Cannoli Showdown

In a bizarre dispute involving a Broadway musical and the self-appointed “Cannoli King” of Little Italy, Tech dirt is reporting that:

Little Italy pastry shop owner John "Baby John" Delutro of Caffé Palermo asked Broadway's "A Bronx Tale" to remove a sign on its set that dubs another pastry joint "The Cannoli King," infringing on his trademark.
The show — a coming-of-age story about an Italian kid growing up in the Bronx during the socially segregated 1960s — is currently crediting Arthur Ave. pastry shop Gino's with the coveted cream-filled title on one of its storefront signs in the set.
The lawyer for "A Bronx Tale" refused to comment, but producers for the show said they plan to re-paint the sign.

John DeLutro is the owner of a registered trademark for CANNOLI KING, Reg. No. 4991693, with a first use date of August 17, 1977. Competitor, Gino’s, under the name of Jerome Raguso of the Bronx, applied for a trademark for THE CANNOLI KING on January 31, 2017, claiming a first use date of May 7, 1997.  That application is likely to be rejected based on confusing similarity.  The sugar hit the fan when the musical’s set bestowed the title of The Cannoli King on a depiction of the Bronx establishment. 

Although the producers of the musical plan to repaint the sign, there was literally no possibility of trademark infringement — no use of “The Cannoli King” as a trademark — in this case.  Although we might have hoped, even dreamed, for a cannoli showdown, the title of CANNOLI KING seems likely to be decided by the USPTO.  Either way, the specimens of use promise to be delicious.   


Trademark Opposition Basics

Filing a trademark application isn’t the same thing as having a registered trademark — it’s just a step in a process, and usually not even the first step if things are done the right way.  (The first step in filing for a trademark should be having a clearance search done.)  What many people do not realize, however, is that even if a Trademark Examining Attorney approves of a trade mark application, it has to go through a 30-day publication period where it can be opposed by third parties.

This allows rights holders an opportunity to oppose trademarks that they believe were wrongfully approved for publication.  Decisions as to which trademarks should and should not be registered are not always obvious, and Examining Attorneys do sometimes make subjectively interesting decisions, to put it nicely.  On the other hand, the opposition process can be used by overreaching trademark holders to carve out a broader scope of trademark rights than the law would otherwise normally afford.  Many small companies and start-ups don’t have the tens of thousands of dollars necessary to fight an opposition proceeding to a conclusion, and can be bullied by multi-billion dollar corporations into abandoning otherwise valid trade marks.

A clearance search can sometimes help to identify if such corporate aggressors are lurking in the shadows, although other times the oppositions are so outrageous that they would be difficult to predict.  There are times when the parties might be able to come to a co-existence agreement, but it all depends on the marks in issue and the companies involved as to how these issues resolve themselves.  Other times, it might be advisable to pass up an otherwise available mark to avoid an inevitable conflict with an 800 pound corporate gorilla.  An experienced trademark attorney, can advise clients as to their options under the circumstances and help to devise the best strategy for anticipating and dealing with these types of issues.

Trademark Infringement Thoughts

Can a trademark owner with a common law trade mark do anything to stop an infringer from infringing on her mark?  For that matter, what is a common law trademark?  If she does nothing, are her rights waived?  What if she has a federal trademark registration — is she required to sue every possible infringer in order to protect her trademark rights?

Common law trademark rights are rights accrued under the law by using a trademark in commerce in connection with the offering of goods or services.  They extend to the territory where the mark is used, as opposed to federal trademark rights which cover all 50 states in the U.S.  Common law rights must also be proved with evidence of use, whereas federal trademarks carry a presumption of validity and statutory damages.  A common law trademark holder still has rights which can be protected under the law.  The law on when a trademark owner needs to act to protect a trademark is complex and nuanced — the cryptic answer is not unless the infringing use is material, i.e., it matters.  If the infringer is making enough of an impact in the marketplace, a trademark holder must take action to stop the infringer or risk waiving its rights.

Of course, these types of issues tend to be highly fact-specific, as with everything in trademark law.  It’s best to consult a trademark attorney if you have any questions.

What Makes a Trademark Distinctive?

In order to function as a trademark, an adopted word, phrase or symbol must be distinctive.  Distinctiveness is the thing that transforms an ordinary turn of phrase into a brand, capable of identifying the source of goods or services.  In some sense, distinctiveness can be thought of as uniqueness, as in the case of “fanciful,” i.e., coined trademarks.  These are marks like TWITTER, GOOGLE, and MICROSOFT, which are made up words.  Distinctiveness can also exist when one uses an ordinary dictionary word in a way that has no connection to the meaning of the products or services being sold, e.g., APPLE for computers or mp3 players, or DELTA for an airline.  In some cases, the distinctiveness arises because of the leap of logic that is required to associate the trade mark with the goods or services being sold.  SUGAR for a dating service, or ROACH MOTEL for a roach trap are examples.  All of these types of distinctiveness are thought to be inherent, meaning that nothing more is needed to make such marks distinctive.

Some trade marks begin their life cycle as descriptive marks, which are not distinctive. Marks that merely describe a good or service are not entitled to registration on the Principal Register, however, they can acquire distinctiveness through use.  Marks comprised of last names, such as MACY’S and BLOOMINGDALE’S, and geographic marks, such as BROOKLYN BREWERY, began their lives as descriptive marks, but acquired distinctiveness through use in commerce.  Other marks that describe an aspect of the goods or services offered, such as BANK OF NEW YORK for banking services, or REGISTER.COM for a company that registers domain names, also started out lacking distinctiveness, but have become well-known brands.  And that’s really the key to distinctiveness, the ability of a trademark to identify a brand.

While some companies prefer to adopt inherently distinctive marks, others prefer to choose names that describe their offerings.  A trademark attorney can assist you to know which is right for your company.

Descriptively Challenged: Names, Geographic Locations and Other Descriptive Marks

Distinctiveness is a necessary element for acquiring trademark rights under both common law and federal trademark law. Trade marks that merely describe goods and services are not considered to be inherently distinctive. Unlike generic marks, like “Trademark Attorney” for an attorney who practices trademark law, or “Table” for a store that sells tables, however, descriptive trademarks can acquire distinctiveness through use in commerce. Use in commerce simply means using a trademark in connection with the sale of goods or services. Offering goods for sale and being ready, willing and able to provide services generally suffices to establish trademark rights, although the nature of the rights established depend on the magnitude of use and whether there is a corresponding trademark registration. Such marks include brands built on names, such as MACY’S or BLOOMINGDALE’S, as well as geographic marks, such as THE BANK OF NEW YORK or BROOKLYN BREWERY. Descriptive marks are often confused with generic marks by parties who wrongly claim that such marks cannot be protected.

For marks that are descriptive, they must be in use before filing an application for registration. Unless secondary meaning can be established, they will also register on the PTO’s supplemental register. There is a legal presumption that descriptive marks become distinctive after five years continuous use, however, if substantial use is made of a descriptive mark, mark holders can apply to the PTO for registration on the principal register prior to using the mark for five years.