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This month we discuss trademark lawsuits against Postmates, the Emerpus Brand, and many more…

Mattel Sued for TM Infringement over Emoji Style Barbie

On March 2, the owner of various “emoji” trademarks worldwide filed a complaint against Mattel Inc. claiming that the company’s “Emoji Style” Barbie doll infringes on its trademarks. German-based trademark owner, Emoji Co., claims that it is the senior user of the mark, “Emoji Style,” in the U.S.  In the complaint, Emoji Co. claims that it offered to license the mark to Mattel, but the company declined.

Mattel had previously attempted to register the mark for dolls, but the USPTO refused because it was “merely descriptive.”  After Mattel successfully argued to the USPTO that the mark was not merely descriptive, the USPTO then refused Mattel’s application because the mark was too similar to Emoji Co.’s trademark.

Emoji Co. alleges that despite this refusal, Mattel continues to sell its “Emoji Style” Barbie dolls.  In response, Mattel has filed a petition for cancellation of Emoji Co.’s registrations.  In its complaint, Emoji Co. argues that Mattel “is effectively arguing that on the one hand, ‘EMOJI STYLE™’ is source identifying but ’emoji®’ is not,” and that Emoji Co. is attempting to “prevent Mattel from having its cake and eating it too.”  Emoji Co. alleges that a German court has already ruled that there is a likelihood of confusion between the two marks, and ordered a preliminary injunction barring Mattel from selling the dolls in Germany.

The case is Emoji Co. GmbH v. Mattel Inc. et al., 2:21-cv-01931, in the U.S. District Court for the Central District of California.

Hamburger Restaurant Brings TM Suit against Postmates for Falsely Listing it as “Closed”

On February 24, California hamburger restaurant, Lucky Boy Burgers sued Uber Inc.’s Postmates for trademark infringement alleging that the platform incorrectly showed Lucky Boy as “closed” because the restaurant would not partner with Postmates.  In the complaint, Lucky Boy stated that it decided not to sign up with Postmates because of the 30% fee the restaurant would be required to pay.  The restaurant, however is not only still listed on the platform, but is described as “closed.”  Lucky Boy claims that Postmates is attempting to “penalize Lucky Boy for not signing up by intentionally diverting business” away from Lucky Boy because customers falsely believe that the restaurant is closed.  Lucky Boy also claims that, despite not even being registered with the platform, Postmates displays a menu for the restaurant with incorrect prices.  Lucky Boy claims that by listing the restaurant on its platform with this inaccurate and harmful information, that Postmates is attempting to “coerce” Lucky Boy to become one of its “restaurants,” and that its actions are “fraudulent, oppressive, and malicious.”  Postmates continues to refuse to remove references to Lucky Boy from its platform.

The case is Lucky Boy Hamburgers Inc. v. Postmates Inc., 2:21-cv-01706, in the U.S. District Court for the Central District of California.

Clothing Brand Supreme Files Trademark Opposition Proceeding Against Unaffiliated Emerpus Brand

The owner of contemporary clothing and streetwear brand Supreme (“Supreme”) filed a lawsuit with the Trademark Trial and Appeal Board in January opposing a pending application by Urban Coolab Inc. (“Coolab”) to register the trademark “Emerpus,” which is “Supreme” spelled backwards.  Coolab, which also goes by the tradename Urbancoolx, describes itself as “playfully parodic,” suggesting that it is cognizant of its similarities to the Supreme brand.

Asserting claims for both trademark infringement and trademark dilution, Supreme accuses Coolab of attempting to trade upon the fame and goodwill of the “well known” and “famous” Supreme mark, built upon the “(1) consistent and exclusive [] use of the [marks] over nearly the past 25 years . . . ; (2) unsolicited media coverage about the Supreme brand; and (3) the worldwide sales of Supreme branded goods in the hundreds of millions of U.S. dollars.”  Not only did Supreme cite to Coolab’s use of a similar red and white rectangular logo, it also provided evidence of its own reversing of Supreme logo on clothing, although such use depicted a reflective version of the Supreme mark and logo, as though a mirror image, further strengthening the similarities of the two marks.

Despite the strong similarities between the marks, Coolab has denied that its Emerpus mark is infringing, or that consumer confusion between the two marks is likely.  In early March, the parties requested a 30-day suspension of the opposition proceedings, while they discuss settlement.  The TTAB granted the parties’ application, noting that the case will automatically resume on April 1 in the event there is no prior word from the parties.

Taylor Swift Claps Back Against Amusement Park That Accused Her of Trademark Infringement

Three weeks after filing a lawsuit against Taylor Swift for trademark infringement, Evermore Park, an immersive fantasy theme park in Pleasant Grove, Utah, has found itself on the receiving end of a lawsuit filed by the mega-pop star’s IP management company for copyright infringement, a tit-for-tat assault in a swiftly-growing legal battle between the parties. Swift’s lawsuit accuses the theme park, who sued her in early February over the title of her ninth studio album, Evermore, of willfully using her songs without a license.  BMI, the performing rights organization responsible for collecting performance royalties on behalf of music owners, claims that Evermore Park failed to obtain the requisite licenses to play Swifts songs, despite being warned as early as 2019 that unlicensed use of Swifts’ music could lead to legal trouble.  Apparently, after being sued, the theme park’s founder and CEO reached out to BMI for a retroactive license covering the unauthorized performances.  While Swift’s legal team called the lawsuit against her “meritless” and an attempt to force a settlement based on the singer’s 2020 release of the Evermore album, they appear to be sending very clear messages to the theme park about the temperament of karma in this instance.

Chanel Challenges The RealReal on Trademark Infringement Matters

Back in 2018, Chanel had named The RealReal in a trademark infringement and counterfeiting lawsuit, claiming the resale site was selling counterfeit Chanel bags.  Chanel further alleged that The RealReal attempted to deceive consumers into believing there was an association or affiliation with Chanel by making various statements that the Chanel branded goods are authentic Chanel goods.  The RealReal claimed that its goods are authentic and that its platform is a reliable reseller of authentic luxury items.

After three years of litigation, The RealReal sought to amend its answer to assert anti-competition counterclaims against Chanel, based upon newly discovered evidence it claims supports those claims.  Siding with The RealReal, Judge Gabriel Gorstein permitted the amendment finding no bad faith in the purported undue delay by The RealReal in seeking permission to amend.

At issue here is the viability of resellers such as The RealReal and What Goes Around Comes Around.  From the perspective of Chanel, these resellers sell counterfeit products and fail to implement a sufficiently rigorous authentication standard.  From the perspective of these resellers, Chanel is attempting to control the market so as to maximize sales on other platforms in which it has a stake.  In an industry attempting to adopt a circular economy model, these arguments are relevant and can have significant impact on the future of the fashion industry.  The complaint can be accessed here Chanel, Inc., v. The RealReal, Inc. and the recently filed answer with counterclaims here.

The case is Chanel, Inc., v. The RealReal, Inc., 1:18-cv-10626 (SDNY).

The Halal Guys Filed a Trademark Infringement Action Against the Halal Girls

On March 2, 2021, a well-known New York fast-food restaurant the Halal Guys filed a trademark infringement action in the District Court for the Eastern District of New York (“EDNY”) against the Halal Girls’ owners, Navid and Khalid Manzoor (the “Manzoors”).

The Halal Guys started their restaurant business in the 1990s by converting a hot dog cart into a halal food cart and serving halal foods and drinks, and adopted their current names in 2000.  As of today they own at least seven trademark registrations.

The Manzoors started their halal restaurant business in 2018, offering similar services to the Halal Guys.  In August 2020, the Manzoors announced the opening of their new restaurant, the Halal Girls.

In response to a cease-and-desist letter from the Halal Guys, the Manzoors accepted to change the name of the restaurant to “Alis Halal Grill.”  Instead, the Manzoors altered the “Halal Girls” name to “Halal Girls Fresh Platters & Acai Bowls,” and adopted a logo highly similar to the Halal Guys’ ones.  According to the complaint, the Manzoors even proposed to the Halal Guys to buy the Halal Girls.

In its complaint, the Halal Guys says that if the alleged infringement is to continue, damages could exceed $10 million.

Pocky Cookie Stick Ineligible for Trade Dress Protection

On January 26, 2021, the Court of Appeals for the Third Circuit (“3rd Circuit”) ruled that the shape of Pocky, a Japanese cookie stick was ineligible for trade dress protection.

In October 2020, the 3rd Circuit already ruled out the shape of Pocky to be protectable as a trade dress arguing that it was functional.  Specifically, the 3rd Circuit ruled that the shape of the design was functional because it was “useful” to the product.  This ruling has been highly criticized among trademark experts and food companies.  Ezaki Glico Co. Ltd. (“Ezaki”), the company that makes Pocky, asked the 3rd Circuit to reconsider its decision relying on U.S. Supreme Court precedent under which trade dress should only be deemed functional if it is “essential” to the product, not merely “useful.”

Despite some minor changes made in the January 26, 2021 Order, it reached the same conclusion as the October 2020 Order.  Given the support Ezaki obtained from very influential third parties such as INTA, or the giant food company Mondelez International, a petition to the U.S. Supreme Court seems foreseeable.

Dunnington Bartholow & Miller Trademark Bulletin Committee: Olivera Medenica & Donna Frosco (Partners); Sixtine Bousquet, Betsy Dale & Kamanta Kettle (Associates).

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