Pattishall IP Blog

March 2, 2017

The Marshall Tucker Band is still “Searchin’ for a Rainbow”[1] – and a trademark infringement that works

Filed under: TM Registration, Trademark (General) — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 12:24 pm

Paul BorovayBy Paul A. Borovay

On March 1, 2017, a South Carolina federal judge dismissed The Marshall Tucker Band’s complaint against its publishing company alleging trademark infringement and dilution.[2]

The judge based her decision on the band’s failure to allege the publisher used the band’s trademarks in commerce.  The band relied entirely on the publisher’s trademark registrations, [3] as well as its statements to support its trademark applications that its marks were “now in use in . . . commerce.”

To establish trademark infringement under 15 U.S.C. § 1125(a) of the Lanham Act, a plaintiff must prove five elements, including that the defendant uses the mark “in commerce.”[4]  Section 15 U.S.C. § 1127 defines the term “use in commerce” to mean “the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.”

Stating that a mark is “now in use in . . . commerce” while prosecuting a trademark application is not the same thing as “using” a mark “in commerce.”  Judge Lewis cited Kusek v. Family Circle, Inc., 894 F. Supp. 522, 532 (D. Mass. 1995) for this notable proposition: “a federal registration [of a trademark] gives the owner of a mark legal rights and benefits, [but] its mere registration does not create the mark nor amount to ‘use’ of the mark [, and, therefore,] trademark registration per se cannot be considered as a use in commerce.”

While it has certainly been a “Long Hard Ride”[5] for The Marshall Tucker Band, the decision shows that a plaintiff cannot rely solely on defendants’ statements while prosecuting a trademark application to meet the Lanham Act’s “use in commerce” requirement.


[1] “Searchin’ for a Rainbow” is the fourth studio album by The Marshall Tucker Band.
[2] Marshall Tucker Band Inc, The et al v. M T Industries Inc et al, No. 7:16-cv-00420 (D.S.C. March 1, 2017)
[3] See United States Trademark Reg. Nos. 4616427 and 4616428.
[4] 15 U.S.C. § 1125(a) requires the plaintiff to prove the following five elements: (1) that it possesses a mark; (2) that the defendant used the mark; (3) that the defendant’s use of the mark occurred in commerce; (4) that the defendant used the mark in connection with the sale, offering for sale, distribution, or advertising of goods or services; and (5) that the defendant used the mark in a manner likely to confuse consumers.
[5] “Long Hard Ride” is the fifth studio album by The Marshall Tucker Band.


These materials have been prepared by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP for general informational purposes only.
They are not legal advice. They are not intended to create, and their receipt by you does not create, an attorney-client relationship.

January 10, 2014

Kanye West Sends Cease and Desist Letter to Stop New COINYE WEST Virtual Currency

Filed under: Cybersquatting, Domain Name, TM Registration — Tags: , , , , , , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 12:01 pm

Paul Borovay F LRBy Paul A. Borovay, Associate

Whether you are in the Yeezus camp or the My Beautiful Dark Twisted Fantasy camp, or even if either of those references mean nothing to you, you might still be interested to know that a new currency is in development – in a few days we will all be able to own some COINYE WEST.  Or will we?

As the Wall Street Journal first reported, Kanye West has tried to stop seven anonymous coders behind a new virtual currency called COINYE WEST, similar to bitcoin.  Not surprisingly, Kanye West, by and through his attorneys, has claimed trademark infringement, unfair competition, cyberpiracy and dilution.  You can read the cease and desist letter here.  While the company has changed its domain name from to, the coders launched their site on January 7.

West has built a music empire on his KANYE WEST brand, a brand that, according to West’s interview with BBC Radio 1, is the most influential in the world.  As if being the “number one rock star on the planet” was not enough, West’s “I am a God” statement truly makes him a being to reckon with.

While West might be a bit high and mighty (pun intended), he does understand the importance of protecting his brand.  This situation highlights the cross section between trademark rights and the new and evolving internet frontier.  First it was domain names, then came AdWords, and now crypto currency.  While COINYE WEST might face an uphill battle if the case proceeds to court, similar disputes are certain to arise as new technologies develop.  At Pattishall, we strive to stay on the forefront of emerging technologies.  And, while I may not be in the market for any COINYE in the near future, I will be ready to purchase some KARDASH-CASH if Kim Kardashian ever makes any available.[1]

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Paul A. Borovay is an associate with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.   Paul’s practice focuses on litigation in trademark, media, online gaming and entertainment, advertising, as well as trademark prosecution and counseling.

[1] KARDASH-CASH is not a real trademark, nor is it a real currency.  I just made it up for fun.

For a printer-friendly copy, click here.

January 17, 2012

ROLEX vs. ROLL-X: TTAB Says that ROLL-X for X-ray Tables Does Not Dilute Famous ROLEX Mark

Filed under: Dilution, TTAB — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 12:10 pm

By Janet Marvel, Trademark Attorney

In a precedential decision issued on December 5, 2011, the Trademark Trial and Appeal Board (“TTAB”) held that ROLEX was famous for watches under the Trademark Dilution Revision Act of 2006, 15 USC 1125 (c) (“TDRA”), but the mark ROLL-X was not sufficiently similar to create a likelihood of dilution.  See Rolex Watch U.S.A. Inc. v. AFP Imaging Corp., 101 USPQ2d 1188 (TTAB 2011).  The decision provides guidance on the TTAB’s test for determining similarity for purposes of dilution and its interpretation of survey evidence.

AFP Imaging Corp. (“AFP”) filed an application in 2008 for ROLL-X for “x-ray tables for medical and dental use.”  AFP claimed that it adopted the mark as an extension of its DENT-X brand (also for x-ray products).  It also stated that it adopted ROLL-X because the mark evoked the description of its product, namely a rolling tray for taking x-rays.  Both of these facts proved critical to the TTAB’s decision.  Upon publication of the application, Rolex opposed.  The case went to trial on two issues: (1) whether ROLL-X diluted ROLEX by blurring the significance of the ROLEX mark, and (2) whether AFP had a bona fide intention to use ROLL-X.

On dilution, the TTAB found for Rolex on every factor, except two: the similarity of the marks, and AFP’s intent to dilute.  To determine whether the marks were similar for dilution purposes, the TTAB applied its previously iterated test:  “[A]re applicant’s and opposer’s marks ‘sufficiently similar to trigger consumers to conjure up a famous mark when confronted with the second mark?'”  citations omitted.   The Board stated that while the marks were pronounced identically, “[b]ecause of the hyphen between ROLL and X, consumers are likely to view the mark as consisting of the English word ROLL, which has various meanings including ‘to move on rollers or wheels,’…and the letter ‘X,’ which, when the mark is used in connection with applicant’s goods, is likely to be perceived as suggesting the term ‘x-ray’ ….”  The Board cited applicant’s CEO’s testimony, confirming AFP’s intent to create that association.  Because of this stated intent, the Board found there was no evidence that AFP intended to dilute.

The Board also found that Rolex’s own survey supported a lack of dilution.  Forty-two percent of qualified respondents stated that “ROLEX” came to mind when they encountered ROLL-X in a telephone survey.  However, 32 percent said “portable/movable/rolling,” 18 percent said “x-ray tables/equipment” and seven percent said “x-rays.”  While 42 percent would, at least in the context of a confusion survey, be considered a compelling number, “[t[his figure is not persuasive given that a higher percentage…thought of a feature of the goods…or the actual goods themselves.”  In other words, respondents understood ROLL-X to convey the impression AFP sought to convey.

The Board cited a common problem with dilution surveys: they prove association, but not likelihood that the applicant’s mark will impair the distinctiveness of the opposer’s mark.”  Since AFP’s application was based on intent-to-use, it seems nearly impossible to construct a survey that could establish likelihood of impairment.

The Board also found that Applicant had a bona fide intent to use the ROLL-X mark when it filed the application.  AFP did not have any documentary evidence of its intent to use the mark, therefore, it carried the burden to show that it did have such an intent.  The Board found that AFP’s prior use and registration of DENT-X was evidence that “ROLL-X is consistent with an extension of [AFP’s] current product line.” In addition, the Board found that AFP’s production of DENT-X x-ray products showed it had the capacity to produce other x-ray-related products, like those to be sold under the ROLL-X brand.

Here, AFP was saved because it could establish that it intended ROLL-X to be suggestive of its products’ characteristics.  Overall, the case emphasizes the significant difficulty of proving a dilution case.  Moreover, it underscores a best practice, namely that applicants should maintain documentary evidence of intent to use trademarks at the time of filing, so that they may overcome oppositions on the basis that they lacked this intent.

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 Janet Marvel is a partner with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.  Ms. Marvel’s practice focuses on litigation, transactions, and counseling in domestic and international trademark, trade dress, Internet, and copyright law.  She co-authored the Fifth Edition of the Trademarks and Unfair Competition Deskbook, recently published by LexisNexis.

For a printer-friendly version, click here.

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