Jack Wolfskin v. New Millennium Sports

Written by: Roland Casillas, Web and Blog Editor

Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., No. 14-1789 (Fed. Cir. 2015)

Appellant, Jack Wolfskin applied to the Patent and Trademark Office for a design mark consisting of an angled paw print for the use with its products, clothing, footwear, and accessories. Appellee, New Millennium Sports filed a response to oppose the application as it would likely create confusion with its own registered mark. In response, Jack Wolfskin filed a counterclaim for cancellation of New Millennium’s mark since they have abandoned said mark. The Patent Trial and Appeals Board found for New Millennium Sports, stating there was no abandonment of the mark. The Federal Circuit Court of Appeals agrees with the Board and New Millennium in finding no abandonment has taken place.                            

New Millennium Sport have a registered trademark, Registration No. 1,856,808 (KELME Mark), which can be seen here. Displaying the word “KELME” next to a paw print. New Millennium sports started using a modern version of the mark after obtaining a registration. From this new use, Jack Wolfskin thought the new use constituted abandonment of the actual registered mark, hence filing for a registration similar to New Millennium’s mark within the same classification. The updating of a mark is called “tacking” and the use of tacking can create an opportunity for individuals to file for a cancellation of registered marks based on tacking or modernizing. But the courts have decided that tacking can be used and no legal remedy should be sought if the tacking “creates the same, continuing commercial impression”. Van Dyne-Crotty, Inc. v. Wear-Guard Corp., 926 F2.d 1156, 1159 (Fed. Cir. 1991).

The court here finds that the tacking here bears the same mark consisting of the work KLEME on the left and a paw print on the right. Since the alteration is slight and maintains the “commercial impression” there is no difference and the mark used by New Millennium Sports was not abandoned.
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