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Archives For November 30, 1999

Sealtight vs. Sealtite: A Trademark Battle in the Supreme Court

December 9, 2014 — Leave a comment

As you may recall from other posts on this blog, trademark laws grant a trademark owner the exclusive right to use their registered mark in commerce with respect to specific goods or services. Those rights extend not only to other people or companies using their exact registered mark, but also to uses of marks that are “confusingly similar” to the registered mark. The USPTO uses this rule to deny marks that, although spelled differently, are pronounced the same.

However, due to rulings in the Federal Courts (which are separate from the USPTO), the Supreme Court has decided to weigh in on this issue via the Sealtight Case.

Background

B&B Hardware sells self-sealing, leak-proof screws and bolts for use in high-tech industries such as the aerospace and medical industries, under the name Sealtight. B&B obtained a registration for this mark in 1993.

Hargis Industries, on the other hand, sells construction screws for buildings under the name Sealtite Building Fasteners.

When Hargis applied for a federal trademark for Sealtite in the late 90’s, B&B objected arguing the use of Sealtite would cause consumer confusion between the two companies and their product lines. The USPTO Trademark Trial & Appeal Board (“TTAB”) agreed with B&B and denied the registration by Hargis.

However, Hargis has argued that its’ products are different from those sold by Sealtight and that Hargis’ customers are a different class of customers. Hargis has even won two jury verdicts in U.S. Federal Courts on this point. One judge even found that B&B attempted to manufacture evidence to bolster it’s trademark infringement claims.

With a split between the Federal Courts and the TTAB, the U.S. Supreme Court agreed to hear the case and decide who should have the final say on this matter.

The Supreme Court Hearings

The Justices heard an hour long oral argument last week on the issue.

Justice Sotomayor said that it only makes sense that the USPTO proceedings should be given some weight in Federal Court cases otherwise the agency’s powers would be rendered “almost irrelevant.” And the Obama administration argued in favor of B&B by claiming that the Federal Courts should defer to the USPTO on such matters.

However, Justice Ginsburg (along with some other Justices) showed some signs of agreement with Hagis. For example, Ginsburg made statements that implied that the USPTO proceedings might not have controlling effect in Federal Courts because the stakes in such cases are much higher than the stakes at the TTAB level.

As a result, it is not clear how the court will rule on this matter. The one thing we do know is that a decision is likely to be announced in June.

What This Means for You

The outcome of this case will almost certainly impact future trademark disputes. And the most important thing for you to take away from this current dispute is the importance of using appropriate guidance and assistance when dealing with trademark matters.

If you want to keep up with trademark law and learn how Federal registration can benefit your business, be sure to subscribe to Mighty Updates, the MightyMarks® email newsletter!

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Image: Thinkstock/Willard
*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

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Have Your Pi and Trademark it Too

June 10, 2014 — Leave a comment

A Brooklyn artist recently upset geeks and t-shirt merchants with a recently approved federal trademark registration on a 3,000-year-old Greek symbol.

In late 2012 Paul Ingrisano applied for a federal trademark registration for the Pi symbol followed by a period in connection to “athletic apparel, namely shirts, pants, jackets, footwear, hat and caps, [and] athletic uniforms.” After correcting some minor errors with the application he successfully obtained a registration for the mark in early 2014.

Within months of obtaining the registration, Ingrisano began enforcing his newly acquired rights. His first big target was Zazzle.com, a website where users can sell goods like shirts and mugs featuring designs created by the users.

In his cease and desist demand letter Ingrisano’s lawyer makes the case that the sale of apparel on Zazzle.com featuring the Pi symbol is likely to confuse consumers as to the source of the goods being sold (the essential element of proving trademark infringement). The letter then goes on to make multiple demands regarding inventory, evidence of sales, and various accountings.

Zazzle’s initial reaction was to remove all potentially infringing materials for fear it might be indirectly liable as the middleman between the creators of the potentially infringing goods and the end consumers. However after receiving complaints from the creators, a Zazzle representative told cnet.com “After reviewing the takedown request more closely, Zazzle has decided to restore the ‘Pi’ products. Zazzle is a marketplace for a community of artists, and we want to continue to support artists who are creating original artwork.”

Zazzle didn’t elaborate further, but several things in the cease and desist letter seemed a bit off. First, the letter requests Zazzle cease and desist all “copyright infringement” when the matter at hand is a trademark. Remember, copyrights tend to protect creative works while trademarks tend to protect names and slogans.

Second, it is unclear if Ingrisano is seeking to prevent others from using the Pi mark or the Pi mark plus a period. The essential question is whether consumers purchasing goods on Zazzle would be confused as to the source of the goods and believe they were coming from Ingrisano when, in fact, they were not. That raises the question as to the importance of the period in the Pi registration – a question that would likely have to be decided by a jury.

This registration and Ingrisano’s attempt to protect the Pi symbol with a period will undoubtedly raise many eyebrows in the coming months and years and we’ll let you know when new developments arise.

Be sure to follow us on Twitter and like us on Facebook to make sure you don’t miss the updates!

Image Credit: uspto.gov

*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

 

 

In Trademark Disputes, Trademark News , , , ,
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