02/09/21

BOARD SHUCKS ARGUMENT FOR ABANDONMENT OF A.W. SHUCK’S

Timothy J. Lockhart

On December 23, 2020, the Trademark Trial and Appeal Board (Board) of the U.S. Patent and Trademark Office (PTO) denied a petition to cancel a registration for the word mark A.W. SHUCK’S for use with restaurant and bar services.  Peterson v. Awshucks SC, LLC, 2020 USPQ2d 11526 (TTAB 2020) [precedential].  Petitioner Jill E. Peterson argued that respondent Awshucks SC, LLC (Owner) had abandoned the mark by not using it for more than three years, but the Board held that the Owner’s evidence proved that the Owner had maintained an intent to resume use of the mark.

The Board found that Peterson had standing for her petition because the PTO had cited the registration for A.W. SHUCK’S in refusing her application for AW SHUCKS for use with restaurant and bar services.  The refusal was also based on the Owner’s registration for A.W. SHUCK’S and Design, but because the Owner said it was no longer using that mark and therefore had not renewed the registration after the petition was filed, the Board granted Peterson’s petition to cancel that registration.

In June 2015 the Owner bought the assets of A. W. Shucks, Inc., which operated a restaurant called A.W. SHUCK’S in Charleston, South Carolina.  The Owner operated the restaurant under that mark until January 2016, when it “temporarily ceased” to use the mark to convert the services associated with the mark to a “fast casual concept.”  The Owner continued to operate the restaurant but changed the service mark to OYSTER HOUSE.

The Owner researched the fast casual concept to learn how such businesses operate and engaged two real estate agents to look for a suitable location for an A.W. SHUCK’S restaurant in Charleston.  By the summer of 2017 space became available next to the OYSTER HOUSE, and the Owner started to renovate that space to house a new A.W. SHUCK’S restaurant.  The Owner also worked with a graphics design firm to develop potential menus, logos, and signage.

Because the location for the prospective A.W. SHUCK’S restaurant was in an historic district of Charleston, the city eventually determined that the Owner would not be able to put a kitchen into the space.  The Owner testified to the Board that the restaurant finally opened in March 2019 as A.W. SHUCK’S ON THE PORCH with its food being prepared at OYSTER HOUSE (a porch connected the two restaurants).  In response, Peterson submitted photographs allegedly showing that in April 2018 the interior of A.W. SHUCK’S ON THE PORCH was empty.  However, the Owner also claimed that it found another Charleston location for an A.W. SHUCK’S restaurant and opened A.W. SHUCK’S SEAFOOD SHACK in that space on June 3, 2019.

After discussing the parties’ testimony and documentary evidence, the Board laid out the applicable rule for showing abandonment:  a mark is deemed abandoned when (1) use of the mark “has been discontinued,” (2) “with intent not to resume such use.”  15 U.S.C. § 1127.  “If a plaintiff shows three consecutive years of nonuse, it has established a prima facie showing of abandonment, creating a rebuttable presumption that the registrant has abandoned the mark.”  Noble House Home Furnishings, LLC v. Floorco Enterprises, LLC, 118 USPQ2d 1413, 1417, 2016 WL 3357265, at *5 (TTAB 2016).  The burden then shifts to the defendant to produce evidence that it has used the mark or intends to resume such use—the latter meaning the defendant can make a convincing demonstration of “excusable non-use” that negates any apparent intent not to resume use of the mark.

The Board found that the Owner had not used the mark A.W. SHUCK’S for more than three consecutive years, giving rise to a rebuttable presumption that the Owner had abandoned the mark.  But the Board also found that the Owner had overcome the presumption of abandonment that arose due to its nonuse.  The Board said that, “[c]onsidered in its totality, the evidence in this case,” including the Owner’s efforts to find a new location for the restaurant (using a “fast casual restaurant concept”) between 2016 and 2019, its plans, designs, and construction at the first location between 2017 and 2018, its preparation of proposed new logo and menu designs between 2017 and 2018, including designs that were eventually used, and the opening of the second location on June 3, 2019, “demonstrate[d] that [the Owner] maintained an intent to resume use of the mark.”

The Board discussed Peterson’s argument that because the Owner had written its mark in different ways at different times—sometimes with periods after the letters A and W and sometimes without and sometimes with an apostrophe in SHUCK’S and sometimes without—the Owner did not have an intent to resume use of the registered form of the mark.  But the Board did not find that argument persuasive.  The Board noted that “[p]unctuation, such as quotation marks, hyphens, periods, commas, and exclamation marks, generally does not significantly alter the commercial impression of the mark” (citing Trademark Manual Of Examining Procedure § 807.14(c) (Oct. 2018).

Accordingly, the Board denied Peterson’s petition to cancel the Owner’s registration for the word mark A.W. SHUCK’S.

 

NO WARP SPEED FOR STAR TREK/DR. SEUSS MASH-UP

Timothy J. Lockhart

On December 18, 2020, the U.S. Court of Appeals for the Ninth Circuit rejected the argument of ComicMix LLC that its Star Trek/Dr. Seuss mash-up called Oh, the Places You’ll Boldly Go! (Boldly) was a parody of books by Dr. Seuss and therefore entitled to the fair-use defense to claims of copyright infringement.  Dr. Seuss Enterprises, L.P. v. ComicMix LLC, 983 F.3d 443 (9th Cir. 2020).  The court agreed, however, with ComicMix’s claim that the mash-up did not infringe the trademarks of Dr. Seuss Enterprises (DSE).

Oh, the Places You’ll Go! was the last book written by the late Theodor S. Geisel, famously known as Dr. Seuss.  In fact, DR. SEUSS was the top licensed book brand of 2017, and Oh, the Places You’ll Go! has been a number-one best seller during graduation season.  The other Dr. Seuss books at issue—How the Grinch Stole Christmas! and The Sneetches and Other Stories—are also widely known.  (The books are referred to collectively herein as “Go!”)

Although DSE licenses the creation of new works under the DR. SEUSS brand, Boldly is not a DSE-licensed work.  In May 2016 David Gerrold (author of Star Trek episodes) and Glenn Hauman (vice president of ComicMix) agreed to create a “mash-up” by combining elements of Star Trek and Go!  As the court said, “Gerrold and Hauman decided to use Go! and to place the Enterprise crew in a colorful Seussian landscape full of wacky arches, mazes, and creatures—a world that is familiar to Dr. Seuss readers but a strange new planet for Captain Kirk’s team.”  Although they were “slightly concerned” about how DSE would react to their mash-up, Gerrold and Hauman concluded that Boldly “come[s] down well on the side of parody” and therefore did not infringe DSE’s copyrights.

After learning of the planned publication of Boldly, DSE objected, sending a cease-and-desist letter and two follow-up letters to ComicMix, which responded that Boldly was a fair use of Go!.  In November 2016 DSE sued ComicMix for copyright and trademark infringement.  The trial court granted ComicMix’s motions for summary judgment, and DSE appealed.

The court of appeals analyzed ComicMix’s fair-use defense under the four statutory factors:  (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work. 17 U.S.C. § 107(1)–(4).

The court said the “central purpose” of inquiry under the first factor is determining “whether and to what extent the new work is ‘transformative’” (quoting Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 579 (1994)).  A parody is transformative, but the court held that Boldly is not a parody because “[a]lthough elements of Go! are featured prominently in Boldly, the juxtapositions of Go! and Star Trek elements do not “hold [Seussian] style” up to ridicule” (quoting Dr. Seuss Enterprises, L.P. v. Penguin Books USA, Inc., 109 F.3d 1394, 1396, 1401 (9th Cir. 1997)).  Thus, the court said that ComicMix’s “repackaging, copying, and lack of critique of Seuss, coupled with its commercial use of Go!, do not result in a transformative use.  The first factor weighs definitively against fair use.”

Noting that the second factor has not been especially important in fair-use analyses, the court discussed it only briefly.  The court said that this factor “recognizes that creative works are ‘closer to the core of intended copyright protection’ than informational and functional works, ‘with the consequence that fair use is more difficult to establish when the former works are copied’” (citing Penguin Books, 109 F.3d at 1402).  Thus, the court said, Boldly’s copying of a creative and expressive work such as Go! tilts the second factor against fair use.

With regard to the third factor the court found that Boldly resulted from “extensive and meticulous copying of Go!”  The court noted that after the suit was filed, Gerrold offered to “replace the stuff that’s too dead on,” thus “demonstrating that the mash-up ‘based on Dr. Seuss’s artwork’ could have been created without wholesale copying of the work.”  Accordingly, the court found “[t]he third factor weighs decisively against fair use.”

Regarding the fourth factor the court said that the district court had erred in shifting the burden of proof from ComicMix to DSE.  Not only did ComicMix not meet its burden, the court said, but also ComicMix admitted that the first release of Boldly was scheduled to launch “in time for school graduations.”  Also, given that DSE licenses the creation of derivative works based on Go!, the court said ComicMix had not shown that Boldly would not reduce the sales of licensed derivative works.  Thus, the court also found against ComicMix on this factor.

Next the court dealt with DSE’s claim of trademark infringement, noting that the allegedly infringing use of marks in an expressive work such as Boldly raises the threshold question of whether the Trademark Act applies.  The court said a trademark owner does not have an actionable claim unless the use of its mark is “either (1) not artistically relevant to the underlying work or (2) explicitly misleads consumers as to the source or content of the work” (quoting VIP Products  LLC v. Jack Daniel’s Properties, Inc., 953 F.3d 1170, 1174 (9th Cir. 2020)).

Regarding the first test, the court pointed out that any artistic relevance “above zero” means the Trademark Act does not apply unless the use of the trademark is explicitly misleading (citing Twentieth Century Fox Television v. Empire Distribution, Inc., 875 F.3d 1192, 1198 (9th Cir. 2017)) (other citations omitted)).  “Boldly easily surpasses this low bar,” the court held.  “[A]s a mashup of Go! and Star Trek, the allegedly valid trademarks in the title, the typeface, and the style of Go! are relevant to achieving Boldly’s artistic purpose.”

With regard to the second test, the court said that ComicMix’s use of the claimed Go! trademarks is not explicitly misleading because it is not an explicit indication, overt claim, or explicit misstatement about the source of the work.  The court noted that the cover of Boldly conspicuously listed Gerrold and illustrator Ty Templeton, not Dr. Seuss, as the authors and stated that the book was “not associated with or endorsed by” DSE.  Thus, the court said, the Trademark Act did not apply in this case.

Accordingly, the court of appeals affirmed the district court’s dismissal of DSE’s trademark infringement claim but reversed the dismissal of its copyright infringement claims.  The court of appeals remanded the case to the district court for further proceedings with respect to the alleged infringement of DSE’s copyrights.

Images from Go! and from Boldly 

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