The TTABlog Mid-August Reading List

While you're lazing under an umbrella 'neath the oppressive August sun, you'll need some reading material. Here are a few items to consider.


The INTA Members-Only site offers for downloading an article by Jerome Gilson and Anne Gilson LaLonde, on registration and protection of non-traditional marks. Gilson and LaLonde, "Cinnamon Buns, Marching Ducks and Cherry-Scented Racecar Exhaust: Protecting Nontraditional Trademarks," 95 Trademark Reporter 773 (July-August 2005). Noting the Supreme Court's assertion in the landmark Qualitex case that a trademark may be "almost anything at all that is capable of carrying meaning," the authors discuss many of the unorthodox possibilities available.

Qualitex green-gold press pad
The Practicing Law Institute serves up Dickerson M. Downing's take on the Supreme Court's KP Permanent decision. Downing, "KP Permanent Make-Up And Fair Use Of Trademarks, PLI Advanced Seminar On Trademark Law (2005). Downing briefly summarizes recent fair use cases and breaks down the Supreme Court decision.

Several recent appellate-level trademark decisions are worthy of perusal:

McBee v. Delica Co., Appeal No. 04-2733 (1st Cir. August 2, 2005). Cecil McBee, a renowned jazz musician, sought injunctive relief and damages with regard to use of his name in connection with a line of adolescent clothing sold by a Japanese retailer at shops throughout Japan and promoted on a Japanese-language website accessible in this country. The 1st Circuit ruled that the Lanham Act does not reach defendant's activities in Japan because McBee failed to prove that they have a "substantial effect" on United States Commerce, viewed in light of the purposes of the Lanham Act. Absent such a substantial effect, the district court lacked subject matter jurisdiction over the Lanham Act claim.

Cecil McBee
1-800 Contacts, Inc. v. WhenU.com, Inc., Appeal No. 04-0426 (2nd Cir. June 27, 2005). Defendant's "SaveNow" software, part of a bundle downloaded by computer users, delivered "contextually-relevant" pop-up ads to its users, in separate windows labelled with the WhenU mark, when the user accessed the 1-800-contacts.com website. In reversing the district court's issuance of a preliminary injunction, the appellate court ruled that, under the Lanham Act, WhenU did not "use" 1-800's trademarks in connection with its pop-up ads. The 1-800-contacts trademark did not appear in the pop-up ads, although the 1-800-contacts.com domain name does appear in WhenU's internal directory.

Brentford Mfg., Inc. v. Smith System Mfg. Corp., Appeal No. 03-3932 (August 8, 2005). The 7th Circuit affirmed the district court's ruling that the product configuration of Brentford's computer tables having a sleeve and V-shaped brace on each leg, was not protectable under Lanham Section 43(a) because Brentford failed to establish secondary meaning. Brentford proved sales of more than 200,000 units over a seven-year period, but it provided no evidence that the leg design was recognized by consumers as a source indicator.


Frosty Treats, Inc. v. Sony Computer Entertainment America, Inc., Appeal No. 04-2502 (8th Cir. July 25, 2005). The 8th Circuit affirmed the lower court's entry of summary judgment in favor of Sony on Frosty's claims of federal and state trademark infringement, dilution, and unfair competition. Frosty unsuccessfully claimed that Sony's depiction of an ice cream truck and a clown character in its Twisted Metal video game series violated Frosty's rights in the FROSTY TREATS mark and clown graphic used on its ice cream trucks.

"typical Frosty Treats van"
Yellow Cab Co. of Sacramento v. Yellow Cab of Elk Grove, Inc., Appeal No. 03-16218 (9th Cir. August 9, 2005). The appellate court reversed the lower court's ruling on summary judgment that the term "yellow cab" is generic, and if not, lacks secondary meaning. Applying its "who-are-you/what-are-you" test, the 9th Circuit found that a genuine issue of material fact exists as to genericness, and it also found a genuine issue as to whether the term, if not generic, has acquired secondary meaning.

Text and umbrella photograph Copyright 2005 John L. Welch.