DuetsBlog

Collaborations in Creativity & the Law

Flash in the Panama

Posted in Law Suits

Many of you may have heard recently that (in)famous dictator and all-around terrible (misunderstood?) person Manuel Noriega has sued Activision.  According to the LA Times:

In a lawsuit filed Tuesday in Los Angeles County Superior Court, Noriega alleges that “Call of Duty: Black Ops II” portrays him as “a kidnapper, murderer and enemy of the state.” This was done “to heighten realism in its game,” which “translates directly into heightened sales” for Activision, the lawsuit states.

Noriega, 80, is seeking lost profits as well as damages. His attorneys did not respond to requests for comment.

Much has been written already about this lawsuit.  (See, e.g., BloombergBBC  Reuters, and NY Post).  Reactions to the lawsuit have been mixed; initial disbelief and head shaking eventually gave way to an examination of the relevant legal elements by law professor Eugene Volokh of the Volokh Conspiracy blog.

People’s initial reaction of “WTF?” likely results from their understanding of the atrocities and crimes committed by Noriega.  Noriega’s convictions (according to CNN”s Fast Facts)–not just accusations and suspicions–include:

  • Eight counts of drug smuggling and racketeering
  • the murder of Dr. Hugo Spadafora (whose decapitated body was found in a sack in the jungle)
  • the murder of Major Moises Spadafora
  • money laundering

Unsuprisingly, people are disturbed to think that someone with a Greatest Hits album like Noriega could resort to U.S. Courts to obtain millions of dollars in legitimate video game profits. Notwithstanding Professor Volokh’s suggestion that Noriega’s claim potentially has merit, I think this case would be a perfect opportunity for the invocation of the doctrine of unclean hands.

For those of you non-lawyers out there, unclean hands is a legal doctrine which basically exists to prevent a plaintiff from profiting from wrongful conduct.  While different state courts describe the doctrine slightly differently, at least one California case provides that, “Any conduct that violates conscience, or good faith, or other equitable standards of conduct is sufficient cause to invoke the doctrine,” so long as ”the misconduct that brings the clean hands doctrine into play…relate[s] directly to the cause at issue.”  Kendall-Jackson v. E&J Gallo Winery, 90 Cal.Rptr.2d 743, 76 Cal.App.4th 970 (Cal. App. 5 Dist., 1999).

In this instance, Noriega is undoubtedly included in the game due to his abhorrent transgressions as the military dictator of Panama.  He’s a notable public figure not because of any positive behavior, but because of his thuggish past.  As the LA Times article notes, he’s accurately portrayed as “a kidnapper, murderer and enemy of the state” to bring “realism” to the game.  I can’t imagine a court effectively rewarding him for his past crimes by allowing him to succeed on a right of publicity claim.  It would be like giving Charles Manson royalties for the Helter Skelter movies.

NONPROFIT BRAND TINTED WITH – NOT TAINTED BY – LEGAL

Posted in Branding, Goodwill, Guest Bloggers, Infringement, Mixed Bag of Nuts, Trademark Bullying, Trademarks

- Abby V. Reiner, Brand Director, Wounded Warrior Project

Fine (red) Lines

Nonprofits walk a fine line between wanting everyone to feel a part of the mission without allowing everyone to use its trademarks resulting in dilution or infringement of the brand. Sometimes the very well intentioned can do more harm than good. When a nonprofit protects the integrity of its brand and assets, it unfortunately must contend with the negative public relations ramifications, justified or not. So how can a nonprofit proactively walk that fine line? The brand community needs to elevate the conversation about the legal side of brand protection for nonprofits.

Design, color palette, logo, personality, promise, rebrand, experience, engagement, equity – these are some of the words and concepts in which many lovers of brand have been so engrossed. But as brand managers evolve into those of a strategic asset, so must their vocabulary.

TRADEMARK! INFRINGEMENT! FRAUD! Traditionally viewed as the dark side of brand where lawyers dwell and PR professionals remain on their toes, intellectual property and the protection and management thereof is a place of which we brand folks should be well aware. Unfortunately, not enough brand managers and executives are talking about the strategy of managing both brand and intellectual property challenges.

The brand and legal disciplines, and subsequent strategies written around them, reside in relatively distinct arenas. Nonprofit brand research doesn’t uncover anything terribly dissimilar to for-profit brand research. Both sectors use the same buzzwords and concepts to build the brand, make it relevant, deliver on brand promises, etc. But research of “intellectual property” very narrowly uncovers the subject and subsequent strategies in the legal and for-profit arenas. A non-lawyer in the nonprofit industry (eh hem…me), responsible for the organization’s trademark portfolio, could lose their way in complex and abstruse intellectual property legalese, and/or be unable to easily or readily relate the available information to the nonprofit industry.

To Trust or Not To Trust

There is a fascinating dichotomy between trust and protection. Across all brands, both for-profit and nonprofit, the element of trust reigns supreme. An organization builds a brand based on its constituents trusting in the product, service, ideals, and/or vision. The brand is now valuable. It means something to people. The organization means something to the very people it’s trying to serve. The organization must protect that value, that meaning. Yet, protecting what is so valuable can actually and often erode trust. For example: Cue the knight in shining armor to ward off anyone who dare threaten brand value and the deep emotional, personal meaning the brand has built so thoughtfully for so many. All hail the protector! But wait…he hasn’t a sword? He’s armed with a “cease & desist?” Well that tool is too harsh. What the knight is protecting has grown too large for the taste of some. The knight is now declared a “trademark bully.”

Brand is about building trust. As it concerns trademark usage, however, there is an odd and apparent breakdown in consumer expectations that occurs with nonprofit supporters. Many supporters feel entitled to “use” a nonprofit’s trademarks to promote the nonprofit, drive sales of products that may result in donations to the nonprofit, promote the individual or commercial entity using the trademark, or to promote a similar-in-mission charity of less prominence.

Can we draw any comparisons between stakeholders (for profit) and donors (nonprofit)? Is there a feeling of entitlement dependent on how one is “invested” in the organization? Or does the level of awareness of a wildly successful for-profit company’s famous logo, for example, raise it to such a revered, iconic status that nobody dares mess with it? (Clearly with the exception of “professional” counterfeit folks, for whom I’ll leave a retail brand expert to expound upon.) And if people use the famous logo without permission and the for-profit brand says “no” or “take that down,” why does the media not accuse the for-profit brand of aggressive trademark practices, whereas Susan G. Komen for a Cure®, for example, has faced similar allegations with headlines like “Is Susan G. Komen for a Cure® a trademark bully?”

You Big Bully

What happens when the trademark owner takes protecting their trademark too far as to be deemed as domineering? The best examples of crossing the line can be witnessed with non-profit organizations.”

Why are nonprofits criticized for protecting their trademarks in the same manner a for-profit protects its portfolio? Too often and at the peril of some nonprofits, the worlds of brand and legal exist in separate arenas, and more strategies that integrate the two must be developed for nonprofit brand professionals. The more professionals are armed with this knowledge, the more information is disseminated into the media and general public to further explain the “why” behind brand and trademark protection. This public education may also further build trust rather than erode it.

Blurred Lines

Customers are no longer just consumers; they are co-creators. They are not just passive members of an audience; they are active members of a community. They want to be part of something; to belong; to influence; to engage. They want to be right there WITH you. Purpose needs to be shared. However, this brand-homerun-level of engagement blurs the lines and potentially how people define and interpret “ownership.” It makes grey in the relationship between customers and companies, the feeling of ownership (and thus use) versus actual ownership (and thus legal right to use).

Thankfully, nonprofits are increasingly moving away from using the brand as a purely fundraising and PR tool, to that of a critical strategic asset. Instead of having responsibility for the brand reside within the marketing, communication, or fundraising, as a key strategic asset, responsibility for the brand resides with the entire executive team.

Paramount to the success of that shift is a more well-rounded definition, understanding, and education of brand’s function outside of marketing, communication, and fundraising. By definition, a brand is such because it has a unique identity. Without an understanding of how to create, protect, and manage that unique identity in the eyes of the law, an organization could very well lose it.

No Such Thing As Bad Publicity?

To protect and maintain brand value, some attorneys may advise vigilant trademark monitoring and enforcement. But chasing down every unauthorized trademark use is time-consuming and expensive — and ultimately, counterproductive. There is an inherent increased risk factor to nonprofits conducting the same monitoring and enforcement activities as for-profits due to the nature by which nonprofits are “judged.”

Conversely to the negative attention, nonprofit brands rely heavily on the media to efficiently and effectively raise awareness for their cause. Widespread media coverage of the Indian Ocean tsunami in 2004, for example, triggered the largest outpouring of international aid ever seen. There must be a balance struck between brand exposure and brand protection; and an elevated discourse, understanding, and shift in how nonprofits are judged.

The End

The brand is not an end unto itself, but rather a tool to continue to fulfill the mission. And trademarks serve as a shortcut (positive or negative) for the public to judge the quality of charitable services, the caliber of programs, and the credibility of information provided. Policing your trademarks is not an option. It’s an affirmative, legal duty.

Fly the Tasty Skies

Posted in Branding, Fashion, Guest Bloggers, Marketing, Mixed Bag of Nuts, Trademarks

- Nancy Friedman, Wordworking

In mid-June JetBlue, which since its first flights in 2000 had been a single-class “value” airline, introduced its version of first-class service. To signal this departure—forgive the pun—it didn’t give the service a category name such as JetBlue Business. Nor did it follow its own naming conventions and build on the parent name, as with TrueBlue, the airline’s rewards program. Instead it chose a metaphorical, one-word route and named the new “premium coast-to-coast experience” Mint. The logo is a stylized mint leaf; the web copy and press release are full of minty wordplay—refresh-mint, entertain-mint, Mintroducing.

JetBlue isn’t the first or only airline to pick a name from the produce aisle. Last year, AirAsia Japan rebranded as Vanilla Air, a name intended to convey purity and innocence as well as “emotional excitement.” In 2011, a new budget airline called Peach made its debut, also in Japan. SpiceJet operates domestic and international flights from India; Mango is a state-owned South African budget carrier.

These botanical names are miles away, stylistically and semantically, from traditional airline names, which were derived from their origin (Delta, Alaska, Air France), their range (Pan American, Trans World, Southwest), or their pedigree (KLM is the Dutch initialism for Royal Dutch Air; Lufthansa combines the German words for “air” and “Hanseatic League,” the confederation of Northern European merchant guilds that formed in the late Middle Ages).

Old-style airline names, in other words, told passengers where they were going. The new, evocative names tell passengers how the journey will feel.

The shift actually began three decades ago, with Virgin Atlantic (and later Virgin America). An airline whose name suggested inexperience? Shocking! The very boldness of the name said “We’re completely different from the competition.” JetBlue’s name, while less cheeky, also signals a break with convention and an appeal to the senses; “blue” connotes sky and serenity rather than a specific point on the map.

It’s probably not a coincidence that as airline names have evolved to be more playful and appetizing, most people’s experience of air travel has become the opposite: long, grim lines; manhandling by security agents; shrinking cabin space; surcharges for “amenities” that used to be standard features. The names, by contrast, are the verbal equivalent of air freshener. Inhale that Mint aroma! Take a whiff of Vanilla!

It isn’t only the airline industry that’s finding names in the farmers’ market. Earlier this year ING Direct, which had been bought by Canada’s Scotiabank in 2012, rebranded as Tangerine. (The new name was developed by Sausalito, California, branding agency Lexicon, which has some experience with out-of-context fruit: in 1998 it developed the BlackBerry name.) Southern California–based TomatoBank, which serves wealthy Chinese immigrants, has a red tomato logo. When TomatoBank’s chairman changed the name from InterBusiness Bank in 2006, he explained the decision thus: “It is an attractive brand name that brings to mind images of growth, multi-culture and health, all characteristics that represent who we are and what we strive to achieve. But most importantly, it is a brand that is recognizable and hard to forget. If there can be an Apple Computer—why not a TomatoBank? Try to forget it. You can’t!”

And there’s a veritable orchard of “plum” names: American Express’s deep-purple Plum card; the RedPlum shopping-coupon company; Plum, a magazine for pregnant women over 35; and Freshplum, which enables online retailers to offer exclusive discounts to customers.

Fruity, evocative names have long been commonplace in style-driven industries. Think of the non-airline Mango, a global chain of fashion boutiques; or Juicy Couture, the upscale casual-wear brand. And a stroll through a paint store can make you downright hungry: right now I’m looking at color chips labeled Pineapple, Cool Cucumber, Crème Caramel, Cake Crumbs, Almond Sugar, and Banana Split.

But unlike fashion and home décor, air travel and banking long ago stopped seeming glamorous or gracious. Names like Mint, Tangerine, and Plum represent attempts to bring the fun back. By making ordinary or anxiety-producing activities seem yummy—and even exotic—the new fruit names distract us, tempt us, and fill our brains with appetizing sensory associations.

Is it too much to hope that the brands behind those names will deliver on those tasty promises?

Airing a new logo: Airbnb

Posted in Branding, Trademarks

For those of you who are into traveling, you are probably very familiar with the trendy Airbnb, a travel site that lets you book a stay at someone’s home instead of a hotel.  They are part of a growing trend of websites making the user’s travel booking experience easier, more exotic, and more economical.  EatWith and some other sites allow you to book a dining experience in a local’s home and make new friends.  Boatbound lets you rent a yacht, and SideTour lets you sign up for unique experiences with locals and other travelers.  There’s also Adioso, an amazing flight booking site developed by guys with a passion for traveling that’s better than anything you can get from Kayak or Expedia.  Want to take a trip in November from Minneapolis St. Paul, but don’t know where?  It will show you locations based on price.  Even if you’re not looking for a flight in the immediate future, it’s worth it to check out Adioso’s experiences blog and their wanderlists, and if you’re like me, you’ll soon find yourself looking at flights.

This week, Airbnb re-branded.  Here is their old logo.  The script is airy, bubbly, and cloud-like.

And here is their new logo that I’ve put in black and white:

At first glance, I think it looks like a paperclip or an upside-down heart.

Social media and bloggers however found something else in the symbol.  Apparently thought it looked like, putting it delicately, “lady parts,” putting it bluntly, a vagina or boobs – which is interesting given its history of being used as a portable brothel.

Their CEO Brian Chesky called it “a universal symbol of belonging.”  They have a page on their website talking about the story of the brand evolution to belonging anywhere.  You can even create your own version of the symbol to represent you, calling it a “shared brand identity” (a concept which makes a trademark attorney and daughter of a logo cop squirm).

I asked some heavily traveled friends who use the service what they think about the rebrand, and I think they hit it on the head:  it’s ambiguous.  For many unfamiliar with the service, it makes their offering even more unclear.  I don’t want to feel like I belong in someone’s home (that’s borderline creepy), or that I have homes in different area codes.  I want to crash in a sweet pad for a few days.  And I probably do want to know which available rooms to rent are more “home is where the heart is” and less Heidi Fleiss.

So here’s your Friday Rorschach test – what do you think the logo looks like?  (my favorite answer thus far:  nun’s habit with hands up in prayer)

Believe what you want, but who will win?

Posted in Articles, Branding, Fair Use, Famous Marks, First Amendment, Goodwill, Infringement, Trademarks, USPTO

In case you were unaware, the (Men’s) World Cup happened over the last two months and is now over (the Women’s World Cup is next year, in Canada). I Believe that if you followed Team USA at all, you probably heard the infectious chant of I —— I BELIEVE ——- I BELIEVE THAT WE WILL WIN! I BELIEVE THAT WE WILL WIN! I BELIEVE THAT WE……

Okay, so we didn’t win. But we never specified WHEN we believed we were going to win (“I believe that we will win in two thousand and eighteen!” just wasn’t as catchy). In the end, Germany gets to put another star on their Jersey. Big whoop, we have 50 on our flag.

As you might imagine, the “I Believe” chant did not originate with the U.S. Men’s National Soccer Team a mere 2 months ago and virally spread across the country like a picture of dead triceratops. In fact, students at San Diego State University have been using the chant in connection with their sports teams since 2010 and, in fact, had applied to register the phrase I BELIEVE THAT WE WILL WIN! with the U.S. Patent and Trademark Office back in 2011. After an interesting prosecution history involving two Petitions to Revive and a few refusals to register the mark, the application is set to publish this month.

All well and good, except that Utah State has been using the chant and mark since 2006 and is considering its options for objecting. So now we have two schools and the US National Team with potential rights to “The Coolest Chant in the Country,” at least, ESPN Believes so. Oh, and if you visit that link, you’ll note that the Washington Post reports that the chant originated at a Navy football game long before either SDSU, Utah State, or the Men’s National Team.  ESPN did a short video segment on the chant and interviewed a Navy Cheerleader who was the first to publicly perform the chant at a game in 1999:

I’m not one to question the journalistic expertise of ESPN, so I Believe that this is an accurate historical account. And in any event, if there are other schools or sports teams that used the chant before or after, I Believe it only adds further layers to the potential ownership claims.

The Trademark Office initially refused registration on the grounds that the phrase failed to function as a trademark, but SDSU was able to overcome the refusal. I think the Trademark Office was right the first time. No, I believe that they were right. I Believe That They Were Right! I BELIEVE THAT THEY WERE RIGHT! I BELIEVE THAT —

Qat(ar) It Out: Should Qatar Stop Recruiting Promising African Players?

Posted in Agreements, Contracts, International

Now that the 2014 World Cup is over, its time to move on…and write about the 2022 World Cup (sorry 2018 World Cup, I promise I’ll catch up with you later).  The 2022 tournament is currently scheduled to occur in Qatar.  I say currently because allegations of rampant bribery in connection with Qatar’s bid to host the tournament may find FIFA moving the tournament elsewhere, most likely to Australia or the United States.  But assuming FIFA maintains its traditional stance towards bribery and corruption–i.e. doing absolutely nothing about it–the tournament will likely go forward in Qatar in eight years’ time.

And when it does Qatar, like all host nations, will receive an automatic bid into the 32-team tournament.  This isn’t a big deal when a country like Brazil plays host because their team would have qualified anyway.  When we’re talking about a country smaller than Connecticut that is covered mostly in sand and has no real soccer history to speak of, things get a little dicier because the last thing anyone wants to see is some overmatched host country get destroyed in front of the entire world (insert your own joke about Brazil’s performance here).

As the New York Times recently reported, Qatar has turned to Africa to help bolster its team.  According to Qatari officials, the nation has recruited talented but unknown African teenage players to move to Qatar to train against the Qataris who hope to represent Qatar in the 2022 World Cup.  In exchange, the players are given room, board, access to state of the art practice facilities and coaching, and $5,000 to send back to their families in Africa each year.  The Qatari officials explained that the competition presented by the African players would raise the play of the Qataris, hopefully to a level where they could compete against the world’s best by 2022.  Anyone who is not a Qatari official saw exactly what was going on–Qatar was going to move these promising African players to Qatar at a young age, naturalize them as Qatari citizens, then trot out a team of African-born, Qatari-trained players for the 2022 World Cup.

Critics have decried Qatar’s “exploitation” of the African teenagers it has recruited over the last few years and pushed for rules that would prevent Qatar from continuing its plan.  This struck me as an odd position.  There is no evidence that these players or their families were forced to do anything against their will.  Rather, they simply accepted an offer they believed would be beneficial to them.  Conceptually, I don’t see this as any different than a college football player from Minnesota who decides to play for Florida State because Florida State has an exceptional program, a lawyer from Missouri who works in Dubai because it pays three times as much, or an Australian who decides to move to rural Wisconsin because…hey Mom, why did you ever do that?

I certainly recognize the problems associated with human trafficking, especially when the people involved come from third-world countries.  But in this case where everything appears to be on the up-and-up (except for the issue of whether these African players should be considered “Qatari” enough to play for its national team), I don’t have a problem with it.  These kids and their families were given an opportunity that they otherwise would not have had at home and they decided to take advantage of it.  Sounds like one of the perks of globalization to me.

Two Truly Powerful Words

Posted in Goodwill, Guest Bloggers, Mixed Bag of Nuts

James E. Lukaszewski, ABC, APR, Fellow PRSA

My first management job was as a supervisor trainee in a Minnesota-based retail music company. At that time—1966—their strategy was to place each trainee in a succession of departments as the temporary supervisor to begin to learn the company. I began work there in 1960 as a part-time employee in their first branch store. I was recommended to the company by my band director at Robbinsdale High School.

My training boss in 1966 was a seasoned senior executive. He and another executive herded trainees around to make some sense of how we learned things about the company. My first assignment was in the Stereo Components Department in their main retail operation in Minneapolis. The department consisted of four of the most seasoned and successful audio component salesman in America.

My boss had only two rules for supervisors of departments. The first was that there needed to be a sales meeting at 7:30 AM every Tuesday morning.

The sales meeting idea was daunting. In 1966, I was just 24-years-old. The youngest salesperson in the department was in his late 30’s, Andy Anderson. He had already won most of the national sales awards available from brands like Fisher, Koss and a variety of other major U.S. brands which were important at the time.

After two sales meetings, I realized that it really didn’t matter what I said; whatever I told them, they would make it work. These men were champion salespeople. If I told them, for example, that using a blue pencil was a way to get more orders, Andy Anderson would be the first in my office on Wednesday afternoon to tell me just how successfully he used blue pencils for writing more orders.

The second task was even tougher. I was to write a brief note to each person at least once a month calling out something specific that they did that was exemplary, helpful or interesting. By the fourth week of the first month, I had managed to write such a note to each of the four salespeople.

During the second month, one of the four salespeople passed away, I’ll call him Richard. It wasn’t my fault. My boss came down to the second floor and told me that I needed to clean up the salesman’s desk because his family was coming in to spend a few minutes in the space where the salesman had spent a good part of the last 25 years. I was to go through his desk and make certain that there was nothing embarrassing to him or to the company for the family to find. In addition, I was authorized to offer his family members the opportunity to take anything and everything from his desk home with them.

He had a huge olive drab, surplus army desk. It had a large lockable central drawer, large dark green work surfaces, four huge, deep inside drawers. The central drawer seemed to be for small stuff and junk. Mostly I found just a lot of boring sales material and the detritus of being at the same desk for 25 years, and a carton of papers in the rearmost part of the lower right-hand drawer. It took me a few minutes on my hands and knees to pull that box out and take a look at it.

It also took a few minutes to figure out what the box of papers was all about. There were letters, notes, memos, sales literature—all kinds of documents in perfect chronological order from the oldest to the most recent. As I kept trying to figure out what this box was about, it suddenly struck me. Every piece of paper, every document, every brochure had some kind of positive note written to Richard by someone else. There were old memos dating back more than 20 years, some from the founder of the company. One simply said, “Great job, Dick. You saved the Wilson’s business for us. Thank you,” signed PAS the company’s founder.

What took my breath away was finally looking at the box full of notes as a whole. And there, in front of all of the notes, was the one I sent him just the week before, thanking him for teaching me something about selling stereo components and for taking the time to do that. I teared up a little bit.

When I told my boss about it, his response was, “So, what have you learned?” “Thank you’s are really important,” I stammered. “And pretty rare, too,” my boss chimed in. This was true. In this person’s case there were 205 thank you’s from more than 25 work years, times 12 months, times four weeks, times five days, times 8 to 10 hours each day.

I’ve continued this practice to this day and added a couple of additional rules:

1.  All such notes need to be hand written, preferably on separate sheets of paper or cards, or directly on documents that the writer can count on the recipient saving.

2. Thank you’s by email have little if any value.

3. The three crucial ingredients of these thank you notes are:

a. A brief opening, meaningfully specific and constructive thank you statement.

b. A short phrase or sentence as to why the cited work, behavior or activity is valuable, interesting or important to you and what you learned.

c. If you can mail it, mail it. Meaningful snail mail is even rarer and therefore more memorable and valuable.

It’s highly likely that the two words “thank you” are among the most personally, powerful words in any culture and language. I’ve learned that thank you’s are always on time, always appreciated, always remembered and often talked about with colleagues, family and friends, sometimes for a very long time. As I work with senior executive leadership, I teach and consider the consistent thanking of people to be one of the crucial ingredients of leadership, and being remembered.

Even in his passing, Richard taught me one of the most important lessons in my life. Thank you, Richard, for teaching me the enormous power of these two words.

Dethroning a Right to Register a Trademark?

Posted in Agreements, Articles, Branding, Contracts, Dilution, Famous Marks, Infringement, Marketing, Trademark Bullying, Trademarks, TTAB, USPTO

Last month, you will recall we wrote about the important difference between the right to register a trademark and the right to use a trademark, here and here.

Despite the fact that in most cases, a “likelihood of confusion” test governs both determinations, the right to use and the right to register are not necessarily coextensive rights – defeating the right to register, in most cases, is easier than defeating the right to use.

So, just because a brand owner is denied the right to register doesn’t necessarily mean that actual infringement has occurred, injunctive relief is appropriate, or monetary relief is warranted.

Hat tip to our friends at BlackCoffee in Boston, for providing this entertaining image, and another storytelling opportunity on this topic of great importance:

 

The name and visual identity of this portable restroom service provider were obviously inspired by the likely famous The Home Depot brand, name and logo. The orange and black trade dress, the similar all capital lettering style, the square logo, and the three word name beginning and ending identically (with the word in the middle creating a rhyme and having an overall similar cadence and sound), leave little doubt about the source of inspiration here.

So, why has Home Depot not taken action or stopped this use? Well, it appears they did take some form of action back in 2008, but the terms of any settlement are not publicly available, and they are likely confidential, but if you have any insights, please do share.

Here’s what we do know, for sure.

The Thone Depot, Inc. of Arlington, Massachusetts, filed on July 18, 2007, an application to federally-register this logo in connection with the “rental of portable toilets,” claiming a first use date of January 1, 2006.

We also know for sure that the application was examined by the USPTO and approved for publication, without any citation to Home Depot or its federally-registered rights, and in fact, the Throne Depot logo published for opposition on July 29, 2008.

It is also clear that The Home Depot filed extensions of time to oppose registration of the claimed logo, and then the registration application was voluntarily abandoned by Throne Depot on January 26, 2009.

The missing information, of course, is what terms might be contained in the apparent settlement between Throne Depot and Home Depot.

What we can reasonably surmise from abandonment of the application is that Throne Depot relinquished the right to register — as they have no pending trademark or service mark applications at the USPTO for any mark.

We can also surmise that The Home Depot did not extract a promise from Throne Depot to cease any and all use, and it seems unlikely a license arrangement exists, since there was no assignment of the application to The Home Depot.

If you’re in the mood to speculate, any thoughts on what other restrictions Home Depot might have extracted from Throne Depot to resolve the dispute on terms that apparently contemplate the continued use by Thone Depot?

Would you have dethroned only the right to register if you were the sitting king of this trademark enforcement effort?

Might Home Depot have been concerned about what is now called “trademark bullying“?

How strong is the likelihood of confusion claim here, and does it improve knowing that Throne Depot caters to the construction industry?

What about dilution of a famous mark, perhaps a tarnishment theory, given the nature of the services being provided by The Throne Depot?

What about these mocking Vine videos linking the two brands?

The World Cup of Counterfeit All-Stars

Posted in Branding, Counterfeits, Infringement, Marketing, Trademarks

There’s a sports fever in the air of the homeland of the DuetsBlog team.  The World Cup final is Sunday and, from my office window, I have seen an ever-growing number of soccer fans on the rooftop lawn of Brit’s Pub to watch the matches.  I’m not much of a soccer fan, but I am a huge baseball fan and so I am thrilled that my home state will be the stage for the MLB All-Star Game, which will be held at Target Field on Tuesday.

Photo from sportslogos.net

Can you imagine if a baseball stadium filled with fans started chanting:  “I BELIEVE…I BELIEVE THAT…I BELIEVE THAT WE…I BELIEVE THAT WE WILL WIN!  I BELIEVE THAT WE WILL WIN!“  No – baseball is America’s sport.  We don’t need belief; we know our team is going to win.  (Well maybe not our team lately.) Apparently San Diego State University has sought trademark registration for the mark I BELIEVE THAT WE WILL WIN.

Of course, with all major sporting events, there is a bunch of All-Star Game memorabilia or swag that will be sold to fans, who may or may not have had one too many ounces from the self-serve beer vending machines at the stadium.

There was a story in the local media yesterday regarding the prevalence of counterfeit All-Star Game memorabilia.

I was surprised to see that the MLB or the Office of the Commissioner of Baseball does not file trademark applications for the All-Star Game logos; they simply have one registration for ALL-STAR GAME. If they have a trademark registration or a copyright registration, they can record these rights with the U.S. Customs and Border Protection (CBP) for a nominal fee of less than $200 per class for up to ten years of protection.  As part of the recordation process, the CBP requests information regarding licensees and manufacturers who may be transporting product to the US.  When an importer does not match the CBP’s records for allowed users of the mark, the CBP will detain the product, investigate its authenticity, and destroy the product if it is counterfeit – all without the MLB having to do anything but register their trademark with the CBP.

But what if someone were to use the background of the logo, not include the registered ALL-STAR GAME wording or the MLB symbol until it was delivered to the U.S.  If I had Photoshop, I would show you what I mean. Without protection of the design elements of the logo, that product wouldn’t be stopped at the border by CBP.    Now the All-Star Game may present a poor example of this because they use a new logo for the Game every year and they build up some common law rights in the mark (which can’t be registered with the CBP), but think about your business and your client’s business.  If someone eliminated your protected words from your design logo, would you be adequately protected?

While of course I am not encouraging this, I do hope to see a vendor cheekily selling Derek Jeter gift baskets.

 

Description of a Trademark with the USPTO

Posted in Articles, Branding, Non-Traditional Trademarks, Sight, Trademarks, USPTO

Continuing our discussion — from yesterday and the day before – about the description of a mark provided to the USPTO during the registration process, the below images from two unrelated federally-registered, non-verbal logos for banking services, help tell another related story:

 

 

 

 

 

 

 

 

 

 

 

As the links on the USPTO images reveal, the one on the left is associated with Lloyds Bank, based in London, and the one on the right is associated with First Security Bank of Missoula, based in Missoula, Montana.

Despite the fact that both horse images show raised front legs and a head turned backward (and even putting color aside), the commercial impressions of these two non-verbal logos appear to me to be quite different. So, let’s compare the descriptions of each mark approved by the USPTO, but first let’s refresh our understanding of what the USPTO requires for descriptions of marks.

The USPTO generally requires that the description of the mark be clear, accurate, and concise. It also provides through TMEP 808.02 that the “description should describe all significant aspects of the mark” and “[i]nsignificant features need not be included in a description.” In addition, “[w]hen a mark includes a large number of elements, they are not all necessarily significant.  For example, background design elements can sometimes be considered insignificant if they do not change the overall commercial impression of the mark.”

But, “because of the requirement to describe where colors appear in the mark, marks that include color will generally have a more detailed description.”

With that background in mind, perhaps it is not surprising that the word count for Lloyds Bank’s horse logo is only eight words (“the mark consists of image of a horse”) while the First Security Bank of Missoula’s colored horse logo includes a whopping 136 words:

“The mark consists of a trotting horse depicted in bold brush strokes with the horse’s head turned to the viewer’s left. The horse’s head appears to be painted in blue with yellow, orange, and red highlights. The horse’s neck and front appears to be painted in blue with pink, purple, and yellow highlights. The horse’s front two legs appear to be painted in yellow, blue, pink, purple, orange, and red. The back of the horse, including the tail and the two hind legs, appears to be painted in yellow with orange and red highlights. Grass appears below the horse, which appears to be painted in green and blue. The horse is not painted in completely, and there are areas in the horse that are transparent where the background appears. The background of the mark is transparent.”

Here is where it might be beneficial to obtain not only a registration that claims color, but one that is not limited by color too, as the word count drops, and the scope of rights likely increases. I’m thinking it would have been possible to obtain the following description, keeping the USPTO’s guidance of the description being clear, accurate and concise (in an application not claiming color as part of the mark): “The mark consists of a horse depicted in bold brush strokes.”

Given the inherent subjectivity in application of these principles, how broad or narrow a description that the brand owner is able to obtain from the USPTO may depend on the assigned Examining Attorney, but counsel should keep in mind the “description of the mark” section of an application as an important element of the brand owner’s overall trademark portfolio strategy.

Short and sweet descriptions should support broader rights, but more detailed descriptions might be beneficial or even necessary to avoid getting hung up on broader prior registrations.

With that in mind, any trademark types out there ever file a petition for partial cancellation to narrow an overbroad description of the mark to make room for a newcomer’s application?

In particular, I’m left wondering, might it be possible to compel a narrower Lloyds Bank mark description, perhaps requiring more description about the position, pose, and activity of the horse?

As you may recall, we’ve written before about rearing and prancing horse non-verbal logos (recall this gem: Striking The Pose of Differentiation? from the deep, dark archives?), so I’m left assuming, given an appropriate set of facts, it could be a viable option in overcoming a likelihood of confusion refusal, any thoughts or insights to share?

Finally, let’s not forget the USPTO’s further instruction that “the description should state clearly and accurately what the mark comprises, and should not create a misleading impression by either positive statement or omission.”

Going back to my related post from yesterday, was Pepsi’s description misleading?