C & T Newsletters

August 2022

Meta Involved in Trademark Lawsuit

Takeaway: A 12-year-old virtual reality company, also called Meta, is suing Facebook for trademark infringement over its new name.

Facebook’s corporate parent company, Meta, is being sued by a smaller virtual reality company, alleging that Facebook destroyed the smaller brand by using the name. The company, which is registered as MetaX LLC, goes by “Meta” in its branding.

The smaller company requested an injunction barring Mark Zuckerberg’s Meta Platforms Inc. from infringing on its trademarks for the word “Meta,” saying it has been in use in the immersive and experiential technology industry since 2010.

The suit stated, “Despite its actual knowledge of Meta, and apparently believing that it could trample the rights of this small business with impunity, Facebook has deployed its almost limitless resources to saturate the marketplace with its infringing META mark. Meta stands no chance against the corporate goliath that is Facebook.”
 

Church May Have Violated Copyright Law

Takeaway: Experts say a Texas church’s unauthorized execution of Hamilton the musical is likely not covered by a provision of U.S. copyright law that exempts churches from facing potential litigation for performing copyrighted works during religious services.

The Door McAllen Church, based out of McAllen, Texas, may have violated copyright law through their performance of Hamilton. Copyright law states that churches can perform certain copyrighted works under the religious services exemption of the Copyright Act, but the exception is limited to dramas/musicals of a religious nature.

The church had apparently changed the original lyrics to include biblical references and a sermon that tells parishioners God can help those struggling with issues such as alcohol and drugs, but Hamilton is not considered to be a religious work.

The Door McAllen Church has apologized for the production and promises to never stage the performance again. Additionally, they “will destroy any and all video or sound recordings and images of the unauthorized performances and rehearsals.”

Image Credit: lionsgateccrc.org/ hamilton-100-years-of-broadway-and-pop-music/
 

Mattel Sues Rap Snacks for Trademark Infringement

Takeaway: Mattel is suing Rap Snacks over it’s “Barbie-Que” Honey Truffle potato chips featuring Nicki Minaj.

Mattel, the owner of the famous BARBIE trademark, is suing Rap Snacks, a snack foods company that pays homage to hip-hop culture for trademark infringement, in addition to many other related claims. The complaint filed on behalf of Mattel, alleges that Rap Snacks launched its new line of “Barbie-Que” Honey Truffle potato chips featuring Nicki Minaj using Mattel’s stylized BARBIE trademark on its packaging and advertising without first obtaining permission from Mattel. Interestingly enough, Nicki Minaj, who has collaborated with Mattel in the past for her own Barbie doll and known for using Barbie as part of her persona with a fan base known as “Barbz,” is not named as a co-defendant to the lawsuit.

While you may immediately associate the Barbie brand with toys, Mattel also advertises and sells its own line of snack foods using its stylized BARBIE trademark under the BARBIE brand. After learning of Rap Snack’s alleged unauthorized activities, Mattel claims it attempted to resolve the matter with Rap Snacks to no avail and was forced to bring the lawsuit. Mattel claims Rap Snacks use of its BARBIE trademark was intentional in order to trade off the goodwill of the BARBIE trademark and has and will cause consumers to falsely believe that Rap Snack’s products are associated with Mattel and its BARBIE brand.
 

Limited Interest for Delaying Eligibility At USPTO

Takeaway: Two-thirds of the approximately 600 applicants who received invitations from the USPTO to delay eligibility decline the opportunity to do so.

In response to the U.S. Patent and Trademark Office launching the Deferred Subject Matter Eligibility Response pilot program, approximately only one-third of patent applicants accepted the offer to postpone dealing with patent eligibility rejections.

When a patent examiner rejects a patent application on both eligibility grounds and also grounds like obviousness, participants in the pilot program can choose to initially respond only to the noneligibility rejections. The thought is that by making arguments to address issues like obviousness and anticipation, applicants may also be able to resolve the examiner’s concerns about eligibility without expending time and money.

 

?Global Patent Filings Seemingly Declining

Takeaway: Global patent filings and grants were significantly lower in the second quarter of 2022 than in the same period in 2021.

The World Intellectual Property Organization, along with the patent offices of China, Japan, Korea, Germany and Spain, all saw double-digit drops in filing percentages. As well, patent offices in Europe, Korea, Germany and Australia all had double-digit drops in patent grants. Overall, a report found a collective 46% decrease in patent grants.

Several causes for this decline could include Russia’s invasion of Ukraine, the Chinese government’s patent system restructuring, or general economic slowdown caused by COVID-19.
 

Cislo & Thomas LLP Spotlight

Cislo & Thomas Argues Important Trademark Question Before the Ninth Circuit

Cislo & Thomas attorneys Jeffrey Sheldon and Katherine Bond recently argued an important trademark case before the 9th Circuit Court of Appeals in Pasadena.

In a civil lawsuit, it can be challenging and costly to serve a foreign defendant in a U.S. lawsuit if that defendant does not have a U.S. agent or location. The Hague Convention allows for such service, but it is slow and expensive. In addition, it requires documents be translated and the cooperation of a foreign government. However, for defendants who sought trademark registration in the United States, 15 U.S.C. 1051(e) states that “notices or process in proceedings affecting the mark” may be served on the Director of the USPTO. If this statute is interpreted such that “proceedings” includes civil litigation cases, 15 U.S.C. §1051(e) would offer an alternative way to serve foreign defendants in civil cases.

Currently, the District Courts are split on this issue, and no appellate court has ruled on the issue. So is a civil court proceeding a “proceeding” under 15 U.S.C. 1051(e)?

On August 3, 2022, our Cislo & Thomas attorneys argued that this statute applies in a Federal Court “proceeding” and not just Trademark Office proceedings. Our arguments were supported by counsel for the Department of Justice, who submitted an amicus brief and also argued the position that service on the Director of the USPTO is proper for district court litigation for defendants who have sought trademark registration in the United States. The decision now resides with the judges. A favorable ruling will result in a less costly and more efficient method (as compared to the Hague Convention) for serving foreign defendants in civil lawsuits.

The appeals court case is captioned SAN ANTONIO WINERY, INC. v. JIAXING MICAROSE TRADE CO., LTD., Case No. 21-56036. We will keep you posted on the Court’s decision.

 

Katherine Bond, Esq. | Brand Expert

For the past several years, Cislo & Thomas partner Katherine Bond has found a passion in assisting companies in the protection and enforcement of their trademark rights. “Many companies rely on advertising and brand recognition as their barrier to entry,” says Ms. Bond. “Brand loyalty is what generates revenue so even though the company may not have an extensive intellectual property portfolio beyond trademark rights, they are the market leaders because of the extensive goodwill they have created in their brand. Therefore, protecting the company’s trademarks is of the utmost importance.”

Bond continues, “It is so easy for anyone to set up shop and sell a product on the Internet, so it sometimes seems like trademark policing and enforcement is like ‘whack-a-mole’. We successfully stop one infringer only to have another one pop up the following month. One of the tools that can aid in enforcement is for companies to enroll their trademark registrations with the online retail platforms. Internet marketplaces like Amazon, eBay, Facebook and Etsy offer a registration process where users can obtain benefits to more effectively protect their brands. Whatever tools are used, it is vitally important for rights’ holders to monitor and stop third party infringers or run the real risk of entirely losing their trademark rights.”

If you need more information about obtaining a trademark registration, registering your registration with an online marketplace or have questions about possible third-party infringers, please feel free to contact Katherine.

 
 
 
 
 


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