DuetsBlog

Collaborations in Creativity & the Law

Are pretzel crisps crumbling into genericness?

Posted in Advertising, Articles, Branding, Food, Genericide, Loss of Rights, Marketing, Trademarks, TTAB, USPTO

Marketing types and legal types who review labels, be well advised to choose words used carefully.

In other words, if you believe you own rights in Pretzel Crisps as a trademark, it’s not wise to use the number of so-called “Crisps” as the serving size, especially with no trademark notice symbol.

Frito-Lay’s successful 2014 generic challenge (pretzel crisps = pretzel crackers), was appealed to the Federal Circuit by the claimed trademark owner Princeton Vanguard, now Snyder’s Lance.

We followed this case up to the Federal Circuit appeal, then watched on the sidelines for a while:

Our friend, John Welch, over at the TTABlog, did a nice job summarizing the Federal Circuit’s decision vacating the Board’s genericness decision, sending it back for another and closer look.

John also nicely summarized the Board’s second look too, once again ordering cancellation of the Supplemental Registration and sustaining the Principal Register opposition on genericness grounds.

I’d like to remind our faithful readers again about the danger of self-inflicted wounds that can kill a trademark, one example being generic use in the Serving Size portion of the Nutrition Facts labels:

Makes it hard to avoid admitting during the litigation “that ‘crisps’ can be used as a term” for “pretzel crackers,” and that “packages for its PRETZEL CRISPS products provide nutrition facts for a serving size of a stated number of ‘crisps.’” These admissions proved helpful to Frito-Lay.

Another danger, it appears, is the lower case lettering use by others in mentioning the “pretzel crisps” product, a multitude of references apparently unpoliced by the claimed mark owner:

“[W]e note that there are many instances in the record where the term ‘pretzel crisps’ is set forth in lower case, with no apparent reference to the term as a brand, or to Defendant, indicating an understanding by the relevant public that the term ‘pretzel crisps’ refers to a product rather than to a single producer thereof. We note that many of these excerpts, from business as well as industry publications, are the work of authors who indicate an understanding that a brand is referenced by use of uppercase letters. Yet they use lower case letters to spell ‘pretzel crisps’ . . .”

Does that focus validate trademark counsel’s desire to steer away from using lower case branding, given the Board’s focus on type style? Or, if carefully managed, might the ills still be avoided?

Stay tuned on Princeton Vanguard’s next move following this loss, will it appeal again? If so, as John rightly asks, which appeal route makes the most sense, Federal Circuit again, or federal district court this time?

What’s more, Princeton Vanguard has been busy at the U.S. Trademark Office, apparently planning for a worst case scenario if it were to lose all protection for the bare wording “pretzel crisps” for “pretzel crackers,” which is where things stand for the moment. It has filed two new standard character word marks for slightly different goods, instead of “pretzel crackers”: “Peanut butter-covered pretzel snacks,” and “Chocolate-covered pretzel snacks.” And, this script for bare-bones “pretzel crackers”:

What say you, are the different goods descriptions enough to avoid genericness, and is the above shown script unique enough to permit exclusive ownership of a generic set of words?

Or, is it a little too light in the creativity department to infuse exclusive ownership potential into generic wording?

These questions will decided at some point along the line, since Frito-Lay has opposed these applications too.

“Let’s Play:” DMCA Takedown Notices and Game Developer Acquiescence

Posted in Copyrights, Fair Use, Infringement, Mixed Bag of Nuts, Technology

There is an entire gaming sub-culture developed around watching others play video games.  I’m not talking about gathering around the Game Cube in your friend’s basement and passing the only controller.  “Let’s Play” videos are game play videos made by players and posted or streamed online.  The videos usually include the players’ own running commentary, which typically offers sarcasm, loud noises, bad jokes, profanity, and occasionally helpful tips.

The concept of Let’s Play videos has been around, in various forms, as long as recording devices and screen captures have allowed gameplay documentation.  Today, some players make a sizeable living from Let’s Play video ad revenues.  Felix Kjellberg, whose YouTube name is PewDiePie, is easily the most well-known Let’s Play vlogger.  With over 50 million YouTube subscribers, PewDiePie was named the highest-earning YouTuber in both 2015 and 2016.

A screenshot from PewDiePie’s Let’s Play video for the game Dark Souls

Despite their popularity, however, the legality of Let’s Play videos is on shaky ground.  Each video features a reproduction of copyright-protected images from a video game.  The videos also typically feature the player’s voiceover and a small window showing the player’s reactions (see above example).  If not a pure reproduction of copyright-protected material, the videos are at least a derivative work.

Some have argued that Let’s Play videos are protected fair use.  Statutory examples of fair use include criticism, comment, news reporting, and a few others.  Arguably, the gaming videos may be a form of commentary, as at least some of the videos do include commentary on the copyright-protected images themselves.  However, these statutory categories are only examples, and fair use is decided on a case-by-case consideration of six factors.  The transformative nature of the videos may weigh in favor of fair use.  That is, rather than a video game, Let’s Play videos provide video playback of one user’s gameplay with added commentary.  At this point, it is largely unclear whether these videos constitute fair use, and will likely remain so until a court has the opportunity to give guidance.

Whether Let’s Play videos are rampant infringement or protected fair use, video game developers have largely chosen a hands-off response. PewDiePie’s videos provide free advertising for the game developers to 50 million subscribers.  The videos give potential players an opportunity to preview gameplay and graphics before purchasing.  Because the draw of a video game is in active play, this likely does not take away from the game developers’ bottom lines.

This week, however, one video game developer reminded PewDiePie of the unstable footing on which his vlogging fame rests. A recent PewDiePie video included some racist commentary.  Unfortunately, it isn’t PewDiePie’s first misstep of this type.  Though this particular incident ruffled the wrong game developer’s feathers.  In a series of tweets, a co-founder of Campo Santo—developer of the game Firewatch—condemned PewDiePie’s statements and vowed to file DMCA takedown notices for PewDiePie’s Firewatch videos.

The Firewatch creator stated “I am sick of this child getting more and more chances to make money off of what we make.”  In apparent reference to the legalities, he said “[t]here is a bit of leeway you have to have with the internet when [you] wake up every day and make video games. There’s also a breaking point.”

This game developer’s response illustrates developers’ power with respect to the success of Let’s Play videos, and more generally highlights the power afforded copyright holders by the DMCA. The Firewatch creator’s takedown threat was an apparent result of his personal disgust at PewDiePie’s racist remarks, and did not relate to any new discovery of infringement.  Like other game developers, Campo Santo was well aware of Let’s Play videos.  Instead of using takedown notices to eliminate infringing content, the developer here is using the DMCA to dictate how PewDiePie infringes its content.  With the help of DMCA takedown notices, developers like Campo Santo can stand back in acquiescence, striking only when the infringement becomes inconvenient.  I wonder if the DMCA drafters anticipated this type of selective enforcement by copyright holders.  In a litigation setting, this practice may even raise the possibility of equitable defenses to infringement.

The Five-Finger Copyright Discount

Posted in Audio, Copyrights, Fair Use, False Advertising, Guest Bloggers, Infringement, International, Loss of Rights, Social Media

–James Mahoney, Razor’s Edge Communications

Recently violinists Rhett Price and Shiva Chaitoo got two very different lessons on the downside of posting performances on the Internet.

According to an article in The Boston Globe, a fan of Price alerted him to a video of Chaitoo’s playing. Turns out, Chaitoo was pulling a Milli Vanilli, fingering his violin over a sound-track of Price’s recordings. And he’d been doing it for at least a couple of years, and getting paid gigs from people who’ve seen the vids or his “live” performances.

Long story short: Price isn’t looking for anything more than for Chaitoo to stop his “tribute.”

What’s really interesting about the situation, though, is the copyright aspect of it, and the apparent lack of legal remedies available to Price.

According to Paul Litwin, a partner of Shames & Litwin entertainment lawyers, when Price posted his videos on YouTube and offered free downloads in exchange for email addresses, he essentially granted some use-rights. YouTube’s terms of service include “a worldwide, non-exclusive, royalty-free, sub-licenseable and transferable license to use.”

Litwin says, “If you buy and download a song, you can pretend to play and sing along with it. By posting his music on YouTube, Rhett is allowing the YouTube community to use it. [Chaitoo] isn’t saying he’s Rhett, so from a legal standpoint, he does not appear to be infringing copyright laws.”

Really? The YouTube T&S notwithstanding, it seems to me that this would usually come under fair-use category. Since Chaitoo used it for a marketing tool (and probably also “performed” the tracks at his paid gigs), I think he hit some very sour copyright notes. There’s a world of difference between playing air-violin in your living room and what Chaitoo did.

As I’ve mentioned often before, I’m no lawyer (though I play one in the living room by reading aloud Steve Baird postings as if they were my own), so what do you knowledgeable folks think about both the situation and Lawyer Litwin’s assessment?

And one final factor to consider: Chaitoo lives and works in Trinidad and Tobago, which may complicate the copyright issue and Price’s available recourse.

Long Trail Brewing Tells Burton to TAKE A HIKE!

Posted in Agreements, Branding, Fashion, Law Suits, Marketing, Trademarks

What happens when a clothing manufacturer starts selling graphic t-shirts and sweatshirts, perhaps without doing a proper trademark search?  Sometimes a lawsuit.

A trailblazing brewery when it comes to trademark disputes, Long Trail recently sued snowboard manufacturer and fellow Vermonter Burton for using TAKE A HIKE on shirts and sweatshirts.  Here’s an example of one of the offending sweatshirts:

Long Trail owns U.S. Trademark Registration 3,637,458 for TAKE A HIKE! for shirts, short-sleeved shirts, and sweatshirts as shown only here on their website.

Two days after Long Trail sued Burton, the parties apparently settled it with Burton agreeing to cease use of the mark on these products.

So would you be confused by Burton’s use, just looking at the examples above?   Does TAKE A HIKE! even function as a trademark?  Does it indicate the source of goods or services to you, or is it merely ornamental?  Should Burton have turned around and said “No, you take a hike!”?

Burton does not appear to be the only one using the phrase “Take a Hike” on a graphic element on a shirt.  Target, Saks Off 5th, and Macy’s websites all have shirts or sweatshirts currently available for purchase bearing TAKE A HIKE – including one from The North Face.  Then there’s Amazon, where a quick search reveals over 700 search results for “Take a Hike” apparel.  This seemingly pervasive third party use suggests that the mark may not be source identifying.

Federal registrations provide a statutory, but rebuttable, presumption of the owner’s exclusive rights in a mark.  Without their federal registration of TAKE A HIKE! here, Long Trail may have experienced a more grueling climb to establish its rights in the mark before it could convince Burton to turn around.

While breweries sell plenty of cool swag, few go through the process of filing federal trademark applications on apparel, glassware, or even key chains.  There are over 12,000 live applications and registrations for breweries on “beer,” but there are less than 800 live applications and registrations owned by breweries for apparel or glassware.  Even Long Trail did not file for their LONG TRAIL mark on many of their goods until last year.  If you are a brewery, you may want to consider filing on important goods to your business other than beer, especially on your house brand like LONG TRAIL, as part of an overall filing strategy.

Federal Trademark Registration, the First Amendment, and Freedom of Speech: Part II

Posted in Articles, Copyrights, Dilution, Famous Marks, First Amendment, Trademarks, USPTO

As the drum roll proceeds to the upcoming Midwest IP Institute in Minneapolis and sharing the podium with Joel MacMull of the Archer firm (and Simon Tam fame) on Thursday September 28, in a few days, I’ll be making a stop south of the border, at the University of Iowa College of Law, where it all started for me in the law, to share some thoughts on this topic with the Iowa Intellectual Property Law Society on Friday September 15, here are the details to attend.

In the meantime, here is my second installment on the important topic of Federal Trademark Registration, the First Amendment, and Freedom of Speech: Part II.

I’ll call it part of a continued, controlled Tam catharsis, with more food for thought and discussion of where the law is heading, especially with forthcoming Part III, exploring the implications of the Supreme Court’s Tam decision, especially the future of federal trademark dilution law.

As you may recall, Part I questioned the Supreme Court’s characterization of Section 2(a) as banning speech and the Court’s conflation of the federal government’s issuance of a trademark registration (and corresponding meaning of the resulting Certificate of Registration, issued in the name of “The United States of America,” and corresponding meaning of the federal registration symbol — ® — which cannot be used lawfully unless granted federal registration unlike © and ™) with the meaning of the underlying trademark subject matter sought to be registered.

As it turns out, the learned Professor Christine Haight Farley of American University Washington College of Law similarly recognized: “A broader critique is that the [Tam] court seems often to be speaking of trademarks when the issue before it is limited to the registration of trademarks.”

With Part II, while admittedly not having all the answers, I thought it might be productive to ask some probing questions about the Court’s decision to provoke further discussion and guidance:

  • Why didn’t the Tam Court acknowledge that the normal and historical operation of trademark law actually facilitates the complete suppression of certain speech, perhaps justifying special treatment and a unique approach from its typical First Amendment and Free Speech cases?
  • Why didn’t the Tam Court acknowledge the material difference in kind struck by Congress between denying registration on the one hand and enjoining and/or punishing trademark use on the other hand, as only the latter truly qualifies as a ban on speech?
  • Why didn’t the Tam Court acknowledge that our entire federal trademark law flows from the U.S. Constitution too? In particular, the Commerce Clause (Article I, Section 8, Clause 3), granting Congress the power: “To regulate Commerce with foreign Nations, and among the several States, and with the Indian Tribes.”
  • Why did the Tam Court not acknowledge that a Certificate of Registration is issued by the USPTO, under authority of the Department of Commerce, “in the name of the United States of America,” under Section 7 of the Lanham Act, and instead proceed to mock the governmental speech argument without addressing or attempting to explain away this difficult fact?
  • Did the Tam Court gloss over the language in Walker v. Texas Division, Sons of Confederate Veterans, Inc., noting “government statements (and government actions and programs that take the form of speech) do not normally trigger the First Amendment rules designed to protect the marketplace of ideas”?
  • Why did the Tam Court not feel compelled to explain how and why the government actions of approving or disapproving marks for registration somehow does not take the form of speech?
  • Was it disingenuous for the Tam Court to say “trademarks are private, not government speech,” when it was apparently unwilling to specifically and directly say that the government’s act of registering a trademark, issuing a Certificate of Registration (in “the name of the United State of America”), and placing a trademark on the Principal Register, is not government speech?
  • Isn’t the proper comparison in Walker and Tam, the state government’s direct control over specialty license plates and the federal government’s direct control over Certificates of Registration and the Principal Register, so isn’t it a red herring to emphasize that the federal government doesn’t “dream up” the applied-for marks, since Texas didn’t “dream up” the multitude of specialty license plate designs either?
  • Doesn’t the federal government, through the USPTO, edit, modify, and amend applied-for marks (through required disclaimers, description of goods/services changes, description of the mark changes, and drawing changes, etc.), at times, to place them in proper condition for approval, making the Tam Court’s attempt at distinguishing Walker v. Texas less compelling?
  • Why was the Tam Court more willing to limit Walker v. Texas to its facts than upholding the disparagement bar in Tam as facially constitutional, and then limiting Tam to its facts, in the unlikely event the hypothetical concern of Congress attempting to amend the Copyright Act to refuse similar matter ever would arise in the future?
  • In other words, why was the Tam Court so willing to embrace the hypothetical concerns of the false Copyright comparison with a multitude of ways to fairly distinguish from trademark?
  • As to the concern of chilling speech by denying federal registration, isn’t it telling that during the entire more than 100 year history of federal registration in the U.S., only some 5 million federal registrations have issued, which most certainly is a drop in the bucket to the number of eligible unregistered marks in use throughout the same period of time?
  • The Tam Court relied, in part, upon a perceived “haphazard record of enforcement” of the disparagement bar, how difficult would it be to develop evidence showing a similar “haphazard record” in applying other statutory bars found in federal trademark law?
  • How can the Tam Court actually resist saying that trademarks are a form of commercial speech, when it previously held in Friedman v. Rogers that the use of trade names “is a form of commercial speech”?
  • Why didn’t the Tam Court ever once mention “public policy” or the “unconstitutional conditions” doctrine in its decision?
  • Did the Tam Court focus its sights on “viewpoint” as a way to avoid implicating too many other content based restrictions in the Lanham Act as becoming vulnerable to First Amendment challenges?

Stay tuned for Part III, as the Tam Court’s focus on “viewpoint” is the likely key to unlocking what additional portions of federal trademark law are vulnerable to future First Amendment challenges.

A Special Thank You to Suzan Shown Harjo

Posted in Articles, Branding, First Amendment, Law Suits, Marketing, SoapBox, Trademarks, TTAB, USPTO

Today marks the 25th anniversary of the filing of the petition to cancel the R-Word registrations held by Pro-Football, Inc., the NFL franchise playing near the Nation’s capital.

Indian Country Today has published an interview with Suzan Shown Harjo, lead petitioner in Harjo et al v. Pro-Football, Inc., and organizer of Blackhorse et al v. Pro-Football, Inc.

Thanks to Indian Country Today and Suzan Shown Harjo for sharing this interview. Its documentation of history is so important for anyone who cares where we’ve been as a country and where we’re headed; it is valuable and timeless, powerful and compelling.

I’m so thankful to Suzan for the opportunity to play a small part in this long yet unfinished history, and here is a photo of us together on May 15, 2015, at a conference in Hinckley, Minnesota, during a celebration honoring her lifetime of advocacy for Native peoples:

Suzan’s heretofore and ongoing work is truly remarkable and a testament to who she is, even in the face of ignorant vitriol, and to how many lives she has touched and continues to touch in such a profound, generous, and meaningful way.

As I reflect on the historic petition to cancel we filed together on September 10, 1992, one thing I can’t get out of my mind is the national press conference question I answered from the Washington D.C. press corps, something like “what about the First Amendment?”

As I recall, my response was, something like, the beauty of this cause of action is that the First Amendment is not implicated because removing the federal government’s erroneous approval of the racial slur doesn’t compel the team to change the name, having said that, it is of course our hope that the team does the right thing and pick another name.

Who could have guessed it would take nearly a quarter century to reverse prior court of appeals precedent (McGinley) saying Section 2(a) did not violate Free Speech or the First Amendment, and then to have the Supreme Court agree that refusing federal registration of disparaging matter under Section 2(a) of the Lanham Act is viewpoint discrimination and a violation of Free Speech.

Thankfully much awareness has been raised and good has been done over the past quarter century, while the NFL and Washington franchise double down together on their joint investment to retain exclusive rights in a racial slur.

Hopefully with increased awareness raised and the movement and pressure continuing, we won’t have to wait another quarter century for justice and clearer thinking on this issue by the NFL, FEDEX, and other NFL sponsors, if not Daniel Snyder himself.

As I reflect back a quarter century ago, to the day, it was never about banning the team’s Freedom of Speech, it was about removing the federal government’s approval of a racial slur as a federally-registered trademark, and providing team ownership with a financial incentive to reconsider their choice to ignore the obvious, as Suzan has noted:

“We liked the approach of a pocketbook incentive case that did not force a name-change, but counted on the greed of the team owner to drop the name if exclusive federal trademarks were cancelled.”

“The pocketbook approach put things squarely where pro sports differed from educational sports: money. In most name and symbol changes made in educational sports, we had a way of discussing the issues and solutions, because there almost always were educators and officials who genuinely cared about the well-being of the students. In pro sports, even the health and safety issues seemed focused on liability and not on human beings, and some paid fans seemed physically provocative, while others seemed orchestrated online to attack and defame those of us who were challenging the NFL franchise in orderly legal forums.”

“Another reason I liked the pocketbook approach was that it didn’t impede anyone’s free speech. I was at WBAI-FM  in 1973, when the “seven dirty words” case started down the road to the Supreme Court’s 1978 ruling against free speech. The free speech flagship station of the Pacifica network, WBAI aired a cut from Comedian George Carlin’s “Class Clown” album and a listener complained to the Federal Communications Commission that his young son was wrongly exposed to dirty words. George Carlin’s “Seven Words You Can Never Say on Television” was based on an earlier routine by Comedian Lenny Bruce that was an excuse for one of his many arrests and jailings for using dirty words. The upshot of FCC v. Pacifica Foundation was that the federal government can restrict free speech in certain instances, the opposite of the Court’s 2017 ruling in The Slants case against the PTO, which rendered part of the trademark law unconstitutional as violative of the First Amendment. We never thought we were violating the NFL’s freedom of expression by using the same section of the trademark law.”

Ironically, as team owner Daniel Synder freely and proudly admits, the team’s ability and commitment to continue using the name will never change, even in the face of the mountain of evidence demonstrating its offensiveness and meaning as a racial slur, and even in the face of losing on the merits three times (twice at the TTAB, once at the E.D. Va.), or more.

So much for the Supreme Court’s concern that Section 2(a) actually chills Freedom of Speech, because according to Snyder, even after losing on the merits he has reaffirmed: “We will never change the name of the team,” “It’s that simple. NEVER — you can use caps.”

So, in the end, it is about the money, and the NFL clearly has had sufficient funds to defend the indefensible for a quarter century now, so isn’t it time FEDEX and other NFL sponsors step up and get on the right side of this issue, with their money? Let’s all follow the money.

Here’s to you Suzan, be well, Aho.

PSL® Season Is Upon Us

Posted in Advertising, Branding

Exult, lovers of autumn and decorative gourds – the air is crisp and the leaves are changing. And, in the treasured annual tradition, this week marked the release of Starbucks’ Pumpkin Spice Latte – or PSL® as they may prefer to call it.

In the spirit of the season, I sought to see if any zealous trademark applicants had sought to claim ownership over the phrasing “PUMPKIN SPICE” or “PUMPKIN SPICE LATTE.” Sure enough, there are a couple of notable marks – PUMPKIN SPICE CAPPUCCINO (a composite mark disclaiming all of the wording) and a pending application for YOU HAD ME AT PUMPKIN SPICE chief among them.

For its part, Starbucks itself seems to recognize the descriptive (if not generic) nature of the name for its most popular drink, a crucial spark to fall sales. But, it does hold a rather curious registration for PSL. The registration identifies “dairy-based food beverages; soy-based food beverages used as a milk substitute” and “coffee and espresso beverages; beverages made with a base of coffee and/or espresso.”

For its part, the Trademark Office did issue an information request during examination, asking Starbucks to “specify whether the letters ‘PSL’ have any significance in the foods or beverages trade or industry or as applied to the goods described in the application, or if such letters represent a ‘term of art’ within applicant’s industry.” Starbucks answered honestly enough, stating in its response:

The Examining Attorney has requested whether the letters PSL have any significance in the foods or beverages trade or as applied to the goods described in the application, or if such letters represent a “term of art” within Applicant’s industry. Applicant notes that the letters PSL stand for Pumpkin Spiced [sic] Latte.

Generally speaking, acronyms that connote descriptive wording are not registrable. According to the Trademark Manual of Examining Procedure:

As a general rule, an acronym or initialism cannot be considered descriptive unless the wording it stands for is merely descriptive of the goods or services, and the acronym or initialism is readily understood by relevant purchasers to be “substantially synonymous” with the merely descriptive wording it represents.

[. . .]

A mark consisting of an abbreviation, initialism, or acronym will be considered substantially synonymous with descriptive wording if: (1) the applied-for mark is an abbreviation, initialism, or acronym for specific wording; (2) the specific wording is merely descriptive of applicant’s goods and/or services; and (3) a relevant consumer viewing the abbreviation, initialism, or acronym in connection with applicant’s goods and/or services will recognize it as an abbreviation, initialism, or acronym of the merely descriptive wording that it represents.

So here, Starbucks has made of record evidence that PSL stands for Pumpkin Spice[d] Latte. And there’s replete evidence online of Starbucks creating an association between the acronym and the descriptive wording. But what did the Trademark Office do? Nothing – it approved the application for registration. And come 2020, the registration will no longer be eligible for cancellation on grounds of mere descriptiveness.

Are there PSL lovers at the PTO? Quite possibly. We’ll have to keep our eyes out this fall to see if Starbucks finds any enforcement targets for its (arguably) descriptive acronym.

An Iowa Rivalry Mixes Football, Farming, and Trademark Disputes

Posted in Keyword Ads, Squirrelly Thoughts, Trademarks

It sure feels like fall already. Apart from the fifty degree walk with my dog this morning, we’re now entering the second week of college football. Regular readers might have noticed that our blog has a couple of Iowa Hawkeye fans among the writers (Exhibits 1, 2, and 3). This week Iowa takes on their in-state rival, the Iowa State Cyclones. Without a professional sports team in Iowa, the college teams are the big draws throughout the state. While the rest of the country probably couldn’t care less, the game is a pretty big deal to native Iowans. For that reason, the rivalry creates some strong (and often pointless) arguments. The most recent argument involves two competing slogans around the state’s ties to agriculture that, at least according to some fans, borders on trademark infringement.

Although I’m sure you came here for an Iowa history lesson, I’ll keep the background brief. Beginning in the late 1970s running into the mid-1980s, farmers began suffering significant economic problems. Oil prices and interest rates rose while export volume and prices for farm commodities fell. Farmers’ debt rose, with significant numbers of foreclosures. It was against this backdrop that Hayden Fry, then head coach of the Iowa Hawkeye football team created the slogan “America Needs Farmers” or ANF for short. The ANF logo was placed on the Hawkeye helmets (image below):

 

More than thirty years later, the logo still appears on Hawkeye helmets, as well as in pretty impressive card stunts on select game days:

 

Like all “awareness” promotions, the ANF program has its detractors. The program is run in partnership with the Iowa Farm Bureau, which assists in the sale of a wide variety of merchandise. A portion of all the proceeds goes to Iowa’s food banks.

Some Iowa State Cyclone fans feel that the awareness and food bank donations are insufficient support for farmers. As one of the world’s top agricultural schools, the fans felt that Iowa State does a lot more to help farmers than the University of Iowa. A few years ago this led to one fan site to create the phrase “Actually Helping Farmers,” or AHF. It seemed that not much came from the phrase, until earlier this summer when second-year head coach Matt Campbell latched onto the #AHF acronym in a tweet, raising the ire of an Iowa Hawkeye fan site. Even making the Des Moines television broadcast.

Some fans have suggested that the dispute may cross the line into trademark infringement. I’ll set aside the importance of deciding which school helps farmers more (spoiler: there is nothing important about doing that), but I couldn’t not leap at a chance to spend my blog post writing about trademarks and my alma matter.

While there are only so many letters in the alphabet (26, to be exact), acronym marks are still subject to trademark protection. So does the University of Iowa have a case? It isn’t clear what exactly Iowa State is using the AHF acronym for, if anything. The coach’s inclusion of AHF as a hashtag in a tweet is unlikely to be actionable. The acronym seems to have been used for primarily for merchandise like t-shirts. For our sake, let’s assume Iowa State were to begin using AHF in the same way: a sticker on its helmets, widespread merchandising on everything from tree ornaments to window blinds. Would that create a problem, are the acronyms sufficiently similar?

Acronym marks are not given the same level of protection is non-acronym, inherently distinctive terms. However a party can assert an acronym mark against a third-party for use of similar acronym, even if a letter is different (they can even win, too!). For example, courts have found that VDS was confusingly similar to VCDS, both for video duplication services; CSC was found confusingly similar to CCC, both for electric wiring components; and I.A.I. was found confusingly similar to ISI, both for printed publications in similar scientific fields. As one court reasoned, ” it is more difficult to remember a series of arbitrarily arranged letters than it is to remember figures, syllables, or phrases, and that the difficulty of remembering such multiple-letter marks makes the likelihood of confusion between such marks, when similar, more probable.” Dere v. Inst. for Sci. Info., Inc., 420 F.2d 1068 (CCPA 1970).

As a result, the fact that ANF and AHF have different middle letters does not mean that there is no likelihood of confusion. The marks could, in fact, be confusingly similar depending upon the overall context in which they appear. But a lawsuit seems unlikely, as neither school likely wants to get dragged into a dispute over helping farmers. It’s not the best public relations event. Plus, we haven’t even touched on the possibility that Iowa State might prevail on an argument that the use of AHF is a parody. Although I haven’t considered the legal support for a parody claim, Iowa State has some experience in parody, having pretended to be a real football team for the last three decades.

Yet when the fourth quarter hits zero, I’d expect this debate to die down – until September 2018, that is.

Go Hawks!

 

Cheerios Registration Refused for Yellow Color Mark

Posted in Marketing, Mixed Bag of Nuts, Non-Traditional Trademarks, Product Packaging, TTAB

For the past couple years, General Mills has battled to register a yellow color mark in connection with its Cheerios® breakfast cereal.  More specifically, back in 2015, General Mills applied to register (Serial No. 86757390) the mark shown below, described as “the color yellow appearing as the predominant uniform background color on product packaging for the goods,” in connection with the goods “toroidal-shaped, oat-based breakfast cereal.”  (For those wondering, “toroidal-shaped” basically means doughnut-shaped.)  Below is the drawing of the mark:

The use of colors — even a single color alone — on a product or its packaging may be subject to trademark protection and federal registration. For example, in Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995), the Court held that the greenish-gold color of dry cleaning press pads was protectable as a trademark. As another example, in Christian Louboutin, S.A. v. Yves Saint Laurent America Holding, Inc., 696 F.3d 206 (2d Cir. 2012), the Second Circuit recognized that the use of red lacquered outsoles on shoes is a protectable trademark (provided that such protection is limited to shoes in which there is contrast between the red outsole and the adjoining shoe, and does not extend to monochromatic red shoes).

However, there are relatively steep requirements to obtain a trademark registration for a color mark. To obtain a federal registration for a color mark on the Principal Register, it must be shown that the mark has acquired distinctiveness (also referred to as secondary meaning). This is so because the U.S. Supreme Court has held that color marks can never be inherently distinctive as a source indicator, and therefore the applicant must submit evidence establishing acquired distinctiveness. Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 211-212 (2000) (citing Qualitex, 34 USPQ2d at 1162-63); see TMEP § 1202.05(a). Also, as with other types of marks, registration for a color mark will be refused if the mark is functional, such as where there is a utilitarian advantage (e.g., yellow or orange for safety signs), or where a certain color is more economical or competitively advantageous (e.g., where a certain color is a natural by-product of manufacturing, and using other colors would be more expensive). See TMEP § 1202.05(b).

A couple weeks ago, General Mills received some bad news from the Trademark Trial and Appeal Board (TTAB), which affirmed a refusal to register the applied-for yellow color mark, shown above. In re General Mills IP Holdings II, LLC, Serial No. 86757390 (TTAB Aug. 22, 2017) (precedential). The Board recognized the extensive body of evidence submitted by General Mills, showing the company’s longtime, expansive efforts to create an association between the yellow product packaging and the Cheerios® brand cereal. See id., slip op. at 5-9. For example, numerous print and television advertisements focused on the yellow product packaging, or specifically referred to the phrase the “yellow box” or the “big yellow box.” Id. at 7. However, the Board emphasized that “no matter how hard a company attempts to make an inherently nondistinctive word or symbol serve as a unique source identifier, it is proof of results—that consumers so perceive the purported mark—that is the touchstone of our inquiry into acquired distinctiveness.” Id. at 8.

In the end, the primary basis for the Examining Attorney’s refusal, and the TTAB’s affirmance of that refusal, was the lack of substantially exclusive use of the color yellow by General Mills. Id. at 11-21. The record established that several competitors offered the same goods–toroidal-shaped, oat-based cereals–in yellow, rectangular packaging of similar proportions, such as the brands Trader Joe’s, Meijer, Wegmans, Nature’s Path, One Degree, Ralston, and Barbara’s. See below the product packaging for those cereals:

The TTAB reasoned that “Applicant is not alone in offering oat-based cereal, or even toroidal-shaped, oat-based cereal, in a yellow package,” and that “[t]he presence of products of this type in the marketplace interferes with the development among relevant customers of a perception that the color yellow on packaging indicates that Applicant is the source of the goods (or that there is any single source of such goods).” Id. at 16. The TTAB also referred to numerous other yellow boxes for various types of oat-based cereals that, even if not “toroidal-shaped,” which further detracted from any public perception of yellow packaging as a source-indicator for Applicant, as cereal manufacturers commonly offer many different brands and varieties of cereals side-by-side in stores. Id. at 17-18.

Therefore, the TTAB concluded that “the number and nature of third-party cereal products in yellow packaging in the marketplace [is] sufficient to convince us that consumers do not perceive the color yellow as having source-indicating significance for [Applicant’s goods].” Id. at 19.

What do you think about this decision? Separate and apart from the name “CHEERIOS” itself, do you associate predominantly yellow product packaging with General Mills and its (doughnut-shaped, oat-based) cereal?

2017 Minnesota State Fair Comes to a Close

Posted in Advertising, Articles, Branding, Fair Use, Loss of Rights, Marketing, Trademarks

Well, it’s official, the 2017 Minnesota State Fair is almost in the books now, it came and went, without the longstanding Original Deep Fried Cheese Curds stand (notwithstanding a heroic #savethecurds campaign); it was instead replaced by Big Fat Bacon, shown above.

Love the prominent use of the TM on the signage, even if it isn’t backed by a federal trademark application, notwithstanding a multitude of other Big Fat players in the trademark world, including, but not limited to, Big Fat Lye for soap, Big Fat Pita for a restaurant, Big Fat Cookies for cookies, Big Fat Burritos for a restaurant, My Big Fat Greek for a restaurant, and Big Fat Sausage for sausage, all enjoying peacefully-coexisting federally-registered status.

I’m left wondering whether the Big Fat Bacon team might be apprehensive about seeking federal registration in light of the Big Fat Sausage registration, if so, let’s just say, where there’s a will there’s a way. Another suggestion, for the suggestion box, next year, how about a well-done crispy Big Fat Bacon option, needing no stick or other pork-belly support?

And, the business of recycling branded product containers remains alive and well at the Minnesota State Fair, apparently not time for night, night yet:

Finally, a pair of his and hers Google t-shirts — unlikely to both be worn, at least peacefully, in the same home at the same time:

We couldn’t find a third option, and passed. For the latest on the trademark challenge to the Google trademark, on genericness grounds, check out the report at Trademarkology.