Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.
1. Many of us love King’s Hawaiian Sweet Rolls – so much so that it may have inspired a copyist who led King’s Hawaiian to file a trade dress infringement lawsuit in the Southern District of Texas against two associated parties alleged to have copied King’s Hawaiian’s orange packaging, use of the word “Hawaiian,” and several other features that are claimed to constitute protectable trade dress. Meanwhile, a law firm in New York City has filed a class action lawsuit against King’s Hawaiian claiming that some consumers are deceived by the use of “Hawaiian” on King’s Hawaiian’s packaging where the rolls may no longer be made in, or exclusively in, Hawaii. The assertion is that the use of “Hawaiian” in the name renders the name geographically misdescriptive and deceives consumers into thinking they are buying product made in Hawaii. Whether the class action lawsuit has any connection to the trade dress case is unclear, but the timing is curious. King’s Hawaiian Bread seems to have protectable, well-known product packaging trade dress; whereas, the use of “Hawaiian” in the name, despite the products perhaps not being made in Hawaii is a bit dubious because it could refer to a Hawaiian recipe as opposed to production in Hawaii. I could be wrong, but something “smells” off here.
2. The Federal Circuit Court of Appeals recently affirmed a grant of summary judgment by the Northern District of Texas of non-infringement of a design patent for a design of a pepper spray cannister. The difference in the designs, which the Federal Circuit said was “a significant departure from the claimed design,” was that the patented design required rhinestones on the bottom and vertical portions of the cannister, whereas the rhinestones were absent from the bottom of the accused product. Whether consideration in direct comparison, or in comparison in light of the prior art, the Federal Circuit found that non-infringement was the correct result.
3. The COVID relief package passed by Congress and signed into law at the end of 2020 included a number of IP-related provisions, including: (a) restoring the presumption of irreparable harm for purposes of injunctive relief in trademark cases upon a showing of infringement; (b) establishing expungement and reexamination-type proceedings to remove unused trademarks from the Registry; (c) establishment of a small claims tribunal for copyright cases; and, (d) making it possible for the trademark side of the USPTO to shorten the typical 6-month deadline for responding to Office Actions, and instituting a procedure more like in the patent side of the USPTO where response times are typically 3 months, but with extensions up an additional 3 months for a fee. There are other IP provisions in the legislation related to TTAB opinions and digital streaming being a felony under certain unlawful circumstances, as well.
