Every month, Erise’s trademark attorneys review the latest developments at the U.S. Patent and Trademark Office, in the courts, and across the corporate world to bring you the stories that you should know about:
Toms Shoes Sues Amazon Storefront in Trademark Complaint
On the heels of Chanel winning a $4 million jury verdict against a clothing reseller, Toms Shoes filed for trademark infringement against Bloom Trading, a company that operates a third-party Amazon storefront.
In its complaint, Toms alleges Bloom misappropriated its trademarks “by selling used, dirty, poor-quality, potentially counterfeit, and otherwise non-genuine products bearing TOMS’ trademarks on the Internet despite advertising these products as new and genuine TOMS products.”
Additionally, Toms alleges customers made multiple 1-star Amazon reviews on its products and alleged customers who purchased Toms products “from unauthorized sellers, like Defendants” … “complained of receiving products that were damaged, defective, previously used, counterfeit, or of otherwise poor quality.” Toms alleges these negative reviews hurt the brand’s quality and reputation.
This isn’t the first case where a fashion brand sought to protect its mark from unauthorized resellers. In February, a federal jury awarded Chanel $4 million in statutory damages after finding a What Goes Around Comes Around (WGACA) liable for trademark infringement, false association, selling counterfeit goods, and false advertising.
Supreme Court Passes on Home Chef’s Petition
The Supreme Court this month denied certiorari regarding the petition filed by Relish Labs LLC and the Kroger Company, who own the “Home Chef” brand and mark of home meal kits, that asked the court to consider two questions regarding the likelihood of trademark confusion test.
As IP Watchdog reported, In Relish Labs v. GrubHub, Inc., a District Court and the Seventh Circuit found Relish Labs didn’t prove its marks were likely to be confused with those of Grubhub. Both companies’ marks feature the image of a fork and knife inside the outline of a house.
Relish Labs and Kroger asked the Supreme Court to consider these questions:
- Whether the determination of a likelihood of confusion for trademark infringement is a factual finding, reviewable for clear error, or a legal conclusion, reviewable de novo, or a combination?
- Whether a court should disclose its analysis of all the factors in a multifactor likelihood of confusion balancing determination for trademark infringement?
The petition argued that there is a “split among the circuit courts as to whether a likelihood of confusion analysis is reviewed under the “clearly erroneous” standard, as a question of fact, or de novo, as a legal conclusion, or a combination.” In its opposition, GrubHub disagreed there is a split.
Other Marks in the News
- Should Kellogg’s be Frosted by Seinfeld’s ‘Unfrosted’? (IP Watchdog)
- The Cutest Trademark Dispute—Squishmallows Takes on Skoosherz (Law.com – subscription required)
- Whataburger files trademark lawsuit against North Carolina restaurant with similar name (The Dallas Morning News)
