What do you think? Are these two designs confusingly similar?

There’s no mistake, the Apple design looks like an apple with a bite taken from it. The Echospin mark looks like, well…we’re not sure. John Welch, author of the TTABlog, probably the leading US trademark blog, described the appearance of applicant’s mark as “a butterfly landing on a donut with jimmies.”

Applicant Echospin argued that its design was not an apple, but an orange, designed to distinguish its products and services from Apple, as an alternative to or improvement over Apple. The Board construed applicant’s statement as an admission that applicant’s mark “is shaped like a fruit” and further noted the marks were “quite similar in concept and style, both being simple, abstract representations of fruit, rather than photographic pictures thereof.”

The Board found the Apple logo to be a famous mark noting that Apple “has shown significant market exposure, revenue, and overall fame amongst the relevant public.” When the goods and services associated with two marks are identical, as in this proceeding, less similarity between the marks is necessary for a finding of likelihood of confusion. So, given the broad scope of protection to which Apple’s famous mark was entitled, and enough similarities between the two fruit designs, the TTAB compared apples to oranges and found them confusingly similar and sustained the opposition in Apple’s favor.

Justifying their decision, the Court of Appeals noted that Section 514 affords foreign works the same protection that American works receive overseas, stating specifically “[T]he government has demonstrated a substantial interest in protecting American copyright holders’ interests abroad, and Section 514 is narrowly tailored to advance that interest.” As such, these foreign zombie copyrights are allowed to roam the American artistic landscape so that American zombie copyrights can roam unchallenged in foreign jurisdictions, a position in conformance with the US government’s initiative to provide greater protection to US copyrighted works overseas where pirating is rampant. However, does the fact that these zombie copyrights roam worldwide, somehow make them less threatening for parties who had relied upon their prior apparent dead status?

The Williams-Sonoma product touches a nerve in the American psyche.  It’s not just about chocolate, but the 12-bar pattern.  How many playground scraps were started or ended, or friends temporarily won or lost, by the division of those 12 little pieces of happiness?  To kids, parents, athletes, workers and soldiers for almost a  century, that 12-bar pattern symbolizes a moment of happiness that could be shared with others.  Even for a lactose-intolerant kid like myself, whatever side effects I would later endure were well worth it after enjoying a few of those rectangles of chocolate with friends; the best experience your last quarter could buy.

Yes, I’ve had Godiva truffles,  but a plain Hershey’s milk chocolate bar with that 12-bar pattern is like coming home. Williams-Sonoma’s lawyer’s will have to show some pretty fancy footwork to convince a trier of fact who was ever a kid, that the 12-bar pattern shouldn’t be associated with a Hershey’s chocolate bar and what that represents to each of us.

Obviously tequila is not whiskey or, more specifically, Kentucky bourbon. While it’s true that Kentucky bourbon and tequila are distilled spirits, almost anyone over age 21 can tell you that tequila and Kentucky bourbon don’t have the same look, smell, taste, cost, consumption rituals, or resulting hangover.  These are distinctly different products with brand loyal purchasers who know exactly what they want. There’s no impulse buying here. If someone intends to lay down $100 for a high-end bottle of tequila, there’s usually a distinct reason to celebrate, and they’re not going to be confused into buying a $24 bottle of bourbon because of any red wax seal. Yes, you can buy both products under the same roof, however, consider that the Cuervo Reserva brand in question is usually kept in a glass case under lock and key at most liquor stores, that is when the store has a bottle in stock. So when does the confusion occur, before or after finding  the store manager to unlock the case? As for Maker’s Mark, just go ahead and grab one off the shelf. Although the judge acknowledged that the Cuervo purchaser is sophisticated, and likely even a connoisseur, that reason alone did not preclude the possibility of confusion on the part of the potential Cuervo customer according to the Court’s decision which also cited the similarity of the products and the marketing channels as being in favor of Maker’s Mark.

Well, we’re not buying this round of spirited holdings. Evidently, neither are Cuervo’s owners and their US distributors, who decided to have another shot by filing an appeal with the US Court of Appeals for the Sixth Circuit challenging the District Court’s findings.  Stay tuned for future servings.

Not so fast.  The consumer plaintiffs in this case, the health and welfare fund of unions (Arkansas Carpenters and others,) do not get the advantage of the lower cost of the drug in the generics!!  (Some drugstores are also plaintiffs).  In the Second Circuit version of In re Cipro (there is a Federal Circuit version with the same result but without an invitation to en banc), the Second Circuit panel did not want to overrule their prior precedent (Tamixofen) and so did not find that reverse pavements were unlawful, but invited the plaintiffs to apply for en banc rehearing.  The Department of Justice (DOJ), in an invited amicus brief, shifted its position to align itself  with the FTC and had called for finding reverse payments to be unlawful.  We will have to wait until the en banc hearing for the whole story.

Last week notorious Yankee fan and successful rapper/producer Jay-Z brought an action in US District Court in New York alleging that the online advertising of a nightclub named “Forty Forty” in Santo Domingo by David “Big Papi” Ortiz, one of the Red Sox heavy hitters, infringes Jay-Z’s trademark for “40/40 Club” as used on a chain of sports-oriented nightclubs. Seems that Big Papi was photographed a few seasons back, partying at the New York location of the 40/40 Club. That alone was probably enough to irritate local patrons, including New York Yankee Alex Rodriguez. But apparently Mr. Ortiz’s club opening on his native Dominican Republic turf with an alleged confusingly similar mark was more inflammatory to Jay-Z than watching Mr. Rodriguez being called out after slapping the ball from Bronson Arroyo’s glove during the 2004 ALCS playoffs.

So is this high and outside fastball aimed towards Big Papi’s ear really about the Lanham Act and trademark infringement? Although the 40/40 Club has locations in various cities in the US as well as Japan and China, it seems that Ortiz may take a swing at hitting this one out of the US District Court’s jurisdiction. It will be interesting to hear the official call, especially since Jay-Z is seeking an injunction. One thing for sure, the fans will enjoy watching both benches of lawyers rumble.