DuetsBlog

Collaborations in Creativity & the Law

For Wrigley Field Street Vendors, It’s Win or Go Home

Posted in Advertising, Branding, Counterfeits, Fair Use, Fashion, Marketing, Trademarks

The Chicago Cubs are rolling into the playoffs, putting the finishing touches on a historically dominant regular season with over 100 wins. Cubs fans (like me) even dare to dream that the century-plus long championship drought may finally come to an end this fall, if the team can carry its impressive form into the postseason.

Also coming to an end, if the Cubs have their way: the unauthorized T-shirt and merchandise sales outside Wrigley Field. The Cubs’ home ballpark is planted right in a bustling residential area, surrounded by bars and rooftop venues. The various street vendors lining the streets are a fixture of the gameday experience at Wrigley, if only because of their seemingly insurmountable numbers.

ct-cubs-mlb-trademark-suit-0924-biz-20160923-002

It seems fall is an important time for both the team and the Cubs’ trademark lawyers. the Cubs and Major League Baseball Properties, Inc. (the IP ownership arm of MLB) brought suit last week against a laundry list of parties alleged to be “deliberately free riding on the success of the Cubs and trading – without a license or permission – on the substantial goodwill associated with the Cubs’ trademark and trade dress. The Cubs allege rights not just in their various logos (and the letter W, as previously discussed here), but also in “the combination of their iconic blue-and-red color scheme and other indicia.”

The Cubs then allege various street vendors utilize the Cubs’ trademarks and associated trade dress on T-shirts sold “around and near Wrigley Field in Chicago, Illinois, and on the Internet.”  The (now-amended) Complaint can be found in full here. The Cubs’ complaint also seeks a non-specific court order “allowing them to work with law enforcement to seize counterfeit or trademark-infringing merchandise spotted for sale outside the ballpark,” according to the Chicago Tribune.

Taking a look at the shirts captured in the complaint, there are certainly examples where the Cubs have a legitimate grievance, and others that tend to strain credulity:

Screen Shot 2016-09-28 at 6.08.13 AM

An infringement case may well be open and shut as to those shirts with the “C” or “Cubbie Bear” logo, or even the “W” letter from the Cubs’ “win” flag. But those who have been to Wrigley Field might agree there are countless examples where vendors do not use any Cubs intellectual property, and allude to the team more creatively. The “WE ARE WORLD SERIOUS” shirt above would be a prime example of this – were it not for the “W” flags flanking either side of the shirt’s logo. Still, it’s hard to wonder what precisely the Cubs see as infringing in the “CENTRAL DIVISION 2016 CHAMPIONS CHICAGO” shirt in the bottom row. If anything, it might be a tailor-made case of nominative fair use.

The Cubs’ request to actively enforce its trademarks in the Wrigley Field area is certainly a novel one, and appears to be timed to seize upon the influx of interest (and cash) that surrounds playoff baseball. T-shirt vendors might find the “Friendly Confines” to be a bit less friendly in October, unless they have the means to defend a federal trademark infringement suit.

A new NHL team: The Las Vegas Silver (or Desert) (or Golden) Knights

Posted in Advertising, Branding, Marketing, Mixed Bag of Nuts, USPTO

Have you heard about the NHL’s newest, not-yet-fully-named hockey team, based in Las Vegas? Although the team’s inaugural season will not begin until October 2017, season tickets have already sold out. This exciting news was a big relief for the team, who faced some skepticism about market demand for a 31st NHL team, and because Las Vegas has not historically been a popular home base for professional sports teams. In fact, no professional sports team has ever been based in Las Vegas, with the temporary exception of the Utah Jazz, who played 11 games there in the 1983-84 season.

In early September, the team owner, Bill Foley, announced the team name… well, part of the team name. During a radio interview, Mr. Foley revealed that the name would be the Las Vegas “Something Knights.” Later, it was disclosed that the name would be one of three options:  The Las Vegas Silver Knights, Desert Knights, or Golden Knights. But the final announcement of the full team name will not take place until November. Mr. Foley assured future fans that the “name is definitely set,” but he “can’t tell you exactly what it is. That’s a secret.”

Last month, on August 23, the team filed intent-to-use (ITU) trademark applications (Lanham Act Section 1(b)) for the word marks Las Vegas Silver KnightsLas Vegas Desert Knights, and Las Vegas Golden Knights. One of the key requirements for seeking registration through an ITU application is a “bona fide intent” to use the mark in commerce. 15 U.S.C. § 1051(b)(1). The Federal Circuit has held that “bona fide intent” means that the “applicant’s intent must be demonstrable and more than a mere subjective belief,” and that the applicant must have a “firm” intent to actually use the mark in commerce and “not merely [an] intent to reserve a right in the mark.” M.Z. Berger & Co. v. Swatch AG, 787 F.3d 1368, 1375 (Fed. Cir. 2015).

One might wonder whether there was a “bona fide intent” at the time of the ITU filings in August? Presumably the team intends to use only one of the three options as its team name. If the name had not yet been chosen at the time of filing, could there have been a “firm” intent to use each (or any) of the marks in commerce, rather than merely an “intent to reserve” the marks? Or perhaps as of August 23, the team had already firmly chosen which of the marks it would ultimately use (though keeping it secret), in which case the “bona fide intent” requirement could be met–at least for that one mark. The other two marks, if filed for the purpose of maintaining pre-announcement secrecy, would have a harder time passing the bona-fide intent requirement. Or perhaps some type of creative marketing strategy is underway, in which the other two names besides the chosen official team name are planned to be used in some other way. At this point, it’s all speculation. But speculation can make for interesting trademark questions.

What do you think? Any guesses as to which of the three names the team has chosen? Stay tuned for the big reveal in November.

How Would You Pronounce Infringement?

Posted in Advertising, Articles, Branding, Food, Marketing, Mixed Bag of Nuts, Squirrelly Thoughts, Trademarks

Last week, we discussed Caribou Coffee’s billboard ad referencing transparency — this week another installment from Caribou’s current Minneapolis skyway billboard campaign:

CaribouPronounce

That one made me think of this one, a post from a few months back about Kind nutritional bars and their Ingredients You Can See And Pronounce tagline and trademark:

IngredientsTagline

Marketing types, if you were a brand manager for Kind, would you want to extend that feeling toward Caribou’s advertising use of: “INGREDIENTS — you can — ACTUALLY PRONOUNCE”?

Trademark types, what say you? Does the omission of the word SEE make a material difference? Does the addition of ACTUALLY make a material difference? Actually?

How significant would it be to you that Kind appears to have extended that feeling, directly or indirectly, by not opposing, to a salad dressing brand using Handcrafted With Ingredients You Can Pronounce?

Or, has the phrase “ingredients you can pronounce” just become too common any longer to have a meaningful scope of protection from a trademark perspective?

Last, as to the subject of trademark pronunciation, have you forgotten about these little gems from the archives?

Michigan v. M22: The Road Sign Trademark Battle

Posted in Branding, Law Suits, Marketing, Mixed Bag of Nuts, Trademarks, TTAB
By Larry Page. CC BY 2.0.

Posted on Flickr by Larry Page. License: CC BY 2.0.

If you’re ever driving north through Michigan, particularly during the autumn leaf season, I highly recommend taking the popular “scenic route,” that is, the route bordering the shore of Lake Michigan along the Leelanau Peninsula, following State Highway M-22.  Last year, Highway M-22 was voted into first place among a USA Today top-ten ranking of the “best scenic autumn drives” in the nation.  On such a drive, aside from the beautiful landscape of fall colors and the breathtaking views of Lake Michigan, you may notice the numerous “M22” route marker signs, such as the one pictured to the right.

One Michigan company, by the name of (you guessed it) M22, has capitalized quite successfully on the popularity of the M-22 route.  M22 sells a wide variety of merchandise bearing the M22 mark, such as clothing, hats, stickers, magnets, glassware, wine, and more.  M22 has been granted several federal trademark registrations, including an “M22” word mark and several M22 design marks.  The design marks are, unsurprisingly, quite similar to actual signs on State Highway M-22.  Pictured below is M22’s design mark under U.S. Registration No. 3992159.

U.S. Registration No. 3992159

U.S. Registration No. 3992159

Not everyone has been content with the success of the M22 business and the M22 trademark.  The State of Michigan decided to replace every single M-22 route marker sign (at a cost of roughly $325-350 per sign) with new “22” signs (without the “M”).  The change was reportedly made to combat theft (roughly 90 signs stolen in a 3-year period) due to the popularity of the M22 brand.

A few years ago, the Michigan Attorney General issued an opinion letter, stating that because the M-22 signs are in the public domain, the M22 design should not be subject to trademark protection. M22 disagreed, stating on its website that the Attorney General’s opinion was “incorrect and poorly researched.”  M22’s website provides an in-depth legal argument about the validity of its M22 trademarks, as well as counterarguments against the Michigan Attorney General’s opinion.  M22 argues that under Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 37 (2003), a business may draw upon an image from the public domain, make it its own, and obtain trademark rights by selling goods or services bearing that image.  M22 also asserts that numerous trademarks incorporate public domain works, such as the Disney trademark SLEEPING BEAUTY, and other road-sign trademarks, such as US-1.  According to one search conducted by a trademark practitioner in 2012, nearly 800 federally registered trademarks depict stylized versions of road signs.

In 2013, after the opinion letter, the State of Michigan filed a Petition for Cancellation of the M22 design mark before the Trademark Trial and Appeal Board (TTAB), presenting numerous arguments, including: the M22 mark falsely suggests a connection to the State of Michigan; the mark is primarily geographically descriptive; the mark consists of an insignia of a State, specifically Michigan; and several other arguments.  This cancellation proceeding is still ongoing, after 58 docket entries spanning nearly three years.  Most recently, the TTAB issued an order last month denying Michigan’s motion for partial summary judgment.  Based on the trial schedule set forth in that order, the proceeding should conclude within the next year.

Aside from the TTAB proceeding, a new development recently arose in federal district court.  A few weeks ago, the State of Michigan filed a civil lawsuit against M22, asserting a new argument based on federal highway regulations.  Michigan argues that trademark protection for the M22 design in Michigan’s M-22 route marker signs is prohibited under the Manual on Uniform Traffic Control Devices (MUTCD).  More specifically, Michigan argues that the Federal Highway Administration promulgated a MUTCD standard under which any road signage designs (“traffic control devices”) required by the MUTCD on federally funded highways, including the M-22 signs, are in the public domain and “shall not be protected by patent, trademark, or copyright.”  The case is Michigan v. M22 LLC, No. 1:16-cv-01084 (W.D. Mich.).

This contentious trademark dispute between Michigan and M22 presents interesting questions, including the extent to which trademark protection may arise from “public domain” words and images, such as those found on state-issued road signs.  It also presents the question of whether a mark is geographically descriptive (i.e., consumers would likely associate the goods sold as originating from a geographic place described by the mark) merely because the mark has letters, numbers, or designs similar those on a road sign (see Trademark Act Section 2(e)(2)); and whether design marks originating from state-issued road signs present a false connection with that state (see Trademark Act Section 2(a)) or constitute the “insignia” of the state (see Trademark Act Section 2(b)).  Finally, the recent federal lawsuit raises new questions about the intersection of federal highway regulations and the registerability of marks related to highway signage.

Based on the significant number of trademarks related to road signs, the answers to these questions at the conclusion of the TTAB proceeding and the federal lawsuit could be significant for many trademark owners. Stay tuned for further updates on this dispute.

Trendy Shoemaker Cannot Slay the Fashion King

Posted in Branding, Fashion, Infringement, Law Suits, Trademarks

Plaintiff LVL XIII Brands Inc. (“LVL XIII”) must not have heard of the old saying:  “Never strike a king unless you are sure you shall kill him.”  The New York start-up sneaker company decided to take on fashion king Louis Vuitton over a metal plate attached to high-end men’s sneakers.  LVL XIII’s claims were dismissed last week on summary judgment in a 107 page opinion.
uuduy

Hopefully, Plaintiff LVL XIII fared better last week with its presentation during New York Fashion Week show pictured above.  You may have heard of LVL XIII sneakers, because famous people such as Jason Derulo and Chris Brown have touted the sneakers on television and in magazines.

In the lawsuit, Plaintiff alleged that Louis Vuitton was engaged in trademark infringement and unfair competition by using its rectangular metal toe plate.  Examples of the toe plates at the heart of the dispute are depicted below.hjkyudu

The Court began its analysis of the motion for summary judgment by explaining that for a trademark to have protection, it must be “distinctive.”  An “inherently distinctive” trademark is one in which “intrinsic nature serves to identify a particular source.”  Plaintiff’s mark did not meet this standard.  Accordingly, the Court had to turn to whether the mark had “acquired distinctiveness” by achieving “secondary meaning” among the relevant consumers.  This means that “in the minds of the public, the primary significance of a product feature is to identify the source (e.g., LVL XIII) rather than the product itself (e.g. the sneaker toe patch). Continue Reading

The Evolution of Pod-Shaped Lip Balm

Posted in Product Configurations

I’m sure most of you have noticed those little egg shaped lip balms at the check out line in Target, Wal-Mart, Costco, and just about any other big store. The company that makes these, Evolution of Smooth or EOS, really hit on something big. Stores stock the product at check out lines across the country. That’s the perfect placement for these little guys as they’re a perfect little impulse buy. In just a few years, the startup has grown to compete with the titans of the lip balm industry. I’m sure the lip balm itself is pretty great, but what makes these little eggs stand out is the product configuration. EOS is clearly aware of this. They hold a few product configuration trademarks and applications for the little pod. They also hold some patents on their products. Even so, that hasn’t stopped others from joining the pod trend.

EOS eggWhenever I saw a pod, I assumed they were EOS until I recently saw those competitor pods. That’s what got me to check on the pod trademarks. Next, why isn’t EOS enforcing their rights? Well, they only have one pod registration on the the Principal Register. The others are all either applications or registered on the Supplemental Register. So those others aren’t doing EOS much good right now from an enforcement perspective. And the one on the Principal Register only registered about a year ago. That hasn’t given EOS much time to use it.

It is now well-established that you can own a trademark on your product configuration. However there are a couple of fairly important limitations. Perhaps the most important limitation is that features and designs that are functional are not protected by trademark. For that, you generally head into the patent world.

In determining functionality, an examining attorney or court will take into consideration a number of factors. These include whether you hold a utility patent on the design, any advertising that promotes the utility of design, whether other designs are readily available for competitors, and whether the design provides some other non-reputational advantage such as simplicity or low cost resulting from the design.

 

EOS Pod DrawingThe registration on the Principal Register claims the configuration above. It states: ” The mark consists of a three-dimensional configuration of the packaging for the goods. The configuration is comprised of an ovoid with an indented portion on one side at the midpoint of the circumference.”

Enforcing a configuration mark is much more difficult than enforcing most other trademarks. Each of the pods I’ve seen is somewhat unique, doing something slightly different. I’ve noticed that there are two aspects of the EOS pod that the competing pods tend to avoid. First, competitors avoid the pure egg shape (I know, eggs don’t have flat spots on the bottom). For example:

OraLabs PodsOraLabs Pods 2Variations on a theme, right? Each container is somewhat pod-ish, but not quite the egg used by EOS. The blue and purple products are quite probably ovoids, but have other geometric or design features that may pull them just far enough away from the EOS trademark.

What else do you notice? None of them have that little indented portion. That’s a prominent part of the trademark. It actually takes up the majority of the description. Now, I would argue the indent is the most functional part of the whole thing. It allows you to easily twist the cap off rather than struggle with it like a pickle jar. However, just to be safe, these other brands may decide to avoid that particular portion in the hopes of avoiding an infringement suit or to strengthen their argument in the event that one occurs.

For its part, EOS is probably well aware that enforcing a configuration mark is difficult and the scope of protection is generally narrow. It also may be a bit worried about keeping its trademark. A trademark registration adds a lot of weight to a cease and desist letter. EOS probably doesn’t want to risk losing the registration on a functionality argument and may be content with selective enforcement to preserve a narrow niche.

EOS is also branching out. It now has normal stick lip balm, along with lotions, and shaving cream. All come in unique product packages, of course. Pod lip balm may well be a fad. After all, it’s a fairly bulky container to carry around. Now that EOS has made it as a company and brand, it can ride some of that success into a more diversified portfolio. Additional product offerings take some pressure off of the pods and allow for a different, perhaps more selective, enforcement strategy. If you’re a one-trick pony, you’re probably a little more likely to react when another pony does your trick.

A+++++

Posted in Guest Bloggers, Mixed Bag of Nuts

–James Mahoney, Razor’s Edge Communications

In one of the all-time great holiday films, “A Christmas Story,” Ralphie turns in a paper that he’s very proud of. He dreamily envisions his teacher’s ecstatic praise of “A+++++!!”

We’ve all felt that way. And, like Ralphie, we’ve all felt the sting of reality.

I thought about this recently when I had the good fortune to be among the photographers invited to exhibit a single image in a pop-up show. The collection was eclectic. All the shots were quality, though some had me scratching my head over why anyone would consider it even A-, let alone buy it.

It was the most recent reinforcement of something I realized a long time ago: no one makes anything that everyone loves, particularly in the creative arts. (The tremendous photographer Arno Minkkinen wrote, “Art is courage made visible,” to which, I’ll add “when you put your work out there for any idiot to comment on.”)

We tend to think that people who like something that we consider to be gauche or shabby or whatever, must be the thin lunatic fringe who have zero taste or aesthetic sense. But I suspect the reality is that even the most widely regarded “thing” is esteemed by only a sliver of the population.

That’s probably where the proverb “A job well done is its own reward” came from, and that’s certainly true. Even so, it’s nice to get an A+++++ once in awhile.

Owning a Cup of Trademark Transparency

Posted in Advertising, Articles, Branding, Food, Goodwill, Idea Protection, Marketing, Non-Traditional Trademarks, Product Packaging, Sight, Trademarks

Seeing this Caribou Coffee skyway billboard was a good reminder to me of how much we hear about the importance of transparency in our relationships, including those with brands we love:

CaribouTransparency

It appears that the prevalence of society’s use of the word “transparency” may be at an all time high, where the use of “transparent” has declined somewhat since its high in the mid-1800s.

We’ll leave to the lexicographers and linguists an explanation as to why “the condition of being transparent” is apparently more important nowadays than the root word “transparent.”

Having said that, what’s not to love about transparency, at least when it is synonymous with trust, authenticity, and integrity, as opposed to becoming lipstick service to the idea, an overused buzzword, or meaningless cliche.

Yet, given the popularity of the term, especially in certain business niches, when it comes to owning trademarks and taglines containing the term “transparency,” at least from a trademark perspective, it might be a better idea to consult your handy thesaurus, and look for a far less-used and more distinctive term with similar meaning: Limpid, Pellucid, and Perspicuous.

To illustrate the point, what might be the scope of rights associated with this federally-registered service mark for TRANSPARENCY in connection with medical services, especially when it coexists with a federal service mark registration for TRANSPARENT HEALTH, not to mention this multitude of references on Google?

And, when it comes to non-traditional trademarks, such as product packaging and trade dress, let’s not forget what implementing the idea of transparency might bring, when the brand owner is too obvious about it: Functionality and no trademark rights (i.e., when see-through packaging elements are utilized, especially in the food industry).

Could there be a need for balance in not providing “too much information” when consumers don’t really want to watch the sausage being made, yet know it is safe and healthy to eat?

In the end, let us not forget that actions always speak louder than words.

Reflections for Career and Life on an Anniversary

Posted in Guest Bloggers, Mixed Bag of Nuts

– Jason Sprenger – President, Game Changer Communications

September 13 marks my agency’s four-year anniversary.  It’s thrilling to reflect on where we’ve been and where we’re going, because it’s been one wild ride.  But it’s also a day to take stock of the lessons I’ve learned along the way, and items that I’ve noticed have been particularly impactful on helping to get my own life and the firm where they are today.  I thought it would be fun to share some of these with you – no matter who you are and what you do, I think there’s something all of us can take away.

Here are just a few of the key themes I’m thinking of today:

  • Surrounding yourself with great people is at least as important as everyone says it is. In my first year, I hired a subcontractor who did a fantastic job for me and my client – and it paid off in a great work product as well as ongoing and referral business.  I made the decision early on to align with a good business accountant and lawyer, and while I might spend more than others on their services I haven’t ever second-guessed those decisions because I know I’m getting good advice and my business is better for it.  I’ve invested lots of time and money into networking and membership in professional organizations, and there’s a lot of value I’ve received from it already – and I’m sure there’s more to be had in the future.  I’ve aligned myself with mentors who have meant the world to me, both professionally and personally.  And many more.

I’m a firm believer that people can’t do most anything in this world, much less something great or impactful, all by themselves.  You need help, support, counsel and advice, someone to aspire to and so much more.  Game Changer has had these people, and I continue to place tremendous importance on cultivating great, mutually beneficial relationships.

  • Doing good work is the backbone of success and growth. So many people are concerned with new business development and networking, and of course I’m one of them.  There’s also definitely a fair amount of luck and good fortune required to grow a business.  But my most important job every day is taking care of the current roster of Game Changer clients – and doing all I can to retain their business for tomorrow, next month, next year, etc.  First off, I think it’s quite simply the right thing to do.  Every Game Changer client past and present made a decision to place their confidence in me and my firm, and I don’t ever take that lightly.  Second, most of Game Changer’s revenue and growth over its history has been due to referrals – and those only come in the door when you’re doing great work with your existing clients and they’re telling their friends about it.  Third, it’s really pretty simple math; you can sign all the business you want, but if you’re losing accounts and turning over resources then all you’re really doing is treading water.  The morale of the story here: do great work.  Every day.
  • Rolling with the punches. In both life and career, storms and roadblocks are inevitable.  And no matter whether it’s a work issue or a real-life concern, there’s no way to completely separate stuff of this nature from your work product.  The old truism “Life is what happens when you’re making other plans” sums it up perfectly.  But despite these obstacles, it’s important to keep in mind that it happens, and it’s okay.  Everyone goes through stuff like this at some point, and it’s not what knocks you down but how you get back up that makes the difference.

Thanks also are in order.  In particular, thank you for reading, and thank you to Steve Baird and the entire DuetsBlog team for the opportunity to contribute to this forum.  I look forward to the discussions to come!

An OXI Surprise

Posted in Trademarks, Truncation, USPTO

One of the blessings of homeownership is the surprise that accompanies a major appliance breakdown.  I had the pleasure of experiencing one of these events over Labor Day weekend when my dryer decided it was done working.  Labor Day is one of the weekends you want to have it happen because there are plenty of sales.  I went to one of the local box stores to figure out which dryer worked best for me, and also look at some washers (mine currently is predisposed to ripping holes into fabrics).  As I perused my options (the most critical of which was whether, at my short stature, I could reach anything within the washer or dryer), I came across this Maytag washer:

FullSizeRender(4)

Three trays, one for “softener”, one for “detergent”, and one on the right for…”oxi.”  Oxi?  I immediately thought “oh that must be for Oxi Clean” and no, not some white powdery drug.   In either event, how can you not think of this guy (and one of the greatest South Park episodes)?

 

goon meet

But…maybe it’s not for Oxi Clean.  There are a number of trademark registrations involving laundry detergent that include “OXI,” none of which disclaim OXI as being descriptive.   For example:

Even the product labels seem to encourage consumers to assume that the products are infused with Oxi Clean.

cholrox2oximax  wiskoxi oxiclean-large sun-plus-oxi-detergent-is-my-choice-for-low-cost-laundry-soap-21668894

The stylization of the lettering on each looks very similar, lending credence to the concept that there is some infusion with the Oxi Clean product or its formatives.  But compare these with Arm & Hammer:

armandhammeroxy

If the dispenser on the Maytag washer is intended for Oxi Clean detergent and was a permitted, licensed use, it would be highly desirable for the dispenser to show the OXI CLEAN mark in full.  But is it for that, or is it not?  The “detergent” portion of the dispenser says “liquid only”, so can you put Oxi Clean powder in the “oxi” dispenser?  That seems unclear.  There was no clear connection to the Billy Mays brand nor were there any clear instructions on the lid of the washer on how to use “OXI” as there was for “detergent.”

There seems to be some unapparent history here regarding the use of “OXI” but brands should beware of permitting uses of a mark without control  – or allowing it to be truncated on product packaging by not acting against such uses – in ways that may ultimately dilute the brand.