The Top 10 Trademark Rulings Of 2017

The year 2017 has been an exciting twelve months for rulings in trademark law. Below are the top 10 most important cases you need to know.

10. In re General Mills IP Holdings II LLC

In August 2017, The Trademark Trial and Appeal Board ruled that General Mills would not be allowed to register the yellow Cheerios box as a trademark. General Mills attempted to trademark “the color yellow appearing as the predominant uniform background color” for boxes of “toroidal-shaped, oat-based breakfast cereal”. This rejection was mainly due to the yellow color being widely used by other competitor brands. General Mills chose not to appeal the ruling.

The Trademark Trial and Appeal Board wrote that customers would not likely associate the yellow colored packaging as a “unique source”, as there are multiple cereal brands with the color yellow being the main color on the box.

The case number in the U.S. Patent and Trademark Office’s Trial and Appeal Board is 86757390.

9. Deere & Co. v. FIMCO Inc.

In October 2017, there was a ruling made by a Kentucky federal judge who said that the green-and-yellow colors of John Deere tractors is a famous trademark, and that the similar colors used on a pesticide spray qualified as infringement.

Although many other companies use the same scheme of colors, the Kentucky federal judge said that customers will most likely be confused by other competitive companies who also use this color scheme.

The case number in the U.S. District Court for the Western District of Kentucky is 5:15-cv-00105.

8. Twentieth Century Fox Television et al. v. Empire Distribution Inc.

In November 2017, the Ninth Circuit ruled that Fox did not violate trademark infringement law. The show “Empire” which runs on Fox network, was sued by a record label company that bears the same name.

The First Amendment protects many similar lawsuits like this case. To qualify for trademark infringement, Fox would have had to use “Empire” for a completely irrelevant reason, as well as mislead consumers.

In addition, the court rejected the argument that Fox had subjected itself to liability by using the name for promotional reasons, such as advertising. The court held that the First Amendment protects marks in artistic works as well as any promoting of those works.

This case is number 16-55577 in the U.S. Court of Appeals for the Ninth Circuit.

7. Allstate Insurance Co. v. Kia Motors America Inc.

In November 2017, A federal jury in California ruled that Kia Motor Corp. infringed Allstate Insurance Co. Allstate Insurance Co. uses the name “Driverwise” as a program to reward good drivers., and Kia Motor Corp had a line of vehicle add-ons that they called “Drive Wise”.

The trial lasted 3 days. Jurors concluded that consumers would most likely confuse the two names. Kia first came out with their high-tech vehicle add-ons to 2017 model vehicles. Allstate has been using their reward program “Driverwise” for seven years.

Although the two products are completely different, Kia argues, jurors were in favor of Allstates closing argument. Allstate closes their argument with “They should pick their own name. It’s as simple as that.”

The case number in the U.S. District Court for the Central District of California is 2:16-cv-06108.

 6. Black & Decker Corp. et al. v. Positec USA Inc.

In September 2017, a federal judge from Illinois took away a fifty-four million trade dress infringement verdict won by Black & Decker Corp. against toolmaker Positec USA Inc.

The originally verdict took place in 2015.

In the U.S. District Court for the Northern District of Illinois this is case number 1:11-cv-05426.

5. Booking.com BV v. Matal

In August 2017, A Virginia federal judge reversed a decision made by the Trademark Trial and Appeal Board. The original decision was that “Booking.com” could not be a trademark. In precedent, the “.com” added to any generic term makes it likely to be protected under the Lanham Act.

The Federal Circuit has long been rejecting trademark registrations for URLs like Mattress.com and Hotels.com

In this case, U.S. District Judge Leonie M. Brinkema, ruled that the addition of a TLD (top-level domain) can change a generic term into a descriptive one. Brinkema concludes that Booking.com meets the standard and therefore can be registered as a trademark.

In the U.S. District Court for the Eastern District of Virginia the case number is 1:16-cv-00425.

4. Elliott et al. v. Google

In May 2017, the Ninth Circuit shot down a case which tried to show “google” had become a generic verb. Chris Gillespie and David Elliot aimed to prove that google could not be protected under trademark law. The main question for this case was whether “google” had become a generic name consumer’s use for internet search engines.

In October 2017, the U.S. Supreme Court denied certiorari as Gillespie and Elliott appealed their case, urging the justices to offer “clarity” on the trademark implications of the “increasingly common” use of brand names as verbs.

The case number is 15-15809 in the U.S. Court of Appeals for the Ninth Circuit.

3. Tiffany & Co. v. Costco Wholesale Corp.

In August 2017, A federal judge from New York awarded Tiffany & Co. Twenty-one-million-dollar in damages.  Costco Wholesale Corp and Tiffany & Co. have had an ongoing trademark battle for four years.

Costco was using the name “Tiffany” on diamond engagement rings. Although, Costco claims it was using it as shorthand for “Tiffany setting”. The District Judge Laura Taylor Swain ruled it as trademark infringement and counterfeiting in 2015.

Judge Swain’s August damages award was merely a last major step for the case at the district court level. This is only just setting the stage for what will likely be a greatly anticipated appeal by Costco to the Second Circuit.

The case number is 1:13-cv-01041, in the U.S. District Court for the Southern District of New York.

2. NantKwest Inc. v. Matal

In June 2017, The Federal Circuit upheld the U.S. Patent and Trademark Office’s win-or-lose attorney fee policy. The case is about the Patent Act and the Lanham Act. It states that applicants who unsuccessfully file a “de novo” appeal to a district court, must pay the full cost amount of the proceeding, no matter who wins the case.

Critics argue that this is extremely expensive, and will only be affordable for wealthy applicants. Back in June, challenges to this policy were rejected by the Federal Circuit panel such as the “American rule” against fee-shifting.

In August 2017, without request from the parties, the appeals court agreed to rehear the case en banc.

The case number is 16-1794 in the U.S. Court of Appeals for the Federal Circuit.

1. Matal v. Tam

It was in June 2017 that The U.S. Supreme Court ruled the Lanham Act’s ban on offensive trademark registration was unconstitutional. This put an end to a ten-year effort on using the rule against the NFL’s Washington Redskins.

Every justice in the high court’s decision agreed in the finding. Among several occurrences in a thirty-nine-page opinion, one justice concluded that this amounts to unconstitutional discrimination against unpopular speech. Justice Alito continues to say, “this provision violates the Free Speech Clause of the First Amendment.” Justice Alito also writes about how this provision offends one of the First Amendment principles. That principle being “Speech may not be banned on the ground that it expresses ideas that offend”.

The case number 15-1293 in the Supreme Court of the United States.