Ollila Law Group LLC

INTA Table Topic Moderator – Singapore May 2023

The International Trademark Association held its annual meeting this May in Singapore.  Kathleen Ryan was selected to moderate a table topic for labeling for protein alterations, including plant-based meat and cultivated meat.  

Branding is critical when labeling alt-meat products considering the legislation and litigation in the US, EU and other countries.  The topic was widely appreciated by INTA attendees interested in the growing alt-meat industry.

Interestingly, Singapore is the first country to offer cultivated chicken for sale in restaurants and hawker stalls [Spoiler – we tried the chicken, and it was excellent!].  Notably, the FDA recently greenlighted two US companies, Upside Foods and Good Meat, for commercializing cultivated chicken the U.S.   It is highly anticipated that this emerging industry will continue to move forward, with scalability and appeal to consumers.

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PENINSULA COMMUNITY HEALTH SERVICES

vs

OLYMPIC PENINSULA HEALTH SERVICES

OLG Kathleen Ryan and co-counsel David Lowe of Lowe Graham Jones, prevailed in a trademark infringement suit against its client, Olympic Peninsula Health Services (“OHPH”) over alleged consumer confusion asserted by Peninsula Community Health Services (“PCHS”) in the U.S. District Court, Western District of Washington.

After a 4-day bench trial, U.S. District Court Judge Benjamin H. Settle found that the parties brand names and logos were “notably” different and dismissed plaintiff PCHS’s claims.  The Court found that PCHS failed to establish that its asserted marks acquired secondary meaning or that consumers would be confused by OPHS’s brand.

As reported to Law360: “We are extremely pleased with the Court’s decision after trial, confirming both the weakness of Peninsula Community Health Services’ descriptive marks as well as the priority of Olympic Peninsula Health Services’ use of its marks. Resolution of this dispute allows Olympic Peninsula Health Services to continue to act as a safety net to provide critical life-saving substance use treatment services to Western Washington.”  

See: https://law.justia.com/cases/federal/district-courts/washington/wawdce/3:2020cv05999/290472/32/

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With the rise of plant-based milk, such as almond milk, plant-based milk labeling is in a state of flux.

In the Silk soymilk case, the Court rejected the assertion that consumers would be confused stating that under the challenger’s logic a reasonable consumer might also believe that veggie bacon contains pork, that flourless chocolate cake contains flour, or that e-books are made out of paper.

It is important that brand owners of plant-based alternative milk products stay abreast of the shifting legal landscape. 

For more information, read Kathleen Ryan’s article featured in Prepared Foods:  https://www.preparedfoods.com/articles/125023-alternative-milk-labeling-leads-to-legal-lashings

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The Rolf Institute of Structural Integration created a motion video in order to visually demonstrate the benefits of Rolfing and asked The Ollila Law Group (OLG) to protect their new visual materials.  OLG recommended that the client protect their new materials by filing a U.S. trademark application for registration of the video as a “motion mark” trademark application.

Until recently, this type of trademark was relatively uncommon.  In fact, in 2000, there were only ten applications filed with the USPTO for motion trademarks. Since then, the motion mark has become more prevalent. In the case of the “Little Boy Logo,” OLG, which has experience in protecting non-traditional trademarks, was confident in recommending filing for the motion mark. 

Requirements for Motion Marks vs. Traditional Trademark

Although the filing process required for applications for a traditional trademark application and a motion mark have similarities, there are important differences between these types of applications.   First, there are obvious differences in the specimen requirements because the mark is in motion and the specimen must reflect this.  Therefore, it is important to work with the client to develop a specimen that the PTO will accept. 

Second, in order to file a motion mark, the specimen, showing use of the mark, has specific requirements due to the fact that the mark is in motion. The specimen requirements for a motion mark include a video clip depicting a series of still photos and screen shots. The specimen must also include a video with freeze frames depicting five points of movement (see figure below). These criteria must be met in order for a motion mark to proceed to publication and, eventually, registration. 

 Specimen of still photos for “Little Boy Motion Mark” 

Office Action and Response

Once the Ollila Law Group submitted the application for the “Little Boy Motion Mark,” the USPTO raised no serious substantive issues.  The PTO required a disclaimer of “INSTITUTE OF STRUCTURAL INTEGRATION” apart from the mark as shown. In addition, the USPTO required a specific claim of color and in order for the application to proceed to publication; the USPTO required that OLG amend the application to include a color claim. In response to this office action, the attorneys at OLG were able to make the required amendments; the USPTO accepted the amendments for the “Little Boy Motion Mark.” The mark then proceeded to publication and by August 8, 2017, the “Little Boy Motion Mark” mark was approved for registration. 

Even though a motion mark is non-traditional and more complicated with the respect to what the client must provide and what is required to meet the USPTO requirements, with experience and careful planning, the prosecution can be relatively straightforward with minimal objections from the USPTO.  

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The USPTO refused Peach Street Distillers’ application for “GOAT ARTISAN VODKA” on the basis of likelihood of confusion with various registrations containing the word “CABRON” that are owned by Cabron Family Holdings, Inc. The Examiner alleged that the English translation of “cabrón” is “goat” and that the application should be refused for likelihood of confusion in accordance with the doctrine of foreign equivalents.

OLG found ample evidence in dictionaries suggesting that other Spanish words are more commonly used when referring to goats. The Examiner attempted to focus on dictionaries that only supported the USPTO’s position, such as food dictionaries, and did not show entries of the other Spanish words in the cited sources that Applicant argued could be equally used, or even preferred, to mean “goat.”

In addition, OLG presented strong evidence in the form of news articles, dictionaries, and other publications that “cabrón” has a well-known colloquial meaning that is vulgar. In fact, CABRON brand tequila cannot be sold in Mexico due to this well-known secondary definition, despite the brand owner’s arguments that the primary meaning of the mark is “goat.”

The cited CABRON registration could be challenged on the grounds that it should have been refused registration under Section 2(a) of the Lanham Act, which forbids registration of immoral or scandalous matter.  However, with the successful outcome, a separate cancellation proceeding was unnecessary.

In light the evidence presented, OLG was able to demonstrate that the average consumer would not “stop and translate” CABRON into GOAT and that no likelihood of confusion would result between the CABRON family of marks and GOAT ARTISAN VODKA.  Registration was permitted.

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Early monitoring of trademark applications offers a strategic benefit in the United States compared to monitoring applications only upon publication. OLG offers global trademark application monitoring for its clients’ key brands and was able to flag and watch a US trademark application that conflicts with The Rolf Institute of Structural Integration’s trademark portfolio. In this case, a trademark application under OLG’s monitoring program was approved for publication on the Supplemental Register.

Trademark applications designated for the Supplemental Register present unique challenge for trademark owners. Marks published on the Supplemental Register are not subject to Opposition proceedings. An interested party who believes they will be injured by the registration of a trademark, must wait for the application to mature to registration before they can initiate a Cancellation proceeding before the TTAB. Without access to an Opposition proceeding, an interested party’s only alternative for early recourse before the USPTO is to submit a Letter of Protest. The Letter of Protest presents several of its own challenges and is rarely successful.

The Letter of Protest is an informal procedure which requests the Office of the Deputy Commissioner for Trademark Examination Policy (“Deputy Commissioner”) consider objective evidence relevant to the registration of a target mark. Letters are only accepted if they 1) present objective evidence that can be dealt with by the examiner in the ex parte examination and 2) it is determined that the evidence is relevant and supports a reasonable ground for refusal in examination.

Adversarial arguments are not accepted as the Letter of Protest does not replace the Opposition or Cancellation proceedings. The decision to accept a letter is made by solely the Deputy Commissioner and the letter is not made part of the application file. Instead a Letter of Protest Memorandum is added to the file and the examiner reviews the application in light of the evidence supplied in the letter.

The Letter of Protest should be filed before publication. If filed after publication, the letter will be accepted only for 30 days and only for evidence showing clear error by the USPTO in approving the mark for publication. An interested party monitoring an application has a window where they can wait to see if the examiner will reject an application, thus saving the cost of having to take action. If the examiner does not reject the application, the interested party can submit a Letter of Protest before publication.

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Slatebridge Restaurant Group, Inc. uses the brand, “SONOMA’S MARKET CALIFORNIA INSPIRED, LOCALLY PREPARED” and design on a variety of grab-and-go meals and food service items prepared under its Plaza Foodservice business, which has locations in the Kansas City and Denver areas.

Registration was refused on the grounds that the mark is geographically deceptive and geographically misdescriptive under Sections (e)(3) and 2(a) of the Lanham Act.

The Examiner refused the application on the basis that Sonoma is a known location in California, that the goods do not originate in Sonoma and that purchasers would be likely to make a goods-place association and believe that the goods originated in California. The examiner believed the misrepresentation of geographic origin would be a material factor in consumers’ decision to buy the goods. As a basis for the refusal, the Examiner alleged that Sonoma is well known for produce generally and therefore consumers would be likely to believe that Slatebridge’s salads, sandwiches and other food items originated or contained ingredients from Sonoma, California.

Overcoming the Refusal

OLG demonstrated that the image used in the mark is a fictional artist rendering of a landscape and is not a picture of any actual location, including Sonoma.

OLG also established that the entirety of the mark suggests that the food reflects what is known as “California Cuisine” but does not indicate origin. Further, the phrase “Locally Prepared” would indicate to consumers in the Kansas City and Denver metro areas that the food items did not originate in California. Thus the mark when viewed as a whole conjures up memories or images of the California or the Sonoma region, but any such association falls short of a likelihood of a goods-place association in the minds of consumers.

OLG submitted numerous documents from the USDA, the California Department of Agriculture, agriculture reports for Sonoma County and California tourism sources to show that Sonoma is not well known for produce in general, but is known for wine. California produces substantial agricultural products, but the total crop value of fruits and vegetables from Sonoma is not significant as compared to the rest of the state and pales in comparison to Sonoma County’s yield of wine grapes.

Finally, OLG argued that this case is analogous to the 2003 Federal Circuit case In re Les Halles De Paris J.V., 334 F.3d 1371, 67 U.S.P.Q.2d 1539. In Les Halles, the Federal Circuit held that a restaurant patron would be fully aware that the source of restaurant services in a New York restaurant named “Le Marais” would not originate from the Parisian neighborhood of the same name. Likewise, due to the entire impression created by the mark, direct customers of the goods are fully aware of the local origin of the goods and are therefore not likely to be misled into making an erroneous goods-place association between the goods and Sonoma, California. Registration was allowed to proceed.

Case Takeaway

Trademark applicants must be cautious in using geographic terms in its trademarks, because there is a risk that the mark could be deemed merely descriptive (if the goods are correctly associated with the geographic area) or primarily misdescriptive and deceptively misdescriptive (if the goods do not originate from the geographic area). However, this case demonstrates that a geographic term may lend itself to a suggestive trademark that creates a strong brand image, capable of registration on the US Principle Register, without misleading consumers as to the source or nature of the goods or services.

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Recently, Kathleen Ryan had the opportunity to represent the Ollila Law Group at the Licensing Association Conference (LAT) in Bangkok, Thailand. The LAT is composed of over 100 public and private professionals from around the world who are involved in the licensing of intellectual property rights. Ultimately, the aim of the LAT is to provide greater understanding of licensing practices by providing a platform for members to share experiences and create guidelines in an effort to push toward a more innovation-driven society.

Ms. Ryan spoke about Regulatory Impingements on Registered IP Rights. Ms. Ryan explained the purpose of trademarks and how they are used, specifically in the area of alcoholic beverages. Mr. Le Marquer shared examples of how the regulatory impingements in Thailand have affected the alcohol industry while Ms. Laohaphan (of Diego) provided an industry perspective on such regulations. Additional representatives spoke on topics including IP management for technology, recent developments in IP licensing, and copyright licensing.

Conference participants observed a variety of insightful and high-quality presentations, all of which are now available to the public through the LAT website.

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Kathleen Ryan attended The World Intellectual Property Organization (WIPO) Mediation and Arbitration Workshops in collaboration with the USA and Canada’s Society of Licensing Executives and the New York Branch of the Chartered Institute of Arbitrators.

The purpose of the WIPO workshops is to provide training for professionals looking for more efficient and cost effective means of settling disputes. In the world of Intellectual Property, employing the practices of mediation and arbitration can serve to improve the client’s experience in resolving disputes and lead to better outcomes for both parties. Experienced arbitrators can help to eliminate uncertainty and a skilled mediator can help parties reduce costs by narrowing issues, in turn reducing litigation expenses. Use of WIPO arbitration clauses in International agreements, combined with WIPO mediation or WIPO expert determination clauses, may facilitate efficiency in disputes arising out of International Agreements.

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In June, The Ollila Law Group assisted The Hershey Company and Hershey Chocolate & Confectionery Corporation with a trademark infringement lawsuit against TintureBelle LLC and TinctureBelle Marijuanka LLC, companies located in Colorado Springs and Pueblo West, Colorado. TinctureBelle, who makes marijuana infused edibles for medical dispensaries, caught Hershey’s attention when TinctureBelle started packaging their products in wrappers that looked extremely similar to Hershey’s candy products.

Although executives at TinctureBelle denied these claims, Hershey was worried that TinctureBelle’s products packaged in such confusing packaging would be associated with Hershey and create a safety risk to consumers, especially children, who may unknowingly eat the candy thinking it was ordinary candy.

Additionally, Hershey was concerned that TinctureBelle’s products could potentially dilute the brand name’s recognition. Since June, the lawsuit has been settled, and TinctureBelle agreed to recall and destroy all products that were in question and to refrain from using the same or confusingly similar packaging on its medical marijuana products in the future.

Read the article in The Denver Post.

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