Mid-Year Trademark Case Law Update and Discussion on Practice Approach in China: How Broad to Go

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Trademark Mid-Year 2022 Round-Up and
Talking Points for Discussion on Practice
Impact of Recent Trademark Developments
in China
Trademark Mid-Year 2022 Round-Up and
Talking Points for Discussion on Practice
Impact of Recent Trademark Developments
in China
Margaret Niver McGann
Jonathan Love
Patrick Neville
July 20, 2022

2
2022 Mid-Year Round-Up
 Tenth Circuit
o Bimbo Bakeries USA, Inc. v. Sycamore, 29 F.4th 630 (trade dress)
o Trial Laws. Coll. v. Gerry Spence Trial Laws. Coll. at Thunderhead Ranch,
(Trademark Modernization Act and Remedies and First Amendment)
 Other Circuit Courts
o United Trademark Holdings, Inc. v. Disney Enterprises, (Fed. Cir.) (likelihood of
confusion)
o Lodestar Anstalt v. Bacardi & Co. Ltd., (9th Cir.) (Madrid Protocol)
o Tiger Lily Ventures Ltd. v. Barclays Cap. Inc., (Fed. Cir.) (abandonment and
likelihood of confusion)
 District Court Cases in the Tenth Circuit
o Instructure, Inc. v. Canvas Techs., Inc., (D. Utah) (priority)
o WAKE 10, LLC v. McNaughton, Inc., (D. Kan.) (personal jurisdiction)
o Elevate Fed. Credit Union v. Elevations Credit Union, (D. Utah) (expert
testimony and likelihood of confusion)(appeal pending)

3
Tenth Circuit Cases Decided In 2022
 Bimbo Bakeries USA, Inc. v. Sycamore, 29
F.4th 630 (10th Cir. 2022)
 Trial Laws. Coll. v. Gerry Spence Trial Laws.
Coll. at Thunderhead Ranch, 23 F.4th 1262
(10th Cir. 2022)

4
Bimbo Bakeries USA, Inc. v. Sycamore
29 F.4th 630 (10th Cir. 2022)
Former Packaging Reintroduced Packaging

5
29 F.4th 630 (10th Cir. 2022)
Grandma Sycamore’s Trade Dress
 a horizontally-oriented label;
 a design placed at the top center of the end;
 the word “White” in red letters;
 the use of a red, yellow, and white color scheme; and
 stylized font below the design outlined in white.

6
29 F.4th 630 (10th Cir. 2022)
 District Court
o Granted U.S. Bakery summary judgment on the trade dress
infringement claim in favor of defendant
o Court, sua sponte, raised issue of genaricism of trade dress
at the summary judgment hearing. After briefing on the
issue, the Court held:
• “The combination of [‘Bimbo Bakeries’] purported trade dress is
clearly generic” and therefore is “not subject to protection”
under the Lanham Act
o Later, the jury found in Bimbo’s favor on the false advertising
claim and the trade secret claim
 Issues on Appeal
o Whether Grandma Sycamore’s trade dress is generic?

7
29 F.4th 630 (10th Cir. 2022)
 Trade Dress Infringement
o Tenth Circuit
• Grandma Sycamore trade dress is generic and unprotectable
• "Where it is the custom of an industry to package products in a
particular manner, a trade dress in that style would be generic
and therefore not inherently distinct."
• “[T]he homemade bread products that compete with Grandma
Sycamore's all tend to combine the purported trade dress
elements.”
• Bimbo failed to offer countervailing evidence

8
Trial Laws. Coll. v. Gerry Spence Trial Laws. Coll.
at Thunderhead Ranch
23 F.4th 1262 (10th Cir. 2022)
 Facts
o The Trial Lawyers College splintered into two factions
known as the “Spence Group” and the “Sloan Group”
o Both factions sued:
• The Spence Group sued in State Court for dissolution of the
College and a declaratory judgment recognizing the Spence
Group’s control
• The Sloan Group sued in federal court, claiming trademark
infringement of the “Trial Lawyers College” marks
 District Court
o Granted Sloan Group’s request for a preliminary injunction
finding that it had shown irreparable injury

9
23 F.4th 1262 (10th Cir. 2022)
 Tenth Circuit
o Trademark Modernization Act adopts a statutory presumption.
• Prior to the enactment of the Trademark Modernization Act of
2020, there was no statutory presumption of irreparable injury.
o But, even without a presumption, the evidence permitted a
reasonable factfinder to infer irreparable injury: protected
trademark and the likelihood of confusion could contribute to a
finding of irreparable injury.
• “[N]o such presumption existed when the district
court granted a preliminary injunction because
the statute at that time didn't mandate an
injunction as a remedy.”

10
23 F.4th 1262 (10th Cir. 2022)
 Remedies: Enjoined Speech
o The District Court did not abuse its discretion in enjoining Spence
Group from (1) definitively purporting to be Directors of the College,
and (2) using words associated with the College.
• Prohibitory rather than mandatory
• Did not capture speech outside the Lanham Act
• The district court’s denial of a stay under Colorado River does
not prevent the court from ordering the Spence Group to
refrain from causing confusion among potential customers
• “For both types of statements, the district court
properly exercised its discretion by imposing
restrictions to prevent confusion over the entity
owning the trademarks.”

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Relevant Circuit Court Cases Decided In 2022
 United Trademark Holdings, Inc. v. Disney
Enterprises, Inc., 2022 WL 558247 (Fed. Cir.
Feb. 24, 2022)
 Lodestar Anstalt v. Bacardi & Co. Ltd., 31 F.4th
1228 (9th Cir. 2022)
 Tiger Lily Ventures Ltd. v. Barclays Cap. Inc.,
2022 WL 1752768 (Fed. Cir. June 1, 2022)

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United Trademark Holdings, Inc.
v. Disney Enterprises, Inc.
2022 WL 558247 (Fed. Cir. Feb. 24, 2022)
United’s Registrations
 TEEN TINKER BELL (standard
character)
 TEEN TINK, stylized as shown:
Disney’s Trademark
 TINKER BELL (standard character)
 TINK (standard character)

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United Trademark Holdings, Inc. v. Disney
Enterprises, Inc.
2022 WL 558247 (Fed. Cir. Feb. 24, 2022)
 Facts
o Disney has used the TINKER BELL mark in connection with dolls since
1994 and TINK in connection with dolls since 2007
o United launched its Fairy Tale High doll collection in 2013 depicting various
public domain characters from well-known fairy tales, including Tinker Bell
o In January of 2013 United files application for TEEN TINK, stylized, in
International Class 28 ̶ covering dolls, not just those with the above-
enumerated features
• United claimed actual use of the mark in commerce in connection with the
identified goods since at least January 1, 2013
o In February of 2015 United files application for TEEN TINKER BELL in
International Class 28, claiming a bona fide intent to use in commerce
o Disney opposed the registrations before TTAB arguing likelihood of
confusion

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Enterprises, Inc.
2022 WL 558247 (Fed. Cir. Feb. 24, 2022)
 TTAB
o Refused registration after conducting the multi-factor approach
set out in E.I. DuPont
 Issues on Appeal
o Conceptual-strength factors
o Similarity factor
o Whether the Board’s decisions amounts to letting Disney prolong
its copyrights through trademark law

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Enterprises, Inc.
2022 WL 558247 (Fed. Cir. Feb. 24, 2022)
 The Conception-Strength Factors
o Substantial evidence that Disney's mark entitled to “ordinary
scope of protection” despite conceptual weakness
• TINKER BELL may be conceptually weak
• But the mark's commercial strength is strong enough to counteract
any conceptual weakness
o These factors do not necessarily focus on the specific product at
issue
• “We need not decide whether a focus on dolls specifically for the
fame-strength analysis is appropriate. It is sufficient here that a mark
does not have to be famous to be commercially strong.”

16
Enterprises, Inc.
2022 WL 558247 (Fed. Cir. Feb. 24, 2022)
 Similarity Factor
o TINKER BELL v. TEEN TINKER BELL
• “TEEN” is only difference
• The lead-in word TEEN is descriptive or suggestive and merely
qualifies the rest of United’s mark which is identical to Disney’s
o TINKER BELL v. TEEN TINK, stylized
• Differences: (i) use of “TEEN”, (ii) contraction of TINKER BELL to
TINK, and (iii) the crown
o TEEN des not significantly alter the appearance, sound,
connotation, and commercial impression
o The contraction is not a significant change because Tink is
common nickname for Tinker Bell
o The crown is a small and less significant than verbal portions
of the mark

17
Enterprises, Inc.
2022 WL 558247 (Fed. Cir. Feb. 24, 2022)
 Whether ruling for Disney amounts to letting Disney prolong copyrights
through trademark law?
o No
• Attempt displace the ordinary statutory standard, not the TTAB’s
application
• No copyright-rooted basis for overruling the Board’s decision
• And to the extent that United invokes this concern to argue that
trademarks referring to public-domain character names “must be
inherently weaker,” United failed to explain how this weakness goes
beyond the conceptual-strength factor.
• Trademark and copyright are not mutually exclusive:
• “The fact that a copyrightable character or design has fallen into the
public domain should not preclude protection under the trademark
laws so long as it is shown to have acquired independent trademark
significance, identifying in some way the source or sponsorship of
the goods.”

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Lodestar Anstalt v. Bacardi & Co. Ltd.
31 F.4th 1228 (9th Cir. 2022)
 Madrid Protocol
o Departure from United States traditional emphasis on assigning
priority of rights based on actual use.
 Lanham Act § 68(a)(3)
o The “[e]xtension of protection shall not be refused on the ground that the
mark has not been used in commerce.”
o Standard:
• PTO may grant request for extension of protection so long as the
request shows that, when received by the International Bureau, it
included a “declaration of bona fide intention to use the mark in
commerce.”

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31 F.4th 1228 (9th Cir. 2022)
 Lodestar
o Lodestar is developer of beverages
o Applied for “Untamed” marks under
Madrid Protocol
o Published for opposition in July 2011
o Use of the marks in commerce

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31 F.4th 1228 (9th Cir. 2022)
 Bacardi
o 2012 – New advertising campaign
o 2013 – Seeks extension under Madrid Protocol into US for “Bacardi
Untamable”
o Never used “Untamable” on labels, only advertisements in various
mediums

21
31 F.4th 1228 (9th Cir. 2022)
 Lodestar
o November 2013 – Lodestar announces its “Untamed Revolutionary
Rum”
o Concedes that no such product existed at time of Bacardi's
campaign
o Conceived, in part, to combat Bacardi’s attempt to take over the
Untamed mark

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31 F.4th 1228 (9th Cir. 2022)
 District Court
o Likelihood of confusion: the district court granted summary
judgment in favor of Bacardi, finding that the Untamed
Revolutionary Rum should not be considered because the relevant
products included only those that existed prior to the launch of
Bacardi's campaign.
• Because it was undisputed that Untamed Revolutionary Rum “did not
exist” before Bacardi's campaign, it could not be considered for
likelihood of confusion.
 Issues
o Who has an enforceable priority of right in a trademark when (1) a
registration was obtained under the Madrid Protocol without
showing pre-registration use in commerce; and (2) the registrant's
actual use in commerce did not begin until after the allegedly
infringing use began?

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31 F.4th 1228 (9th Cir. 2022)
 No case law directly addresses this question
 § 44(d) of the Lanham Act
o Actual use not required in invoke remedy of infringement
o But, nothing in this section entitles “the owner of a registration
granted under this section to sue for acts committed prior to the date
on which his mark was registered in this country unless the
registration is based on use in commerce.”
 Ninth Circuit
o “We therefore conclude that, under the Madrid Protocol… once a
registrant under the Madrid Protocol actually begins using the
registered mark within the U.S., it is then entitled to assert an
infringement claim, based on its statutory priority of right, against
those who may have used the mark after the registrant’s constructive
use date but before the registrant’s actual use in the U.S.”

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31 F.4th 1228 (9th Cir. 2022)
 Likelihood of Confusion
o Held: affirmed the determination that Lodestar failed to carry
its burden to show a likelihood of confusion
o District court erred in holding that a use of a mark that “was
developed after a competitor's alleged infringement” should
be categorically excluded from the likelihood-of-confusion
analysis
• Lanham Act requires that for use be genuine and not token

25
Tiger Lily Ventures Ltd. v. Barclays Cap. Inc.
2022 WL 1752768 (Fed. Cir. June 1, 2022)
 Facts
o 2008 – Barclays is assigned LEHMAN BROTHERS marks
o A few years later, Barclays allows the registrations to expire
o Mar. 6, 2013 – Tiger Lily files application for LEHMAN
BROTHERS for beer and spirits
o Oct. 2, 2013 – Barclays filed application to register standard
character mark LEHMAN BROTHERS for use in connection
with various services
o Both parties file Notice of Opposition
• Barclays – likelihood of confusion
• Tiger Lily – Barclays lacks bona fide intent to use

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2022 WL 1752768 (Fed. Cir. June 1, 2022)
 TTAB
o Barclays did not abandon
o Tiger Lily’s mark likely to confuse
o Barclays demonstrated bona fide intent to use
 Issues
o Whether Barclays abandoned its rights to the mark?
o Whether the TTAB erred in inferring that consumers would
assume Barclays expanded its product into a new type of
goods and services?

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2022 WL 1752768 (Fed. Cir. June 1, 2022)
 Abandonment
o Limited use is sufficient to avoid abandonment
o Tiger Lily acknowledged that LEHMAN BROTHERS used
continuously in the winding up of affairs of one affiliated
entity and also used the mark in connection with the
offering of market research materials
o While Barclays could not quantify any financial success
attributable to its offering of the Lehman Brothers market
research materials, its “continued used of the mark, even
if limited, is sufficient to avoid a finding that the mark has
been abandoned”

28
2022 WL 1752768 (Fed. Cir. June 1, 2022)
 Likelihood of Confusion: Similarity of Goods and Services
o Tiger Lily’s Argument
• Board made an unsupported inference that consumers would assume Barclays expanded
its product lines into new types of goods and services
• Tiger Lily claims it is seeking to take advantage of the “bad will” associated with the mark
o Federal Circuit rejects both arguments
• The evidence demonstrates that, in marketing its own banking products and services,
Lehman Brothers used its LEHMAN BROTHERS mark in connection with products that are
related to whisky and alcoholic beverages.
• “[I]f the respective products are related in some manner and/or if the circumstances surrounding
their marketing are such that they could give rise to the mistaken belief that they emanate from the
same source.”
• No legal support for the “subtle distinction” regarding “bad will”, and we thus find that Tiger
Lily's attempts to capitalize on the fame of the LEHMAN BROTHERS mark weighs in favor
of finding a likelihood of confusion

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Relevant District Court Cases Decided in 2022
 Instructure, Inc. v. Canvas Techs., Inc., 2022 WL
43829 (D. Utah Jan. 5, 2022)
 WAKE 10, LLC v. McNaughton, Inc., 2022 WL
612455 (D. Kan. Mar. 2, 2022)
 Elevate Fed. Credit Union v. Elevations Credit
Union, 2022 WL 798901 (D. Utah Mar. 16, 2022)

30
Instructure, Inc. v. Canvas Techs., Inc.
2022 WL 43829 (D. Utah Jan. 5, 2022)
Instructure Canvas
 CANVAS mark (2010)
o Software for use in educational
course and curriculum
management
 CANVAS mark (2012)
o Software to enable showing
electronic media or information
over the internet
 Canvas ePortfolio
o Way to upload, showcase, and
share content online
o By 2008, ePortfolio became
associate with employment
recruiting
o By 2010, Instructure offered
ePortfolio service through its
Canvas platform
Canvas Tech
 Founded in 2017 (Jumpstart) as
diversity recruiting platform
 Rebrand to Canvas Tech in 2021
 Assignment with Ms. Smith

31
2022 WL 43829 (D. Utah Jan. 5, 2022)
 Facts
o July 2, 2021 – Ms. Smith files U.S. Application to register her other
CANVAS marks in connection with additional services
• “Providing a website featuring technology that enables job applicants to submit
applications for employment to companies, and for employers to solicit and
accept applications for employment…”
o Canvas Tech acquires the application and common law rights
• Ms. Smith began using canvas marks in the wine and hospitality industry, in
Napa and Sonoma, California
• Ms. Smith began operating a website—including a job board focused on
California-based vineyards—in July 2013
o Instructure sues seeking injunctive relief
 Issue: Which party has priority of common law trademark ownership?

32
2022 WL 43829 (D. Utah Jan. 5, 2022)
 Common Law Trademarks
o “[N]onregistered rights of a senior user continue and are not erased by the
later federal registration of a junior user. This is true even if the registration
has achieved ‘incontestable’ status.”
o The party that used the canvas mark first in the relevant service has priority
 District Court
o Instructure likely has priority
• Canvas Tech and Instructure offer services in same relevant fields
• Ms. Smith’s common law mark is in a different field
o No indication it was for students; but rather “wine and hospitality industry centered in
California”
o Therefore, Ms. Smith’s common law trademark in canvas is limited to California’s
hospitality and wine industry
• Ms. Smith’s common law mark is a different service
• ePortfolio precedes Ms. Smith

33
WAKE 10, LLC v. McNaughton, Inc.
2022 WL 612455 (D. Kan. Mar. 2, 2022)
 Facts
o WAKE 10
• Manufacturer and seller of wakesurfing and marine products
• Citizen of Kansas
• Primarily sells through Amazon
o McNaughton
• Sells competing products under “Tidal Wake” brand
• Citizen of Minnesota

34
2022 WL 612455 (D. Kan. Mar. 2, 2022)
 Facts
o McNaughton begin leaving “negative reviews”
o Conduct had a negative effect on Plaintiff’s product ranking and sales
o McNaughton purchased WAKE 10’s products and comments as a
“seller”
o WAKE 10 complains to Amazon
• Amazon prohibits sellers from leaving negative reviews on competitors
page while posing as a customer
o Unclear where Amazon fulfilled McNaughton’s order
o WAKE 10 sues in the district of Kansas
 Issue: Whether there are sufficient minimum contacts to establish
personal jurisdiction?

35
2022 WL 612455 (D. Kan. Mar. 2, 2022)
 Plaintiff’s Argument
o Negative reviews, purchases, and resulting injury to Kansas
business is sufficient to establish personal jurisdiction
o Inspired Design
 District Court
o Plaintiffs are missing the “something more” that would satisfy the
requirement that McNaughton aimed his conduct at Kansas
o Negative reviews alone are not enough
• McNaughton’s negative reviews were geographically neutral and there
is no indication that he was targeting his post at Kansas or Kansas
residents

36
Elevate Fed. Credit Union v. Elevations Credit Union
2022 WL 798901 (D. Utah Mar. 16, 2022)
 Facts
o Elevate Federal Credit Union (EFCU)
• Operates in three rural northern Utah counties (92%)
o Elevations Credit Union
• No branches or operations outside of Colorado
• Some members do live in Utah
• Marks: “ELEVATIONS” and “ELEVATIONS CREDIT UNION”
 Issues
o Exclusion of elevations expert witness
o Likelihood of confusion

37
2022 WL 798901 (D. Utah Mar. 16, 2022)
 Expert, Hal Poret
o Squirt survey
o Mr. Poret did not give the specific search terms he used, nor did
he document most of the search results
 District Court
o Rule 26
• Failed to adequately disclose (i) search terms, and (ii) search
results-information that influenced his opinions
o Unreliable
• Non-disclosure of results makes it practically impossible to
determine whether he created an “artificial marketplace”
• Methodological Error: the report was silent as to what type of
confusion it tested

38
2022 WL 798901 (D. Utah Mar. 16, 2022) (appeal pending)
 Likelihood of Confusion
o Each factor weighs in favor of EFCU
 Similarity of the Products
o Test: analyze the similarity of (1) the products and (2) how they are
marketed
o Identical products but not competitors
• Small number of members in Utah does not mean that there is a shared
customer base
o Marketing focuses on separate markets
o “[T]hese parties are not direct competitors, that they have separate
markets, consumer bases, and memberships. Thus, the court finds it
highly unlikely that consumers would believe that one entity is providing
both EFCU's and Elevations' services.”

39
China Law Update and Discussion
 Bad faith filings
 Design protection

40
China – Bad Faith Filings
 The 2013 version of the PRC Trademark Law Article 4 (2013)
did not provide an explicit and clear requirement of use in
commerce
 Applicants began filing thousands of marks with the intent of
brokering the registrations, not intending to use the marks in
commerce

41
 2019 amendment mandates rejection of bad faith trademark
applications
 Amended Article 4: “Bad faith trademark applications that
are not made for the purpose of using the trademark shall
be rejected.”
 The new law specifically targets warehousing/hoarding and
squatting
 New law provides more powerful sanctions

42
 The CNIPA released new guidelines for trademark examination
and trial, effective January 1, 2022.
 Without intent to use refers to situations where:
o The applicant does not have genuine intention of use
o There is no activity for preparation of use
o There is no possibility that the applicant will use the mark

43
 Factors of bad faith include:
o The applicant’s industry and business status
o Number of trademark applications
o The trademark requested is well known, with a degree of
popularity
o The trademark is descriptive or generic, especially geographic
names
o The mark relates to a well-known person
o The applicant has engaged in bad faith behavior in the past

44
 The guidelines specifically exclude the following:
o The applicant files marks that are identical with or similar to its
major mark in different classes for a defensive purpose
o The applicant files a moderate number of marks for its future
business
 Avoid excessive filings; be reasonable
 If filing for future business, preserve evidence establishing
genuine intention to use in the future

45
China – Oppositions and Invalidations
 Brand owners can rely on Article 4
 CNIPA adopting more flexible approach
o More willing to consider other factors beyond number of
applications/registrations
o Be prepared to tell your story with supporting evidence
o Are there any links between the filer and multiple acts of
malicious filing?

46
China – Practice Tips
 Act quickly, file first
 Think broadly
o Consider a wider scope of goods/services not just those
currently in use
 Register the copyright in logos
 Preserve evidence of use
o Be prepared to defend non-use cancellations
 Uncover and decipher bad faith behavior
 More is better - the “kitchen sink” approach to gathering
evidence

47
China – Design Protection
 USPTO reported that design patent applications
surged to a record 54,200 last year
 The number of design applications filed in China
has exceeded 50% of the total applications
submitted worldwide

48
HAGUE AGREEMENT
 Effective May 5, 2022, China became the 77th
member of the Hague Agreement
 US applicants can now file a single application
designating the United States, EU, Canada, Mexico,
and now China, among other countries and regions.
Applicants in China can do the same.

49
 Margaret Niver McGann • Shareholder
1 801.536.6761
MMcGann@parsonsbehle.com
 Jonathan Love • Shareholder
1 801.536.6965
JLove@parsonsbehle.com
Thank You

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Mid-Year Trademark Case Law Update and Discussion on Practice Approach in China: How Broad to Go