a famous brand name. The fact that the real Vuitton name, marks, and dress are strong and recognizable makes it unlikely that a parody-particularly one involving a pet chew toy and bed–will be confused with the real product.”

Vuitton also claimed copyright infringement. Why not just trademark infringement? Because, in 2002, Vuitton collaborated with Japanese pop artist Takashi Murakami to re-invent Vuitton’s signature gold and brown monogram design. What resulted was a multicolor monogram design and a line of handbags and accessories that inspired a cult-like following. It seems that Murakami filed a copyright application for his design in 2002. On-line Copyright Office records list Vuitton as claimant and the work as “work made for hire.”

The opinion raised the question of ownership of the copyright but concluded that the issue was irrelevant because defendant’s use of the copyrighted work was fair use, specifically a parody.

It is interesting to note that the court analyzed whether “Chewy Vuitton” and the “CL” monogram constituted copyright fair use, even though LOUIS VUITTON and the VL monogram are really trademarks, not copyrights. The issue should have been instead whether defendant’s overall design and arrangement of colors constituted fair use of the Murakami copyrighted design.

The District Court of Nevada has found that Adrenaline Sports’ use of the mark WHAT HAPPENS IN VEGAS STAYS IN VEGAS infringes the use by The Las Vegas Convention and Visitors Authority (”Convention Authority”) of the slogan WHAT HAPPENS HERE STAYS HERE.

In December of 2002, the Convention Authority launched its “Vegas Stories” advertising campaign. All of the commercials ended with a display of the words WHAT HAPPENS HERE STAYS HERE. In April of 2003, defendants began using the mark WHAT HAPPENS IN VEGAS STAYS IN VEGAS and obtained a Nevada state registration for the trademark.

In looking at all the Sleekcraft factors, the court found that while the marks are not identical, the terms “here” and “in Vegas” are interchangeable, particularly in light of the fact that in this case, both phrases relate unequivocally to Las Vegas. “Consumers who purchase Defendant’s clothing are not likely to stop and consider the difference between ‘Here’ and ‘In Vegas’ before deciding the purchase such clothing.” Thus, even though other factors (including the marketing channels for the two marks) are distinct, the similarities in the marks coupled with the level of care a purchaser might expend in buying schwag, confusion was likely.

Barney parodist Stuart Frankel, a doctor with a lot of free time, has filed a declaratory relief action against Lyons Partnership, the creators of the lovable character Barney, the Purple Dinosaur. The action, filed in the Southern District of New York, seeks a declaration that Frankel’s website, Stuart Frankel’s Very Small Webpage does not infringe any protected copyright or trademark related to Barney.

The website portion in question pokes fun at the Barney and Friends television show, claiming that Barney leads a double life and in fact is an evil demon. Sources who watch The Barney Show regularly have confimred that this information is not contained in the actual show (notwithstanding the fact that all sources were under the age of four, we stand by the voracity of these statements).

According to the suit, filed in late August of this year, Plaintiff received several threatening letters from Lyons attorney, demanding he cease operating the site or risk legal action. Notwithstanding Plaintiff’s responses — through his counsel — that Lyons attorney speak directly with counsel and stop sending letters to him, the letters kept coming, in form-letter style, directly to Plaintiff. The letters alleged that Frankel had infringed the BARNEY trademarks and copyrights and threatened to have Frankel’s website taken down as a result.

While trademark law does acknowledge parody as a partial defense, it is not a complete defense. The measure of whether a third party’s use of a trademark is fair will be determined under the same standard as any trademark infringement suit, namely, whether the relevant class of consumers believes that there is any affiliation with or sponsorship by the relevant class of consumers. The content of the web page — much like a “sucks” website — seems to establish that Stuart is not a fan of the cuddly character.

From a copyright perspective, parody constitutes a fair use and a complete defense to copyright infringement. Given that the site is non-commercial, and the images of Barney are limited to two, both of which are probably necessary to establish the parody, the plaintiff may well get his wish, but one thing’s for sure: he won’t be a guest on the “Let’s Have Fun with Manners” episode.

Habeeba’s Dance of the Arts, Ltd. (”Habeeba”), which provides dance instruction and performances under the mark HABEEBA, sued dance instuctor Susan Knoblach and the YWCA for, inter alia, trademark infringement and contributory trademark infringement.

The YWCA rented space to Knoblach so she could teach dance classes, all of which were taught under the mark HABIBA. Prior to filing suit, Habeeba notified both the YWCA and Knoblach of Knoblach’s infringing use of HABIBA, but both parties ignored Habeeba’s request to cease using the mark.

YWCA filed a motion to dismiss the case as to the claim against it of contributory liability. In its defense, the YWCA argued that it merely rented the space to Knoblach and had neither proper notice of the infringement nor sufficient control over her to stop the infringing use. It could, therefore, not be held liable under a contributory theory, it argued. The court disagreed, finding, under the Fonovisa case that after receiving the notice from Haebeeba that contained sufficient information to find that a cause of action existed, the YWCA became “willfully blind” to its tenant’s activities while it collected money from her each time she taught a class.

In its motion, the YWCA also attacked the validity of the mark, claiming that, under the doctrine of foreign equivalents, the mark was descriptive and not entitled to protection. Habeeba means, loosely translated, “loved one” in Arabic. Without making a final determination as to the descriptive nature of the mark, the court dismissed this defense, finding, quite correctly, that the doctrine is not a rule, but a guideline that doesn’t necessarily govern each case and every language. Oh, and one more thing (and this is from your friends at Cobalt): YWCA you may want to look up the meaning of “descritptive” for trademark purposes, or any purpose.

In a decision that is not citable, the TTAB, reversed a final refusal by the examining attorney, and found that INTELICASH for consumer debit card services, and INTELECASH for electronic tracking and accounting for businesses of prepayed debit card transactions were not confusingly similar. While the Board found that the marks were visually and aurally identical, or nearly so, it determined that the consumers and channels of trade in which each company operated were distinct. Accordingly, and notwithstanding the similarities in the marks, the Board reversed the decision of the examining attorney.

While on its face the case does not reveal any new or interesting law, it does remind the trademark world that many factors are considered when determining whether marks are confusingly similar. In this case, the marks were practically identical, but the board turned to other factors to conclude that co-existence without confusion is possible.

Practice Tip: The proceeding is not citable, but it is worth reviewing for the citable trademark law outlined by the Board.

In a decision that is not citable, the TTAB upheld the examining attorney’s refusal to register Midwest Bus Company’s mark BYK-RAK for vehicle bicycle racks, on the grounds that the term was generic.

Although the applicant argued that the term was not merely a misspelling, but rather a “creative and distinguishing makeup of words”, the Board found the argument so much back-peddling. The Board first noted that a term is generic if it identifies the class of goods or services to which it applies. In applying the test for genericness, namely, whether the relevant public sees the term as defining a class of goods, the Board determined that consumers would identify the term BYK-RAK to mean that class of goods that holds bicycles to cars. Accordingly, the mark, despite its creative spelling, was generic.

Longstanding case law is clear that a slight misspelling of a word doesn’t turn an otherwise descriptive or generic term into a protectible mark. For a detailed discussion of the issues related to generic terms and misspellings See, In re Hubbard Milling Company 6 USPQ 2d 1239 (TTAB 1987), in which the board held that MINERAL LYX was generic for “mineral licks” for livestock.

Although various parodies and unauthorized uses of the Sesame Street characters have plagued Sesame Workshop over the years (including the recent Bert is Evil site), a Chicago mall store has taken the cake (or cookie, if you will), and is selling t-shirts that show the muppet characters in a rather unsettling manner.

One t-shirt shows Bert downing what appears to be a 40 ounce bottle of malt liquor inside a paper bag, with his pal Ernie brandishing a gun. Still another depicts Big Bird, complete with head-rag, and accompanied by the usual Sesame Street suspect in various hoodlum attire, near the phrase DONT MESSWITHME ST. In addition to the muppet characters, there were shirts using the Coco-Puff’s logo from General Mills (”filled with the good S#%*”), and a Kellogg’s shirt featuring Tony the Tiger over the phrase “Totally Frosted.” While the store originally hid behind the parody defense, lawyers from all companies (notified by an outraged school teacher in the area) made quick work of them (and the shirts).

Practice Pointer: While there is a split in the circuits with regard to how the parody defense should be applied in cases of trademark infringement, courts generally agree that parody is not an absolute defense to trademark infringement and is generally still subject to a confusion analysis. In copyright, it is generally accepted that the parody must — at least in part — comment upon or make fun of that from which it was taken in the first place.

Go Pro Ltd, which makes embroidered clothing for promotional purposes, sued River Graphics, Inc., for trademark infringement for its use of the mark HERE FISHY FISHY on t-shirts for a fly fishing store. Go Pro had been embroidering the phrase on t-shirts since 1997. River Graphics did not use the phrase until 1998, when a fly-fishing store requested the design of a new t-shirt. River Graphics did not claim exclusive rights to the phrase HERE FISHY FISHY and in fact, claimed that Go Pro was casting too wide a net over its rights, noting that the phrase was not trademark use because it was not a source indicator, but instead simply a decorative use.

Notwithstanding Go Pro’s evidence that third parties had come to associate the term with Go Pro, the Judge wasn’t buying that fish story and found that Go Pro’s use was, in fact, merely decorative.

Practice Pointer: As a general rule, a company’s use of a catch-phrase on a t-shirt is likely to be considered merely decorative.

The recent case of Van Well Nursery, Inc. v. Mony Life Ins. Co, VC-04-0425 LRS (ED Wash,. March 16, 2006) makes clear that that IP holders may well only get one bite of the . . .

In the case, Plaintiff apple grower owned two trademark registrations (and associated patents) for the marks SMOOTHEE and SCARLET SPUR, both for apples. The Plaintiff asserted, inter alia, that Defendant used the marks SCARLET SPUR and SMOOTHEE in marketing its own apples, which were of the same variety, but which were not Plaintiff’s apples. Defendant did not deny using the marks, but argued that the terms “Scarlet Spur” and “Smoothee” were varietal designations and accordingly, could not be given trademark protection. Essentially, defendant argued that the marks — despite the federal registrations — were generic for the types of apples they identified.

In applying the “what are you” test, the district court found that while the scientific name for the two types of apples was known, the terms SCARLET SPUR and SMOOTHEE were widely used in the apple industry to identify the fruits. The Court did not find pursuasive the Plaintiff’s evidence that it always used the mark with the appropriate ® marking, and that its intent was never to have these names used in conjunction with all uses of the patented apple varietal, but rather its own brand of the patented varietal. Instead, the court correctly found that the prevailing industry use of the mark was controlling and deemed the mark generic.

Practice Pointer: Clients should be advised when seeking patent protection to identify the patent under a differnt name than the brand name under which it proposes to separately market the product. Such a division makes it easier to separate the two property rights appropriately, and insures that the trademark rights survive the patent rights. The “What Are You” test is commonly used to determine whether a mark has become generic. This test is fully outlined in Filipino Yellow Pages, Inc. v. Asian Publications, Inc., 198 F.3d 1385 (9th Cir. 1999).

In a decision that is not citable, the Trademark Trial and Appeal Board (”TTAB”), held that COOL CAT PRODUCTS for pet collars and COOL CAT WHEATGRASS JUICE for a pet supplement are not confusingly similar, despite the fact that both products are marketed to pets.

The TTAB established that the opposer was the senior user of the mark COOL CAT, as it maintained, but found, using the duPont factors, that the products were marketed in different channels (the wheatgrass juice was found in health food stores), the nature of the goods was distinct, and the manner in which the products were marketed was distinct.

While the decision is not citable, the case can be valuable to practitioners for the TTAB decisions cited therein, particularly in cases where the marks are visually identical.

Nautilus Group, Inc., which makes the BOWFLEX exercise machine, has just been ordered to pay damages in the millions to plaintiff Icon Health and Fitness.

Judge Tena Campbell upheld the jury’s award ($375,000 for trademark infringement and $7.5 million for false advertising), despite both parties’ motions to adjust the award, finding that the amounts were “supported by the record.”

Icon originally sued Nautilus in 2005 for using the Icon trademark SOFT STRIDER on Nautilus’ exercise machines, and for falsely advertising (in 650 documented instances) that its “power rod” feature was a patented feature. Nautilus plans to appeal the ruling.

Practice Pointer: A quick review of the U.S. Patent and Trademark Office database would have revealed a valid trademark registration for the mark SOFT STRIDER for treadmills. While treadmills and universal-style fitness machines may not be identical, they are sufficiently close to cause confusion.

In a citable decision from the Trademark Trial and Appeal Board at the U.S. Patent and Trademark Office (”PTO”), the Board held inter alia, that (1) an opposer may not maintain a claim of fraud against an applicant if the opposer does not actually allege fraud in its opposition; and (2) an applicant does not automatically commit fraud if it does not use all the goods listed in the application.

In the opposition, the Hualapai Tribe (”Opposer”) sought to remove a mark from consideration at the PTO on the grounds that the applicant (Grand Canyon West Ranch) did not use the mark on all the services listed, as of the filing date of the application. The Opposer, however, asserted that it was not seeking summary judgment based upon fraud. The Board, therefore, dismissed this claim in relevant part.

In looking at whether the applicant’s application for the mark was void for non-use reasons, the Board outlined the distinctions it sees between fraud and simple non-use. In short, the Board stated that “a defendant commits fraud by knowingly making false statements as to a material fact in conjunction with a trademark application or registration”[.] and showing a “complete failure to make use of the mark before filing the application on any of its identified services.” In the instant case, applicant was using the mark for most of the services. Accordingly, the Board accepted the applicant’s amended identification of goods as the appropriate remedy for the infraction. The case is resumed for other reasons.

Practioner query: On the one hand, it seems a reasonable enough remedy to require an applicant to amend its goods based upon actual use, or, in the alternative, amend its application to a 1(b) (intent-to-use) application and file an appropriate statement of use once all the goods in question are being used. On the other hand, if an applicant’s liability for embellishing its goods and services is a hand-slap and a requirement that it amend its goods only if it gets caught, we question the motivation for client to be honest about their actual use.

Download decision Here

In a decision that is not citable, the Trademark Trial and Appeal Board (”TTAB”) ruled that Big O Tires was contractually estopped from opposing a Bigfoot 4X4, Inc. application to register the mark BIGFOOT for monster truck videos.

In reviewing the record, the TTAB noted that the two parties had been in litigation before, the result of which was a settlement agreement allowing Bigfoot to register the mark BIGFOOT for audio/video materials related to monster trucks. The TTAB found that Bigfoot’s application fell squarely within the terms of the settlement agreement, and it dismissed the case based upon contractual estoppel.

In fact, the terms of the settlement agreement were silent as to whether Bigfoot could register federally the trademark BIGFOOT. The TTAB reasoned, however, that since Bigfoot had the exclusive right to use the mark in commerce, it had the right to seek registration.

Practice Pointer: Both parties sought to dismiss the case on a theory of Res Judicata and Collateral Estoppel. The TTAB denied the motions. Collateral Estoppel cannot apply if the parties never litigated the issues. Res Judicata cannot apply when there is no entry of final judgment in the case.

Click here to review the complete decision.

Most trademark attorneys are aware of the rule changes proposed by the Trademark Trial and Appeal Board (”TTAB”). Many practictioners are opposed to the rule changes, because they will increase substantially the burden and cost of an opposition. The TTAB proceedings, historically, have been a cost-effective way for parties to resolve trademark disputes.

The new proposed rules also reduce the number of interrogatories from 75 to 25, effectively requiring opposers to conduct costly discovery before filing the opposition. In addition, the TTAB proposes to increase initial disclosures made by the opposers, in hopes of encouraging settlement. The initial investment, however, required to file the opposition under the proposed rules may make settlement actually less likely.

Notwithstanding several requests, including one by this firm, to extend the comment period, the TTAB maintained its deadline of March 20, 2006. The law firm of Oblon Spivak, et al has created a BLOG for posting the results.

The Trademark Trial and Appeal Board (”TTAB”) at the PTO affirmed the examining attorney’s refusal to register Red Bull’s mark BULLSHIT for alcoholic beverages, catering, hotels, and other goods, on the grounds that the term “bullshit” is scandalous. Under Section 2(a) of the Trademark Act, words that are offensive to a substantial composite to the general public are not registerable on the Principal Register.

In refusing registration, the examining attorney had relied on In re Tinseltown, 212 USPQ 863, a case decided almost 25 years earlier, in which the TTAB came to a similar conclusion for the mark BULLSHIT as used for handbags and accessories. Red Bull appealed the examiner’s decision as so much crap.

In its appeal, Red Bull presented evidence that in the twenty years since the Tinseltown decision was rendered, community standards have changed. In support of its position, it offered evidence of a show by Penn & Teller: “Bullshit,” and a paper written by a Princeton professor, entitled “Bullshit.” The TTAB was not, well, moved.

Finally, it what can only be described as a truly creative last ditch effort, Red Bull argued that its use of BULLSHIT was an obvious play on that commonly known expression, “Bulls Hit.” Given that it offered no evidence that this expression was, well, an expression at all, the TTAB waded quickly through the argument.

Download the citable decision here

Durkee-Mower, Inc., whose website address says it all (marshmallowfluff), has filed suit against upscale culinary company Williams-Sonoma in federal district court in Massachusetts for trademark infringement. In the suit, Durkee-Mower claims that Williams-Sonoma sold a chocolate and marshmallow spreadable concoction under the name FLUFFERNUTTER, a registered trademark of Durkee-Mower.

While Williams-Sonoma may have found itself embroiled in a sticky mess, there’s an interesting twist to this matter that makes Durkee-Mower’s case slightly less than a slam dunk (slightly): The registration on which Durkee-Mower relies doesn’t cover spreads or sandwiches, but instead covers “printed recipes sold as a component of food packaging and cookbooks.” The company may have to call together as expert witnesses half the college student population to testify that the only true way to make a fluffernutter sandwich is with Durkee-Mower’s jar of white fluffy stuff.

Practice Pointer: To make a FLUFFERNUTTER sandwich, select two pieces of white bread and spread one with peanut butter, and the other with Marshmallow Fluff. Put bread together to make a sandwich, and share with your 2 year old.