High Degree of Consumer Care Key to Overcoming Trademark Registration Rejection

I often receive questions about the differences between trademark classes and whether a particular mark can be registered if someone else is using it for different goods and services.  Classes are used to designate the fields of goods and/or services covered by trademarks.  Trademarks are examined for the likelihood of confusion.  The likelihood of confusion is whether consumers are likely to confuse the source of the goods and services associated with the two marks.  This case discusses the Federal Court’s decision to allow the registration of similar marks for different goods and services.

The United States Patent and Trademark Office (PTO) trademark examiner rejected St. Helena Hospital’s trademark application for TAKETEN for the hospital’s 10-day residential health improvement program.  St. Helena identified its program as “health care services, namely, evaluating weight and lifestyle health and implementing weight and lifestyle health improvement plans in a hospital-based residential program” (Class 44).  The examiner thought that St. Helena’s TAKETEN mark created a likelihood of confusion with TAKE 10!, a mark registered for “pre-recorded videocassettes featuring physical activity and physical fitness promotion programs” (Class 9) and for “printed manuals, posters, stickers, activity cards and educational worksheets dealing with physical activity and physical fitness promotion programs” (Class 16).

St. Helena appealed the trademark examiner’s rejection of the mark to the Trademark Trial and Appeal Board.  The Board affirmed the examiner’s rejection.  St. Helena then appealed to the Federal Circuit Court of Appeals.  The Federal Circuit reversed the Board’s ruling, based on the dissimilarities between the mark owner’s good and services and the high degree of consumer care associated with St. Helena’s services. 

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Flo and Eddie Goes for the Two Coast Punch Against Sirius XM

I posted on Flo & Eddie’s California lawsuit against Sirius XM last week.  This week’s post discusses Flo & Eddie’s New York lawsuit against Sirius XM. 

Flo & Eddie owns all rights to The Turtles’ master sound recordings.  Sirius XM makes multiple copies of the songs it plays through its database creation, digital broadcasting and streaming activities.  Sirius SX does not allow its users to download or store songs or select which songs the user wants to listen to.  Flo & Eddie claimed that Sirius XM infringed its common law copyright under New York state law by copying (reproducing) copies of the master recordings and by publicly performing those recordings without permission.

Flo & Eddie argued that New York common law applies to pre-1972 sound recordings and prohibits the reproduction and public performance of those recordings.  Sirius XM brought a motion for summary judgment.  Sirius XM argued that common law copyright does not provide an exclusive public performance right, that Sirius XM’s use is a fair use and that Flo & Eddie’s action is barred by laches.  The district court denied Sirius XM’s motion for summary judgment and further ordered Sirius XM to show cause why summary judgment should not be entered in favor of Flo & Eddie on liability.

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Unhappy Turtles Take a Bite Out of Sirius XM for Unauthorized Public Performance

This case involves the extent of the ownership rights to pre-1972 sound recordings and the relationship between state and federal copyright law.  The Turtles musical group recorded the 1960’s hit “Happy Together,” as well as a number of other hit songs.  Howard Kaylan and Mark Volman, two of The Turtles founding members, created and own Flo & Eddie, Inc.  Flo & Eddie in turn owns all rights to The Turtles’ master sound recordings.  Although Flo & Eddie has licensed The Turtles songs for use in movies, TV shows and commercials, Flo & Eddie has never licensed its public performance rights in the songs to a digital radio station or any other radio station. 

Sirius XM runs nationwide satellite radio and Internet radio subscription services.  Sirius XM publicly performed 15 separate sound recordings exclusively owned by Flo & Eddie.  Flo & Eddie did not license these songs to Sirius XM and Sirius XM publicly performs the songs without paying royalties to Flo & Eddie. 

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Tavern Challenges BMI’s Chain of Title for Songs

Evie’s Tavern Ellenton, Inc. and owner Michael Evanoff (Evie’s Tavern) were sued by Broadcast Music, Inc. (BMI), The Bernard Edwards Company, LLC, R-Key Darkus Publishing, Orbi-Lee Publishing and other plaintiffs for copyright infringement.  The plaintiffs alleged that Evie’s Tavern violated their ownership rights by publicly performing copyrighted musical compositions without a license.  Instead of taking the plaintiffs’ ownership claims at face value, Evie’s Tavern challenged plaintiffs’ ownership claims.  Although Evie’s Tavern lost, this case illustrates how tenuous copyright ownership claims for musical works can be.

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