Time Out! Let's Talk: New York Times Sues Time Magazine for Trademark Infringement

The New York Times Company (“NYTCo”) has filed a trademark infringement lawsuit against Time USA LLC (“Times”) in the United States District Court for the Southern District of New York for using the term “Time100 Talks,” which is claimed to be confusingly similar to NYTCo’s trademark “Time Talks.”

NYTCo, a news agency based in New York, has used the mark “Times Talks” since 1999 in commerce in connection with a series of live and virtual recorded events consisting of conversations between The New York Times journalists and leading talents and thinkers. It holds several federal trademark registrations for the “Times Talks” mark under registration nos. 4,179,358 (issued July 24, 2012), 3,697,025 (issued October 13, 2009), and 2,475,639 (issued August 7, 2001).

Times, a news magazine publisher in New York and a NYTCo’s competitor, has held a trademark for the term “Time100” since 2017. In April 2020, Times expanded the term Time100 to “Time100 Talks” in connection with “a new live event series that convenes leaders from every field to spotlight solutions to urgent global problems and encourage cross-disciplinary action.” In addition, it has also began using other marks similar to NYTCo's "Time Talks" mark, such as “Time for Health Talks,” for other live news events. Shortly after Times began using the mark, it filed a trademark application for “Time100 Talks” with the U.S. Patent and Trademark Office (USPTO). The mark, however, was refused on the basis of it being confusingly similar to NYTCO’s mark. Specifically, the USPTO stated:

Applicant’s [Times] and registrant’s [NYTCo] marks each share the term TIME (or TIMES) combined with the term TALKS. Applicant has merely added the term “100” to the registered mark, inserting it between the two words TIMES and TALKS . . . In this case, the application uses broad wording to describe its “streaming of video material” and “arranging, organizing, conducting, and hosting online educational and entertainment events,” which presumably encompasses all services of the type described, including registrant’s more narrow educational lectures and entertainment television programs . . . .

Because the marks are so highly similar and the services are so closely related, there is a likelihood that purchasers would confuse the sources of the services or believe they stemmed from a single source. Accordingly, registration is properly refused under Section 2(d) of the Trademark Act due to a likelihood of confusion.

In its complaint, the NYTCo states that it has sent several cease and desist letters to the Times for using the mark “Time100 Talks,” but Times has rejected those requests. NYTCo seeks to enjoin the Times from using the “Time100 Talks” and any similar marks to “Time Talks” (such as Time for Health Talks) and damages.

USPTO's New Guidance on Generic.com Terms

This past June, the United States Supreme Court ruled that a proposed mark that consists of a generic term and a generic top-level domain (e.g., “.com”) is not per se generic, i.e., the proposed mark cannot be automatically rejected on the basis of it is a generic term (see USPTO v. Booking.com). In response to the ruling the United States Patent and Trademark Office (USPTO) has recently issued guidance on the examination of generic.com terms for its examining attorneys.

This new guidance stemmed from USPTO’s initial rejection of Booking.com’s trademark registration under the general rule that “a proposed mark consisting of the combination of a generic term and a generic top-level domain, like “.com,” is automatically generic,” and not allowed registration. This issue was appealed until it reached the Supreme Court, which focused its review on whether or not the USPTO may employ a per se rule for such generic.com terms. The court ultimately sided with Booking.com and stated that a generic.com mark should not be automatically rejected due to a per se generic rule. The ruling, however, did not alter the “genericness” analysis or examination procedures to be applied to generic terms. For additional information regarding this case, please see Secondary Meaning News Summary.

The USPTO’s guidance manual highlights the following for examining attorneys reviewing a generic.com mark:

• The per se generic rule is no longer applicable to generic.com terms.

  • Examining attorneys must continue to assess on a case-by-case basis whether, based on the evidence of record, consumers would perceive a generic.com term as the name of a class of goods and/or services or, instead, as at least capable of serving as a source indicator.

• When issuing a “genericness” refusal, the examining attorney must explain how the evidence of record supports the conclusion not only that the individual elements of the generic.com term are generic, but also that, when combined, the combination creates no new or additional significance among consumers capable of indicating source.

  • When disclaiming a generic.com term, the term must be disclaimed in its entirety, rather than disclaiming the generic term and the generic top-level domain separately.

• If an applicant submits a generic.com application with claims of acquired distinctiveness, the attorney must review all evidence to verify that a mark acts as a source identifier. Given that the very nature of a “generic.com” mark normally makes it difficult for consumers to differentiate the mark from normal goods and services and a source identifier, applicants will generally have a greater evidentiary burden to establish that the proposed mark has acquired distinctiveness.

Although the Booking.com ruling removed the genericness per se rule for applicants, the new guidelines still places the burden of proving a mark as not being generic on the applicant. For complete details on the new guidance, please see Examination Guide 3-20.

Sources:

• Examination Guide 3-20

• Secondary Meaning News Summary

• USPTO v. Booking.com B.V. (140 S. Ct. 2298 (2020)

TikTok v Triller

TikTok Inc. and TikTok’s owner ByteDance Inc., have filed a suit for declaratory judgement of non-infringement of U.S. Patent No 9,691,429 (the ‘429 patent) against Triller Inc. in the United States District Court Northern District of California. This suit comes in response to a previous suit filed by Triller against TikTok for infringing patent ‘429 in the United States District Western District of Texas. TikTok looks to change jurisdiction of the suit and seeks a declaratory judgement that it is not infringing claims 1-19 of the’429 patent, which is a patent on synchronization technology that pairs video with audio tracks.

TikTok and Triller are both technology companies that “provide and support a variety of mobile software applications that enable people around the world to connect with, consume, and create entertainment content.” Both these technology companies offer similar applications that essentially allows users to create short video clips that are often paired with separate audio tracks for entertainment purposes.

In TikTok’s complaint, TikToks states that choice of venue of Texas is improper as Triller “does not have employees or property in Texas” nor has "any regular and established place of business in that forum, and thus is not subject to venue under the Supreme Court’s decision in TC Heartland LLC v. Kraft Foods Group Brands LLC, 581 U.S. ___ , 137 S. Ct. 1514 (2017).” TikTok states that California is the appropriate forum as Triller and TikTok has offices in California and has a number of users within the district. Furthermore, a majority of its distribution partners, e.g., Apple and Google, are also located in California.

For the patent infringement portion of the suit, TikTok gives three examples of how its products do not infringe nor induce infringement upon the ‘429 patent. For the first example, Tiktok states that it products do not perform any synchronization of videos to audio tracks for its users via its application. Second, its product is not a device that comprises of “at least on processor” that is used to synchronize videos to audio at specific intervals. Lastly, its product does not automatically syncs audio tracks to specific intervals in a video in a fashion that would create an synchronized music video. Essentially TikTok claims that it does not provide any automatic synchronization of a user’s video with audio tracks or vice versa through its products.

TikTok request that the court resolve the disagreement by issuing a judicial determination that the plaintiffs and their products neither directly nor indirectly infringed upon the ’429 patent.

Source:

Complaint