Taco Tuesday Illustrates Need to Enforce Trademark Rights

Taco John’s registered TACO TUESDAY as a trademark in 1989. At the time, that phrase presumably identified Taco John’s as the sole provider of restaurant services in connection with that brand. That’s what a trademark does — it earmarks a particular source as the provider of the branded good or service.

Flash forward 30 years. Now everyone has a “Taco Tuesday” promotion — bars, restaurants, university dining halls, mom’s kitchen. The phrase no longer points to a particular seller; it just means an event: taco night, discounted tacos, taco party.

So what happened? As more providers used the phrase, it stopped uniquely identifying Taco John’s. The mark fell into the public domain and became open for anyone to use. And use, they did.

Undeterred, Taco John’s still tries to claim the phrase for its own. It recently sent a cease-and-desist letter over a “Taco Tuesday” promotion a brewery ran in connection with a nearby taco truck. The press picked up on it, which rightly meant bad press for Taco John’s. I got a few quotes in one article here.

For Taco John’s, it’s too little, too late. Once a mark is generic, it’s always generic. No amount of letter writing or threats of suit (or even actual suits) can breathe life back into a trademark that has become a common word or phrase.

At some point, Taco John’s could have stopped that from happening. If a third-party restaurant used “Taco Tuesday” to promote its taco nights in 1990, 1995, or even 2000, it probably would have been an infringer. That means Taco John’s could have (and, given its current position, should have) gone to court to stop it. Yet, Taco John’s apparently allowed such use to continue. Understandably, when one or two unauthorized uses becomes one or two dozen, enforcement becomes a challenge. However, that’s no excuse. When a trademark no longer identifies the owner, it’s no longer a trademark.

Fortunately, most trademark owners don’t become a victim of their mark’s success. For this reason, Taco John’s is an extreme example. It nonetheless shows what can happen when trademark infringement gets out of control. When a brand no longer functions as a brand, the battle is lost. It’s up to the trademark owner to stop infringement before that happens.

Canada Joins the Madrid Protocol Treaty

U.S. brand owners can now include Canada when seeking to replicate their trademark filings with the U.S. Patent and Trademark Office in foreign jurisdictions.

That’s right — effective June 17, Canada has joined the Madrid Protocol Treaty.

This is a great development for trademark owners. Previously, U.S.-based trademark owners with an active USPTO application or registration could economically apply to duplicate their filing in 118 other countries with a single application, including the EU, UK, China, Japan, South Korea, Australia, New Zealand, and Mexico. But — conspicuously — not Canada.

Happily, that’s changed. U.S.-based filers can now include Canada in their Madrid filings. This gives U.S. trademark owners an excellent opportunity to maximize their rights with the States’ second-largest trading partner.

There are a couple caveats worth noting, though they’re not special to Canada. If a Madrid filer’s USPTO application is denied or its registration is cancelled, the dependent Madrid applications will suffer the same fate. And if the Canadian Intellectual Property Office or third party objects to an application, trademark owners will still need to engage a Canadian trademark lawyer to respond.  

As part of joining the Treaty, Canada adopts the Nice Agreement classification of goods and services, which is in line with the USPTO’s classification scheme (and most other trademark offices). Registrations in Canada also will be good for ten years, rather than 15, as previously was the case.

Joining Madrid has been a years-long process. It’s great to finally welcome Canada to the club.

Beware of Unauthorized Changes to USPTO Trademark Filings

Fraudsters are branching out.

Instead of merely sending out fake invoices to unsuspecting trademark owners — a scourge in its own right — some are fraudulently changing owner information with the U.S. Patent and Trademark Office.

I recently noticed this with one of my client’s filings. Helpfully, the USPTO immediately changed the information back. It also told me:

“[U]nauthorized changes have been made to a number of active trademark applications and registrations. These changes may be part of a scheme to register the marks of others on third-party [fraudulent] ‘brand registries.’” 

The USPTO provides more information about this disturbing development here.

This is good reason to check your filings, or have your attorney do so. Even better — make sure your attorney has software that that alerts him or her to any changes that occur in your trademark filings. That will enable your lawyer to nip any unauthorized changes in the bud.

Western District Denies Preliminary Injunction Against Amazon

Last summer, The Comphy Co. sued Amazon.com, Inc., for using its trademarks on Amazon’s store platform even though company doesn’t do business with Amazon.

Comphy alleged that Amazon’s search engine makes it look like the luxury bedding maker offers products through Amazon and then diverts potential customers to bedding providers that do.

Comphy filed a motion for preliminary injunction in the U.S. District Court for the Western District of Washington seeking to put a stop to that practice. Among other things, it sought to enjoin Amazon from “[p]romoting, supporting or allowing third parties’ unauthorized use of the COMPHY trademark (or highly similar marks such as COMFY) to promote bedding, sheets, pillows and related products not made by or under the authority of The Comphy Co.”; and “[a]utomatically suggesting searches for “Comphy”, “Comphy Sheets”, “Comphy Company” and “Comfy Sheets” when users begin to type a first few letters of those marks.”

On March 12, the court denied Comphy’s motion. In doing so, it wrote: “This is not an easy decision. Many of Defendant’s actions toe exceedingly narrow legal and equitable lines. But, on the record presented by Plaintiff, there are simply too many pitfalls for the Court to map an equitable course.”

At the outset, the court noted that Amazon had stopped doing the things that Comphy had complained about. But since Amazon did not stipulate to a preliminary injunction, the court considered the motion on the merits.

Comphy persuaded the court with its evidence of actual consumer confusion:

“There is no question that Plaintiff presents evidence of actual confusion that is often compelling, including written reviews by verified purchasers,” the court wrote. “Defendant has little retort for the fact other than to point out that the evidence is only that a small percentage of purchasers indicate they were confused.”

However, based on the limited record presented, the court found it was not clear that Comphy had a protectable trademark in its name; that Amazon had been using a confusingly similar mark; and that irreparable harm was likely. Therefore, it concluded that preliminary relief was not appropriate.

The case cite is The Comphy Company v. Amazon.com, Inc., No. 18-1460 (W.D. Wash. March 12, 2019) (Martinez, J.).

TTAB Offers Pilot Program to Expedite Cancellation of Abandoned Registrations

Last March the U.S. Trademark Trial and Appeal Board rolled out a pilot program to expedite the cancellation of abandoned registrations. 

The U.S. Patent and Trademark Office’s administrative law arm now randomly selects over half of all cancellation petitions that allege abandonment or nonuse as a claim. Participation is voluntary, but if the parties opt in, they can get a decision in about 50 days. They also enjoy streamlined discovery and a decision on summary judgment-style briefs.

Here’s how the TTAB describes the program:

“Under the pilot, the TTAB identifies newly-filed cancellation proceedings limited to abandonment or nonuse claims that may benefit by some form of the Board’s existing Accelerated Case Resolution (ACR) procedures. The TTAB has an established practice of offering ACR in inter partes proceedings to simplify and speed up proceedings, allowing the parties to save time and expense. The standards of proof in an ACR proceeding remain the same as those in a traditional proceeding, and a final decision rendered under ACR may be appealed in the same manner and under the same time frames as non-ACR decisions.”

If the only issue is whether the registrant is not using the mark in the marketplace, the process should be easy, right? That’s the TTAB’s thinking, and it’s smart. The normal process to test whether a registrant is entitled to maintain its registration is often too cumbersome and expensive to be useful.

The standard for abandonment is three years of consecutive nonuse of a trademark, coupled with an intent not to resume use. If a company is out of business or its branded product has been permanently shelved, the trademark owner’s registration shouldn’t block others. It’s a zombie that should be quickly cancelled when attacked.

The high cost of the usual process drives abandoned claims to the sidelines. In the TTAB’s words, the overall default rate is “fairly high.” That’s my experience as well. While that’s not necessarily a bad thing, it would be better to have as many claims as possible decided on their merits. Making the cancellation process quicker and easier should help more parties to do so.

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